OPPOSITION No B 2 885 930

Ewopharma AG, Vordergasse 43, 8200 Schaffhausen, Switzerland (opponent), represented by Fajnor IP S.R.O., Krasovského 13, 851 01 Bratislava, Slovakia (professional representative)

a g a i n s t

Evopharm s.r.o., Vyšehradská 12, 851 06 Bratislava, Slovakia (applicant), represented by Matus Navrat, Tomasikova 5/B, 82101 Bratislava, Slovakia (professional representative).

On 27/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 885 930 is partially upheld, namely for the following contested goods and services:

Class 5: Pharmaceuticals; antibacterial pharmaceuticals; elixirs [pharmaceutical preparations]; chemico-pharmaceutical preparations; diuretic pharmaceutical preparations; ocular pharmaceuticals; effervescent analgesic pharmaceutical preparations; pharmaceutical preparations for animals; pharmaceutical preparations for skin care; pharmaceutical preparations for treating dandruff; pharmaceutical preparations for wounds; anti-epileptic pharmaceutical preparations; anti-diabetic pharmaceuticals; pharmaceutical preparations and substances; pharmaceutical cold preparations; pharmaceutical cough preparations; pharmaceutical preparations for the treatment of cancer; chemical preparations for pharmaceutical purposes; acne cleansers [pharmaceutical preparations]; tissue-regenerative pharmaceutical preparations; pharmaceutical preparations in strip form; pharmaceutical preparations for veterinary use; acne creams [pharmaceutical preparations]; bismuth preparations for pharmaceutical purposes; hormone preparations for pharmaceutical use; pharmaceutical preparations for the prevention of allergies; pharmaceutical preparations for treating hypoglycemia; pharmaceutical preparations for the prevention of diabetes; pharmaceutical preparations for the treatment of epilepsy; pharmaceutical preparations for treating halitosis; pharmaceutical preparations for inhalers; pharmaceutical preparations for treating arthritis; pharmaceutical preparations for treating allergies; pharmaceutical preparations for treating diabetes; pharmaceutical preparations for the prevention of osteoporosis; pharmaceutical preparations for treating chloasma; pharmaceutical preparations for immunity adjustment; pharmaceutical preparations for inducing erections; pharmaceutical preparations for the treatment of osteoporosis; pharmaceutical preparations for the prevention of stretch marks; pharmaceutical preparations for dental use; pharmaceutical preparations for use in oncology; pharmaceutical preparations for treating asthma; potassium preparations for pharmaceutical purposes; pharmaceutical preparations for the treatment of gout; pharmaceutical preparations containing caffeine; pharmaceutical preparations for use in urology; preparations of lime for pharmaceutical purposes; pharmaceutical preparations for treating chemical imbalances; pharmaceutical preparations for treating epidermal problems; pharmaceutical preparations for use in dermatology; pharmaceutical preparations for the treatment of worms in pets; pharmaceutical preparations for peripheral nervous system; pharmaceutical preparations for the treatment of hormonal disorders; pharmaceutical products for the treatment of infectious diseases; pharmaceutical preparations for treating allergic rhinitis; pharmaceutical anti-allergic preparations and substances; pharmaceutical preparations for the prevention of autoimmune diseases; pharmaceutical preparations for the prevention of diseases caused by bacteria; pharmaceutical preparations for the treatment of diseases caused by bacteria; pharmaceutical preparations for the prevention of disorders of the immune system; pharmaceutical preparations for the prevention of disorders of the nervous system; pharmaceutical preparations for the prevention of diseases of the nervous system; pharmaceutical preparations for the treatment of disorders of the endocrine system; pharmaceutical preparations acting on the central nervous system; pharmaceutical preparations for ocular or intraocular surgery; pharmaceutical preparations for the treatment of hyper-cholesteremia; pharmaceutical preparations for the treatment of hyper-lipidemia; pharmaceutical preparations for hydrating the skin during pregnancy; pharmaceutical preparations and substances with antipyretic properties; pharmaceutical products and preparations for pregnancy blemishes; pharmaceutical products and preparations for chloasma; pharmaceutical products and preparations to prevent stretch marks; pharmaceutical preparations for treating the symptoms of radiation sickness; pharmaceutical preparations for treating hypertension; pharmaceutical preparations for inhalation for the treatment of pulmonary hypertension; pharmaceutical preparations for treating dry skin caused by pregnancy; pharmaceutical preparations for preventing skin blemishes during pregnancy; pharmaceutical preparations and substances for use in urology; pharmaceutical preparations and substances for use in gynecology; pharmaceutical preparations and substances for use in the field of anesthesia; pharmaceutical preparations for the treatment of diseases of the genitourinary system; inhaled pharmaceutical preparations for the treatment of respiratory diseases and disorders; pharmaceutical products and preparations for preventing skin blemishes during pregnancy; pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases; pharmaceutical preparations for the treatment of immune system related diseases and disorders; pharmaceutical products and preparations against dry skin caused by pregnancy; pharmaceutical preparations for the treatment of musculo-skeletal disorders; pharmaceutical preparations for the treatment of central nervous system [CNS] diseases; pharmaceutical products and preparations for hydrating the skin during pregnancy.

Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

Class 44: Pharmaceutical advice.

2. European Union trade mark application No 16 007 304 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 007 304 . The opposition is based on, inter alia, international trade mark registration No 850 298 ‘EWOPHARMA’ designating the European Union and Slovakia. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 850 298 designating the European Union and Slovakia.

a) The goods and services

The goods on which the opposition is based are the following:

Class 5: Pharmaceutical and veterinary products; sanitary products for medical purposes; dietetic substances for medical use, food for babies; plasters, materials for dressings.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, orthopedic articles.

The contested goods and services are the following:

Class 5: Pharmaceuticals; antibacterial pharmaceuticals; elixirs [pharmaceutical preparations]; chemico-pharmaceutical preparations; diuretic pharmaceutical preparations; ocular pharmaceuticals; effervescent analgesic pharmaceutical preparations; pharmaceutical preparations for animals; pharmaceutical preparations for skin care; pharmaceutical preparations for treating dandruff; pharmaceutical preparations for wounds; anti-epileptic pharmaceutical preparations; anti-diabetic pharmaceuticals; pharmaceutical preparations and substances; pharmaceutical cold preparations; pharmaceutical cough preparations; pharmaceutical preparations for the treatment of cancer; chemical preparations for pharmaceutical purposes; acne cleansers [pharmaceutical preparations]; tissue-regenerative pharmaceutical preparations; pharmaceutical preparations in strip form; pharmaceutical preparations for veterinary use; acne creams [pharmaceutical preparations]; bismuth preparations for pharmaceutical purposes; hormone preparations for pharmaceutical use; pharmaceutical preparations for the prevention of allergies; pharmaceutical preparations for treating hypoglycemia; pharmaceutical preparations for the prevention of diabetes; pharmaceutical preparations for the treatment of epilepsy; pharmaceutical preparations for treating halitosis; pharmaceutical preparations for inhalers; pharmaceutical preparations for treating arthritis; pharmaceutical preparations for treating allergies; pharmaceutical preparations for treating diabetes; pharmaceutical preparations for the prevention of osteoporosis; gelatin capsules for pharmaceuticals; pharmaceutical preparations for treating chloasma; pharmaceutical preparations for immunity adjustment; empty capsules for pharmaceuticals; pharmaceutical preparations for inducing erections; pharmaceutical preparations for the treatment of osteoporosis; pharmaceutical preparations for the prevention of stretch marks; pharmaceutical preparations for dental use; pharmaceutical preparations for use in oncology; pharmaceutical preparations for treating asthma; potassium preparations for pharmaceutical purposes; pharmaceutical preparations for the treatment of gout; pharmaceutical preparations containing caffeine; pharmaceutical preparations for use in urology; preparations of lime for pharmaceutical purposes; pharmaceutical preparations for treating chemical imbalances; pharmaceutical preparations for treating epidermal problems; pharmaceutical preparations for use in dermatology; pharmaceutical preparations for the treatment of worms in pets; pharmaceutical preparations for peripheral nervous system; pharmaceutical preparations for the treatment of hormonal disorders; pharmaceutical products for the treatment of infectious diseases; pharmaceutical preparations for treating allergic rhinitis; pharmaceutical antiallergic preparations and substances; pharmaceutical preparations for the prevention of autoimmune diseases; pharmaceutical preparations for the prevention of diseases caused by bacteria; pharmaceutical preparations for the treatment of diseases caused by bacteria; pharmaceutical preparations for the prevention of disorders of the immune system; pharmaceutical preparations for the prevention of disorders of the nervous system; pharmaceutical preparations for the prevention of diseases of the nervous system; pharmaceutical preparations for the treatment of disorders of the endocrine system; pharmaceutical preparations acting on the central nervous system; pharmaceutical preparations for ocular or intraocular surgery; pharmaceutical preparations for the treatment of hypercholesteremia; pharmaceutical preparations for the treatment of hyperlipidemia; pharmaceutical preparations for hydrating the skin during pregnancy; pharmaceutical preparations and substances with antipyretic properties; pharmaceutical products and preparations for pregnancy blemishes; pharmaceutical products and preparations for chloasma; pharmaceutical products and preparations to prevent stretch marks; pharmaceutical preparations for treating the symptoms of radiation sickness; pharmaceutical preparations for treating hypertension; pharmaceutical preparations for inhalation for the treatment of pulmonary hypertension; pharmaceutical preparations for treating dry skin caused by pregnancy; pharmaceutical preparations for preventing skin blemishes during pregnancy; pharmaceutical preparations and substances for use in urology; pharmaceutical preparations and substances for use in gynecology; pharmaceutical preparations and substances for use in the field of anesthesia; pharmaceutical preparations for the treatment of diseases of the genitourinary system; inhaled pharmaceutical preparations for the treatment of respiratory diseases and disorders; pharmaceutical products and preparations for preventing skin blemishes during pregnancy; pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases; pharmaceutical preparations for the treatment of immune system related diseases and disorders; pharmaceutical products and preparations against dry skin caused by pregnancy; pharmaceutical preparations for the treatment of musculo-skeletal disorders; pharmaceutical preparations for the treatment of central nervous system [CNS] diseases; pharmaceutical products and preparations for hydrating the skin during pregnancy.

Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

Class 44: Pharmaceutical advice.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 5

Pharmaceuticals are identically contained in both lists of goods (including synonyms).

The contested antibacterial pharmaceuticals; elixirs [pharmaceutical preparations]; chemico-pharmaceutical preparations; diuretic pharmaceutical preparations; ocular pharmaceuticals; effervescent analgesic pharmaceutical preparations; pharmaceutical preparations for skin care; pharmaceutical preparations for treating dandruff; pharmaceutical preparations for wounds; anti-epileptic pharmaceutical preparations; anti-diabetic pharmaceuticals; pharmaceutical preparations and substances; pharmaceutical cold preparations; pharmaceutical cough preparations; pharmaceutical preparations for the treatment of cancer; chemical preparations for pharmaceutical purposes; acne cleansers [pharmaceutical preparations]; tissue-regenerative pharmaceutical preparations; pharmaceutical preparations in strip form; acne creams [pharmaceutical preparations]; bismuth preparations for pharmaceutical purposes; hormone preparations for pharmaceutical use; pharmaceutical preparations for the prevention of allergies; pharmaceutical preparations for treating hypoglycemia; pharmaceutical preparations for the prevention of diabetes; pharmaceutical preparations for the treatment of epilepsy; pharmaceutical preparations for treating halitosis; pharmaceutical preparations for inhalers; pharmaceutical preparations for treating arthritis; pharmaceutical preparations for treating allergies; pharmaceutical preparations for treating diabetes; pharmaceutical preparations for the prevention of osteoporosis; pharmaceutical preparations for treating chloasma; pharmaceutical preparations for immunity adjustment; pharmaceutical preparations for inducing erections; pharmaceutical preparations for the treatment of osteoporosis; pharmaceutical preparations for the prevention of stretch marks; pharmaceutical preparations for dental use; pharmaceutical preparations for use in oncology; pharmaceutical preparations for treating asthma; potassium preparations for pharmaceutical purposes; pharmaceutical preparations for the treatment of gout; pharmaceutical preparations containing caffeine; pharmaceutical preparations for use in urology; preparations of lime for pharmaceutical purposes; pharmaceutical preparations for treating chemical imbalances; pharmaceutical preparations for treating epidermal problems; pharmaceutical preparations for use in dermatology; pharmaceutical preparations for peripheral nervous system; pharmaceutical preparations for the treatment of hormonal disorders; pharmaceutical products for the treatment of infectious diseases; pharmaceutical preparations for treating allergic rhinitis; pharmaceutical antiallergic preparations and substances; pharmaceutical preparations for the prevention of autoimmune diseases; pharmaceutical preparations for the prevention of diseases caused by bacteria; pharmaceutical preparations for the treatment of diseases caused by bacteria; pharmaceutical preparations for the prevention of disorders of the immune system; pharmaceutical preparations for the prevention of disorders of the nervous system; pharmaceutical preparations for the prevention of diseases of the nervous system; pharmaceutical preparations for the treatment of disorders of the endocrine system; pharmaceutical preparations acting on the central nervous system; pharmaceutical preparations for ocular or intraocular surgery; pharmaceutical preparations for the treatment of hypercholesteremia; pharmaceutical preparations for the treatment of hyperlipidemia; pharmaceutical preparations for hydrating the skin during pregnancy; pharmaceutical preparations and substances with antipyretic properties; pharmaceutical products and preparations for pregnancy blemishes; pharmaceutical products and preparations for chloasma; pharmaceutical products and preparations to prevent stretch marks; pharmaceutical preparations for treating the symptoms of radiation sickness; pharmaceutical preparations for treating hypertension; pharmaceutical preparations for inhalation for the treatment of pulmonary hypertension; pharmaceutical preparations for treating dry skin caused by pregnancy; pharmaceutical preparations for preventing skin blemishes during pregnancy; pharmaceutical preparations and substances for use in urology; pharmaceutical preparations and substances for use in gynecology; pharmaceutical preparations and substances for use in the field of anesthesia; pharmaceutical preparations for the treatment of diseases of the genitourinary system; inhaled pharmaceutical preparations for the treatment of respiratory diseases and disorders; pharmaceutical products and preparations for preventing skin blemishes during pregnancy; pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases; pharmaceutical preparations for the treatment of immune system related diseases and disorders; pharmaceutical products and preparations against dry skin caused by pregnancy; pharmaceutical preparations for the treatment of musculo-skeletal disorders; pharmaceutical preparations for the treatment of central nervous system [CNS] diseases; pharmaceutical products and preparations for hydrating the skin during pregnancy are identical to the opponent’s pharmaceutical products because the opponent’s goods include, or overlap with, the contested goods.

The contested pharmaceutical preparations for animals; pharmaceutical preparations for veterinary use; pharmaceutical preparations for the treatment of worms in pets are included in, or overlap with, the opponent’s broader category veterinary products. Therefore, they are identical.

As regards the contested gelatin capsules for pharmaceuticals; empty capsules for pharmaceuticals, it should be noted that capsules for medicines are designed to hold a certain dose of medicine (in the form of a powder or liquid). Although it could be claimed that the purpose of the contested goods, broadly speaking, is medical, the specific purpose of each of these items differs. None of the opponent’s goods in Classes 5 and 10 has the same purpose as the contested capsules. The producers, target public and distribution channels of the contested goods are also different from those of the opponent’s goods in Classes 5 and 10. Therefore, these goods are dissimilar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same reasoning applies to wholesale services.

Medical supplies are all items that are essential for treating illness or injury, such as bandages, disinfectants and cleaners.

It follows that the contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies are similar to a low degree to the opponent’s pharmaceutical and veterinary products; sanitary products for medical purposes.

Contested services in Class 44

The contested pharmaceutical advice is similar to a low degree to the opponent’s pharmaceutical products. Providing pharmaceutical information and advice involves informing individuals about medication. It may be performed by a doctor, nurse or pharmacist. Therefore, these goods and services have the same relevant public and distribution channels. Furthermore, they are complementary.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar (to various degrees) are directed at the public at large and healthcare professionals.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36, and the case-law cited therein). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health or that of their pets.

c) The signs

EWOPHARMA
Earlier trade mark	Contested sign

The relevant territory is the European Union and Slovakia.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Word marks are protected as such; the use of upper or lower case characters is irrelevant.

The earlier mark is a word mark, ‘EWOPHARMA’, while the contested sign is a figurative mark composed of the verbal element ‘evopharm’, in which ‘evo’ is written in dark-blue lower case letters and ‘pharm’ is written in pale-blue lower case letters. Above this is a figurative element depicting a heart in two shades of blue.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Consequently, while as a rule marks are perceived as a whole, the exception to this rule is that, under certain circumstances, consumers may break down marks into smaller parts. In the contested sign, the words ‘evo’ and ‘pharm’ are depicted in different shades of blue, which creates a de facto separation between them.

In the present case, the verbal elements of both signs are likely to be dissected by the public, since the words ‘pharma’ and ‘pharm’ are abbreviations of ‘pharmaceutical’ in English. Moreover, identical or similar words exist in other languages, such as ‘farma’ in Italian, Portuguese, Spanish and Slovak and ‘pharma’ in French. Therefore, the Opposition Division considers that the words ‘pharma’ and ‘pharm’ are meaningful for these parts of the public in the relevant territory.

It follows from the above that the words ‘pharma’ and ‘pharm’ are descriptive and non-distinctive for the relevant goods and services, since they refer to their nature and purpose.

The prefixes ‘EWO’ in the earlier sign and ‘evo’ in the contested sign are meaningless in relation to the goods and services in question. Therefore, they are distinctive to an average degree.

The figurative element depicting a heart and the use of different shades of blue in the contested sign do not convey any meaning in relation to the relevant goods and services. They are thus distinctive. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Neither of the marks has any element that is more dominant (eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘E*OPHARM*’ which are identically contained in both marks and placed in the same order in the signs. They differ in their second letters, ‘W’ versus ‘V’, and in the additional letter ‘A’ in the earlier mark, which has no counterpart in the contested mark. The signs also differ in the graphical depiction of the contested sign (including its figurative element).

Taking into account, on the one hand, that the differing letters are placed in the middle and at the end of the long sequence of letters that the signs have in common, and, on the other hand, the fact that the verbal components of a sign usually have a stronger impact on the consumer than any figurative components, the differences between the signs have only a minor impact on the comparison.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘E*OPHARM*’ and differs in the signs’ second letters, ‘W’ versus ‘V’, and in the additional, final, vowel ‘A’ in the earlier mark.

Considering the positions of the differing letters, the signs are aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the words ‘pharma’ and ‘pharm’ will be associated with the same meaning, as explained above. The signs differ in the figurative element depicting a heart in the contested sign, although this element has less impact than the verbal element in the contested mark. Therefore, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In this regard, it must be remembered, however, that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The goods and services are partly identical and similar to various degrees and partly dissimilar. The degree of attention of the relevant public is high and the distinctiveness of the earlier mark is normal.

The signs are visually and conceptually similar to an average degree and aurally highly similar, since they coincide in seven letters out of eight and nine and differ in the depiction of the contested sign, including its figurative element, which has less impact than the verbal element, as detailed in section b) of this decision. Consequently, these differences are insufficient to counteract the visual, aural and conceptual similarities between the signs and to allow the consumers to safely distinguish between the signs, even when their degree of attention is enhanced, contrary to the applicant’s argument.

In its observations, the applicant argues that it has used the mark ‘Evopharm’ since 2010 and that it has coexisted in the market with the opponent’s earlier marks ‘Ewopharma’.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant also argues that it has an ‘unregistered right’ to the name ‘evopharm’, which it has used since 2010, and that it has the right to use it and protect it.

However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 850 298.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark, including insofar as the services that are similar to a low degree are concerned considering the high degree of aural similarity between the signs.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on international trade mark registration No 604 319 designating Slovakia, which covers the same goods in Class 5 as the other mark invoked.

It follows that the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

Julie, Marie-Charlotte HAMEL

Ferenc GAZDA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.