OPPOSITION No B 2 876 822

Italfarmaco, S.A., Calle San Rafael, 3, Poligono Industrial Alcobendas, 28108 Alcobendas (Madrid), Spain (opponent), represented by Isern Patentes y Marcas, S.L., Paseo de la Castellana, 115 - 1º Dcha., 28046 Madrid, Spain (professional representative)

a g a i n s t

Lifes 2 Good Limited, Unit 7, Racecourse Business Park, Ballybrit, Galway Galway, Ireland (applicant), represented by F.F. Gorman & Co., 15 Clanwilliam Square, Dublin 2, Ireland (professional representative).

On 07/03/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 876 822 is upheld for all the contested goods, namely:

Class 5: Pharmaceutical preparations, substances and articles; medical preparations and articles; hygienic preparations and articles; medical, pharmaceutical and homeopathic products, namely, creams, lotions, tablets, powders and syrups; pharmaceutical creams, gels and lotions; medicated creams, gels and lotions; medicated creams, gels and lotions for the skin, body, face, head, hand and feet; pharmaceutical moisturising creams, gels and lotions; medical therapeutic creams, gels and lotions; medicated creams, gels and lotions for treating dermatological conditions; herbal creams, gels and lotions for medical use; food supplements; health food supplements; food and health food supplements prepared from natural ingredients; mineral food supplements; dietetic nutritional supplements; food and health food supplements in solid, capsules, liquid, powder and tablet form; mineral food supplements in solid, capsules, liquid, powder and tablet form; dietetic nutritional supplements in solid, capsules, liquid, powder and tablet form; pharmaceutical preparations and substances in solid, capsules, liquid, powder and tablet form; dietetic food supplements adapted for medical purposes; medicinal food supplements for nutritional purposes and medicated food supplements; medicinal substances and related products for defence and protection of health; nutritional additives for medical purposes; dietetic substances; serums.

2. European Union trade mark application No 16 187 312 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. 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 some of the goods of European Union trade mark application No 16 187 312 ‘SUSANEA’ (word mark), namely against all the goods in Class 5. The opposition is based on Spanish trade mark registration No 3 589 910 ‘SUZANNE’ (word mark). 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.

1. The goods

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

Class 5: Sanitary and hygienic products for medical use; dietetic foodstuffs and substances for medical use; food supplements for humans.

The contested goods are the following:

Class 5: Pharmaceutical preparations, substances and articles; medical preparations and articles; hygienic preparations and articles; medical, pharmaceutical and homeopathic products, namely, creams, lotions, tablets, powders and syrups; pharmaceutical creams, gels and lotions; medicated creams, gels and lotions; medicated creams, gels and lotions for the skin, body, face, head, hand and feet; pharmaceutical moisturising creams, gels and lotions; medical therapeutic creams, gels and lotions; medicated creams, gels and lotions for treating dermatological conditions; herbal creams, gels and lotions for medical use; food supplements; health food supplements; food and health food supplements prepared from natural ingredients; mineral food supplements; dietetic nutritional supplements; food and health food supplements in solid, capsules, liquid, powder and tablet form; mineral food supplements in solid, capsules, liquid, powder and tablet form; dietetic nutritional supplements in solid, capsules, liquid, powder and tablet form; pharmaceutical preparations and substances in solid, capsules, liquid, powder and tablet form; dietetic food supplements adapted for medical purposes; medicinal food supplements for nutritional purposes and medicated food supplements; medicinal substances and related products for defence and protection of health; nutritional additives for medical purposes; dietetic substances; serums.

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.

The contested hygienic preparations and articles include, as a broader category, or overlap with, the opponent’s sanitary and hygienic products for medical use, also keeping in mind that it is impossible to draw a clear line between the terms ‘hygienic’ and ‘sanitary’. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested food supplements; health food supplements; food and health food supplements prepared from natural ingredients; mineral food supplements; dietetic nutritional supplements; food and health food supplements in solid, capsules, liquid, powder and tablet form; mineral food supplements in solid, capsules, liquid, powder and tablet form; dietetic nutritional supplements in solid, capsules, liquid, powder and tablet form; dietetic food supplements adapted for medical purposes; medicinal food supplements for nutritional purposes and medicated food supplements; nutritional additives for medical purposes are included in the broader category of, or overlap with, the opponent’s dietetic substances for medical use. Therefore, they are identical.

The contested dietetic substances include, as a broader category, the opponent’s dietetic substances for medical use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pharmaceutical preparations, substances and articles; medical preparations and articles; medical, pharmaceutical and homeopathic products, namely, creams, lotions, tablets, powders and syrups; pharmaceutical creams, gels and lotions; medicated creams, gels and lotions; medicated creams, gels and lotions for the skin, body, face, head, hand and feet; pharmaceutical moisturising creams, gels and lotions; medical therapeutic creams, gels and lotions; medicated creams, gels and lotions for treating dermatological conditions; herbal creams, gels and lotions for medical use; pharmaceutical preparations and substances in solid, capsules, liquid, powder and tablet form; medicinal substances and related products for defence and protection of health; serums have the same purpose as the opponent’s sanitary and hygienic products for medical use, as these goods are used for treating an illness or other health condition such as in post-surgery care, whether at home or in hospital. These goods are directed at the same public, composed of patients, care-takers, doctors, nurses and other professionals, including the procurement staff, in health-care institutions. These goods are commonly manufactured by the same undertakings in the pharmaceutical/medical industry, and are sold through the same commercial channels, such as pharmacies and wholesale suppliers of medical preparations and articles. They are similar to a high degree.

2. 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 found to be identical or highly similar are directed at the public at large and at professionals, or business customers, with expertise in the health-care field.

As regards the relevant public’s degree of attention, it varies from average to relatively high, depending on the specialised nature of the goods, the frequency of purchase and their price.

In particular, it is apparent from the case-law that, insofar as pharmaceutical/medical 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 cited case-law). Medical professionals have a higher degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals/medicines are sold without prescription, as these goods affect their state of health.

Since dietetic substances are intended for improving one’s health and general well-being, and can affect one’s physical condition, it is considered that the public’s degree of attention in relation to these purchases also is relatively high.

However, the degree of attention will not be enhanced, and is considered to be average, insofar as purchases of sanitary and hygienic products are concerned.

3. The signs

SUZANNE	SUSANEA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Being word marks, neither of the signs under comparison have any dominant element by definition.

The relevant public will perceive the earlier mark as a female given name. This perception will occur on account of the substantial phonetic similarities between the word ‘Suzanne’ and its Spanish equivalent, ‘Susana’.

Given that the contested sign’s ‘Susanea’ differs from the abovementioned Spanish name in one letter only, it can be fairly assumed that the public will perceive the contested sign as a female given name, too. Moreover, the Opposition Division accepts the opponent’s argument that the signs at issue can be considered as foreign variants of the same female name.

Being an arbitrary term in relation to the goods at issue, the sole component of each of the signs has an average degree of inherent distinctiveness.

It follows that, conceptually, the signs are similar to a high degree.

Visually, the signs coincide in the letters ‘SU*AN*E*’. The differences between the signs result from the third letter in the earlier mark being a ‘Z’, whereas in the contested sign an ‘S’ appears in this position. The signs also differ in the double ‘N’ appearing towards the end of the earlier mark, as opposed to the single ‘N’ in the contested sign, and the fact that the earlier mark ends with an ‘E’, whilst the last letter of the contested sign is an ‘A’.

Although the fact that the signs have the same length contributes to their visual similarity (seven letters in each sign), it is far more important that the abovementioned five letters that the signs have in common appear in the same order. The coinciding letter sequence produces similar overall impressions, notwithstanding the differences that are scattered across the words.

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

Aurally, since the double ‘N’ in the earlier mark will be enunciated in the same manner as the single ‘N’ in the contested sign, the signs coincide in the sound of the letters ‘SU*AN(N)E*’.

The third letters in the signs, ‘Z’ and ‘S’, will both be pronounced as voiceless fricatives, thus this does not create a major point of aural difference, even though there are certain audible nuances in the respective phonemes. However, the signs do differ in their endings, since the last letter of the contested sign, ‘A’, will be pronounced as a separate vowel, thus forming an additional syllable vis-à-vis the earlier mark’s phonetic structure.

In view of the above, and taking into account the substantial impact of the coinciding sound sequence and especially the highly similar beginnings of the signs, it is considered that the signs are aurally 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.

4. 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 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.

5. Global assessment, other arguments and conclusion

The contested goods are identical or highly similar to the opponent’s goods. They target both the general public and specialists in the health-care field, and the relevant public’s degree of attention varies from average to relatively high. The signs are similar to an average degree from the visual and aural perspectives. On a conceptual level, the similarity is even stronger. The earlier mark is endowed with an average degree of inherent distinctiveness which affords it a normal scope of protection.

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 view of the above factors, it is concluded that the differences identified between the signs are insufficient for counteracting the similarities. Being confined to aspects that are not readily memorable when encountering the conflicting signs, the differences do not enable the consumers, whether the public at large or professionals, to safely distinguish between the signs in connection with identical or highly similar goods, including where the degree of the public’s attention is enhanced. 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 589 910.

It follows that the contested trade mark must be rejected for all the contested 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.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Michele M. BENEDETTI-ALOISI

Solveiga BIEZA

Angela DI BLASIO

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.