OPPOSITION No B 2 872 441

ViiV Healthcare Company, Corporation Service Company, 251 Little Falls Drive, Wilmington, Delaware 19808, United States of America (opponent), represented by GlaxoSmithKline Services Unlimited, Joanne B. Green, Legal: Global Trade Marks, 980 Great West Road, Brentford, Middlesex TW8 9GS, United Kingdom (employee representative)

a g a i n s t

Cipla Limited, Cipla House, Peninsula Business Park, Ganpatrao Kadam Marg, Lower Parel, Mumbai Maharashtra 400 013, India (applicant), represented by Pons Patentes y Marcas Internacional S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 10/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 872 441 is partially upheld, namely for the following contested goods:

Class 5: Pharmaceutical preparations and/or substances; medicines for human purposes; preparations for destroying vermin; fungicides.

2. European Union trade mark application No 16 232 605 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 232 605 ‘TENVIR EM’, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 2 234 789 ‘TELZIR’. The opponent invoked Article 8(1)(b) EUTMR.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by means of a separate document, as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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: Pharmaceutical preparations and substances.

The contested goods are the following:

Class 5: Pharmaceutical preparations and/or substances; medicines for human purposes; preparations for destroying vermin; fungicides; herbicides.

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 pharmaceutical preparations and/or substances are identically contained in both lists of goods.

The opponent’s pharmaceutical preparations and substances include, as a broad category, the contested medicines for human purposes. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested preparations for destroying vermin; fungicides are chemical substances aimed at destroying parasitic insects or harmful organisms to assure the healthy existence of human beings. Unlike herbicides, preparations for destroying vermin and fungicides cover a large spectrum of goods, which is not restricted to goods intended for the protection of plants. Therefore, they have the same general medical purpose that of improving humans’ health or well-being, as the opponent’s pharmaceutical preparations and substances, which are specialised medicines designed to inhibit the activity of retroviruses. They may also have the same distribution channels (e.g. pharmacies) and they are complementary. Therefore, they are at least similar to a low degree.

The contested herbicides refer to substances designed to protect the environment, and, in particular, to protect crops against undesirable plants. Therefore, the objective of these goods is entirely different from the objective of the opponent’s goods, which is to protect human health. It is well known that the active substances they contain are not generally related to those used in pharmaceutical products. Their distribution channels are also different. Finally, with regard to their intended purpose and nature, they are not in competition with or complementary to pharmaceutical products. Therefore, they must be considered dissimilar to the opponent’s pharmaceutical preparations and substances.

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.

The goods found to be identical or similar to a low degree are pharmaceutical preparations, medicines and preparations for destroying vermin. Therefore, they can be directed at health professionals as well as at the public at large.

As regards these goods, it is likely that the public will display a relatively high degree of attention when purchasing them, given that they may, to a lesser or greater extent, affect their state of health. In particular, it is apparent from case-law that, so far as pharmaceutical preparations and medicines are concerned, the relevant public’s degree of attention is considered high, whether or not they are issued on prescription (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 quoted case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also show a higher than average degree of attention, regardless of whether the pharmaceuticals are sold with or without prescription.

3. The signs

TELZIR	TENVIR EM
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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).

The earlier sign is the six-letter word ‘TELZIR’. Since it is meaningless, it is distinctive. The contested sign is composed of the six-letter word ‘TENVIR’ followed by the two letters ‘EM’. As it has no meaning for the relevant public, it is also distinctive.

Visually, the signs coincide in their identical beginnings, ‘TE’, and in the letters ‘IR’. However, they differ in their third and fourth letters, ‘LZ’ in the earlier trade mark and ‘NV’ in the contested trade mark, and in the letters ‘EM’ at the end of the contested sign, which have no counterpart in the earlier trade mark.

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

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘TE’ and ‘IR’. However, they differ in the sounds of their third and fourth letters, ‘LZ’ in the earlier trade mark and ‘NV’ in the contested trade mark, and in the sound of the letters ‘EM. Regardless of the differences, the earlier mark and the first element of the contested sign have the same rhythm and intonation, especially because they both consist of two syllables, ‘TEL-ZIR’ and ‘TEN-VIR’.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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 the present case, the contested goods are partly identical, partly similar to a low degree and partly dissimilar.

The signs are visually and aurally similar to an average degree to the extent that they coincide in four letters out of six in the earlier mark as a whole and in the first independent element of the contested mark. As a result, the earlier mark has the same beginning and ending as the first element, ‘TELVIR’, of the contested mark.

For word marks, the visual comparison is based in particular on an analysis of the number and sequence of the letters, the position of the coinciding letters, the number of words and the structure of the signs. Since neither of the signs has a meaning, the conceptual aspect does not influence the assessment of the similarity of the signs. As the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details, small differences in the letters are often not sufficient to exclude a finding of visual similarity, particularly when the signs have the same structure. Therefore, what matters in the assessment of the visual similarity between two word marks is the presence, in each of them, of several letters in the same order, which is the case in the trade marks at issue.

Although the signs differ in their third and fourth letters, ‘LZ’ in the earlier trade mark and ‘NV’ in the contested trade mark, these differences are in the middle of the signs, an area where consumers generally tend to focus less when encountering a trade mark. Furthermore, the differences in these two letters, as well as the difference in the last element of the contested mark, ‘EM’, do not, by themselves, introduce sufficient differences into the signs, as they do not greatly alter the visual or aural comparison between the signs in a way that could assist the public in distinguishing between them. As mentioned above, the public will also pay less attention to the element ‘EM’, as it is at the end of the contested sign.

Moreover, although the degree of attention is deemed high for professionals as well as the general public, a heightened degree of attention in the case of specialised goods does not automatically lead to a finding of no likelihood of confusion. All other factors have to be taken into account. In the present case, the overall similarity of the marks and the identity or low degree of similarity between the goods create a strong likelihood of confusion, which cannot be prevented by the heightened attention of the relevant public.

On these grounds, it is established that the relevant public may be confused as to the commercial origin of the goods.

Finally, the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, since the commonalities between the signs under comparison in those cases are limited to the weak elements, such as ‘MEDI-’, ‘DERMO-’, ‘CAN-’, ‘OPTIMA’ and ‘COLI’, rendering them, therefore, not similar.

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 European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Erkki MUNTER

Cristina CRESPO MOLTÓ

Cynthia DEN DEKKER

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.