OPPOSITION No B 2 872 136

Cruzeiro Exim S.R.L., Alexandriei, 145A, 077025 Bragadiru, Romania (opponent),

a g a i n s t

pharmedix GmbH, Randstraße 5, 22525 Hamburg, Germany (applicant), represented by Ebner Stolz Mönning Bachem, Ludwig-Erhard-Straße 1, 20459 Hamburg, Germany (professional representative).

On 19/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 872 136 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 456 014 for the word mark ‘ORTHOCOMPLEX’. The opposition is based on Romanian trade mark registration No M2010/05354 for the word mark ‘OSTEOCOMPLEX’. The opponent invoked Article 8(1)(b) EUTMR.

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 requested that the opponent shall submit proof of use of Romanian trade mark registration No M2010/05354 for the word mark ‘OSTEOCOMPLEX’.

The priority date of the contested application is 19/09/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Romania from 18/09/2011 to 19/09/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5: Pharmaceutical, veterinary and hygienic products; food supplements and plant-based products for treating osteoporosis.

The list of goods above referred differs from the one reflected in the opposition notice (which only includes pharmaceuticals), since the opponent by means of its observations and supporting documents, submitted within the opposition period, has shown that the earlier trade mark has actually been registered as well for additional goods in Class 5 as displayed above.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 22/09/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 12/11/2017 to submit evidence of use of the earlier trade mark.

On 15/06/2017 and 29/09/2017 respectively, both within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex 1: a colour copy consisting of eight (8) pages of the product sample (OSTEOCOMPLEX) reflecting the following information: inner foldable packaging form with relevant data, packaging colour (a combination of white and purple), name of the product that corresponds with the earlier mark, ingredients and package insert (‘prospect’) recommending daily intakes and other information.

• Annex 2: six (6) invoices issued in Romanian (translated) by the opponent containing the sign OSTEOCOMPLEX with regard to food supplements (product references accompanied) and addressed to the clients Nutra Pharma Trading SRL and SC Laropharm SRL. It should be noted that in the two (2) first original invoices the company SC Laropharm SRL is translated as Nutra Pharma Trading SRL, but the identification data of both undertakings, such as the tax code numbers, are different and do not seem to correspond to the same company. Only four (4) of them were issued by the opponent between 22/12/2011 and 29/08/2014 (i.e. within the relevant period). The other two (2) invoices do not fall within the relevant period as they were issued on 23/05/2011; however they show that the sign was already in use with regard to food supplements since the first half of 2011. Lastly, according to the numbers contemplated in the invoices, the commercial sales volume reflected therein within the relevant period amounts to ca. 91.700 RON (equivalent to ca. 19.700 EUR), and outside the relevant period amounts to ca. 77.600 RON (equivalent to ca. 16.650 EUR).

• Annex 3: one (1) conformity certificate and one (1) analysis report, both issued in Romanian (non-translated) by the manufacturer (Laropharm) on 25/08/2014 (i.e. within the relevant period) containing the following information: supplement name (OSTEOCOMPLEX), product packaging form: tablets, serial number, manufacture date, expiry date and authorization number.

• Annex 4: one (1) notification issued in Romanian (non-translated) by the Romanian Health Ministry on 05/09/2016 (i.e. within the relevant period) containing the following information: product name (OSTEOCOMPLEX), product packaging form: tablets, type: food supplement, authorization number, name of the manufacturer (SC Laropharm SRL) and name of the legal person responsible for placing the product in the market (the opponent).

• Annex 5: one (1) extract in Romanian (non-translated) from the Romanian Health Ministry Website printed on 14/09/2017 (i.e. outside the relevant period) indicating the following information: market authorization dates (12/10/2010, 02/12/2013, 05/09/2015 –two of the dates fall within the relevant period) of the product OSTEOCOMPLEX, name of the manufacturer (SC Laropharm SRL) and name of the legal person responsible for placing the product in the market (the opponent).

• Annex 6: five (5) page extract in Romanian (non-translated) from the online shop Mundo Verde series printed on 14/09/2017 (i.e. outside the relevant period) indicating the following information: the food supplement has been used under the sign OSTEOCOMPLEX for online selling purposes in accordance with the details of the product sample provided: outer and inner form packaging, colour (white and purple), tablets disposal, and package insert recommending daily intakes and other information.

• Annex 7: list of active and inert ingredients of the OSTEOCOMPLEX food supplement in English, detailing the qualitative and quantitative composition and dated on 17/08/2016 (i.e. within the relevant period). No place can be determined, except that the aforesaid list is accompanied by a second page containing an image of the product OSTEOCOMPLEX in Romanian (non-translated), and, therefore, it can be assumed that the list was obtained in Romania although is written in English. This document shows the connection of the sign OSTEOCOMPLEX with products of Class 5 of the Nice Classification. However, it should be noted that such linkage is only proven with regard to food supplements for treating osteoporosis. The ingredients of the opponent food supplement are neither pharmaceutical nor plant-based products. Therefore, no association with registered pharmaceutical, veterinary and hygienic products; plant-based products for treating osteoporosis in Class 5 is demonstrated.

• Annex 8: seven (7) page article in Romanian (non-translated) from the newspaper Ziua from Constanta, that reads ‘Mundo Verde - gama ta expert în suplimente alimentare’ and was published on 18/05/2011 (i.e. outside the relevant period - although the extract was printed on 15/09/2017). The content of this article seems to relate to the presentation among doctors at the Medical Forum held in Bucharest of dietary supplements, such as, OSTEOCOMPLEX where even its selling price is displayed. This document shows that the food supplement OSTEOCOMPLEX was in use in 2011 in Romania.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145 and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The evidence which the opponent submitted is not very exhaustive, and it includes only indications of use with regard to food supplements. There is no relevant information regarding the use for the remaining goods. Consequently, since the earlier mark is protected for food supplements for treating osteoporosis in Class 5, the use could have been accepted at most for these goods. Without determining whether the use has indeed been proven for these goods on the basis of the materials listed above, the Opposition Division will assume it, as this is the best case scenario for the opponent in these circumstances. It is in line with the description of the product in the observations of the opponent, where it is mentioned that the product is ‘a combination of calcium and vitamins, which ensure the health of the bone system’. Moreover, in the list of ingredients it is clearly stated that OSTEOCOMPLEX is a food supplement. This data clearly indicates that the relevant goods are food supplements. As mentioned above, the ingredients of the opponent’s food supplement are neither pharmaceutical nor plant-based products. Therefore, there is no evidence indicating the use of the earlier mark for pharmaceutical, veterinary and hygienic products; plant-based products for treating osteoporosis in Class 5. Since the food supplements for treating osteoporosis can be both medicated and non-medicated, and the goods as presented by the opponent are non-medicated the Opposition Division will consider this subcategory within the opponent’s goods.

Therefore, the Opposition Division assumes that the use is proven and, therefore, will only consider food supplements for treating osteoporosis (non-medicated) in Class 5 in its further examination of the opposition.

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 and services

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

Class 5: food supplements for treating osteoporosis (non-medicated).

The contested goods and services are the following:

Class 3: Cosmetics and cosmetic preparations; Cosmetics.

Class 5: Pharmaceutical preparations; Pharmaceutical drugs; Nutritional supplements.

Class 35: Online retail store services relating to cosmetic and beauty products; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 3

The contested cosmetics and cosmetic preparations; cosmetics are dissimilar to the opponent’s food supplements for treating osteoporosis (non-medicated). They differ in nature. Certainly, they do not coincide in the purpose (the opponent’s goods supplement nutritional deficiencies that will have a positive effect to prevent or treat osteoporosis) and, therefore, they do not target the same consumers. Moreover, they do not use the same commercial channels and are not manufactured by the same companies. They are neither in competition, nor are they complementary.

Contested goods in Class 5

The contested nutritional supplements include, as a broader category, the opponent’s food supplements for treating osteoporosis (non-medicated). 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 opponent’s food supplements for treating osteoporosis (non-medicated) are similar to the contested pharmaceutical preparations; pharmaceutical drugs. The goods have a similar purpose of improving health, and may be found in the same channels of distribution. They also target the same consumers.

Contested goods in Class 35

The contested online retail store services relating to cosmetic and beauty products; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies are dissimilar to the opponent’s food supplements for treating osteoporosis (non-medicated). In principle, goods are not similar to services. Moreover, the contested retail services relating to the sale of particular goods (i.e. cosmetic and beauty products; pharmaceutical, veterinary and sanitary preparations and medical supplies) and other goods, such as those from the opponent (i.e. food supplements for treating osteoporosis - non medicated -), are not similar. Apart from being different in nature (i.e. services are intangible whereas goods are tangible), they serve different needs. Furthermore, the method of use of the opponent’s goods and the contested services are different. Lastly, they are neither in competition with, nor necessarily complementary to, each other.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are clearly not identical (cosmetic and beauty products; pharmaceutical, veterinary and sanitary preparations and medical supplies v. food supplements for treating osteoporosis (non-medicated).

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 similar are directed at the public at large and at professional customers with specific qualified knowledge or expertise.

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 cited case-law).

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. The same applies to food supplements and nutritional supplements, as these goods also affect the state of their health.

Consequently the relevant public’s level of attention is considered to be relatively high.

3. The signs

OSTEOCOMPLEX	ORTHOCOMPLEX
Earlier trade mark	Contested sign

The relevant territory is Romania.

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).

It must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, 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).

Both signs are word marks consisting each of one word.

The words ‘OSTEOCOMPLEX’ and ‘ORTHOCOMPLEX’, considered as such, have no clear univocal meaning for the relevant public. However, considering the aforementioned principle, it is highly likely that the relevant Romanian-speaking public will perceive these elements of the signs as the conjunction of the words
(i) ‘OSTEO’ and ‘COMPLEX’, and (ii) ‘ORTHO’ and ‘COMPLEX’, because they are words known to them.

The term ‘COMPLEX’, conforming the second part of both signs, will be perceived as one of the most common expressions used in the relevant market (i.e. pharmaceutical and dietary supplements) as part of the label of numerous products to refer to ‘a set or union of two or more components that constitute a unit, e.g. vitamin complex’, or as claimed by the opponent, ‘made up of several elements’.

COMPLEX: ‘Format din mai multe părți sau elemente’ (information extracted from Dexonline Dictionary on 15/06/2018 at https://dexonline.ro/definitie/
complex)

COMPLEX: ‘Complex’ (translation extracted from Reverso Dictionary on 15/06/2018 at http://www.reverso.net/translationresults.aspx?lang=ES&
direction=rumano-ingles)

Following the semantic meaning of the above defined element and bearing in mind that the relevant goods in Class 5 may consist of units conformed by the union of two or more components, the term COMPLEX is non-distinctive in relation to said goods, as it directly indicates their kind and mode of composition and structure.

The prefix ‘OSTEO’, contained in the earlier mark, derives from the Greek word osteon and will be perceived by the relevant public as indicating ‘bone or bones’.

The aforesaid meaning is supported with the dictionary definition and corresponding translation listed below:

OSTEO: ‘Os, osos’ (information extracted from the Romanian dictionary Dexonline Dictionary on 15/06/2018 at https://dexonline.ro/definitie/osteo)

OS: ‘Bone, bony, skeletal’ (translation from Romanian to English extracted from Reverso Dictionary on 15/06/2018 at http://www.reverso.net/translationresults.aspx?lang=ES&direction=
rumano -ingles)

Considering that the relevant goods in Class 5 may be intended to treat osteoporosis, this term is non-distinctive in relation to said goods, as it directly indicates their kind and purpose. Moreover, the position of ‘OSTEO’ at the initial part of the earlier mark stresses the said descriptive character, as it is likely to be the element to which the relevant consumers afford the most trade mark significance in the signs

The term ‘ORTHO’ will be understood by the relevant public because of its closeness to the Romanian word ‘ORTO’. It should be noted that a misspelling of one additional ‘H’ does not necessarily change the descriptive character of a sign. Consumes will, without further mental steps, understand the word ‘ORTHO’ as the term ‘ORTO’. Such a misspelling is not fanciful and/or striking or changes the meaning of the word.

The prefix ‘ORTHO’, contained in the contested mark, is regarded by the opponent in its observations letter as a term that under the conceptual aspect, it derives from the first part of the German word ‘OTHOPÄDIE’, i.e. a branch of medicine which deals with the study and treatment of deformations of the bones and joints of the body, and, therefore, it creates confusion in the mind of the ordinary consumer and transmits the idea of ‘bone product’. Notwithstanding, the Opposition Division respectfully disagrees with such a statement on the grounds that (i) the Romanian speaking public does not understand German words, and moreover (ii) the prefix ‘ORTHO’, which stems from the Greek word orthos, will be contrariwise perceived as meaning only ‘straight, upright or correct’. ‘Orthopädie’/‘Orthopaedy’ is certainly a word composed with the term ‘ORTHO’, but it is one of the multiple compound terms that can relate to such a word. See for example ‘Orthodontics’ (the branch of dentistry concerned with preventing or correcting irregularities of the teeth) or ‘Orthography’ (spelling considered to be correct). From the aforementioned definition and examples, the Opposition Division concludes that the common element among all compound terms using the prefix ‘ORTHO’ it is that of uprightness or correctness, applied either to the spine and joints, teeth irregularities or spelling.

In analogy, the previous argument is furthermore supported by the recent decision of the Fifth Board of Appeal, Case R1524/2017-5, of 18 May 2018, § 31 and 37, where although the goods for which protection was sought were those in Class 10 and in the current case scenario the term is not regarded as non-distinctive with regard to the goods in Class 5 but at most allusive, the BoA stated that:

‘the relevant professional public throughout the European Union will understand the element ‘ORTHO’ as a meaningful element, namely as a prefix used to form words:’… chiefly scientific or technical, with the sense ‘straight, rectangular, upright, perpendicular’, or sometimes ‘right, correct, proper’’ (…) the ancient Greek etymology thereof which is also prevalent in that sector, resulting in that prefix also existing in French and Dutch with the same conceptual content. In addition, the similar prefix ‘ORTO’, with the same conceptual content, exists in such diverse languages as, for example, Croatian, Czech, Danish, Estonian, Finish, Hungarian, Italian, Polish, Portuguese, Slovak, Slovenian, Spanish and German’.

In the same line of thought, the aforesaid meaning (‘straight, upright or correct’) of the term ‘ORTHO’ is also found in the Romanian language, and is supported with the dictionary definitions and corresponding translations listed below:

ORTO: ‘Element de compunere care înseamnă „drept”, „conform cu”, „corect” și care servește la formarea unor substantive și a unor adjective. Din fr. ortho-’ (information extracted from the Romanian dictionary Dexonline Dictionary on 15/06/2018 at https://dexonline.ro/definitie/orto)

ORTO: ‘Ortho’ (translation from Romanian to English extracted from Reverso Dictionary on 15/06/2018 at http://www.reverso.net/
translationresults.aspx?lang=ES&direction=rumano-ingles)

ORTHO: ‘Straight, upright or correct’’ (information extracted from the English dictionary Collins Dictionary on 15/06/2018 at https://www.collinsdictionary.com/dictionary/english/ortho)

The verbal element ‘ORTHO’ has no direct references to the goods at issue as its meaning (‘straight, upright or correct’) is not immediately perceived by the relevant public as providing information as regards certain characteristics of food supplements for treating osteoporosis (non-medicated). At most, it could only be regarded as suggestive or allusive. Therefore, the word ‘ORTHO’ is at most distinctive below an average degree in relation to said goods.

In the view of the non-distinctive character of both elements conforming the earlier mark ‘COMPLEX’ and ‘OSTEO’, neither of the elements is found to be more distinctive within the said sign. Whereas in the contested mark, the element ‘COMPLEX’ is regarded as non-distinctive, but the term ‘ORTHO’ has at most below average distinctiveness, being this latter element the most distinctive within the signs.

As word marks the signs have no dominant (visually eye-catching) elements.

Visually, both signs consist of 12 letters and are construed in the same way (prefixes ‘OSTEO’ / ‘ORTHO’ with identical final elements ‘COMPLEX’ / ‘COMPLEX’), albeit the latter element is non-distinctive therefore has a very limited impact in the comparison. In the initial part the signs overlap in the sequence O-T-O, and differ in the second the fifth elements S/R and E/H. These differences have however impact on the perception of the signs, because in the earlier signs there is a combination of ‘EO’ which has no counterpart in the other sign, and in the contested sign there is a combination of ‘RTH’ which is not present in the other sign.

Therefore, the signs are similar below an average degree.

Aurally, the pronunciation of the first part of the signs only coincides in the letters ‘O’, ‘T’ and ‘O’ whereas the pronunciation of the second part of the signs identically coincides in the non-distinctive syllable ‘COMPLEX’. The pronunciation differs in the first part of both signs, particularly in the sound of the letters ‘S’ and ‘E’ (this vowel when pronounced within the sign is clearly accentuated and marks a clear variance), which have no counterpart in the contested sign. It is precisely the differing phonetic elements at the beginning of both signs, which make the initial components ‘OSTEO’ and ‘ORTHO’ important under the phonetic perspective.

Therefore, due to the evident divergences in the pronunciation of the vowels ‘EO’ and the consonants ‘RTH’, which clearly mark a difference among the signs, these latter are found to be similar below an average degree.

Conceptually, based on the analysis carried out in this section, the signs are dissimilar because they overlap in a non-distinctive element (‘COMPLEX’) and the differentiating elements (‘OSTEO’ / ‘ORTHO’) convey divergent concepts due to their semantic differences. Therefore, the overlap has no impact.

As the signs coincide 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 as a whole will rest on its distinctiveness per se. It must be noted that the expression ‘OSTEOCOMPLEX’ of the earlier mark under comparison consists in the conjunction of two non-distinctive elements and, in consequence, the degree of distinctiveness lies in the combination of both terms as a whole, which from an overall perspective entails a weakly distinctive character. Moreover, it should be born in mind that earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. In other words, when dealing with the distinctiveness of the earlier mark as a whole, the latter should always be considered to have at least a minimum degree of inherent distinctiveness. The Court made it clear, in its judgment of 24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’.

Considering the aforesaid reasoning and what has been stated above in section c) of this decision, the inherent distinctiveness of the earlier mark must be seen as entailing a minimum degree for all the goods in question, namely food supplements for treating osteoporosis (non-medicated) in Class 5.

5. Global assessment, other arguments and conclusion

The contested goods and services are identical, similar or dissimilar to the goods and services covered by earlier European Union trade mark registration No 16 456 014.

The signs are visually and aurally similar below an average degree. However, in terms of conceptual similarity the signs are regarded as dissimilar, as explained in section c) above.

Account is taken of the fact that average consumers, even those who pay a high degree of attention, 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 and 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

Although the signs overlap in a non-distinctive element ‘COMPLEX’, this similarity will have a lesser impact for the relevant consumers displaying a relatively high level of attention than the noticeable differences in their conceptually dissimilar initial expressions ‘OSTEO’ and ‘ORTHO’.

The expression ‘OSTEO’ in the earlier mark is non-distinctive, whereas the expression ‘ORTHO’ in the contested mark is at most below average distinctive.

Moreover the earlier mark has a low degree of distinctiveness. It should be noted that the degree of inherent distinctiveness of the earlier mark is a relevant factor to be taken into account in the global assessment of likelihood of confusion and, therefore, when the earlier mark entails a low degree of distinctiveness, it inevitably enjoys a lesser amount of protection.

In word signs, the first part is usually the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that, in general, the beginning of a sign has a significant influence on the overall impression made by the mark (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 40; and 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30).

This principle appears applicable to the present case. Although the letter ‘O’ located at the beginning of both signs is identical, the remaining ones are different and create divergent meanings of the first elements of both signs (‘OSTEO’ / ‘ORTHO’), and similar letters do not have an independent distinctive role. Therefore, due to the conceptual dissimilarities of the initial verbal elements and bearing in mind also that the common element at the end of both signs (‘COMPLEX’) is of limited distinctiveness for the relevant public with a level of attention considered to be relatively high, any likelihood of confusion between the marks seems unlikely.

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).

Even if the Opposition Division has assessed that all the goods in Class 5 are identical, throughout the analysis carried out in this writ, it has as well concluded that there is lack of likelihood of confusion due to the following reasons: (i) the differentiating elements of the signs (‘OSTEO’ / ‘ORTHO’) convey divergent concepts due to their semantic differences; (ii) the signs overlap at the initial part in the sequence of letters O-T-O and at the last part in a non-distinctive element (‘COMPLEX’); (iii) the distinctiveness of the earlier mark is regarded as low; and (iv) the level of attention of the relevant public is relatively high.

Moreover, according to Article 8(1)(b) EUTMR, the similarity of goods and services is a condition for a finding of likelihood of confusion. Since the remaining goods and services in Class 3 and 35 are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled and, therefore, the opposition must be rejected with regard to the aforesaid.

Considering all the above, the Opposition Division finds that even assuming that the relevant goods in Class 5 are identical, there is no likelihood of confusion on the relevant public. Therefore, the opposition must be rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Ewelina SLIWINSKA

María Luisa ARANDA SALES

Jakub MROZOWSKI

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.