OPPOSITION No B 2 962 804

Ionafarma S.L., C. de Perú 228, 08020, Barcelona, Spain (opponent), represented by Ponti & Partners S.L.P., C. Consell de Cent 322, 08007, Barcelona, Spain (professional representative)

a g a i n s t

So.Se.Pharm S.r.l., Via dei Castelli Romani 22, 00040, Pomezia, Rome, Italy (applicant), represented by Akran Intellectual Property S.r.l., via del Tritone 169, 00187, Rome, Italy (professional representative).

On 01/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 962 804 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 of European Union trade mark application No 16 672 412 ‘MUCOMUCIL’ (word mark). The opposition is based on Spanish trade mark registration No 3 620 465 ‘MUCOFLUID’ (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: Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth and dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 5: Pharmaceutical preparations for treating diseases of the respiratory

system.

Contested goods in Class 5

The contested pharmaceutical preparations for treating diseases of the respiratory system overlap with the opponent’s pharmaceuticals, medical preparations. Therefore, they are identical.

The Opposition Division finds it appropriate to take all the goods of the earlier mark into account for the sake of completeness and to point out that there would be similarity between the contested goods and some of the earlier goods.

The earlier veterinary preparations are identical to pharmaceutical preparations for treating diseases of the respiratory system.

The earlier dietetic food and substances, adapted for medical use; dietary supplements for humans and animals are similar to the contested pharmaceutical preparations for treating diseases of the respiratory system because they can be used together with the pharmacological preparations to treat diseases of the respiratory system to enhance and support their effectiveness. Some of them can also be in competition with the pharmaceutical preparations and be used instead. The goods may have the same purpose. They target the same public via the same channels of distribution. They may come from the same undertakings.

The earlier sanitary preparations for medical purposes; fungicides, plasters have some common points with the applicant’s pharmaceutical preparations for treating diseases of the respiratory system, as these goods can be used in support of the pharmacological treatment of such diseases. Although the nature of the goods is different, the goods have the same general purpose. In addition, they can be produced by the same or economically linked undertakings and made available to the same relevant public via the same distribution channels. The goods are similar to a low degree.

The earlier preparations for destroying vermin; food for babies; herbicides; material for stopping teeth; dental wax, materials for dressings, disinfectants have no common points with the contested pharmaceutical preparations for treating diseases of the respiratory system, bearing in mind that the latter are particular pharmaceuticals used for treatment of a particular condition. The treatment of respiratory disease is unrelated to destroying vermin, herbicides, food for babies, materials used in dentistry, disinfectants or dressings. The goods have different purposes, producers and consumers. They may coincide in the channels of distribution, but this is insufficient to render them similar as the consumers are aware that many different unrelated products can be bought in pharmacies. The goods are neither in competition nor are they complementary. They are dissimilar.

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 and similar (including to a low degree) are directed at the public at large and medical or 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).

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.

As to the remaining relevant goods, since they all have to do with health, the level of attention is likely to be above the average.

3. The signs

MUCOFLUID	MUCOMUCIL
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).

The earlier mark is a one-word mark consisting of a single verbal element ‘MUCOFLUID’. The contested mark is a one-word mark consisting of a single verbal element ‘MUCOMUCIL’. In the case of word marks, it is the word as such that is protected and not its written form. Furthermore, owing to the nature of word marks, neither the earlier nor the contested sign have any elements that could be considered more visually eye-catching or dominant than other elements.

The signs overlap in the initial four letters ‘MUCO’. When perceiving a verbal sign, the consumer will break it down into elements which suggest a concrete meaning to them or which resemble words known to them. Upon encountering the component ‘MUCO’ in relation to pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals; plasters; fungicides, the relevant Spanish consumer will easily perceive this element (present in both signs) as a reference to the commonly used Spanish words “mucosidad(es)” or “mucosa”, meaning “mucus” in English (a thick liquid produced inside the nose and other parts of the body, https://dictionary.cambridge.org/dictionary/english/mucus, consulted 11/07/2018). The respiratory system is lined with a mucous membrane which secretes mucus, and irritation or disease of the respiratory system “causes both inflammation of the air passages and a notable increase in mucus secretion” (https://www.nursingtimes.net/clinical-archive/respiratory/the-physiology-of-mucus-and-sputum-production-in-the-respiratory-system/205397.article, consulted 11/07/2018).

Bearing in mind that the earlier goods for which any similarity was found are goods which may all be used in the treatment of diseases of the respiratory system, including such conditions which have to do with the mucus produced as a result of such diseases, the component ‘MUCO’ of the earlier sign will be perceived as alluding to medicine, dietary or food supplements, plaster infused with medicine which help treat the mucus, or fungicides which kill the fungi which may cause such diseases.

In the context of the contested mark and in relation to the goods applied for, namely pharmaceutical preparations for treating diseases of the respiratory system, the consumers will link term as alluding to diseases of the respiratory system which lead to an increase in the production of mucus.

As the component ‘MUCO’ is allusive and thus weakly distinctive for both the earlier and contested goods, its capacity to distinguish goods as originating from a particular undertaking is diminished and the impact this component could have on the relevant Spanish consumer is consequently reduced.

The remaining element of the earlier mark is ‘FLUID’. Owing to its proximity to the Spanish equivalent ‘fluido’ of the same meaning, the relevant public will associate this element with a substance in a liquid state. This meaning qualifies the concept conveyed by the element ‘MUCO’ and will bring to mind a runny nose, rendering it allusive for the goods covered by the mark and thus weakly distinctive. Alternatively, the element ‘FLUIDO’ could be seen as a reference to how the goods are presented, for example in liquid form, or infused with liquid; even in this hypothesis, the term ‘FLUID’ remains allusive for all the earlier goods at issue.

The remaining element of the contested mark, ‘MUCIL’ is meaningless for the public at large, who will not associate it with any concept or with the goods at issue. This element is therefore distinctive for the relevant public.

Visually, the signs coincide in their first four letters ‘MUCO’. As explained above, this element is weakly distinctive for the goods at issue and consequently has less impact on the overall visual similarity of the signs. The public will instead focus on the remaining elements ‘FLUID’ and ‘MUCIL’, which present significant visual differences.

As pointed out by the opponent, the signs coincide in the additional letters ‘U’ and ‘I’ in ‘FLUID’ and ‘MUCIL’. However, as explained above, the public will break the signs down into elements which resemble words known to them or that have meaning. Therefore, in perceiving the elements ‘FLUID’ and ‘MUCIL’, the coincidence of two vowels in different positions within the signs will be overshadowed by the clearly differing consonants present in both signs, namely ‘FL**D’ and ‘M*C*L’ in the earlier and contested signs respectively.

Therefore, bearing in mind the low distinctiveness of their coinciding prefix, the signs are at most visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛MU-CO’, present identically in both signs. This weakly distinctive element will not be seen as denoting the origin of the goods and hence the public will focus instead on the remaining elements ‘FLUID’ and ‘MUCIL’, of the earlier and contested sign respectively. Whilst they both contain the vowels ‘U’ and ‘I’, as pointed out by the opponent, this coincidence of two vowels in different positions within the signs is clearly offset by the significantly different pronunciation of the consonants present in this second element ‘FL**D*’ and ‘M*C*L’.

Therefore, the signs are at most aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The signs do overlap in the element ‘MUCO’, which despite its weak or rather limited character, does render the signs conceptually similar to some extent; however, the presence of the element ‘FLUID’ will present some conceptual differences despite its also weak character. The signs are, therefore, conceptually similar to at most a low 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. Considering what has been stated above in section c) about the distinctiveness of the elements ‘MUCO’ ad ‘FLUID’ of this decision, the distinctiveness of the earlier mark must be seen as low for all the relevant earlier goods.

5. Global assessment, other arguments and conclusion

The contested goods have been found identical, similar (including to a low degree) and partly dissimilar to the opponent’s goods and services.

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).

In the case at hand, the degree of attention of the public at large and the professional public is higher than average. The earlier sign has been deemed weak for the goods relevant to the current opposition, for which identity and similarity (including to a low degree) was found. This signs have been found visually and aurally at most similar to a low degree. Beyond the shared, secondary and lowly distinctive element ‘MUCO’, only the earlier mark will convey some meaning via its second element ‘FLUID’; whilst the secondary element of the contested mark ‘MUCIL’ has no meaning for the public. However, the overlap in the element ‘MUCO’, despite its weakly distinctive character, renders the signs conceptually similar at most to a low degree.

Although the beginnings of the signs ‘MUCO’ are identical in both marks and consumers tend to focus their beginning rather than the ending of signs, as explained previously, owing to the weakly distinctive capacity of this element, the public will not perceive it as an indication of the commercial origin of the goods, but rather as a reference to the purpose or characteristics of the products in dispute (treating excess mucous). Bearing in mind the common element ‘MUCO’ is of a limited distinctiveness for the relevant public, they will consequently pay at least as much attention to the clearly perceivable remaining elements of the signs, ‘FLUID’ and ‘MUCIL’. These remaining elements of the signs are sufficiently different aurally, visually and conceptually to safely exclude any likelihood of confusion.

The opponent 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 opponent are not relevant to the present proceedings. In the case of the invoked Opposition No B 2 154 527 and in contrast to the present opposition, neither of the signs (the earlier sign being the word mark ‘NORMOREUM’ and the contested mark as follows ) have any meaning in relation to the goods at issue and were both distinctive. The additional excerpt from Opposition No B 914 962 highlighted by the opponent compares a word mark (‘CONVERGYS’) with a mixed mark ( ), neither of which have any meaning for the relevant public; therefore, this case is also not comparable to the current opposition.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is no likelihood of confusion on the part of the the public at large and the professional public. This absence of a likelihood of confusion equally applies to the professional public. This is because, as a result of the weakly distinctive common element ‘MUCO’, that part of the public will also focus on the remaining elements ‘FLUID’ and ‘MUCIL’, which clearly diverge visually, aurally and conceptually. Therefore, the opposition must be rejected.

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

Gueorgui IVANOV

Ewelina SLIWINSKA

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.