OPPOSITION No B 3 039 412

Egis Gyógyszergyár Zrt., Keresztúri út 30-38., 1106 Budapest, Hungary (opponent), represented by Bettina Clefsen, Kleine Johannisstr. 10, 20457 Hamburg, Germany (professional representative)

a g a i n s t

CSL Behring L.L.C., 1020 First Avenue, King of Prussia, Pennsylvania 19406-0901, United States of America (applicant), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative).

On 08/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 039 412 is upheld for all the contested services.

2. European Union trade mark application No 17 350 621 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services (Classes 41 and 42) of European Union trade mark application No 17 350 621 for the word mark ‘AEGIS-I’. The opposition is based on European Union trade mark registration No 517 094 for the word mark ‘EGIS’. The opponent invoked Article 8(1)(b) EUTMR. The opponent also invoked Article 8(4) EUTMR in relation to earlier non-registered trade marks and other signs used in the course of trade, namely the company name ‘Egis Gyógyszergyár Zrt.’ in Hungary; the trade name in Latvia, Lithuania, Hungary, Poland, Romania and Slovakia; the company name ‘Egis Pharmaceuticals PLC’ in Latvia and Lithuania; and the trade name ‘EGIS’ in Latvia, Lithuania, Hungary, Poland, Romania and Slovakia, all in relation to pharmaceutical preparations; services of a pharmaceutical or chemical company, namely research, testing, studies, consultancy in the pharmaceutical and chemical sector; medical, bacteriological and chemical laboratory services.

PROOF OF USE

The applicant states in its observations of 05/11/2018 that the opponent has not submitted proof that the earlier EUTM was put to use during the relevant period.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.

Furthermore, Article 10(1) EUTMDR requires that a request for proof of use be submitted by way of a separate document, which did not happen in the present case.

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 European Union trade mark registration No 517 094.

1. The goods and services

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

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; material for stopping teeth, dental wax; plasters, materials for dressings; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 41: Publication of pharmaceutical, medical and chemical books, newspapers, periodicals and brochures.

Class 42: Services of a pharmaceutical or chemical company, namely research, testing, studies, consultancy in the pharmaceutical and chemical sector, medical, bacteriological or chemical laboratory services, chemists’, pharmacists’ or doctors’ services, technical, pharmaceutical and medical consultancy.

The contested services are the following:

Class 41: Publication of the results of clinical trials for pharmaceutical preparations.

Class 42: Providing information about the results of clinical trials for pharmaceutical products; providing medical and scientific research information in the field of pharmaceuticals and clinical trials.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services. The term ‘namely’, used in the opponent’s list of services in Class 42 to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

Contested services in Class 41

The contested publication of the results of clinical trials for pharmaceutical preparations is included in the broad category of, or overlaps with, the opponent’s publication of pharmaceutical books, newspapers, periodicals and brochures. Therefore, they are identical.

Contested services in Class 42

The contested goods in this Class are included in the broad category of, or overlap with, the opponent’s consultancy in the pharmaceutical sector, medical, bacteriological or chemical laboratory services, chemists’, pharmacists’ or doctors’ services, technical, pharmaceutical and medical consultancy. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of services 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 relevant public consists of the medical, clinical, pharmaceutical and biological field. The services are provided by research laboratories and ordered by consumers, such as enterprises or authorities. Usually a research service is paid for by the client that places the order in return for the results of the research. The degree of attention paid by consumers to the relevant services is high, as the latter all relate to the medical field and are likely to affect the state of health of the end users.

3. The signs

EGIS	AEGIS-I
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 signs are word marks composed of the verbal elements ‘EGIS’ (in the earlier mark) and ‘AEGIS-I’ (in the contested sign).

Although ‘AEGIS’ may be understood by a very small part of the public as related to Greek mythology (or even as part of the expression ‘under the aegis’ used in English), this term will not be understood by the great majority. Therefore, in the Opposition Division´s opinion, both elements ‘EGIS’ and ‘AEGIS’ are meaningless for the great majority and are of average distinctiveness for the relevant services.

The letter ‘I’ preceded by a hyphen in the contested sign has no meaning for the services and is distinctive to an average degree.

Visually and aurally, the signs coincide in the string and in the sound of the letters ‘EGIS’. They differ in the additional letters ‘A’ at the beginning and ‘-I’ at the end of the contested sign. Despite these differences, the coincidence in all their remaining letters will certainly have a considerable impact on the public. Although the letter ‘I’ is distinctive and, therefore, will have an impact on the consumer’s visual and aural perception of the marks, it does not alter the fact that the first word of the contested sign plays an independent distinctive role. Furthermore, it cannot be excluded that part of the relevant public will not pronounce the differentiating element of the contested sign owing to its position (after the hyphen) and lack of any clear meaning.

The first letter ‘A’ of the contested sign will be less noticeable aurally; for example, in Danish and English, ‘E’ and ‘AE’ are pronounced in a very similar way. Therefore, the difference of the letter ‘A’, even at the beginning of the mark, is not very noticeable for part of the public.

Therefore, even taking into consideration the difference established by their initial letters, the signs are considered visually similar to an average degree and aurally similar to between an above-average and high degree.

Conceptually, neither of the signs has a meaning for the great majority of 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection in Hungary. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 services 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The contested services are identical to the opponent’s services. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually and aurally similar, as they coincide in the letters ‘EGIS’. As regards the difference established by their initial letters, although the initial part of verbal elements may be liable to attract the consumer’s attention more than the following parts, a difference in some of the first letters of each sign is not enough to counteract similarity between the signs in respect of all the other letters, when those letters are displayed identically and make up the majority of each of the signs at issue (22/05/2012, T‑585/10, Penteo, EU:T:2012:251, § 67).

The Opposition Division considers that the abovementioned principle is fully applicable to the present case, as the difference established by the initial letters of the marks is not enough to counteract the visual and aural similarities between them.

Furthermore, both signs are meaningless for the relevant public and, consequently, do not convey any semantic content that could assist consumers to better distinguish them, in particular in relation to identical services.

Moreover, it is conceivable that the relevant consumer will perceive the contested sign as a sub-brand of the opponent’s mark that bears the additional element ‘-I’ and is a variation of the earlier mark, configured differently (e.g. as a reference to a certain series) according to the type of services that it designates. It is quite possible for an undertaking to use sub-brands, that is to say signs that derive from a principal mark and share with it a common element in order to distinguish various lines from one another.

Considering all the above and taking into account the interdependence principle, there is a likelihood of confusion on the part of the public. Even a high level of attention would not eliminate the likelihood that the consumer will think that the contested mark is in some way economically linked to the earlier mark.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 517 094. It follows that the contested trade mark must be rejected for all the contested services.

In its observations, the applicant argues that there are several registrations with the words ‘EGIS/AEGIS’ in the EUTM register that coexist with the opponent’s earlier mark.

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‑498/07 P, 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.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Moreover, as the earlier right mentioned above leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(4) EUTMR.

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, 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

Tu Nhi VAN

Gonzalo BILBAO TEJADA

Martin EBERL

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.