OPPOSITION No B 3 064 647

Terapia S.A., Str. Fabricii no.124, Cluj-Napoca, jud. Cluj, Romania, 400632 Cluj-Napoca, Romania (opponent).

a g a i n s t

Zhuhai Essex Bio-Pharmaceutical Co. Ltd., NO.88, Keji 6th Road, Hi-Tech Zone, 519000 Zhuhai, Guangdong, People’s Republico of China (applicant), represented by Colbert Innovation Toulouse, 2Ter Rue Gustave de Clausade BP 30, 81800 Rabastens, France (professional representative).

On 26/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 647 is upheld for all the contested goods, namely:

Class 5: Medicines for human purposes; chemico-pharmaceutical preparations; vaccines; biological preparations for medical purposes; chemical preparations for pharmaceutical purposes; injectable pharmaceuticals; cough tablets; crude drugs; herbal medicine; biochemical preparations for medical use; inhaled pharmaceutical preparations for the treatment of respiratory diseases and disorders; pharmaceutical products for treating respiratory diseases; suppositories; pharmaceutical preparations for use in dermatology; diagnostic preparations for medical or veterinary purposes; radiopharmaceutical products; dietetic foods adapted for medical purposes; dietetic substances adapted for medical use; nutritional supplements; mineral food supplements; protein dietary supplements; lecithin dietary supplements.

2. European Union trade mark application No 17 894 223 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 894 223 for the figurative mark , namely against some of the goods in Class 5. The opposition is based on Romanian trade mark registration No 91 883 for the word mark ‘ESSENS’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In the opponent’s observations of 14/06/2019, that is after the end of the opposition period, it mentions some additional contested goods such as mouthwashes for medical purposes in Class 5 that had not been previously identified within the opposition period.

Effectively from these observations it is surmised that the opponent is attempting to broaden the scope of its opposition. The Opposition Division cannot accept this extension of the scope of opposition as valid. This is due to the fact that within the three-month opposition period the opponent clearly indicated and listed the goods against which it wished to direct its opposition. The Opposition Division is not entitled to allow a subsequent broadening of the scope of the opposition (see, by analogy, 21/12/2009, R 1517/2007-4, § 20).

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 products meant for the treatment of the central nervous system.

The contested goods are the following:

Class 5: Medicines for human purposes; chemico-pharmaceutical preparations; vaccines; biological preparations for medical purposes; chemical preparations for pharmaceutical purposes; injectable pharmaceuticals; cough tablets; crude drugs; herbal medicine; biochemical preparations for medical use; inhaled pharmaceutical preparations for the treatment of respiratory diseases and disorders; pharmaceutical products for treating respiratory diseases; suppositories; pharmaceutical preparations for use in dermatology; diagnostic preparations for medical or veterinary purposes; radiopharmaceutical products; dietetic foods adapted for medical purposes; dietetic substances adapted for medical use; nutritional supplements; mineral food supplements; protein dietary supplements; lecithin dietary supplements.

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 medicines for human purposes, contain as a broader category, or overlap with, the opponent’s pharmaceutical products meant for the treatment of the central nervous system. Therefore they are identical.

The contested chemico-pharmaceutical preparations; vaccines; biological preparations for medical purposes; chemical preparations for pharmaceutical purposes; injectable pharmaceuticals; crude drugs; herbal medicine; biochemical preparations for medical use; radiopharmaceutical products; suppositories are at least similar, if not identical, to the opponent’s pharmaceutical products meant for the treatment of the central nervous system. These goods either include as broader categories, or overlap with, the opponent’s pharmaceutical products meant for the treatment of the central nervous system or coincide in the same commercial origin, the same distribution channels as well as purpose of healing/curing.

The contested diagnostic preparations for medical or veterinary purposes are similar to the opponent’s pharmaceutical products meant for the treatment of the central nervous system. These goods target the same public and have the same distribution channels. They can be also complementary.

The contested dietetic foods adapted for medical purposes; dietetic substances adapted for medical use; nutritional supplements; mineral food supplements; protein dietary supplements; lecithin dietary supplements are similar to the opponent’s pharmaceutical products meant for the treatment of the central nervous system. These goods have the same purpose of healing and target the same public. Their distribution channels also overlap.

In principle, specific pharmaceuticals are considered similar to other specific pharmaceuticals. In the present case, the contested cough tablets; inhaled pharmaceutical preparations for the treatment of respiratory diseases and disorders; pharmaceutical products for treating respiratory diseases; pharmaceutical preparations for use in dermatology are at least similar to a low degree to the opponent’s pharmaceutical products meant for the treatment of the central nervous system as they have, at least, the same distribution channels and may have the same commercial origin.

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 to varying degrees are directed at the public at large and at business customers with specific professional 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).

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.

3. The signs

ESSENS
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).

The word ‘ESSEX’ of the contested sign can be associated by part of the relevant public with a county in the south-east of England. As such its distinctiveness will be reduced as it will merely indicate the place of the origin of the goods. However, for the remaining, yet significant part of the public, this word will be meaningless and as such distinctive. For reasons of procedural economy, the Opposition Division will focus the comparison on the part of the public for which the word ‘ESSEX’ is meaningless.

The word ‘ESSENS’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The figurative elements of the contested sign, consisting of two crescents and two dots have no clear meaning and they have rather a decorative function in the sign.

Visually, the signs coincide in their initial parts ‘ESSE’ and differ in their endings ‘NS’ versus ‘X’. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The signs also differ in the figurative element and graphic representation of the contested sign, however, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ESSE’, present identically in both signs and they show also similarities in their ending letter ‘S’ as ‘X’ will be pronounced as ‘KS’. The pronunciation differ in the sound of the letter ‛N’ of the earlier sign and in the sound of the letter ‘K’ of the contested mark.

Therefore, the signs are aurally highly similar.

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).

The goods are partly identical and partly similar to varying degrees and they target public at large and professionals.

The signs are visually at least similar to an average degree, aurally highly similar and the conceptual comparison is neutral.

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) and that 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).

The signs share their initial four letters ‘ESSE’ out of six of the earlier mark and five of the contested sign. Whereas, the differences between them lie in the final letters ‘-NS’/’-X’ where they are less noticeable for the customers, even with a high degree of attention.

The applicant argues that its EUTM has been used and is already registered in Asia and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

In any event, the use refers to the territories outside the European Union and therefore this argument is irrelevant in relation to the perception of the signs by the Romanian-speaking public.

Considering all the above, there is a likelihood of confusion on the part of the public that perceives the contested sign as meaningless. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 91 883. 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Anna ZIÓŁKOWSKA

Katarzyna ZANIECKA

Martin INGESSON

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.