OPPOSITION No B 3 063 078

Valneva, 6 rue Alain Bombard, 44800, Saint-Herblain, France (opponent), represented by Markplus International, 39 rue Fessart, 92100, Boulogne-Billancourt, France (professional representative)

a g a i n s t

Sanmed Handelsgesellschaft m.b.H, Valeriestrasse 12-14/2, 2500 Baden, Austria (applicant), represented by Schwarz & Partner Patentanwälte OG, Wipplingerstrasse 30, 1010 Wien, Austria (professional representative).

On 29/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 078 is partially upheld, namely for the following contested goods and services:

Class 5: Medical and veterinary preparations; Pharmaceutical medicines, preparations and products; Natural remedies; Diagnostic preparations and materials; Medical dressings, coverings and applicators.

Class 42: Retailing and wholesaling of pharmaceutical articles, and medical articles.

Class 44: Medical and pharmaceutical services; Pharmaceutical consultancy and information on pharmaceuticals;

2. European Union trade mark application No 17 895 207 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 895 207, VALENA. The opposition is based on international trade mark registration No 11 808 38 designating the European Union VALNEVA. 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.

a) The goods and services

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

Class 5 Pharmaceuticals for human and veterinary use; medical, biological, biotechnological, virological, protein, bacteriological, chemical, immunological, enzymatic, pharmaceutical agents and products, for medical and veterinary use; diagnostic agents for medical, pharmaceutical and veterinary use.

Class 42: Scientific research services for medical purposes; scientific research for medical, pharmaceutical and veterinary use; scientific and industrial research, in particular in the field of biology, cellular and molecular biology, biotechnology, bacteriology, immunology, genetics, medicine, pharmacology, virology, chemistry;

The contested goods and services are the following:

Class 5: Medical and veterinary preparations; Pharmaceutical medicines, preparations and products; Natural remedies; Diagnostic preparations and materials; Medical dressings, coverings and applicators.

Class 35: Drawing up of cost accounts; Retailing and wholesaling of pharmaceutical articles, sanitary preparations and medical articles; Advertising services relating to pharmaceutical products; Business management; Business administration; Office functions; Professional business consulting, In particular consultancy for biotechnology and life science companies.

Class 44: Medical and pharmaceutical services; Pharmaceutical consultancy and information on pharmaceuticals; Human hygiene and beauty care.

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 5

The contested medical and veterinary preparations; pharmaceutical medicines, preparations and products overlap with the opponent´s pharmaceuticals for human and veterinary use. They are identical.

The contested natural remedies overlap with the opponent´s biological, bacteriological, enzymatic agents and products for medical and veterinary use, for example. They are identical.

The contested diagnostic preparations and materials overlap with the opponent´s diagnostic agents for medical, pharmaceutical and veterinary use. They are identical.

The contested medical dressings, coverings and applicators are similar to the opponent´s pharmaceutical products for medical and veterinary use as they aim to treat conditions for curative purposes and they coincide in relevant public and distribution channels.

Contested services in Class 35

The contested retailing and wholesaling of pharmaceutical articles, and medical articles are similar to a low degree to the opponent´s pharmaceutical agents and products, for medical use. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

However, the contested retailing and wholesaling of sanitary preparations are dissimilar to the opponent´s goods in Class 5. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. 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 only similar. Nor do these services share relevant points in common with the opponent´s services in Class 42.

The contested advertising services relating to pharmaceutical products consist of providing others with assistance in the sale of those products by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s preparations and articles, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, these services are dissimilar to the goods or services being advertised.

The contested drawing up of cost accounts; business management; business administration; office functions; professional business consulting, in particular consultancy for biotechnology and life science companies are usually rendered by specialist companies. These companies provide expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. They are dissimilar to the opponent´s goods and services.

Contested services in Class 44

The contested medical and pharmaceutical services; pharmaceutical consultancy and information on pharmaceuticals are services which are complementary to the opponent´s pharmaceutical products, and they coincide in relevant public and distribution channels. They are similar to a low degree.

However, the contested human hygiene and beauty care services are dissimilar to the opponent´s highly specialised goods and services in Classes 5 and 42 which are of a different nature and primarily aim at healing or diagnosis, as opposed to beautification or sanitation. They target different consumers, are not complementary or distributed in the same way. Consumers do not believe them to originate from the same source.

b) 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 relevant public for the goods found to be identical comprises both the general public and health professionals, such as doctors and pharmacists, and the likelihood of confusion will be assessed against the perception of both of these publics, also bearing in mind that the general public is more prone to confusion.

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.

c) The signs

VALNEVA	VALENA
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).

Neither word mark has any meaning for the relevant public. They are, therefore, distinctive.

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.

Visually and aurally, the signs are similar to the extent that they coincide in their first three letters V-A-L and their final letter A. They also share an E and a N in their middle, albeit in inverted positions i.e NE/EN respectively. They differ in the one extra letter V of the earlier mark.

Therefore, the signs are similar to a high 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.

d) 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 and 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.

e) 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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). 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).

In the present case, the goods and services are identical, similar to varying degrees and dissimilar. The degree of attention is high and the distinctiveness of the earlier mark is normal.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the letters VAL. In support of its argument, the applicant refers to previous trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include VAL at their fore. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division agrees with the opponent 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 International registration designating the European Union, even for those goods and services found to be similar to a low degree.

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

The rest of the contested services 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 services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Riccardo RAPONI

Keeva DOHERTY

Birgit FILTENBORG

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.