OPPOSITION No B 3 066 332

Fidia Farmaceutici S.p.A., Via Ponte della Fabbrica, 3/A, 35031 Abano Terme (PD), Italy (opponent), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany (professional representative)

a g a i n s t

Unifarco S.p.A., Via Cal Longa 62, 32035 Santa Giustina BL, Italy (applicant), represented by Perani & Partners SPA, Piazza Armando Diaz 7, 20123 Milano, Italy (professional representative).

On 17/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 332 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 903 001 for the word mark ‘IPERHYALU’. The opposition is based on the Italian trade mark registration No 2 016 000 122 297 for the word mark ‘HYALIPER’. 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 signs

HYALIPER	IPERHYALU
Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

In general terms, two signs are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30; 28/04/2004, C‑3/03 P, Matratzen + Matratzenmarkt Concord (fig.), EU:C:2004:233; 12/07/2006, T‑97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T‑34/04, Turkish Power, EU:T:2005:248, § 43; 01/06/2006, C‑324/05 P, Turkish Power, EU:C:2006:368; 02/12/2009, T‑434/07, Solvo, EU:T:2009:480, § 50).

Being composed of single indivisible elements, the marks have no elements that can be considered more distinctive or dominant than others. The earlier mark ‘HYALIPER’ is meaningless and, therefore, inherently distinctive to a normal degree.

Contrary to the opponent’s argument, there is no reason for the relevant public to dissect the mark into the elements ‘HYAL’ and ‘IPER’ as the first word has no meaning. The relevant public normally perceives a mark as a whole and does not proceed to analyse its various details. Furthermore, when perceiving a word mark, the relevant public will only break it down into elements which, for them, suggest a specific meaning. However, the element ‘HYAL’ has no meaning and cannot be found in the Italian online dictionary. Therefore, there is no reason for the relevant public to split the word after ‘HYAL’ and not read it as one word together with the word ‘IPER’. Moreover, there is no reason to pick out ‘IPER’ of the word ‘HYALIPER’ as it does not catch any attention by itself.

The contested word mark ‘IPERHYALU’ is also meaningless and normally distinctive. The Opposition Division is of the opinion that the relevant public may understand the word ‘IPER’ at the beginning of the sign, because of the fact that it is at the beginning and evokes a concept, namely ‘a prefix meaning above or beyond’ (information extracted from the Treccani Dictionary on 08/10/2019 at http://www.treccani.it/vocabolario/ricerca/iper/). As correctly stated by the applicant, this word is laudatory and, therefore, weakly distinctive. However, the second component ‘HYALU’ has no meaning in Italian, and, therefore, the word ‘IPER’ will not refer to anything in particular. The applicant argues that the Italian consumer will perceive the component ‘HYALU’ as evoking ‘hyaluronic acid’. However, the letters ‘H’ and ‘Y’ at the beginning are not very common in Italian. The consumer will first perceive it as a foreign word. In a second mental step, the consumer must convert the term ‘HYALU’ to ‘hyaluronic acid’ and in a third step, translate it into Italian, namely ‘acido ialuronico’. The Opposition Division does not concur with the applicant in this regard because too many mental steps, when seeing a trade mark, are required by a consumer. The applicant mentioned the case of 24/10/2017, No B 2 795 337, in which the territory, contrary to the present case, is the European Union including the English-speaking public, which affects how the public perceives and understands the signs.

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, the signs are composed of almost the same letters (except the last letter ‘U’ in the contested sign) but placed in a reverse order. The beginnings of the marks, the part where consumers focus their attention, are different.

The Opposition Division points out that the number of letters in the alphabet is limited. It has to be taken into account that they are not all used with the same frequency. Therefore, it is inevitable that the verbal elements of (almost) the same length may be composed of the same letters but in a different order. This does not automatically result in a visual similarity between the signs from the perspective of the relevant consumer as stated by the opponent, even for a specialised public. In addition, the public is not, in general aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of the cases, that two conflicting marks have the same number of letters (04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121; 25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82).

The relevant consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The average consumer showing an average level of attention is not prone to closer inspection of the composition of the signs. Even the consumers who may demonstrate an increased level of attention are not intentionally and carefully seeking out letters in the composition of signs and are not keen to solve anagrams and other kinds of puzzles, when encountering a trade mark.

The opponent’s arguments supporting its claim about the presence of visual similarity between the signs are based on the presumption that the consumer will grasp the mark as one concept both from left to right and from right to left. Even specialist consumers will not engage in such scrutiny and/or mental gymnastics. The consumer perceives a mark as a whole without expending a huge amount of intellectual energy and imagination.

The Opposition Division finds the coincidence in the composing letters is accidental and not enough to justify any level of visual similarity between the signs.

Aurally, the marks do not coincide in the sound of any of their letters. Even if the marks are almost the same (except the letter ‘U’), the fact that they are placed in different positions does not result in any phonetic similarity. Furthermore, as the word ‘HYALIPER’ has no meaning, there is no reason for the relevant public to split it into ‘HYAL’ and ‘IPER’ instead of ‘HYA-LI-PER’ for the earlier mark and ‘I-PER-HYA-LU’ for the contested sign. The vocalic sequence, the rhythm and intonation differ. As explained above in the visual comparison, the number of letters in the alphabet is limited and some are more frequently used than others — a fact even more so valid for the letters that represent vowels. Overall, the signs are aurally dissimilar.

Conceptually, neither of the signs has a meaning as a whole. Although the relevant public may understand the first part ‘IPER’ of the contested sign, it is not related to any other concept and, therefore, being only a prefix, it cannot indicate the commercial origin. The opponent argues that the part ‘IPER’ is included in both signs, only in reversed order enhancing the similarity. However, the Opposition Division, as stated above, is not of the opinion that the relevant public will perceive the word ‘IPER’ in the earlier mark ‘HYALIPER’ as there is no conceptual reason to dissect the mark. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

The decisions mentioned by the opponent are HEDGE INVEST v INVEST HEDGE (11/06/2009, T‑67/08, InvestHedge, EU:T:2009:198) and VITS KITS v VITS4KIDS (09/12/2009, T‑484/08, Kids Vits, EU:T:2009:486). In the first case, there are clearly two words, with two clear meanings, which are understandable for the relevant public and only reversed. In the second case, although there is a play of words between ‘KITS’ and ‘KIDS’, and ‘4’ as ‘for’, they also have clear meanings and they are not even reversed. These cases cannot be used to emphasize the opponent’s arguments in the present case, as it cannot be argued that there is similarity based only on a simple shifting of a verbal element — as there is no word as such (no concept) and the opponent cannot simply ignore the differing letter ‘U’ in the contested sign.

Consequently, the previous cases referred to by the opponent are not relevant to the present proceedings as outlined above.

It is to be concluded in relation to the similarity of signs that they do not coincide in any relevant aspect at the three levels of examination that could give rise to similarity between the signs as a whole. Therefore, the signs are dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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, 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

Gonzalo BILBAO TEJADA

Astrid Victoria WÄBER

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.