OPPOSITION No B 3 065 606

Brikensa España, S.A., Camino de San Rafael, 53, 29006, Málaga, Spain (opponent), represented by Esther Urteaga Pintado, C/ Principe de Vergara, 31, 28001, Madrid, Spain (professional representative)

a g a i n s t

Laboratório Militar Produtos Químicos e Farmacêuticos, Avenida Dr Alfredo, Bensaúde, 1849-012 Lisboa, Portugal (applicant).

On 17/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 606 is partially upheld, namely for the following contested services:

Class 39: Storage of pharmaceuticals.

2. European Union trade mark application No 17 913 500 is rejected for all the above services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 913 500 for the figurative mark , namely against some of the goods in Class 5 and all of the services in Class 39. The opposition is based on Spanish trade mark registration No 2 519 192 for the figurative 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.

a) The goods and services

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

Class 39: Transportation, storage and delivery of chemical products for the industry.

The contested goods and services are the following:

Class 5: Chemico-pharmaceutical preparations.

Class 39: Storage of pharmaceuticals.

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 opponent’s services, namely transportation, storage and delivery of chemical products for the industry include services rendered in transporting chemical products from one place to another (by rail, road, water, air or pipeline), and storing them in a warehouse or other building for their preservation or safeguarding. Even if transporting, storing or delivery services were provided for some of the contested goods (which does not seem to be the case), it would be insufficient to find similarity between these goods and services. The goods are different from the opponent’s services. Their nature and purpose are different. The opponent’s services target a professional public in the industry whereas the contested goods mainly target general consumers and medical practitioners. The goods and services under comparison do not have the same origin or distribution channels. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested services in Class 39

The contested services are highly similar to the opponent’s storage of chemical products for the industry. The nature and purpose of these services are the same. They could both be described as storage services of products of chemical origin. Even if some special, necessary requirements may be different for the storage of the specific products related to the services under comparison, it cannot be excluded that both services will be rendered within the pharmaceuticals industry. In this case, the target public and distribution channels will also be the same.

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 services found to be highly similar are directed at professionals. The degree of attention will be higher than average as the conditions for storing chemicals and pharmaceuticals might have a significant impact on the safety of those goods.

c) The signs

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 verbal elements of the earlier mark have a meaning in Spanish. ‘Levantina’ will be understood as originating from Mediterranean regions corresponding to the ancient kingdoms of Valencia and Murcia (information extracted from Diccionario de la Lengua Española (Real Academia Española) on 09/09/2019 at https://dle.rae.es/?w=levantina) and will therefore be considered descriptive of the geographical origin of the service provider. The words ‘de mantenimiento’ will be understood as ‘of maintenance’. Even though at first glance this expression seems to refer to the services rendered, in fact this is not the case, as the services at issue are not maintenance services (these are classified in different classes). Therefore, even if some maintenance might be necessary while storing chemicals (due to the inherent hazards of dealing with them), it is only the storage services that are offered to the customers. In this case, the expression ‘de mantenimiento’, cannot be regarded as being descriptive. However, it could be considered somehow allusive to the presumably safe and well-maintained storage facilities where the services are rendered. Consequently, the expression must be considered distinctive to a lower-than-average degree.

As for the verbal element ‘LM’ of the earlier mark, in terms of meaning and distinctiveness, it will not be perceived by the public independently of the other verbal elements of the sign. As it precedes the word combination ‘Levantina de Mantenimiento’ it will be regarded merely as an acronym of that combination. This is because the acronym and the word combination together are intended to clarify each other and to draw attention to the fact that they are linked (15/03/2012, C‑90/11 & C‑91/11, Natur-Aktien-Index / Multi Markets Fund, EU:C:2012:147, § 32, 34 and 40). Therefore, the distinctiveness of this element is closely linked to the distinctiveness of the word combination it precedes and is lower than average. However, due to its size and positioning, this element must be considered visually dominant.

The verbal element ‘LM’ in the contested mark is meaningless and distinctive.

The compositions and visual stylisations of both marks are solely intended to bring the verbal elements of the signs to the attention of the public. Therefore, they are weak.

Visually, the signs coincide in the sequence of letters ‘LM’. That is, the dominant element of the earlier mark is included as the sole verbal element of the contested mark. Moreover, a similarity in the presentation of this letter combination cannot be overlooked. In both marks the letter ‘L’ underlines the letter ‘M’.

The difference between the marks lies in the additional verbal elements of the earlier mark ‘Levantina de Mantenimiento’, as well as the colours and background shapes of both marks. These differences, however, do not outweigh the overall above-average degree of visual similarity of the marks.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LM’, present identically in both signs. The pronunciation differs in the sound of the verbal element ‛Levantina de Mantenimiento’ of the earlier sign, which has no counterpart in the contested mark.

Bearing in mind that the contested sign fully includes the first and dominant element of the earlier mark, and that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, the Opposition Division finds the signs aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for all the services in question.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services are partly highly similar and partly dissimilar. The relevant public’s degree of attention is higher than average. The signs are visually similar to an above average degree and aurally to an average degree. The marks are not conceptually similar. However, the impact of conceptual differences is rather limited as the elements creating these differences are weak and secondary, namely ‘LEVANTINA DE MANTENIMIENTO’.

The first verbal component of the earlier mark is fully included as the sole element of the contested sign. Therefore, there is a visual and aural similarity between the marks (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 40; 21/03/2011, T‑372/09, Gold Meister, EU:T:2011:97, § 27). The additional, weak and visually secondary verbal element ‘LEVANTINA DE MANTENIMIENTO’, at the bottom of the earlier sign, will not be sufficient to enable the consumers to distinguish between the different commercial origins of the services. It is common practice for manufacturers and service providers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them to endow the trade mark with a new, modern image. Therefore, the relevant consumers, even if professional and with higher attentiveness, may perceive the contested sign as a sub-brand of the earlier mark, as both marks have the distinctive element ‘LM’ in common (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds 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 Spanish trade mark registration.

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

The rest of the contested goods 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 goods 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

Gonzalo BILBAO TEJADA

Marta Maria CHYLIŃSKA

Astrid Victoria WÄBER

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.