OPPOSITION No B 3 085 537

Zentiva, a.s., Einsteinova 24, 851 01, Bratislava, Slovakia (opponent), represented by C|K|T Červenka Turková & Partners Patent, Trademark and Law Office, Anny Letenské 34/7, 120 00, Praha 2, Czech Republic (professional representative)

a g a i n s t

Aphria Germany GmbH, Sternstraße 97, 20357, Hamburg, Germany (applicant), represented by BROOK Rechtsanwälte Rechel Aghamiri Burkart Burke & Ziehm Partnerschaft mbB, Am Sandtorkai 75, 20457, Hamburg, Germany (professional representative).

On 28/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 537 is upheld for all the contested goods, namely

Class 5: Muscle relaxants; medicated muscle soaks; capsules for medicines; plasters, materials for dressings; medicated plasters; transdermal patches for medical treatment; nicotine patches for use as aids to stop smoking.

2. European Union trade mark application No 18 024 813 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 024 813 for the word mark ‘Cannafit’, namely against all the goods in Class 5. The opposition is based on, inter alia, Czech trade mark registration No 152 906 for the word mark ‘KANAVIT’ . 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.

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 Czech trade mark registration No 152 906.

a) The goods

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

Class 5: Medicines; drugs; pharmaceutical preparations for human use; strengthening and dietetic preparations.

As a consequence of the partial refusal of the EUTMA following decision rendered on 27/07/2020 in case B 3 084 849, the contested goods are the following:

Class 5: Muscle relaxants; medicated muscle soaks; capsules for medicines; plasters, materials for dressings; medicated plasters; transdermal patches for medical treatment; nicotine patches for use as aids to stop smoking.

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 capsules for medicines; transdermal patches for medical treatment; muscle relaxants; medicated muscle soaks overlap with the opponent’s pharmaceutical preparations for human use. Therefore, they are identical.

The contested nicotine patches for use as aids to stop smoking are similar to a high degree to the opponent's pharmaceutical preparations for human use because they have the same nature and the same general purpose, i.e. to improve human health, and they coincide in distribution channels, relevant public and producer.

The contested plasters, materials for dressings; medicated plasters are similar to the opponent's pharmaceutical preparations for human use because they have the same purpose, they coincide in distribution channels and they also share relevant public.

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 goods found to be identical or similar to varying degrees are directed at the public at large and also 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.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

KANAVIT	Cannafit
Earlier trade mark	Contested sign

The relevant territory is Czech Republic.

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 under comparison are both word marks.

It is established case-law that the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, unless its elements have, or suggest, a specific meaning known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). However, this condition is not fulfilled in the present case. Moreover, no specific evidence on the understating of Czech consumers has been submitted by the applicant to support his argument. The applicant only submitted extracts from Wikipedia’s version in English.

The fact that ‘VIT’ and ‘FIT’ have a meaning in English does not lead to the consequence that this meaning will be understood by the part of the public taken into account, who does not understand English.

To conclude on this, the Opposition Division is of the opinion that there is no valid reason to believe that the public under analysis will perceive the marks as consisting of two (or even one) separate meaningful elements. Therefore, this argument must be rejected as unfounded.

As already outlined above, the word ‘KANAVIT’ of the earlier mark and the word ‘Cannafit’ of the contested sign have no meaning for the public under analysis. Therefore, they are both distinctive to an average degree.

Visually, the signs coincide in the letters ‘-AN(N)A-’, present at the beginning of both signs. The signs also coincide in their last two letters ‘-IT’. In contrast, the signs differ in the double ‘N’ in the aforementioned stripes of the letters, in the first letters, ‘K’ in the earlier mark and ‘C’ in the contested sign, and in the fifth letter ‘V’ of the earlier mark and the sixth letter ‘F’ of the contested sign.

As the signs share most of their letters, the signs are visually similar to, at least, a low degree.

Aurally, it is important to note that the sign share the same number of syllables and their rhythm and intonation. ‘KA-NA-VIT’ on one hand, and ‘Can-na-fit’ on the other both have three syllables. Their vowels are the same and placed in the same position. It is true that ‘K’ and ‘C’ are pronounced differently in Czech, but their sound is not so distant. The same is valid for the consonant ‘V’ and ‘f’, which are pronounced in an even more similar manner, being both fricative consonants.

In view of all the foregoing, it can therefore be concluded that the sign are aurally 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.

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 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

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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

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).

The present assessment of likelihood of confusion considers the perception of the part of the public who are more prone to confusion, namely the general public.

The goods covered by the trade marks in dispute have been found partly identical, partly similar to a high degree and partly similar.

The degree of attention is higher than average for the goods in Class 5. The earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.

The signs in dispute are aurally similar to a high degree and visually similar to at least a low degree. The conceptual aspect does not influence the assessment of their similarity. They coincide exactly in five of their letters, that is to say -ANA-IT- of ‘KANAVIT’ and ‘CANNAFIT’, but they also displays many coincidence, especially from an aural point of view, due to the similar pronunciation of the first letters ‘K’ and ‘C’ on one hand and ‘V’ and ‘F’ on the other, and also due to the fact that the pronunciation of the double ‘NN’ of the contested sign will go unnoticed.

The Opposition Division considers that the differences between the signs are not sufficient to counteract the similarities between the signs which result in a similar visual and aural impressions. Even the relevant public with a high degree of attention may overlook this difference and may thus be confused as to the origin of the goods in question.

Also, account must be taken of the fact that 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),

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the general public in the Czech Republic.

Given that a likelihood of confusion for only part of the relevant public, in this case the general public, 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 Czech trade mark registration No 152 906. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Czech trade mark registration No 152 906 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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.

The Opposition Division

Francesca CANGERI

Andrea VALISA

Aurelia PEREZ BARBER

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.