OPPOSITION Nо B 3 102 434

 

Meddrop Technology AG, Mühlebachstraße 72, 8008 Zürich, Switzerland (opponent), represented by Axel W. Schnickel, Uhlandstr. 58, 60314 Frankfurt/Main, Germany (professional representative)

a g a i n s t

 

Sesderma, S.L., Calle Masamagrell, 3 Pol. Industrial Rafelbunyol, 46138 Rafelbunyol (Valencia), Spain (applicant), represented by Kapler, Calle Orense, 10, 12º D, 28020 Madrid, Spain (professional representative).

On 07/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 102 434 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 081 407 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 081 407 for the word mark ‘SESCEUTICAL’. The opposition is based on European Union trade mark registration No 15 758 808 for the word mark ‘SEYOCEUTICALS’. The opponent invoked  Article 8(1)(a) and (b) EUTMR and Article 8(5) 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 3: Washing and cleaning preparations, washing creams; Toiletries, Body care preparations; Body cleaning preparations, preparations for baths and showers, shower and bath gel, shower and bath foam, bath creams, not for medical purposes, bath foam for babies; perfumery and fragrances; body sprays [non-medicated]; cleaning and fragrancing preparations; essential oils and aromatic extracts; oral hygiene preparations; deodorants and antiperspirants; hair preparations and treatments; skin care preparations; soaps and gels; gel eye masks; serums for cosmetic purposes; tissues impregnated with make-up removing preparations; beauty preparations, not for medical purposes, cosmetics in the form of creams, beauty serums, beauty care cosmetics, beauty milk, beauty balm creams; cosmetics and cosmetic preparations; cosmetic kits; cosmetic preparations for body care; cosmetic preparations for nail drying; cosmetics, not for medical purposes, cosmetics in the form of oils, ointments for cosmetic purposes; scalp treatments (non-medicated -); cosmetics for personal use.

Class 5: Sanitary preparations and articles, sanitary preparations for veterinary purposes; medical and veterinary preparations and articles; pharmaceuticals and natural remedies; medicines for veterinary purposes; intravenous fluids used for rehydration, nutrition and the delivery of pharmaceutical preparations; injectable dermal filler; lotions for veterinary purposes; microbicides, antibiotics for veterinary use, anaesthetics, antiallergics, anti-bacterial preparations, antibiotics, antifungal creams for medical purposes, antihistamines, antimicrobial preparations, antimicrobials for dermatologic use, antifungal preparations; anticoagulants, anticonvulsants; medicines for veterinary purposes; medicines for dental purposes; autonomic drugs for medical purposes; allergy relief medication; medicinal creams for the protection of the skin; pharmaceutical preparations acting on the central nervous system; eye lotions for medical use; balms for pharmaceutical purposes, balsamic preparations for medical purposes; creams for dermatological use, anti-itch creams; anti-inflammatory preparations, anti-inflammatory ointments; topical gels for medical and therapeutic use, gels for dermatological use; anti-infective products for veterinary use; injectable pharmaceuticals for treatment of anaphylactic reactions; lotions for pharmaceutical purposes; medicated creams, medicated lotions, medicated ointments for application to the skin; nervines, pharmaceutical medicines; pharmaceutical creams, tissue-regenerative pharmaceutical preparations, pharmaceutical antiallergic preparations and substances; pharmaceuticals, pharmaceutical products and preparations to prevent swelling in the legs, pharmaceutical preparations for treating skin disorders, pharmaceutical products for the treatment of infectious diseases, pharmaceutical products for the treatment of bone diseases, pharmaceutical preparations for the treatment of musculo-skeletal disorders, pharmaceutical compositions; pharmaceutical preparations, pharmaceutical preparations for peripheral nervous system, pharmaceutical preparations for the treatment of viral diseases, pharmaceutical preparations for treating sports injuries; pain relief preparations; oxygen for medical purposes; ointments for pharmaceutical purposes.

Class 10: Medical and veterinary apparatus and instruments; respiratory therapy instruments; apparatus for use in vein puncture; aerosol dispensers for medical purposes; apparatus for the treatment of breathing difficulties; applicators for medications; applicators for antibacterial preparations; applicators for pharmaceutical preparations; apparatus for the treatment of leg ulcers; apparatus for producing oxygen for medical use.

Class 21: Aerosol dispensers, not for medical purposes.

The contested goods and services are the following:

 

Class 3: Cosmetics and perfumery.

Class 5: Pharmaceutical and medical preparations; preparations for medical use; sanitary preparations for medical purposes; dietetic food and substances adapted for medical use; dietary, dietetic and nutritional supplements.

Class 35: Wholesaling, retailing in shops and via global computer networks of cosmetics, perfumery, pharmaceuticals and medical goods, preparations for medical use, sanitary preparations for medical purposes, dietetic food and substances adapted for medical use, dietary, dietetic and nutritional supplements.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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 3

 

The contested cosmetics and perfumery are identically covered by the opponent’s specification of goods in Class 3.

Contested goods in Class 5

The contested pharmaceutical and medical preparations are identically covered by the opponent’s specification of goods in Class 5.

The contested preparations for medical use are identical to the opponent’s medical preparations and articles, as these are synonym expressions.

The contested sanitary preparations for medical purposes are included in the broad category of the opponent’s sanitary preparations. Therefore, they are identical.

The opponent’s broad category of medical preparations and articles includes goods such as medical preparations for slimming purposes. Consequently, the contested dietetic food and substances adapted for medical use cannot be clearly separated from the referred broad category. Since these broad categories of goods overlap, they are considered identical.

The contested dietary, dietetic and nutritional supplements consist of substances prepared for special dietary requirements, with the purpose of treating or preventing disease (in people or animals). Bearing this in mind, their ultimate purpose coincides with that of the opponent’s pharmaceutical preparations; medical preparations and articles, which consist of different pharmaceutical preparations, medicines and remedies (used to treat diseases), insofar as they are all used to improve the consumer’s overall health condition. The relevant public targeted by these goods coincides and they generally have the same distribution channels (e.g., pharmacies or parapharmacies). Furthermore, they often originate from the same specialised undertakings. Therefore, these goods are considered similar.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because 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. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services, sale in shops and/or sales via global computer networks, internet shopping, as well as catalogue or mail order services in Class 35.

Therefore, bearing in mind the findings of the comparison conducted above in Classes 3 and 5, the contested wholesaling, retailing in shops and via global computer networks of cosmetics, perfumery, pharmaceuticals and medical goods, preparations for medical use, sanitary preparations for medical purposes, dietetic food and substances adapted for medical use are similar to the opponent’s cosmetics and perfumery (in Class 3) and pharmaceutical preparations; medical preparations and articles; sanitary preparations (in Class 5).

Furthermore, there is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers. This is equally applicable to other related services, such as wholesale services.

As mentioned above, goods such as nutritional supplements generally have the same distribution channels as pharmaceutical and medical preparations (e.g., pharmacies or parapharmacies). Therefore, the contested wholesaling, retailing in shops and via global computer networks of dietary, dietetic and nutritional supplements are similar to a low degree to the opponent’s pharmaceutical preparations; medical preparations and articles in Class 5.

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 different degrees) target both the public at large and the professional public from the medical/pharmaceutical or cosmetics/perfumery sectors. Some goods in Class 5 may be sold on prescription and some over the counter without a prescription. According to case-law, the general public cannot be excluded from the relevant public, including for pharmaceuticals that require a doctor’s prescription prior to their sale to end users in pharmacies. Therefore, the relevant public for the goods in Class 5 comprises both the general public and health professionals, such as doctors and pharmacists. Consequently, even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for the general public, since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products at various times (09/02/2011, T-222/09, Alpharen, EU:T:2011:36, § 42-45; 26/04/2007, C-412/05 P, Travatan, EU:C:2007:252, § 56-63).

Insofar as the pharmaceutical preparations in Class 5, whether or not issued on prescription, are concerned, it is apparent from case-law that 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 and cited case-law). 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.

In relation to the products in Class 3 and their purchase, the attention of the consumers will be average.

Given that the general public is more prone to confusion, the examination will proceed on this basis. The degree of attention will vary between average and high.

c)  The signs

 

SEYOCEUTICALS	SESCEUTICAL
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).

The signs are word marks composed of the single verbal elements, ‘SEYOCEUTICALS’ and ‘SESCEUTICAL’, respectively. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they appear in upper- or lower-case letters or in a combination thereof. For the same reasons, they have no element(s) that can be considered more dominant than other element(s).

Considered as a whole, both signs are meaningless for the relevant general public in the European Union. Nonetheless, as correctly pointed out by the applicant, their respective endings, ‘-CEUTICALS’ and ‘-CEUTICAL’, are allusive of the notion of ‘treatment with drugs; pharmacy; the practice or study of the manufacture, formulation, and dispensing of drugs’ (as established by the Boards of Appeal decision of 08/11/2012, in case nº R 1800/2011-5 – ENDOCEUTICS / INNOCEUTICS). It follows that this suffix is weakly distinctive, in both signs, as regards the relevant goods in Class 5 and the sales services related to such goods in Class 35, as it alludes to the commercial field of the goods and services in question, as confirmed by the Boards of Appeal in the aforementioned decision. This logic is also extensible to the relevant goods in Class 3 and the sales services related thereto since, from a market perspective, this suffix also alludes to their essential characteristics, by suggesting that some degree of scientific/pharmaceutical research is involved in their conception and marketing.

Visually, the signs coincide in ten out of their thirteen and eleven letters respectively, which are reproduced in identical order: the initial letters ‘SE-’ and the letter sequences ‘CEUTICAL*’ (‘SEYOCEUTICALS’ and ‘SESCEUTICAL’).

The signs differ solely in the third and fourth letters ‘YO’ of the earlier mark, in its last letter ‘S’ and in the third letter ‘S’ of the contested sign.

The coincidence in their initial letters ‘SE-’, combined with the coincidence in the longer sequence ‘-CEUTICAL’, will have a considerable impact for the public. Consumers generally tend to focus on the initial part of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the beginning (the initial part) and the top of the sign the one that first catches the attention of the reader. Furthermore, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Inversely, when the public is faced with very long signs (such as the marks at issue), it is less able to grasp any differences and more likely to overlook small differences between them. ‘SEYOCEUTICALS’ and ‘SESCEUTICAL’ display similar lengths (thirteen vs eleven letters) and coincide in the vast majority of those letters (ten), including in their first two letters. Consequently, the difference in a couple of letters in the least conspicuous middle parts of these elements might be overlooked by consumers. The same is valid for the final letter ‘S’ in the earlier mark, as this letter commonly appears at the end of commercial signs (where it is normally used to signify a plurality).

Therefore, and even bearing in mind the weakness of the suffix ‘-CEUTICAL’ in relation to the relevant goods and services – due to its allusive character –, the marks convey a highly similar visual impression and are considered visually similar to a high degree.

The same findings are applicable, mutatis mutandis, as regards the aural comparison of the signs. The marks coincide in all their sounds, except the sound of the third and fourth letters ‘YO’ of the earlier mark vs the sound of the third letter ‘S’ of the contested sign. As regards the last letter ‘S’ of the earlier mark, it is not likely to have a significant aural impact; as mentioned above, it appears at the end of a rather long element and, more importantly, it is commonly used to form plurals, so it does not bring about any striking or particularly memorable sound. Furthermore, in some of the relevant languages (e.g., French), this letter will not be pronounced.

Considering that the signs coincide in the vast majority of their sounds (ten), reproduced in the same order, while their only significant difference occurs in their middle sections – where it is more likely to be unnoticed – and concerns solely two sounds in the earlier mark (‘YO’) and one sound in the contested sign (‘S’), the marks are considered aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As previously covered, both signs are meaningless, considered as a whole, for the relevant general public in the European Union. However, their respective endings, ‘-CEUTICALS’ and ‘-CEUTICAL’, are allusive of the commercial field and nature of the relevant goods and services. As such, the concept conveyed by these suffixes is suggestive and weakly distinctive.

Consequently, taking into consideration the referred weakness of this common concept, but also bearing in mind that none of the marks contains any additional semantic content, the signs are considered conceptually similar to a lower than average degree.

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.

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

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. 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).

The contested goods and services are identical or similar to the goods covered by earlier European Union trade mark registration No 15 758 808. The earlier mark has an average degree of inherent distinctive character.

The signs under comparison are visually and aurally highly similar and conceptually similar to a lower than average degree, on account of their coinciding letters: ‘SE**CEUTICAL*’.

Analising the referred signs (‘SEYOCEUTICALS’ and ‘SESCEUTICAL’) in more detail, it is noted that they have a similar length (thirteen vs eleven letters) and coincide in the vast majority of those letters, displayed in the same order. In addition, they coincide in their initial letters ‘SE-’, where the attention of the public is normally focused, and which contribute decisively to the similar overall impression conveyed by the signs. Furthermore, the public is less likely to notice the difference established by a small amount of letters when confronted with such long signs, which coincide in the majority of their letters, as previously noted.

The weakness of suffixes ‘-CEUTICALS’ and ‘-CEUTICAL’ does not influence decisively the assessment of likelihood of confusion in the present case, since both signs are on equal footing in this regard. None of the signs conveys any additional semantic content that would assist consumers in distinguishing them. Therefore, even if their common conceptual content is weak, it still establishes a relevant similarity between them, on all levels (visual, aural and conceptual). Furthermore, and more importantly, their identical beginnings and the fact that both signs are rather long and differ essentially in only a couple of letters in their middle sections (where they are more likely to be overlooked), determines the finding that the signs ‘SEYOCEUTICALS’ and ‘SESCEUTICAL’ convey a similar overall impression.

In other words, the fact that the contested sign reproduces almost entirely the earlier mark will have a considerable impact for the consumers, even bearing in mind that they will proceed to the purchase of some of the relevant goods and services with a heightened degree of attention.

In this regard, account must also be taken of the fact that 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). It should be recalled 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).

Consequently, taking into consideration all the circumstances of the case, the Opposition Division concludes that the marks under comparison convey a similar overall impression, which is not counteracted by the differences established between them.

It is also taken into consideration that the global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case, the heightened similarities between the signs, in particular from a visual and aural perspective, offset the lower level of similarity between some of the relevant goods and services.

Therefore, since consumers may believe that the identical and similar goods and services at issue come from the same or from economically-linked undertakings, there is a likelihood of confusion on the part of the general public in the relevant territory. 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.

In its observations, the applicant argues that it owns several trade mark registrations which contain the letters ‘SES’, either as a prefix or as a suffix, and that these rights coexist peacefully with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

 

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict. Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

 

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved. Furthermore, the fact that other marks containing a sequence of letters ‘SES’ coexist with the opponent’s mark does not provide any relevant information as regards the assessment of whether there is or not likelihood of confusion between the marks under comparison, as they are not composed solely of this sequence.

 

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant also 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. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, since the signs analysed therein differ decisively in their beginnings. To the contrary, in the present case, the signs under comparison also coincide in their initial letters; therefore, the findings of those prior decisions cannot be transposed to the present case.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 758 808. It follows that the contested trade mark must be rejected for all the contested goods and services.

 

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation, as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(5) EUTMR.

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, 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

	Dorothée SCHLIEPHAKE	Gueorgui IVANOV		Jiri JIRSA

 

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.