OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS)
Opposition Division
DECISION
of 10/03/2010
RULING ON OPPOSITION No B 1 414 277
Pharma Stulln GmbH
Werkstr. 3 92551 Stulln Germany
Engemannjörg-Berten Rechtsanwälte
Brandstr. 10 53721 Siegburg Germany
BIOLAN
against
Vion N.V.
Ncb Weg 10 5681 RH Best The Netherlands
Elzas Noordzij B.V.
P.O. Box 76842 1070 KC Amsterdam The Netherlands
Decision on Opposition No B 1 414 277 page: 2 of 6.
I. FACTS AND PROCEDURE
On 12/12/2007 the applicant filed application No 6 508 113 to register the trade mark shown on the cover page for goods in classes 3, 5, 16, 21, 22, 24, 25, 29, 30, 31, 32 and 33.
The opposition is directed against some of the goods covered by the contested trade mark, namely pharmaceutical and veterinary preparations; sanitary preparations for medical purposes in class 5.
The opposition is based on German trade mark registration No 39 916 473 of the trade mark shown on the cover page, filed on 19/03/1999 and registered on 21/06/1999 for goods in class 5.
The opposition is based on all of the goods covered by the earlier mark.
The grounds of the opposition are those laid down in Article 8(1)(b) of the Community Trade Mark Regulation (CTMR).
The opponent claims that there is likelihood of confusion because of the close similarity of the signs and the identity of the goods they cover. It claims that the common element, “bio” in the marks is distinctive and refers to registered German trademarks where the word BIO is the only distinctive element of the marks.
The applicant states that the element “bio” of the marks is descriptive and denies the similarity of the marks.
II DECISION
1. Likelihood of Confusion – Article 8(1)(b) CTMR
a) Comparison of the goods
In assessing the similarity of the goods concerned, all the relevant factors relating to these goods should be taken into account. These factors include, inter alia, their nature, their purpose of use and their method of use and whether they are in competition with each other or are complementary (see Judgment of the Court of Justice, Case C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (‘Canon’) [1998] OJ OHIM 12/98, p 1419, paragraph 23).
Further factors include the purpose of the goods and services, whether or not they may be expected to be manufactured, marketed or provided by the same undertaking, or by economically linked undertakings, as well as their distribution channels and sales outlets.
The goods on which the opposition is based are the following:
Decision on Opposition No B 1 414 277 page: 3 of 6. Hyaluronan-containing pharmaceutical preparations for opthalmology in class 5.
The contested goods are the following:
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes in class 5.
Contested goods in class 5:
The opponent’s hyaluronan-containing pharmaceutical preparations for opthalmology are contained in pharmaceutical preparations of the applicant and are identical.
Hyaluronan-containing pharmaceutical preparations for ophthalmology of the earlier and veterinary preparations are identical. Veterinary preparations can be pharmaceuticals. The fact that the former are produced for administering to animals cannot change the finding that they are or can be pharmaceutical preparations. In fact, some pharmaceuticals for humans are also used for animals.
Sanitary preparations for medical purposes in class 5 of the applicant can be used in conjunction with hyaluronan-containing pharmaceutical preparations for ophthalmology of the earlier mark and are thus complementary. For example, sanitary preparations for medical purposes can be used to clean the eyes before applying hyaluronan- containing pharmaceutical preparations for ophthalmology. These goods can be produced by the same pharmaceutical companies and can be distributed through the same trade channels, for example chemists.
Thus, the goods in conflict are identical and similar.
b) Comparison of the signs
The signs to be compared are the following:
BIOLAN
Earlier trade mark The relevant territory is Germany.
Contested trade mark
Visually, both marks contain the element “bio” albeit in a stylised form in the contested mark and at the beginning of a word in the opponent’s mark. The marks differ in the letters “LAN” of the earlier mark and in the colours, four-sided device and butterfly representation of the contested mark. Bearing in mind the foregoing the Office considers that there is a medium degree of visual similarity.
Decision on Opposition No B 1 414 277 page: 4 of 6.
Aurally, the element “bio” is pronounced identically in both marks. The earlier mark has a longer pronunciation because of the additional syllable “lan”. Thus, the Office considers that there is a medium degree of aural similarity.
Conceptually, the element “bio” in both marks means biological. The word “BIOLAN” has no meaning in German. Thus, the marks are conceptually similar insofar as they contain the element “bio”.
c) Global assessment
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see Judgment of the Court of Justice, Case C-251/95, Sabèl BV v Puma AG, Rudolf Dassler Sport
(‘Sabèl’) [1997] OJ OHIM 1/98, p. 91, paragraph 22 et seq.).
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see Judgment of the European Court of Justice, Case C-39/97 Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc. (‘Canon’) [1998], OJ OHIM, No 12/98, p. 1419, paragraph 17 et seq.).
For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Judgment of the Court of Justice Case C-342/97, Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (‘Lloyd’), OJ OHIM No 12/1999, p. 1585, paragraph 26).
The goods have been found to be partially identical and partially similar and they are directed at the public at large and at a professional medical public.
In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken of all relevant factors and, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered (see Lloyd, paragraph 28 et seq.).
Decision on Opposition No B 1 414 277 page: 5 of 6.
As to the distinctive character of the earlier mark, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
In the present case, it is important to note that the element bio, contained in the earlier mark, means “biological” i.e. relating to biology (as defined by the on-line Collins English dictionary) which is the study of living plants and animals. This element comes from the Greek word “bios” meaning life and is considered to have a low inherent distinctiveness as it will be perceived by the relevant public as an indication that the products contain natural and biological substances.
When a term is descriptive, it becomes a weak element of the sign and consumers will not pay as much attention to this element as to the other more distinctive elements of the mark in this case being the element “lan” which has no meaning in relation to the goods.
It is considered that the visual, aural and conceptual similarities between the signs are not enough to counteract the visual and aural dissimilarities especially as the only element in which the marks coincide, namely the verbal element “bio”, has a low distinctive character.
Considering all the above, the Office finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
II. COSTS
According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) of Community Trade Mark Implementing Regulation (CTMIR), 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.
Decision on Opposition No B 1 414 277 page: 6 of 6.
THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS)
DECIDES TO:
-
Reject opposition number B 1 414 277 in its entirety.
-
Order the opponent to bear the costs, which are fixed as follows:
Costs of representation EUR 300 _______ Total amount EUR 300
The Opposition Division
Alvaro Sesma Deirdre Quinn Chantal van Riel
Under Article 59 CTMR any party adversely affected by this decision has a right to appeal against this decision. Under Article 60 CTMR notice of appeal must be filed in writing at the Office within two months from the date of notification of this decision and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. Under Rule 94(4) CTMIR such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) of the Community Trade Mark Fees Regulation (CTMFR)) has been paid.