OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
Opposition Division
OPPOSITION No B 2 337 726
Bayer Aktiengesellschaft, Kaiser-Wilhelm-Allee, 51373 Leverkusen, Germany
(opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain
(professional representative)
against
UNI - Pharma Kleon Tsetis Pharmaceutical Laboratories Industrial and
Commercial SA (trading as UNI - Pharma S.A.), Ethniki Odos I, Km 14, 145 64 K.
Kifisia, Greece (applicant), represented by Christos Chrissanthis & Partners Law
Firm, 12 Solonos Street, 2nd floor, 106 73, Athens, Greece (professional
representative).
On 29/10/2015, the Opposition Division takes the following
DECISION:
1.
Opposition No B 2 337 726 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 Community trade mark
application No 12 351 458. The opposition is based, inter alia, on German trade mark
registrations No 36 433 and No DD618 274, and Polish trade mark registration No
105 171. The opponent invoked Articles 8(1)(b) and 8(5) in relation to the
aforementioned earlier rights and 8(4) CTMR in relation to the non-registered sign
below:
REPUTATION – ARTICLE 8(5) CTMR
, for reasons of procedural economy, the Opposition Division will first examine the
opposition in relation to the German trade mark registrations No 36 433 and No
DD618 274, and Polish trade mark registration No 105 171.
According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade
mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be
registered where it is identical with, or similar to, the earlier trade mark and is to be
registered for goods or services which are not similar to those for which the earlier
Decision on Opposition No B 2 337 726
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trade mark is registered, where, in the case of an earlier Community trade mark, the
trade mark has a reputation in the Community and, in the case of an earlier national
trade mark, the trade mark has a reputation in the Member State concerned and
where the use without due cause of the contested trade mark would take unfair
advantage of, or be detrimental to, the distinctive character or the repute of the
earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) CTMR are only applicable when the
following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also
be prior to the filing of the contested trade mark; it must exist in the territory
concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage
of, or be detrimental to, the distinctive character or repute of the earlier trade
mark.
The abovementioned requirements are cumulative and, therefore, the absence of
any one of them will lead to the rejection of the opposition under Article 8(5) CTMR
(judgment of 16/12/2010, joined cases T-345/08 and T-357/08, ‘BOTOCYL’,
paragraph 41). However, the fulfilment of all these conditions may not be sufficient.
The opposition may still fail if the applicant establishes due cause for the use of the
contested trade mark.
In the present case, the applicant did not claim to have due cause for using the
contested mark. Therefore, in the absence of any indications to the contrary, it must
be assumed that no due cause exists.
a)
The signs
1) DE 36 433
Aspirin
2) DE DD618 274
3) PL 105 171
Earlier trade marks
Contested sign
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The relevant territory is Germany (DE 36 433 and DE DD618 274) and Poland (PL
105 171).
Visually, earlier marks 1) and 3) are figurative marks. Earlier mark 2) is a verbal
mark, Aspirin. Earlier mark 1) consists of the word ‘Aspirin’, written rather in standard
letters. Earlier mark 3) consists of the shape of a packaging in white, green and
yellow bearing the rather standard black wording ‘ASPIRIN-C’ and a device element
similar to two tablets. The marks include some other verbal elements but these are
so small that they are not readable. The contested sign consists of the word
‘SALOSPIR’ in standard black letters within a background in white and different
shades of green. The mark also includes the shape of a tablet bearing the indication
500mg. The signs are similar to the extent they include the letters ‘S-P-I-R’.
Regarding earlier mark 3), the signs are similar also to the extent they include the
colours green and white and the shape of the tablets. However, in the earlier mark 3
the shape is slightly different and there are two tablets in the earlier mark rather than
one, as there is in the contested mark. The marks differ in the letters ‘A-_-_-_-_-I-N’
of the earlier marks, the letter ‘C’ of earlier mark 3), the letters ‘S-A-L-O’ and the
indication ‘500mg’ of the contested sign and the figurative elements of earlier marks
2) and 3) and the figurative elements of the contested sign.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory the pronunciation of the signs coincides: in the sound of the letters ‛SP-I-R’ present in the signs, and to that extent the signs are aurally similar. The
pronunciation differs in the sound of the letters ‘A-_-_-_-_-I-N’ of the earlier marks and
in the case of earlier mark 3) also in the letter ‘C’, and in the letters ‘S-A-L-O’ at the
beginning of the contested sign and in the sound of the indication ‘500mg’ of the
contested sign.
Conceptually, the representations of tablets in the marks will be recognised as such by
the relevant public. The element ‘500mg’ of the contested sign will be perceived as an
indication of the dosage, i.e. 500 milligrams. The wording ‘SALOSPIR’ of the contested
sign has no meaning for the relevant public. Likewise, the word ‘ASPIRIN’ of the earlier
marks will be instantly recognised by the relevant public as a well-known medication
used to treat pain, fever, and inflammation. The letter ‘C’ of earlier mark 3) will be
perceived by the relevant public as an abbreviation of vitamin C.
Therefore, the signs are conceptually similar to the extent that they refer to a medicine
present in the form of tablets.
Taking into account the abovementioned visual, aural and (only to some extent)
conceptual coincidences, the signs under comparison are similar only to a certain
degree.
a)
Reputation of the earlier trade mark
According to the opponent the earlier marks have a reputation. In particular, the
opponent claims that the earlier DE No 36 433 has a reputation in Germany for A
pharmaceutical product in Class 5; earlier DE No DD618 274 has a reputation in
Germany for pharmaceuticals, chemical products for medicinal purposes and health
care, pharmaceutical drugs, plasters, dressings, preparations for destroying animals
and herbicides, sterilization and disinfesting preparations (disinfectant) in Class 5 and
earlier PL No 105 171 has a reputation in Poland for Drugs, pharmaceuticals,
chemical products for health care in Class 5.
Decision on Opposition No B 2 337 726
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The contested goods are Pharmaceutical in Class 5.
The Opposition Division will proceed with the examination based on the assumption
that the earlier marks have a reputation.
b)
The ‘link’ between the signs
As seen above, the earlier marks were assumed to have a reputation and the signs
are only similar to a certain degree. In order to establish the existence of a risk of
injury, it is necessary to demonstrate that, given all the relevant factors, the relevant
public will establish a link (or association) between the signs. The necessity of such a
‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in
Article 8(5) CTMR but has been confirmed in the judgments of 23/10/2003, C-408/01,
‘Adidas’, paragraphs 29 and 31, and of 27/11/2008, C-252/07, ‘Intel Corporation’,
paragraph 66. It is not an additional requirement but merely reflects the need to
determine whether the association that the public might establish between the signs
is such that either detriment or unfair advantage is likely to occur after all of the
factors that are relevant to the particular case have been assessed.
Possible relevant factors for the examination of a ‘link’ include (judgment of
27/11/2008, C-252/07, ‘Intel Corporation’, paragraph 42):

the degree of similarity between the signs;

the nature of the goods and services, including the degree of similarity or
dissimilarity between those goods or services, and the relevant public;

the strength of the earlier mark’s reputation;

the degree of the earlier mark’s distinctive character, whether inherent or
acquired through use;

the existence of likelihood of confusion on the part of the public.
This list is not exhaustive and other criteria may be relevant depending on the
particular circumstances. Moreover, the existence of a ‘link’ may be established on
the basis of only some of these criteria.
The establishment of such a link, while triggered by similarity (or identity) between
the signs, requires that the relevant sections of the public for each of the goods and
services covered by the trade marks in dispute are the same or overlap to some
extent.
According to the Court of Justice of the European Union,
It is therefore conceivable that the relevant section of the public as
regards the goods or services for which the earlier mark was registered is
completely distinct from the relevant section of the public as regards the
goods or services for which the later mark was registered and that the
earlier mark, although it has a reputation, is not known to the public
targeted by the later mark. In such a case, the public targeted by each of
the two marks may never be confronted with the other mark, so that it will
not establish any link between those marks.
Decision on Opposition No B 2 337 726
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(Judgment of 27/11/2008, C-252/07, ‘Intel Corporation’, paragraph 48.)
The Court of Justice has also noted,
… that certain marks may have acquired such a reputation that it goes
beyond the relevant public as regards the goods or services for which
those marks were registered. In such a case, it is possible that the
relevant section of the public as regards the goods or services for which
the later mark is registered will make a connection between the conflicting
marks, even though that public is wholly distinct from the relevant section
of the public as regards goods or services for which the earlier mark was
registered.
(Judgment of 27/11/2008, C-252/07 ‘Intel Corporation’, paragraphs 51 and 52.)
In the present case, the signs contain significant dissimilarities. Although, they
coincide visually and aurally in some of their final letters and conceptually the earlier
mark 3) and the contested sign are similar to the extent they both refer to the concept of
tablet(s) the signs display also obvious differences that offset this similarity. They
differ in their initial letters, where normally the attention of the public is focused and in
their figurative elements.
In light of the foregoing, it appears that the relevant public is not likely to establish a
link between the marks. The differences between the signs are so great that the
consumer who encounters the contested application is unlikely to associate it with
the earlier marks.
Additionally, the level of attention in relation to the goods in question
(pharmaceuticals) is relatively high. It is apparent from the case-law that, so far as
pharmaceutical preparations are concerned, the relevant public’s degree of attention
is relatively high, whether or not issued on prescription (judgment of 15/12/2010, T331/09 ‘Tolposan’, para. 26 and judgment of 15/03/2012, T-288/08 ‘Zydus’ para. 36
and quoted case-law).
In particular, medical professionals have a high degree of attentiveness when
prescribing medicines. With regard to non-professionals, they also show a higher
degree of attention, regardless whether the pharmaceuticals are sold without
prescription, as these goods affect their state of health.
Overall, the Opposition Division find it unlikely that customers of normal perceptual
abilities would mistake the contested sign for the others, even if the marks are used
in connection with identical goods. The Opposition Division also sees no reason why
average customers would perceive a relationship or other connection between the
marks.
Therefore, taking into account and weighing up all the relevant factors of the present
case, the Opposition Division concludes that it is unlikely that the relevant public will
make a mental connection between the signs in dispute, that is to say, establish a
‘link’ between them. Therefore, the opposition is not well founded under Article 8(5)
CTMR and must be rejected.
The opponent claimed reputation also in relation to the following marks:
Decision on Opposition No B 2 337 726
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Community trade mark registration No 7 007 008 for the figurative mark
for pharmaceutical preparations in Class 5.
-
Community trade mark registration No 7 007 792 for the figurative mark
for pharmaceutical preparations in Class 5.
-
Community trade mark registration No 7 017 015 for the figurative mark
for pharmaceutical preparations in Class 5.
-
Community trade mark registration No 1 814 383 for the figurative mark
for pharmaceutical products in Class 5.
-
Community trade mark registration No 1 814 383 for the figurative mark
for pharmaceutical preparations in Class 5.
-
Community trade mark registration No 7 017 049 for the figurative mark
for pharmaceutical preparations in Class 5.
These earlier marks are purely figurative marks consisting of combinations of
colours. These marks are less similar to the contested sign. In particular, this is
because the contested mark includes the additional element ‘SALOSPIR’ that has no
counterpart in the earlier marks.
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LIKELIHOOD OF CONFUSION
The opponent based the opposition also on Article 8(1)(b) for the same
abovementioned earlier marks.
As seen above, the marks were considered to be not similar enough for consumers
to establish a link. Therefore, the opposition insofar is based on Article 8(1)(b) fails
for the same reasons as there cannot be a likelihood of confusion.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF
TRADE – ARTICLE 8(4) CTMR
According to Article 8(4) CTMR, upon opposition by the proprietor of a non-registered
trade mark or of another sign used in the course of trade of more than mere local
significance, the trade mark applied for shall not be registered where and to the
extent that, pursuant to the Community legislation or the law of the Member State
governing that sign:
(a)
rights to that sign were acquired prior to the date of application for registration
of the Community trade mark, or the date of the priority claimed for the
application for registration of the Community trade mark;
(b)
that sign confers on its proprietor the right to prohibit the use of a subsequent
trade mark.
Therefore, the grounds of refusal of Article 8(4) CTMR are subject to the following
requirements:

the earlier sign must have been used in the course of trade of more than local
significance prior to the filing of the contested trade mark;

pursuant to the law governing it, prior to the filing of the contested trade mark,
the opponent acquired rights to the sign on which the opposition is based,
including the right to prohibit the use of a subsequent trade mark;

the conditions under which the use of a subsequent trade mark may be
prohibited are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of
those conditions, the opposition based on a non-registered trade mark or other signs
used in the course of trade within the meaning of Article 8(4) CTMR cannot succeed.
a)
The right under the applicable law
Non-registered marks are generally protected against subsequent marks according
to the same criteria that are applicable to conflicts between registered marks, namely
identity or similarity between the signs, identity or similarity between the goods or
services, and the presence of a likelihood of confusion. In these cases, the criteria
developed by the courts and by the Office with regard to Article 8(1) CTMR can be
applied mutatis mutandis when examining Article 8(4) CTMR.
Decision on Opposition No B 2 337 726
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In the present case, the applicable German law, the German Trademark Act was
harmonised according to the Directive of the European Union that corresponds very
closely to the CTMR.
According to the Article 5 of the German Trademark Act, a business designation such
as a trade name comes into existence through the use in trade as a business sign, if
the sign is inherently distinctive.
Therefore, the opponent has acquired a valid earlier right under the governing law
which regulates the scope of protection as follows:
‘Article 15’.
(1) The acquisition of protection for a commercial designation shall confer on its
proprietor an exclusive right.
(2) Third parties shall be prohibited from using in the course of trade, without
authorization, the commercial designation or a similar sign in a manner capable of
causing confusion with the protected designation.
(3) Where the commercial designation has a reputation in this country, third parties
shall also be prohibited from using the commercial designation or a similar sign in the
course of trade if there is no risk of confusion within the meaning of subsection (2),
where the use of that sign without due cause takes unfair advantage of, or is
detrimental to, the distinctive character or the repute of the commercial designation.
(4) Any person who uses a commercial designation or a similar sign in breach of
subsections (2) or (3) may be sued by the proprietor of the commercial designation to
enjoin such use.’
The opponent invoked both Articles 15(2) and 15(3) of the German Trademark Act.
The Opposition Division will first examine the claim under Art. 15(3).
b)
Prior use in the course of trade of more than mere local significance
The condition requiring use in the course of trade is a fundamental requirement,
without which the sign in question cannot enjoy any protection against the
registration of a Community trade mark, irrespective of the requirements to be met
under national law in order to acquire exclusive rights. Furthermore, such use must
indicate that the sign in question is of more than mere local significance.
The object of the condition laid down in Article 8(4) CTMR relating to use in the
course of trade of a sign of more than mere local significance is to limit conflicts
between signs by preventing an earlier right which is not sufficiently definite – that is
to say, important and significant in the course of trade – from preventing registration
of a new Community trade mark. A right of opposition of that kind must be reserved
to signs with a real and actual presence on their relevant market. To be capable of
preventing registration of a new sign, the sign relied on in opposition must actually be
used in a sufficiently significant manner in the course of trade and its geographical
extent must not be merely local, which implies, where the territory in which that sign
is protected may be regarded as other than local, that the sign must be used in a
substantial part of that territory. In order to ascertain whether that is the case,
account must be taken of the duration and intensity of the use of the sign as a
distinctive element for its addressees, namely purchasers and consumers as well as
Decision on Opposition No B 2 337 726
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suppliers and competitors. In that regard, the use made of the sign in advertising and
commercial correspondence is of particular relevance. In addition, the condition
relating to use in the course of trade must be assessed separately for each of the
territories in which the right relied on in support of the opposition is protected. Finally,
use of the sign in the course of trade must be shown to have occurred before the
date of the application for registration of the Community trade mark (judgment of
29/03/2011, C-96/09 P, ‘Bud’, paragraphs 157, 159, 160, 163 and 166).
Reputation implies a knowledge threshold which is only reached when the earlier
sign is known by a significant part of the public to whom the goods and services are
targeted.
Consequently, proof of reputation is sufficient to prove ‘use in the course of trade’.
As shown above, the opponent was entitled to claim reputation under Article 15(3) of
the harmonized German law. Therefore, for reasons of procedural economy, the
Opposition Division will first examine the evidence of the reputation of the earlier
sign. In this sense, the criteria developed by the courts and by the Office for applying
Article 8(5) CTMR can be applied.
In the present case, the contested trade mark was filed on 28/11/2013. Therefore,
the opponent was required to prove that the sign on which the opposition is based
was used in the course of trade of more than local significance in Germany prior to
that date. The evidence must also show that the opponent’s sign has been used in
the course of trade for pharmaceuticals, chemical products for medicinal purposes
and health care, pharmaceutical drugs.
On 29/10/2014 the opponent submitted evidence of use in the course of trade. As the
opponent requested to keep certain commercial data contained in the evidence
confidential vis-à-vis third parties, the Opposition Division will describe the evidence
only in the most general terms without divulging any such data. The evidence
consists of the following documents:

A market survey carried out by an independent German research institute. The
survey was carried out between 01/08/2014 and 08/08/2014 among 970
interviewees (14 years and older). The survey shows that as much as 31.9% of
all
interviewees
spontaneously
associated
the
packaging
with ‘ASPIRIN’. 53.7% of the interviewees associated
the packaging
with a particular product or company.
Being asked for the name of this product or company the respondents
answered ‘ASPIRIN’ (41.6%) and BAYER (17.7%). The survey shows that
mainly due to the colours and the composition of the packaging the
interviewees representing the relevant public in Germany link the packaging
Decision on Opposition No B 2 337 726









page: 10 of 15
with the aspirin packaging, ASPIRIN, and/or the
Bayer (recognition rate: 64.7%). The survey is in German together with the
English translation.
Annual Reports 2004, 2005, 2006, 2007, 2008, 2009, 2010, 2011, 2012, 2013
of Bayer.
Extract from Wikipedia about Bayer.
Reader’s Digest’s ‘Most Trusted Brands’ dated 2014 consumers voted
‘ASPIRIN’ as Germany’s most trustworthy analgesic for the fourteenth
consecutive time.
A survey titled ’50 strategic case studies: The World’s OTC Master Brands –
‘ASPIRIN’ from 11/2002. This survey contains information about the worldwide
reputation of ‘ASPIRIN’. The survey shows that ‘ASPIRIN’ has more than twothirds of sales are generated in North America (33%) and Western Europe
(34%). Germany is the largest market for ASPIRIN in the Western Europe
region. In Germany,’ ASPIRIN’ ranked second in systemic analgesic in 2001.
Survey titled ‘Public Opinion Survey concerning the analgesic and painkillers
market’ carried out in 01/2014 among 601 persons between 25 and 75 years in
Greece shows that there exists a total brand awareness of 99% for ‘ASPIRIN’.
70% of the interviewees have bought an ‘ASPIRIN’ product. The colours green
(88%) and white (53%) were spontaneously associated with ‘ASPIRIN’. 95%
was able to identify a neutralized ‘ASPIRIN’ packaging.
National court decisions and a decision of the Office confirming the reputation
of the trade mark ‘ASPIRIN’.
Affidavit of Kristina Kersten, Trademark Counsel by Bayer Intellectual Property
GMbH (`’Bayer’) in Germany refers, inter alia, to the aforementioned Reader’s
Digest’s ‘Most Trusted Brands’, national court decisions and a decision of the
Office which confirm the reputation of the trade mark ‘ASPIRIN’. Furthermore,
the affidavit states that the continuous usage of a green/white packaging (with
small variations over the years) has led to an outstanding reputation and
recognition also of the packaging and specific colour scheme.
Printout from the website businessweek.com containing an overview of Bayer.
Extract form Wikipedia about Bayer AG.
The evidence submitted by the opponent clearly shows that the opponent’s earlier
non-registered sign
manner in the course of trade.
was used in a sufficiently significant
The evidence submitted by the opponent shows that the place of use is Germany.
This can be inferred in particular from the fact that the surveys were carried out in
German, in various German federal states (Bundesländer), namely in SchleswigHolstein, Hamburg, Hessen, Bayern, Sachsen, Berlin, Brandenburg, etc.
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The evidence is only partly dated before the relevant dates, however the evidence
dated after the relevant date clearly confirms a constant and regular use of the
opponent’s sign before the relevant date. The evidence shows that the opponent’s
sign has been used in the course of trade for pharmaceuticals, chemical products for
medicinal purposes and health care, pharmaceutical drugs.
The opponent requested the Opposition Division to keep certain commercial data
contained in the evidence confidential vis-à-vis third parties and although the
Opposition Division describes the evidence only in the most general terms the
evidence mentioned above provides sufficient information concerning the commercial
volume of use, the length of time of use and the frequency of use.
Consequently, the Opposition Division concludes that the opponent’s sign was used
in the course of trade of more than local significance in Germany for all the relevant
goods.
However, the evidence does not succeed in establishing that the opponent’s sign
acquired reputation on the German market. Indeed, the
documents submitted by the opponents, in particular, the survey carried out in
Germany by an independent German research institute between 01/08/2014 and
08/08/2014 shows that mainly due to the colours and the composition of the
packaging the interviewees representing the relevant public in Germany link the
packaging
with ASPIRIN, and/or the Bayer and/or the
aspirin packaging in general, without giving any details to which opponent’s aspirin
packaging the respondents refer (recognition rate: 64.7%). The ranking Reader’s
Digest’s ‘Most Trusted Brands’ or the survey ’50 strategic case studies refer to
‘ASPIRIN’ as being the most trustworthy analgesic. Likewise, the court decisions and
a decision of the Office confirm the reputation of the trade mark ‘ASPIRIN’. The
affidavit refers to the documents mentioned above and to the fact that the continuous
usage of a green/white packaging has led to certain recognition also of the packaging
and specific colour scheme, however, all these aforementioned data are not
conclusive as far as the reputation of the earlier sign in question is concerned and
they do not refer specifically to the sign, which has been invoked by the opponent
under Article 8(4) CTMR, namely
. The mere fact that the
Decision on Opposition No B 2 337 726
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German respondents associate a green/white packaging
with the word mark ‘Aspirin’ is not enough to conclude that the opponent’s sign
acquired the reputation through use on the German territory but
rather, as stated before, confirms an outstanding reputation and recognition of the
word mark ‘Aspirin’.
Although the opponent tries to link the success of its ‘Aspirin’ word mark with the sign
invoked above, the Opposition Division cannot assume that the reputation of the
earlier sign
is automatically shown.
Under these circumstances, since the opponent failed to prove that its earlier sign
has acquired a reputation through use in Germany the
Opposition Division will now proceed with the examination of the second hypothesis
mentioned in Article 15(2) of the German Trademark Act, namely to see whether a
contested sign is capable to cause a confusion with the opponent’s earlier sign
mentioned above.
c)
The opponent’s right vis-à-vis the contested trade mark
Likelihood of confusion
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
Decision on Opposition No B 2 337 726
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goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs and the relevant public.
The opponent must demonstrate that the applicant’s mark would be likely to lead the
public to believe that the applicant’s goods originate from the opponent
The contested trade mark must be likely to lead the public to believe that goods or
services to be offered by the applicant are the opponent’s goods or services.
Therefore, it is necessary to examine whether, on a balance of probabilities, it is
likely that a substantial part of the relevant public will be misled into purchasing the
applicant’s goods or services in the belief that they are the opponent’s.
Therefore, a comparison of the goods and the signs is required
1.
The goods
The opposition is directed against the following goods of the contested trade mark:
Class 5:
Pharmaceutical.
The opponent’s non-registered sign
is used for:
pharmaceuticals, chemical products for medicinal purposes and health care,
pharmaceutical drugs.
In the present case, the contested pharmaceutical are included in the opponent’s
pharmaceuticals, chemical products for medicinal purposes and health care,
pharmaceutical drugs. Therefore, they are considered identical.
2.
The signs
Earlier sign
The relevant territory is Germany.
Contested sign
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Visually, both marks are figurative marks. The earlier mark consists of the shape of
a packaging in white and green bearing the word ‘ASPIRIN’, written in rather
standard black typeface and a device element similar to two tablets. Furthermore,
there is also a figurative device in green, placed in the upper left corner and depicting
a circle containing two verbal elements BAYER representing in form of a cross.
There are also other verbal elements in white present in the sign, however they are
illegible. The contested sign consists of the word ‘SALOSPIR’ in rather standard
black letters within a background in white and different shades of green. The mark
also includes the shape of a tablet bearing the indication 500mg. The signs are
similar to the extent that they include the letters ‘S-P-I-R’. Additionally, they are
similar to the extent that they include the colours green and white and the shape of
the tablet(s), although in the earlier mark they are depicted in a different way and
they are two while in the contested sign there is only one. The signs differ in the
letters ‘A-_-_-_-_-I-N’ of the earlier mark and the letters ‘S-A-L-O’ and the indication
‘500mg’ of the contested sign and in the figurative elements present in both signs.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛S-P-I-R’
present in the signs, and to that extent the signs are aurally similar. The pronunciation
differs in the sound of the letters ‘A-_-_-_-_-I-N’ of the earlier mark and in the letters
‘S-A-L-O’ placed at the beginning of the contested sign and in the sound of the
indication ‘500mg’ of the same.
Conceptually, the shape of the two tables in earlier mark and the shape of the tablet in
the contested sign will be perceived as such by the relevant public. The element
‘500mg’ of the contested sign will be perceived as an indication of the dosage, i.e. 500
milligrams. The wording ‘SALOSPIR’ of the contested sign has no meaning for the
relevant public. Likewise, the word ‘ASPIRIN’ of the earlier marks has no meaning for
the relevant public. Therefore, earlier mark and the contested sign are similar to the
extent they both refer to the concept of a medicine in tablet(s).
Taking into account the abovementioned visual, aural and (only to some extent)
conceptual coincidences, the signs under comparison are similar only to a certain
degree
3.
Global assessment of the conditions under the applicable law
The conflicting goods have been found to be identical.
The signs share some visual and aural similarities. However, the signs in question
also present obvious differences that offset this similarity. In this respect, it should be
noted that ‘(…) assessment of the similarity between two marks means more than
taking just one component of a composite trade mark and comparing it with another
mark. On the contrary, the comparison must be made by examining each of the
marks in question as a whole, which does not mean that the overall impression
conveyed to the relevant public by a composite trade mark may not, in certain
circumstances, be dominated by one or more of its components’ (C-334/05 P,
‘Limoncello’, paragraph 41).
There are several visual and aural differences between the marks: the initial letters of
both signs, namely A-_-_-_-_-I-N’ and the letters ‘S-A-L-O’, the indication ‘500mg’ is
only present in the contested sign; the circle containing two verbal elements BAYER
of the earlier mark; the way the colours green and white and the shape and the
quantity of the tablets are represented in both signs.
Decision on Opposition No B 2 337 726
page: 15 of 15
Having regard to all the above, the Opposition Division considers that overall, the
similarities between the marks are not sufficient to cause confusion on the part of the
German public, even in respect of the identical goods. The differences between the
marks outweigh the similarities and will suffice to enable consumers that will show a
higher degree of attentiveness in relation to the goods in question to safely
distinguish between the signs.
Therefore, the opposition is not well founded under Article 8(4) CTMR.
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) 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.
The Opposition Division
Rhys MORGAN
Eamonn KELLY
Reiner SARAPOGLU
According to Article 59 CTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 60 CTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. Furthermore, a written statement of the grounds of appeal must be filed
within four months of the same date. 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. According to 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) CTMFR) has been paid.