APAISAC BIORGA | Decision 2344375 - MERCK SANTE (société par actions simplifiée) v. LABORATOIRES BAILLEUL INTERNATIONAL SA

Date Published: Oct 1, 2017

OPPOSITION No B 2 344 375

Merck Santé (société par actions simplifiée), 37 rue Saint Romain, 69008 Lyon, France (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Laboratoires Bailleul International SA, Rue de Lyon 109, 1203 Genève, Switzerland (applicant), represented by Cabinet Beau De Lomenie, 158 rue de L'Université, 75340 Paris Cédex 07 France (professional representative).

On 13/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 344 375 is upheld for all the contested goods.

2.        European Union trade mark application No 12 447 199 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent initially filed an opposition against part of the goods of European Union trade mark application No 12 447 199, namely against all the goods in Class 5. On 13/11/2014 the applicant filed a division request for non-contested goods in Class 3. Therefore, only goods in Class 5 were maintained in EUTM No 12 447 199.The opposition is based on European trade mark registration No 1 164 870. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 21/01/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 21/01/2009 to 20/01/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5:        Pharmaceutical products.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 27/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 01/04/2016 to submit evidence of use of the earlier trade mark. This deadline was further extended until 01/06/2016, which coincides with the date on which the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe some of the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

• Invoices, enclosures 22-33:

11 invoices dated from 2010 to 2014, issued to pharmacies in France. They refer to, amongst other items, ‘APAISYL GEL’, ‘BABYAPAISYL’, ‘CHOCAPAISYL’, ‘MYCOAPAISYL’, ‘CORTAPAISYL’, ASEPT APAISYL’, ‘BACTEO APAISYL’, ‘POUX APAISYL’, ‘APAISYL ONGLES ABIMÉS’, ‘APAISYL REPULSIF MOUSTIQUES’ and ‘APAISYL XPERT POUX ET LENTES’. The invoices include reference numbers, quantity of goods sold and total amounts.

• Press clips, enclosures 10, 16, 18, 19, 20, 30, 32:

Article in French ‘Antiallergiques: ils servent aussi l’été’ in Top Santé of July 2009, article ‘Bouton de fièvre? Venez-en à bout!’ of 2010 in ‘France Dimanche’ making reference to ‘HerpApaisyl’. An extract from the website www.magazine.merckgroup.com (M-The Explorer Magazine) dated 2012 with an article in English on lice and advertising the shampoo preparation ‘Apaisyl Poux’. Article ‘Bouh, les poux!’ in Enfant Santé magazine dated 2011. Article ‘Ne cherchez plus les poux…’ in Santé magazine dated 2011. Article in French ‘Apaisyl Détect Lentes’ in Le Pharmacien de France dated 2014. An article in French, ‘Apaisyl, la marque experte des agressions de la peau’, in the French magazine Doses dated 2014.

• Extracts from websites, enclosures 1-2:

cocooncenter.co.uk, powersante.com, idruginfo.com dated 09/08/2012 and 16/10/2012 showing the mark ‘Apaisyl’ and several figurative versions thereof in relation to products to be used to treat skin conditions, namely insect bites, bumps and contusions, nail mycosis, lice, nits and mosquitoes, cracks and crevices, as well as antibacterial solutions/gels/sprays.

• Brochures enclosures 3, 26:

Brochures in French dated 2009, 2010 and 2011 for several Apaisyl products such as ‘mycoApaisyl’, ‘cortApaisyl’, ‘pouxApaisyl’ or ‘Apaisyl ongles abîmés’. Borchures in French for ‘Apaisyl répulsif moustiques’ and ApaisylXpert’ dated March 2013.

• Enclosure 6, invoices for advertisement campaigns for ‘Apaisyl’ products in several French medias dated 2009, 2010, 2011.

• Enclosure 12, screenshot of the youtube.com website with a still from a video called ‘Apaisyl Gel’, showing a scenario where a woman scratches her leg with a rake. At the bottom of the still, a pack of gel is depicted, showing the ‘Apaisyl’ mark.

The figurative marks depicted in the evidence are, amongst others, the following:

   

  

The documents listed above show that the place of use is France. This can be inferred from the language of most of these documents that is French, the currency mentioned, euro, and the addresses of the clients that are all in France. The applicant argues that the use in France only is not sufficient to prove the place of use however, depending on the relevant facts and circumstances of the case, the use of a European Union trade mark in one Member State only or even in one city may be geographically sufficient (15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57). Therefore, in view of the evidence provided, the Opposition Division considers that it relates to the relevant territory of the European Union.

As regards the time of use, all of the necessary evidence provided is dated within the relevant period.

Furthermore, the documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use. The invoices submitted refer to several years within the relevant period and demonstrate the frequency of use of the marks during that period. The evidence indicates a certain commercial volume of use and demonstrates that sales of goods offered under the earlier marks were made to various clients in France. This is corroborated by the brochures and the press clips showing the different products sold under the mark.

Therefore, it is clear from the evidence submitted that the opponent distributed or provided goods under the earlier mark in the relevant market, and it gives the Opposition Division sufficient information regarding the commercial activities of the opponent throughout the relevant period. In any case, the documents prove that use of the mark has been more than mere token use.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, some of the signs shown in the evidence contain additional elements, which are missing in the registration, namely verbal elements such as ‘Myco’, ‘Poux’, ‘Gel’, ‘Baby’, ‘Asept’ or ‘Choc’, and, when compared to the word mark ‘APAISYL’, some figurative elements in the form of a certain typeface, background, colouring and an underline.

In the case of word marks, it is the word as such that is protected and not its written form. It follows that the mark may be depicted in different standard typefaces, the use of upper or lower case lettering being immaterial. Therefore, the Opposition Division finds that use of the mark with additional figurative elements, at the same time, constitutes use of the registered work mark, since these additional figurative elements are not of such nature as to alter the distinctive character of the word mark.

In reference to the additional verbal elements, it has to be noted that they are used in a way that the element ‘Apaisyl’ remains an individual element. Furthermore, they are partly descriptive (e.g. ‘Poux’, ‘Gel’, ‘Baby’) and partly allusive (e.g. ‘Myco’, ‘Asept’) of the goods in question, at least for a part of the relevant public. Consumers, and for some of the elements in particular the French-speaking part of the public, will merely perceive them as descriptive or alluding to the specific use and indications of the goods (namely that they are intended for babies, for mycoses, or that they have aseptic characteristics). Moreover, it is common in the field of pharmaceuticals to use sub-brands for different indications under one family brand. Therefore, they do not alter the distinctive character of the marks as registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the products covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub category or sub categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence shows genuine use of the trade mark for dermatological preparations for topical use and antiseptics. These goods form an objective subcategory of the opponent’s pharmaceutical products. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for the aforementioned goods.

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.

1. The goods

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

Class 5: Dermatological preparations for topical use; antiseptics.

The contested goods are the following:

Class 5: Pharmaceutical preparations; sanitary preparations for medical purposes; foods and dietetic substances adapted for medical use; food supplements for human beings; nutritional supplements; chemical preparations for medical or pharmaceutical purposes; medicinal herbs; herbal teas for medicinal purposes.

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 pharmaceutical preparations; sanitary preparations for medical purposes; chemical preparations for medical or pharmaceutical purposes include, as broader categories the opponent’s dermatological preparations for topical use. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested foods and dietetic substances adapted for medical use; food supplements for human beings; nutritional supplements are similar to the opponent’s dermatological preparations for topical use since they can also have dermatological indications (for example measles, chicken pox or other infections that affect the skin). Moreover, they can have the same producers, distribution channels and end users.

The contested medicinal herbs; herbal teas for medicinal purposes have therapeutic properties for use in medical and that contribute to the health and balance of individuals. As such, they are, at most, similar to a low degree to the opponent’s dermatological preparations for topical use; antiseptics. Indeed, despite having different methods of use and different indications, they have a similar overall purpose. Furthermore, the distribution channels and the end users also coincide.

2. 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 several degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (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.

Therefore, the degree of attention will be high with regards to pharmaceuticals and might vary from average to above average for goods such as medicinal herbs, depending on the impact the latter might have on health.

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

3. The signs

APAISYL
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The applicant argues that the sequence of letters ‘APAIS’, that the signs have in common, alludes to the French word ‘apaiser’ (to calm down). However, even if it might be the case, the signs are meaningless for a significant part of the relevant public, namely for the non-French speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The signs have no elements that could be considered clearly more distinctive than other elements.

Although there is no elements that could be considered clearly more dominant than other elements in the contested sign, due to its position and its slightly smaller size, the Opposition Division considers that the verbal element ‘Biorga’ occupies a secondary role within the sign as it is set back from the other element and that its impact on consumer will be reduced compared to the other verbal element.

Account is also taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the letters/sounds ‘APAIS’ at the beginning of both signs. They differ in the letters/sounds ‘YL’ at the end of the earlier mark and in the letters/sounds ‘AC’ at the end of the first verbal element of the contested sign. They also differ in the verbal element ‘BIORGA’ that has no equivalent in the earlier mark. Nevertheless, for the reasons explained above, this element will not have as much of an impact on consumers and is more likely not to be pronounced by consumers that might perceive it as the name corresponding to an umbrella brand. Furthermore, although the contested sign is a figurative mark, it is represented in a relatively standard black typeface. Consequently, the signs are visually similar to an average degree and aurally to a high degree.

Conceptually, although consumers will perceive the verbal element ‘BIORGA’ in the contested sign as designating the commercial origin of the goods in question, 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.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). Moreover, 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.

In the present case, the signs are visually similar to an average degree and aurally to a high degree on account of the similarities existing between the verbal elements ‘APAISYL’ of the earlier mark and ‘APAISAC’ of the contested sign. Indeed, these elements coincide in five out of seven of their letters, which moreover, are placed at the beginning of the signs. Furthermore, the element ‘BIORGA’ of the contested sign, placed underneath the other verbal element, at the lower right hand side, especially because it is placed in this very particular position, will not have as much impact on consumers than the first verbal element, that will be the one used to refer to the sign.

Account must also be taken of the fact that aural similarities, in particular, have a greater impact with regard to pharmaceuticals, which are traditionally ordered aurally, whereas visual differences may be overlooked more easily on handwritten prescriptions.

Taking into account all the relevant factors in the present case, including the principle that 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), the Opposition Division finds that the relevant public , despite a heightened level of attention as regards some of the goods in question, could be mistaken about the origin of those goods which have been found to be identical or similar to several degrees.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Considering all the above, there is a likelihood of confusion on the part of the general public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 1 164 870. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Pedro JURADO MONTEJANO

Sandra IBAÑEZ

Begoña URIARTE VALIENTE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.