AXANTON | Decision 2318692

Date Published: Sep 25, 2017

OPPOSITION No B 2 318 692

LEK farmacevtska druzba d.d., Verovskova 57, 1526 Ljubljana, Slovenia (opponent), represented by Milojevic, Sekulic & Associates, S.L., C/ Clara Campoamor Num. 5 BW-107, 03540 Alicante, Spain (professional representative)

a g a i n s t

Halina Z Malina, Tiefenaustr. 110, 3004 Bern, Switzerland (holder), represented by Sylwia Oleksiewicz, Marszałkowska 111, 00-102 Warszawa, Poland (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 318 692 is upheld for all the contested goods.

2.        International registration No 1 160 531 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 160 531 . The opposition is based on Slovenian trade mark registration No 8 580 511 ‘ANATON’. The opponent invoked Article 8(1)(b) EUTMR.

On 20/10/2015, the Opposition Division rendered a decision that resulted in the rejection of the opposition on the grounds that there was no likelihood of confusion.

The decision was appealed and the Board of Appeal decided in case R 2470/2015-2 on 22/09/2016. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the proof of use needed to be assessed and was of the opinion that, since the signs were found to be similar overall, a likelihood of confusion for a significant part of the relevant public in Slovenia could not be excluded for identical or similar goods.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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.

For international registrations designating the European Union, the ‘date of filing’ or, where applicable, the ‘date of priority’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be the date of registration, the date of subsequent designation of the European Union or the date of priority of the contested international registration, as applicable. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Slovenian trade mark No 8 580 511.

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 relevant date (first republication of the contested international registration plus six months) is 07/12/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Slovenia from 07/12/2008 to 06/12/2013 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, veterinary and sanitary preparations; dietetic substances adapted for children and patients; plasters, materials for dressings; disinfectants.

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 15/09/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/11/2014 to submit evidence of use of the earlier trade mark. On 20/11/2014, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• A sworn declaration by Tanya Leonard, the opponent’s Global Head of Trademarks, Domain Names and Copyrights, dated 05/11/2014. It states, inter alia, that the trade mark ‘ANATON’ has been used in Slovenia since 1988 in relation to a pharmaceutical preparation for the treatment of cardiovascular disorders. According to the affidavit, between 35 000 and 70 000 boxes of ‘ANATON’ are distributed each year.
• Two printouts containing a picture of the packaging of the pharmaceutical product bearing the trade mark in question.
• A product information leaflet of ‘ANATON’, dated 10/04/2009, with a translation of the relevant parts. It states that ‘ANATON’ is used for the treatment of hypertension.
• Six invoices accompanied by corresponding delivery notes covering the period from 27/06/2008 to 26/06/2013, which clearly refer to the trade mark in question.
• An information leaflet in which ‘ANATON’ is listed as one of the products for the treatment for hypertension.
• An extract from the opponent’s website, dated 16/03/2010, containing a product name index. ‘ANATON’ is mentioned there.
• A printout from the website www.ivz.si of the Medical Institute of Slovenia, listing ‘ANATON’ as one of its pharmaceutical products.
• Several price lists covering 2009-2013. The trade mark ‘ANATON’ is visible among other listed products.

As far as the sworn declaration is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The holder argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The holder’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices and delivery notes show that the place of use is Slovenia. This can be inferred from the language of the documents (Slovenian) and some addresses in Slovenia. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices, price lists and product information leaflet, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Although the invoices are not numerous, they show considerable sales figures, considering the relatively small territory concerned (more than 3 000 packages of ‘ANATON’ containing 20 or 90 pills in the invoices of 27/06/2008 and 07/07/2009, and around 1 000 units in the remaining invoices), and are evenly spread across the relevant period. The invoices and delivery notes together with the other evidence, such as the price lists, pictures of product packaging and product information leaflet, show that the mark has been genuinely used.

Moreover, contrary to the holder’s allegation, use of the mark need not be quantitatively significant for it to be deemed genuine.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

The evidence shows that the mark has been used as registered for at least some of the goods for which the mark is registered. The trade mark as registered is clearly depicted in the evidence submitted.

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;  12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish 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 goods 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 proves use only for pharmaceutical preparations for the treatment of hypertension. These goods can be considered to form an objective subcategory of pharmaceutical preparations, namely pharmaceutical preparations for treating hypertension. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for pharmaceutical preparations for treating hypertension.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 and for which use has been proven are the following:

Class 5: Pharmaceutical preparations for treating hypertension.

The contested goods, after a limitation, are the following:

Class 5: Pharmaceutical and veterinary products, excluding preparations for treating hypertension; dietetic food and substances for medical or veterinary use, excluding preparations for treating hypertension; food supplements for humans and animals, excluding preparations for treating hypertension; chemical preparations for medical or pharmaceutical use, excluding preparations for treating hypertension.

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.

In principle, specific pharmaceuticals are considered similar to other specific pharmaceuticals. In the present case, the contested goods in Class 5 explicitly exclude preparations for treating hypertension. However, the mere exclusion of pharmaceuticals for the treatment of medical conditions such as hypertension does not affect their similarity to pharmaceutical preparations for treating hypertension. This is because they have the same nature, being specific chemical products; their purpose is, broadly speaking, the same, namely healing and/or curing; they are sold in the same places, namely in pharmacies; and they come from the same source, namely the pharmaceutical industry. This industry manufactures a wide variety of drugs with various therapeutic indications, something the general public is aware of. Furthermore, their method of use might be the same. Therefore, it is considered that the contested pharmaceutical products, excluding preparations for treating hypertension are similar to the opponent’s pharmaceutical preparations for treating hypertension.

The same reasoning applies to the contested veterinary products, excluding preparations for treating hypertension, as a pharmaceutical preparation refers to any kind of medicine, that is, a substance or combination of substances for treating or preventing diseases in human beings or animals. These goods are therefore also similar to the opponent’s pharmaceutical preparations for treating hypertension.

The contested dietetic food and substances for medical or veterinary use, excluding preparations for treating hypertension; food supplements for humans and animals, excluding preparations for treating hypertension (which include medicated food supplements) are, or can thus be, substances prepared for special dietary requirements with the purpose of treating or preventing a disease. Bearing this in mind, their purpose is similar to that of the opponent’s pharmaceutical preparations for treating hypertension (substances used to treat a medical condition) insofar as they are used to improve a patient’s health. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

The contested chemical preparations for medical or pharmaceutical use, excluding preparations for treating hypertension and the opponent’s pharmaceutical preparations for treating hypertension have, broadly speaking, the same purpose, namely healing and/or curing. They also target the same public and generally have the same distribution channels. Moreover, they have the same origin, namely the pharmaceutical industry. Therefore, they are similar.

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 similar are directed at the public at large as well as at a professional public.

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 with or without prescription, as these goods affect their state of health.

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

3. The signs

ANATON
Earlier trade mark	Contested sign

The relevant territory is Slovenia.

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).

Both marks are composed of one word: ‘ANATON’ in the case of the earlier word mark and ‘AXANTON’ in the case of the contested figurative sign. The contested sign is depicted in slightly stylised upper case bold black letters. Neither of the signs has a meaning for the public in the relevant territory.

Visually, the signs coincide in the sequence of letters ‘A*TON’ and in the letters ‘A’ and ‘N’, although in reverse order: ‘NA’ in the earlier sign versus ‘AN’ in the contested sign. However, they differ in the additional letter ‘X’ of the contested sign and the graphic depiction of this sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛A*TON’, present identically in both signs. The signs also have similarities in the sound of the letters ‘A’ and ‘N’, although in reverse order. The pronunciation differs in the sound of the letter ‛X’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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. The opponent argues that, because the earlier mark is an invented word with no particular meaning, its degree of distinctiveness is above average, and cites the General Court decision of 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 62. In its decision, which is relevant to these proceedings, the Board held that this reasoning could apply to the earlier mark in this case. However, it also agreed with the reasoning of the Opposition Division, leading to a finding that, for the purpose of the present proceedings, the earlier mark has an average degree of distinctive character for the goods concerned. Therefore, for the purpose of these proceedings, the Opposition Division will consider that the distinctiveness of the earlier mark is normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the contested goods are similar to the opponent’s goods and the relevant public is the general public. The degree of attention will be higher than average.

The signs are visually and aurally similar to an average degree. Neither of the marks conveys any concept that could differentiate between them, and the earlier mark has an average degree of distinctiveness.

The Opposition Division considers that the differences between the signs are not sufficient to counterbalance the overall degree of similarity between them. Therefore, the relevant general public, even if it displays a higher than average degree of attention, may believe that the similar goods come from the same undertaking, or at least from economically-linked undertakings.

The holder argues that the trade mark ‘ANATON’ is maintained, artificially, locally in Slovenia only to preserve its trade mark rights and to block future registrations. Sandoz Pharma AG sells the same medicine (having the same composition) under the generic name ‘Enalapril’ in Europe. This argument is not relevant in the current opposition proceedings under Article 8(1)(b) EUTMR and must therefore be set aside.

Considering all the above, there is a likelihood of confusion on the part of the general public in Slovenia. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Slovenian trade mark registration No 8 580 511. 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 holder 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

Sam GYLLING

Katarzyna ZANIECKA

Pedro JURADO

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.