AXICORP ALLIANCE | Decision 1967424
Date Published: Sep 28, 2017
OPPOSITION No B 1 967 424
Alliance Pharmaceuticals Limited, Avonbridge House, 2 Bath Road, Chippenham, Wiltshire SN15 2BB, United Kingdom (opponent), represented by Mewburn Ellis LLP, City Tower, 40 Basinghall Street, London EC2V 5DE, United Kingdom (professional representative)
a g a i n s t
AxiCorp GmbH, Max-Planck-Str. 36b, 61381 Friedrichsdorf, Germany (holder), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany (professional representative).
On 11/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 967 424 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 and services of international registration designating the European Union No 1 072 913 for goods and services in Classes 3, 5, 10 and 35. The opposition is based on European Union trade mark registrations No 2 816 098 and No 2 816 064 in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR, and on the earlier sign used in the course of trade for ‘ALLIANCE’, in relation to which the opponent invoked Article 8(4) EUTMR.
The signs
ALLIANCE (EU No 2 816 098)
(No 2 816 064) | AXICORP ALLIANCE |
Earlier trade marks | Contested sign |
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.
For international registrations designating the European Union, the ‘date of publication’ 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 six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). 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 European Union trade mark registrations No 2 816 098 and No 2 816 064.
The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date.
The relevant date (first republication of the contested international registration plus six months) is 29/10/2011. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 29/10/2006 to 28/04/2011 inclusive.
Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:
Class 5: Pharmaceutical preparations but not including infants' and invalids' foods and chemical preparations for pharmaceutical purposes.
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 17/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 22/05/2016 to submit evidence of use of the earlier trade marks. The deadline was extended until 22/07/2016. On 22/07/2016, within the time limit, the opponent submitted evidence of use. Furthermore, the evidence from the opponent regarding its further facts evidence and arguments of 16/04/2012 will also be taken into consideration for this purpose.
The evidence to be taken into account is, in particular, the following:
- Some packages showing the following trade marks:
‘Nu-Seals’ with the figurative mark ‘ALLIANCE’ underneath, for gastro-resistant tablets with a description in English, dated 2008; ‘Periostat’ with the figurative mark ‘ALLIANCE’ underneath, for doxiciclina with a description in Italian, dated 2007; ‘Periostat’ with the figurative mark ‘ALLIANCE’ underneath, for Doxiciclina with a description in Spanish, dated 2010; ‘Atrax’ with the figurative mark ‘ALLIANCE’ underneath, for hydroxyzine hydrochloride with a description in English, dated 2010.
- Four invoices, dated 19/02/2007, 08/02/2008, 04/03/2009, 13/01/2011 from ‘Alliance Pharmaceuticals Limited’ to several clients in the United Kingdom (3) and Malta (1). In the invoices, on the left side, the article numbers are mentioned together with a description of the marks, which are, inter alia, Atarx, Lysovir, Calcium Sandoz Syrup, Biorphen, Hydromol, Forceval, Symmetrel, Periostat, Deseril, Naseptin, Cafergot, Forceval, Nu-Seals, Permitabs, Forceval, Hygroton, Hydromol, Sinthrome, Dermamist. Even though the invoices do not show the mark ‘ALLIANCE’ as such, on the packaging of the products it is mentioned, as can be seen from the samples of the packages shown above.
- Some extracts from MIMs, the Monthly Index of Medical Specialities, showing the appearance of various of the opponent’s products, together with the pages on which the impressum appears. As can be seen from the impressa, MIMS has been providing GPs (general medical practitioners) with independent information on prescription medicines since its launch in 1959. It is a publication that is frequently referred to by general medical practitioners, as well as other healthcare professionals. The provided extracts are from December 2006 and 2007, November 2008 and 2009, February 2010, May 2010 and September 2011. The pages refer to several pharmaceutical preparations for all kinds of treatments of diseases, for example ‘aspirin used to help prevent heart attacks and strokes’, ‘creams, emollients and ointments for moisturising and treatment of dry skin conditions such as eczema’, ‘Amantadine, used in the treatment of Parkinson’s disease’, ‘a combination of oxytocin and ergometrine used during the last stage of childbirth or following delivery of the placenta to prevent excessive bleeding’, ‘antihistamine for itching associated with acute or chronic urticaria’, just to mention a few. On all the packages that appear on the extracts, the figurative mark ‘ALLIANCE’ is clearly mentioned, for example as on the following images: , , .
- Extracts from Annual Reports of Alliance Pharma plc, which is the parent company of the opponent, as can be seen from the final page in the extracts from the 2007 and 2011 Annual Reports. The extracts from the reports from 2007, 2008, 2009, 2010 and 2011, all show the ‘ALLIANCE’ trade mark, including on the packaging for the products Periostat, Naseptin, Symmetrel, Syntocinon, Alarax, Deltacortel. The mark appears on a substantial number of the opponent’s products, as well as those indicated. Also indicated are the sales revenue for the group (of which the opponent is a subsidiary), the geographical destination of the sales, as well as the use of ‘ALLIANCE’ as part of the company name. In the Annual Report of 2011, the extracts show the ‘ALLIANCE’ trade mark on the front cover and also indicates that the sales in the United Kingdom were GBP 37.3 million and in the rest of the European Union it was GBP 6.2 million. Furthermore, a five year summary is included for the years 2007 to 2011 which shows the revenue of Alliance Pharmaceuticals Limited.
- An ‘Annual Report and accounts for the year ending on 31/12/2009’, mentioning the figurative mark ‘ALLIANCE’ and describing that Alliance sells a range of over 50 acquired and licensed prescription products across a range of therapeutic categories. The group commenced trading in 1998 and has since grown to an annual turnover of over GBP 30 million. The report shows packages of pharmaceuticals showing the mark and gives a history of the company with a description of some of the products they are selling.
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).
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.
The way in which the specification is worded, namely pharmaceutical preparations but not including infants' and invalids' foods and chemical preparations for pharmaceutical purposes, means that the pharmaceutical preparations do not include infants’ and invalids’ foods nor any chemical ingredients. This means that the earlier marks are only registered for natural remedies/preparations not including chemical substances. However, from the evidence of use, it appears that the use only refers to synthetic components (hydroxyzine, amantadine, oxytocin, ergometrine, just to mention a few) and not to any natural preparations in Class 5.
These goods do not fall within any of the categories for which the earlier marks are registered. Therefore, the opponent has not shown use for the goods for which the marks are registered, but for other goods for which they have no protection.
The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during the relevant period of time. Consequently, the opposition has to be rejected as far as it is based on these earlier marks.
Therefore, the Opposition Division will now examine the opposition on the basis of Article 8(4) EUTMR.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
The opposition is also based on an earlier non-registered trade mark, namely the sign ‘ALLIANCE’, used in the course of trade in the United Kingdom and Ireland. In its further observations, the opponent makes reference only to an earlier non-registered mark under the law of passing off in the UK and Ireland for the following goods: pharmaceutical preparations and substances in Class 5.
According to Article 8(4) EUTMR, 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 will not be registered where and to the extent that, pursuant to the Union 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 European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
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 European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.
On 17/02/2012 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired, after several extensions, on 30/12/2015.
The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based. The evidence of use, filed to prove the use of the earlier marks, will not be taken into consideration, since it was not filed within the deadline of 30/12/2015 to substantiate its opposition.
The mere fact that the sign is registered in accordance with the requirements of the respective national law is not in itself sufficient for the application of Article 8(4) EUTMR. As mentioned above, the use requirement in Article 8(4) EUTMR applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a business identifier alone, that is, without any requirement relating to use.
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded, also insofar as this ground is concerned.
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 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 Rule 94(7)(d)(ii) EUTMIR, 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
Vít MAHELKA | Chantal VAN RIEL | Saida CRABBE |
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.