DIURERBE | Decision 2535162 - TERAPIA S.A. v. ESI S.P.A.

Date Published: Oct 1, 2017

OPPOSITION No B 2 535 162

Terapia S.A., Str. Fabricii no. 124, 400632 Cluj-Napoca, Romania (opponent)

a g a i n s t

Esi S.P.A., Corso Ferrari 74/6, 17011 Albisola Superiore (Savona), Italy, (applicant), represented by Lunati & Mazzoni S.R.L., Via Carlo Pisacane 36, 20129 Milano, Italy (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 535 162 is partially upheld, namely for the following contested goods:

Class 5:   Dietary and nutritional supplements; Vitamin supplements; Nutritional supplements; Anti-oxidant food supplements; Medicated food supplements; Mineral food supplements; Vitamin and mineral supplements; Dietary supplements for infants; Mineral dietary supplements for humans; Dietary supplements and dietetic preparations; Dietary supplemental drinks; Herbal dietary supplements for persons special dietary requirements; Herbal medicine; Extracts of medicinal herbs; Herbal teas for medicinal purposes; Herbal beverages for medicinal use; Medicinal herbal extracts for medical purposes; Herbal compounds for medical use; Purgatives; Tisanes [medicated beverages]; Diuretics; Diuretic preparations; Diuretic pharmaceutical preparations.

2.        European Union trade mark application No 13 816 699 is rejected for all the above goods.  It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 816 699, namely against all the goods and services in Classes 5 and 35. The opposition is based on Romanian trade mark registration No 47 953. The opponent invoked Article 8(1)(b) and (5) 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 Romanian trade mark No 47 953 on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered on 17/09/2001,  more than five years prior to the relevant date mentioned above.

The contested application was published on 17/03/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Romania from 17/03/2010 to 16/03/2015 inclusive.

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

Class 5:  Pharmaceutical products, medicines under the form of capsules.

Class 35:  Publicity and business.

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 01/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 06/05/2016 to submit evidence of use of the earlier trade mark. On 12/04/2016, within the time limit, the opponent submitted evidence of use. On 27/10/2015, the opponent had already submitted evidence referring to the alleged reputation of its mark.

The evidence to be taken into account is the following:

• A study of the Romanian company CEGEDIM (a company which monitors the pharmaceutical market in Romania), dated 17/04/2015, according to which the product DIUREX is placed 8th amongst the top 30 generic products on the Romanian drugs market in the year 2014.
• Several press clippings, undated, dealing with the generic medicine market in Romania and confirming that DIUREX stood in the years 2013 and 2014 on 10th position of the most sold generic and resp. that the amount of sales reached from July 2013 to June 2014 about 7.5 million Euros. These articles refer as their source of the economic data to the opponent, who quoted data of CEGEDIM.
• About 60 delivery invoices, dated between March 2010 and February 2015, addressed to various clients in different districts and towns of Romania. All the invoices display the sign ‘DIUREX’, mainly in connection with capsules.
• One copy of a sample of packaging, with a clear reference to the mark ‘DIUREX’ in connection with capsules.

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

All of the evidence is dated within or refers to 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.

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.

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 (judgment of 11/03/2003, C-40/01, ‘Ansul’ and judgment of 12/03/2003, T-174/01, ‘Silk Cocoon’).

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

According to Article 42(2) CTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, 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.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 5: Medicines under the form of capsules.

The invoices proof only sales of DIUREX in form of capsules, and no evidence is submitted concerning the services in Class 35.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition. Part of the evidence was submitted to prove, according to the opponent, reputation according to Art 8 (5) EUTMR and/or enhanced distinctiveness. For reasons of procedural economy the Opposition Division will deal with this subject maters later.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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: Medicines under the form of capsules.

The contested goods and services are the following:

Class 5:  Dietary and nutritional supplements; Vitamin supplements; Nutritional supplements; Anti-oxidant food supplements; Medicated food supplements; Mineral food supplements; Vitamin and mineral supplements; Dietary supplements for infants; Mineral dietary supplements for humans; Dietary supplements and dietetic preparations; Dietary supplemental drinks; Herbal dietary supplements for persons special dietary requirements; Herbal medicine; Extracts of medicinal herbs; Herbal teas for medicinal purposes; Herbal beverages for medicinal use; Medicinal herbal extracts for medical purposes; Herbal compounds for medical use; Purgatives; Tisanes [medicated beverages]; Diuretics; Diuretic preparations; Diuretic pharmaceutical preparations.

Class 35:  Wholesale services in relation to dietary supplements; Retail services in relation to dietary supplements.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods

The contested Diuretics; Diuretic preparations; Diuretic pharmaceutical preparations are included or overlap with the opponent’s medicines in the form of capsules. Therefore, they are identical.

The contested Dietary and nutritional supplements; Vitamin supplements; Nutritional supplements; Anti-oxidant food supplements; Medicated food supplements; Mineral food supplements; Vitamin and mineral supplements; Dietary supplements for infants; Mineral dietary supplements for humans; Dietary supplements and dietetic preparations; Dietary supplemental drinks; Herbal dietary supplements for persons special dietary requirements are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to the opponent’s medicines in the form of capsules because they can serve all to improve the human health either with the help of special diets and supplements or by taking medicines. Furthermore they may be in competition and may coincide in their distribution channels and relevant public. Therefore, these goods are considered similar.

The contested Herbal medicine; Extracts of medicinal herbs; Herbal teas for medicinal purposes; Herbal beverages for medicinal use; Medicinal herbal extracts for medical purposes; Herbal compounds for medical use; Purgatives; Tisanes [medicated beverages] are all substances used for medical or medicinal purposes, with the aim to improve the health of the persons using them. Bearing this in mind, their purpose is similar to the opponent’s medicines in the form of capsules because they can serve all to improve the human health either with the help of special herbs or herbal beverages. Furthermore they may be in competition and may coincide in their distribution channels and relevant public. Therefore, these goods are considered similar.

Contested services

The contested Wholesale services in relation to dietary supplements; Retail services in relation to dietary supplements and the opponent’s medicines in the form of capsules in Class 5 are not similar. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar. Therefore, the aforementioned goods and services are dissimilar.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35. Therefore the wholesale services in relation to dietary supplements are dissimilar to the opponent’s goods.

 

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 identical or similar are directed at the public at large and as well 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.

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

3. The signs

DIUREX	DIURERBE
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 signs are word marks, consisting of 6 resp. 8 letters, and as such, do not have any meaning in the Romanian language. Furthermore, DIUR- or DIURE- do not exist as a prefix with the meaning of diuretic in Romanian so there is no reason to assume that this sequence of letters will be singled out from words which as a whole are meaningless. It might be possible however, even if the words ‘DUIREX’ and ‘DUIRERBE’ do not exist as such in Romanian, that they could both be perceived as alluding at ‘diuretic/a’ (a medicine, tea, etc. which increases diuresis; see http://dexonline.ro/definitie/diuretic) or ‘diureza’ (the physiological process of producing and eliminating urine; see http://dexonline.ro/definitie/diurez%C4%83) at least by a part of the relevant public. However, taking into account that the signs as a whole do not exist in the Romanian language, and neither do exist prefixes like  ‘DIU’ or ‘DIURE’, the Opposition Division considers that the use of the letters ‘DIU’ or ‘DIURE’ does not make the signs at issue weak. In spite of maybe being allusive, those signs are sufficiently distinctive with respect to the goods and services concerned.

 

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is justified by the fact that 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, the signs coincide in the first five letters ‘DIURE’.  However, they differ in ‘X’ of the earlier right and respectively ‘RBE’ of the contested sign.

The first five letters at the beginning of the conflicting marks are identical and therefore the earlier sign is almost entirely included in the contested sign.

Hence, the signs are visually similar to a more than average degree, as they only differ in the last letter of the earlier right resp. the three letters at the end of the contested sign.

Aurally, the signs are pronounced as ‘DI-U-REX’ resp.as ‘DI-U-RER-BE’. The pronunciation of the signs coincides in the sound of the two first syllables and the first part of the third syllable. To that extent, the signs are aurally identical. The pronunciation differs in the sound of the letter ‛X’ at the end of the third syllable of the earlier right resp. the last syllable ‘BE’ of the contested sign.

Hence the signs are overall aurally similar to a more than average degree.

Conceptually, although neither the words ‘DUIREX’ and ‘DUIRERBE’ nor the prefixes ‘DIU’ or DIURE’ do not exist as such in Romanian, it is possible,  as explained above that they will both be perceived as pointing vaguely at ‘diuretic/a’ or ‘diureza’ at least by a part of the relevant public. To that extent, the signs are conceptually similar. They have no concept in common for the part of the public for which they are meaningless. Since a conceptual comparison is not possible, for this part of the public 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the word ‘DUIREX’ does not exist as such in Romanian. 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

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.

The earlier mark is incorporated almost in its entirety in the contested sign, which leads to the signs having a more than average degree of visual and aural similarity and, at least for a part of the public, also a conceptual similarity.

Although both signs may be perceived, at least by a part of the public, as pointing to the word ‘diuretic/a’, they have a normal degree of distinctiveness, because the words as such do not exist in Romanian and they will not be dissected by the relevant consumer. Therefore, the different and additional letters ‘X’ and ‘RBE’, forming the endings of the signs, are not sufficient to counteract the strong similarities between the conflicting marks and cannot therefore exclude any likelihood of confusion. The elements that the marks have in common form the first five letters - out of six letters in total - of the earlier right as well as of the contested sign – out of 8 letters in total. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘DIURE’. In support of its argument the applicant refers to a few European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘DIURE’. Under these circumstances, the applicant’s claims must be set aside.

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).

Considering all the above, the Opposition Division concludes that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Romanian trade mark registration.

It follows from the above that the contested trade mark must be rejected for the contested goods found to be identical and similar to those of the earlier trade mark.

The contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent also invoked Article 8 (5) EUTMR as basis for its opposition. According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, 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.

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

•        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

•        it is detrimental to the repute of the earlier mark;

•        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T 60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar, the opponent did not submit any facts, arguments or evidence that could support the conclusion that 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.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C 375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events. This was however not the case.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier trade mark. In its submissions, the opponent refers to them without any distinction, treating the whole as an unavoidable effect of the similarity of the signs and the alleged reputation of the earlier trade mark. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this possibility alone is insufficient, as seen above.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR. For the same reason the evidence submitted did not have to be examined.

 

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Peter Quay

Karin KLÜPFEL

Martin EBERL

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.