Dolasix | Decision 2593708

Date Published: Oct 1, 2017

OPPOSITION No B 2 593 708

Sanofi-Aventis Deutschland GmbH, Brüningstr. 50, 65926 Frankfurt am Main, Germany (opponent), represented by Ufficio Internazionale Brevetti Ing. C., Gregorj S.R.L., Via Muratori 13/B, 20135 Milano, Italy (professional representative)

a g a i n s t

Kolinpharma S.P.A., Via Larga 8, 20122 Milano,  Italy (holder), represented by Jacobacci & Partners S.P.A., Corso Emilia 8, 10152 Torino, Italy (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 593 708 is upheld for all the contested goods, namely 

Class 5:         Adjuvant dietary supplement for collagen formation for the normal functions of cartilages and for the maintenance of connective tissues; all the above excluding products for animals.

2.        International registration No 1 233 870 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union  No 1 233 870, namely against all the goods in Class 5. The opposition is based on, international trade mark registration No 216 809 designating Bulgaria, Benelux, Czech Republic, France, Croatia, Italy, Hungary, Austria, Poland, Romania, Slovenia, Slovakia. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

The opposition is based on a registration that covers more than one territory. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 216 809 designating Austria and the Benelux.

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 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 relevant date (first republication of the contested international registration plus six months) is 06/08/2015). The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Austria and Benelux from 06/08/2010 to 07/08/2015 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:        Medicines.

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 30/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/08/2016 to submit evidence of use of the earlier trade mark. On 28/07/2016, within the time limit, 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 the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

Austria

• Copies of packaging of Lasix product in different concentration, dosage and pharmaceutical forms (tablets, capsules, concentrate etc).
• Extract from the website of Österreichischen Apotheker-Verlag (http://www3.apoverlag.at/dynasite.cfm?dsmid=98678 ) (and its translation into English). The extract shows that the publication with the same name contains  the most important pharmaceutical database in Austria for all pharma products. The extract shows the Lasix product of different versions.
• Extracts from the publication Österreichischen Apotheker-Verlag  2010-2016, published    in 2010, which shows that LASIX is sold under different pharmaceutical forms and dosage.
• Two invoices per year for 2012-2015, referring, among other products to a Lasix product. The invoices contain the opponent’s sister company name.

Benelux

• Seven invoices per year for 2010-2015, referring, among other products to a Lasix product. The invoices contain the opponent’s sister company name.
• Six copies of the packaging, as well as of the internal leaflet, of LASIX product of different sizes and dosage. The leaflet details the product as a diuretic pharmaceutical preparation.

The holder argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely the  invoices and  packaging, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The holder contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The Opponent has explained, that they are a subsidiary of a Sanofi holding company among other 400 subsidiaries with the same or similar name, in different European countries. The opponent has included extracts from the holding company’s annual report and official financial documents, to that extent.  In fact, all the factual evidence bears also the Sanofi mark.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the holder’s claim is unfounded.

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The documents show that the place of use are Austria and Benelux respectively. This can be inferred from the respective languages of the documents, the currency mentioned (EUR) and the addresses in those countries. 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, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The documents show a constant use in the territories concerned.  It is also considered that the use of the mark need not be quantitatively significant for it to be deemed genuine. Furthermore, as stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

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

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).

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).

The evidence of use shows that the mark has been used for diuretic pharmaceutical preparations, and not for any other type of medical preparations. This, is in fact expressively confirmed by the opponent, in its statement on 28/07/2016 “Under LASIX is marketed and sold a diuretic pharmaceutical preparation. The product LASIX is suitable for all forms of edemas of cardiac origin, of insufficient control of edemas (of renal origin or not), of edemas refractory to corticosteroids, and of light and medium grade hypertension.”

These goods, namely diuretic pharmaceutical preparations can be considered to form an objective subcategory of medicines. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for medicines, namely diuretic pharmaceutical preparations.

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:         Medicines, namely diuretic pharmaceutical preparations.

The contested goods are the following:

Class 5:        Adjuvant dietary supplement for collagen formation for the normal functions of cartilages and for the maintenance of connective tissues; all the above excluding products for animals.

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 term ‘namely’, used in the opponent’s list of goods shows the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

In the present case, the opponent’s goods are diuretic preparations while the contested goods are adjuvant dietary supplements for collagen formation. The latter are substances prepared for special dietary requirements with the purpose of treating or preventing a disease. Bearing this in mind, their purpose is similar to those of medicines, namely diuretic pharmaceutical preparations (substances used in the treatment of specific medical conditions) insofar as they are used to improve the patient’s health. The relevant public coincides and these goods generally share the same distribution channels. For the above reasons, these goods are considered to be 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 and at 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.

3. The signs

LASIX
Earlier trade mark	Contested sign

The relevant territory is Austria and Benelux.

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).

´LASIX’ being the sole element of the earlier word mark has no meaning for the relevant public and is, therefore, distinctive. As the earlier mark is a word mark, then it is the word that is protected and not its written form.

The element ‘DOLASIX’ of the contested figurative sign has no meaning for the relevant public and is, therefore, distinctive.

The device element of the contested sign depicts two bones (humerus and scapula) placed on a hexagonal background, all which will be perceived due to their simplified and recognizable  graphical presentation, even if the consumer is not aware of the specific name of the bones, contrary to the arguments of the holder. The consumer can perceive these images as ‘bones or hip joints’. The hexagonal background device  does not add a distinctiveness to the mark, contrary to the arguments of the holder.

Bearing in mind that the relevant goods are dietary medical goods for improving the health and  functions of cartilages, this element is non-distinctive for these goods as it depicts the parts of human body where the cartilages are situated according to a common knowledge.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the letters LASIX, which constitutes the earlier mark which is incorporated in the contested sign. However, they differ in the first two letters DO of the contested sign. On a visual level, the marks also differ in the device element (found non-distinctive) of the contested mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the device element in the contested mark will evoke a concept, it is a non-distinctive element and cannot indicate the commercial origin of the mark. Neither of the word elements in 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

The goods have been found similar. The visual, aural and conceptual aspects have been examined.

The earlier sign and the contested sign have been found to be similar to the extent that they have the word LASIX in common. Although the general rule that the public tends to pay particular attention to the first part of the trade mark is not being disregarded in the present case, the differences between the signs, even though they are placed at the beginning of the contested sign cannot outweigh the prevailing coinciding elements perceived by the public. The earlier mark is fully encompassed in the contested sign.

Moreover, it should be taken into account that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

It is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting goods which are similar come from the same or economically liked undertakings.  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). The relevant public could therefore believe that the contested sign is a modification of the earlier mark based on the same core element.

The holder refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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

A likelihood of confusion for only part of the relevant public, such as the public in Austria and Benelux countries, is sufficient to reject the contested application in respect of  the contested goods, and there is no need to analyse the international registration in regard the other designations invoked.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 216 809 designating Austria and the Benelux countries and the international registration is therefore to be refused protection in respect of the European Union for all of 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

Birgit FILTENBORG

Erkki MÜNTER

Irina SOTIROVA

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.