HEMOCANE | Decision 2542036 - FAES FARMA, S.A. v. Boston Healthcare Limited

Date Published: Oct 1, 2017

OPPOSITION No B 2 542 036

Faes Farma, S.A., Calle Máximo Aguirre, 14, 48940 Lamiaco-Leioa (Vizcaya), Spain (opponent), represented by Sonia Alvarez López, Nuñez de Balboa, 31, 28001 Madrid, Spain (professional representative)

a g a i n s t

Boston Healthcare Limited, 6 Navigation Court Calder Park, Wakefield WK2 7BJ, United Kingdom (applicant), represented by Wilson Gunn, 5th Floor, Blackfriars House, The Parsonage, Manchester M3 2JA, United Kingdom (professional representative).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 542 036 is upheld for all the contested goods.

2.        European Union trade mark application No 13 984 745 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 984 745. The opposition is based on the Spanish trade mark registration No 315 692. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark registration No 315 692.

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

The contested application was published on 21/05/2015. The opponent was, therefore, required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 21/05/2010 to 20/05/2015 inclusive.

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

Class 1:        Chemical products.

Class 5:        Pharmaceutical, drugs and veterinary preparations and specialties, serums, vaccines and 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 11/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/07/2016 to submit evidence of use of the earlier trade mark. On 07/07/2016, 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:

• Sample of invoices: 18 invoices, dated between 22/09/2010 and 05/11/2015 from the opponent to different clients in Spain. They contain references such as ‘Hemorrane 30g’ and ‘Hemorrane 60g’ and indicate an important number of units of sales of such products. Some of the invoices are for substantial amounts (Document No 12).

• IMS HEALTH Certification of HEMORRANE’s National Sales between 2010 and 2015. Even though the document is dated outside the relevant period, it refers to activities and sales under the sign within the relevant period (Document no. 8).

• HEMORRANE’s Data Sheet: instructions for the use of the drug (Document No 6).

• Advertisements: the opponent submitted a sample of various advertising and promotional explanatory documents of HEMORRANE. Even though they are not always dated, they display the sign and refer to haemorrhoid preparations (Documents No 1, 2, 3, 4, 5 and 7).

• Undated pictures of promotional advertising products: notebook and cutters displaying the sign (Documents No 9 and 10).

• HEMORRANE’s annual campaign, Faes Farma’s online strategy and some media budgets and invoices. Most of the documents are in the relevant period, display the sign and show considerable amounts invested for the advertising materials related to HEMORRANE (Document No 11).

Assessment of the evidence – factors

The applicant 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 marks is registered.

The applicant’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.

Place of use

Most of the evidence shows that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (Euros) and all the addresses mentioned in the documents. Therefore, the evidence relates to the relevant territory.

Time of use

Although some documents do not show any date, the majority of them such as the invoices show that the trade mark has been used during the relevant period.

Extent of use

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.

Even though for confidentiality reasons, particular amounts cannot be disclosed, the sample of invoices, the certification of national sales and the sample of advertising documents, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the trade mark throughout the relevant period.

Nature of use

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

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

In the present case, the mark ‘HEMORRANE’ often appears in the submitted documents in conjunction with other words such as ‘10mg/g Pomada Rectal’, ‘Hidrocortisona Acetato’, ‘30gr pomada’ or ‘60gr pomada’. These additional words are merely descriptive of the kind, quality or intended purpose of the goods at issue as the English translations provided by the opponent indicate. Therefore, this must be considered use of the mark ‘HEMORRANE’ as registered since these additions do not alter the distinctive character of the mark in the form in which it is registered.

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

In relation to the goods, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier 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 such as the therapeutic indications provided on the goods and on the promotional explanatory documents prove use only for haemorrhoid preparations.    

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

As a consequence, taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory in respect of pharmaceutical preparations, namely haemorrhoid 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:        Pharmaceutical preparations, namely haemorrhoid preparations.

The contested goods are the following:

Class 5:        Haemorrhoid preparations; medicated creams for treating haemorrhoids.

Haemorrhoid preparations are identically contained in both lists of goods.

The contested medicated creams for treating haemorrhoids falls under the opponent’s broader category of pharmaceutical preparations, namely, haemorrhoid preparations. These goods are, therefore, identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large and at professionals in the pharmaceutical and medical fields with 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

HEMORRANE	HEMOCANE
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The element ‘HEMO’ placed at the beginning of both signs will be associated with ‘haemorrhoids’ by the relevant public as the Spanish equivalent is ‘hemorroides’ and the relevant goods are used to treat these. The public will not pay as much attention to this weak element as to the other more distinctive elements of the signs. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

However, it is important to note that, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Even though it is a weak element regarding the relevant goods, ‘HEMO’ is placed at the beginning of each sign and as such, still has to be considered when assessing the likelihood of confusion between the marks at issue.  

Visually and aurally, the signs are similar to the extent that they coincide in the letter/sound sequence ‘H-E-M-O’ at the beginning of each sign, an element which is weak considering the relevant goods, and the letter sequence ‘A-N-E’ at the end of each sign. They differ in the middle with the double letter ‘R-R’ in the earlier mark and the letter ‘C’ in the contested sign, respectively.  As the differences in letters and sounds are found in the middle of the relatively long verbal elements, they are not enough to counterbalance the similarities between the signs. Therefore, they are visually and aurally highly similar.

Conceptually, as already described above, although the signs as a whole do not have any meaning, the relevant public will associate the element ‘HEMO’ that the signs have in common with ‘haemorrhoids’. Even though this element is weak regarding the relevant goods, the marks are still linked conceptually. Therefore, the signs are conceptually similar to an average degree.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods at issue are identical and target both professionals from the fields of pharmaceuticals and medicine and the public at large whose degree of attention is higher than average.

The signs have been found visually and aurally highly similar and conceptually similar to an average degree.

It is the contention of the Opposition Division that the differences between the signs will go largely unnoticed: two letters in the middle of the earlier mark and one letter in the contested mark do very little to assist in distinguishing between the marks. It should also be recalled that although the marks coincide entirely in a weak element, ‘HEMO’, this element is placed at the beginning of the signs and will not be ignored.

In this regard, 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).

Consequently, the relevant consumer is likely to confuse the marks, even taking account of the higher degree of attention paid to the goods at issue. The differences between the signs are simply not enough to outweigh the clear similarities.

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.

Therefore, even considering that the degree of attention of the relevant public is relatively high, the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers, to the extent that the relevant public, when encountering the signs in relation to identical goods is likely to think that they come from the same undertaking or economically linked undertakings.

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 the prefix ‘HEMO’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

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 the prefix ‘HEMO’. Under these circumstances, the applicant’s claim must be set aside.

Moreover, the applicant refers to a previous Office decision of 13/05/2015 on opposition proceedings No B 2311804, involving the signs ‘HEMOPLAST’ and ‘Hemoleast’ 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings.

The applicant argues that the abovementioned decision demonstrates that a difference of two letters can be sufficient to distinguish marks of this nature in the context of the relevant goods. The applicant considers that this reasoning is applicable to the present case as ‘the marks differ to the extent of two characters, namely, the distinctive double consonant RR present in the earlier mark’.

First of all, the double consonant ‘RR’ is not distinctive as such as it is not an uncommon letter combination for the relevant public which is Spanish.

In that case, behind the common beginning ‘HEMO’, the two letter difference between the earlier and contested signs change the pronunciation of the whole signs, namely HEMO–PLAST and HEMO–LEAST. Moreover, although it was considered that the marks as a whole have no meaning and were conceptually similar in respect of the element HEMO, the other part of the earlier mark, -PLAST has a meaning, contrary to the present case. The Opposition Division found in that case that the visual, aural and conceptual differences, combined with the higher than average level of attention of at least part of the relevant public, suffice to offset the similarities between the signs that lie in their non-distinctive elements.

However, in the present case, there are not enough differences to counteract the similarities between the two marks, as explained above.

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

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 315 692. It follows that the contested trade mark must be rejected for all the contested goods.

 

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta GARCÍA COLLADO

Lucinda CARNEY

Vanessa PAGE

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.