LOVEXOK | Decision 2605809 - AVENTIS PHARMA SA v. SHENZHEN ACCURATE IMPORT & EXPORT CO., LTD.

Date Published: Sep 28, 2017

OPPOSITION No B 2 605 809

Aventis Pharma SA, 20, avenue Raymond Aron, 92160 Antony, France (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Accurate Import & Export Co., Ltd., RM. 1205, BLK. E, Xianhufengjing, Guowei RD., Liantang St., Luohu Dist., Shenzhen, People’s Republic of China (applicant), represented by A.Bre.Mar. S.R.L., Via Servais, 27, 10146 Torino, Italy  (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 605 809 is upheld for all the contested goods, namely 

Class 5:                 Chemical contraceptives; slimming pills; menstruation bandages; sanitary napkins; chemical preparations for the diagnosis of pregnancy; diagnostic preparations for medical purposes; chemical reagents for medical or veterinary purposes; test paper, for medical purposes or for veterinary purposes; in vitro diagnostic reagents; digital in vitro diagnostic reagents; digital pregnancy tests; digital ovulation tests; veterinary preparations; chemical preparations for veterinary purposes.

2.        European Union trade mark application No 14 305 262 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 305 262, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 152 298. 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 European Union trade mark registration No 152 298.

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 21/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 21/08/2010 to 20/08/2015 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:        Pharmaceutical preparations.

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 20/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/08/2016 to submit evidence of use of the earlier trade mark. This deadline was extended until 20/10/2016 at the request of the opponent. On 20/10/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Several invoices issued in Austria, Portugal and France during the years 2010, 2011, 2012, 2013, 2014 and 2015, mentioning the trade mark ‘LOVENOX’ in the description of the products. The products are dispensed in the formats of 20 mg, 40 mg, 60 mg, 80 mg, 100 mg and 120 mg.
•     Some copies of brochures distributed in Portugal and France, between 2010    

and 2015, showing the mark , . The brochures mention that the opponent’s products are for the prevention or treatment of thrombosis (enoxaparin).

• Some reports dating from the years 2010, 2011, 2012, 2013, 2014 and 2015, issued by the Haute Autorité de Santé (HAS), the independent public authority which evaluates healthcare products in France, where reference is made to the ‘LOVENOX’ goods.
• An article released by the Societa Italiana di Farmacología (SIF), the Italian Society of Pharmacology, where reference is made to the ‘LOVENOX’ goods.
• Extracts from the website of the Austrian Federal Office for Safety in Health Care, where reference is made to the ‘LOVENOX’ goods.

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).

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.

The evidence shows that the places of use are mainly Portugal, France and Austria. This can be inferred from the language of the documents (Portuguese, French and German), the prices are in Euros, the addresses on the invoices are in these countries and the brochures target this public. In this sense, according to Article 15(1) and Article 42(2) EUTMR, if the earlier mark is a European trade mark, it must be used in the European Union. However, genuine use with the meaning of Article 15 EUTMR may also be found when the criteria of that article have been complied with in only one part of the European Union, such as in a single Member State or in a part thereof. Therefore, it is considered that the evidence proves that the mark has been used in the relevant territory.

As previously mentioned, the opponent was required to prove that the trade mark on which the opposition is based was put to genuine use during the period from 21/08/2010 to 20/08/2015. Even though some of the evidence does not bear a date, the majority of the evidence, such as the invoices and brochures, show sales and mention that the relevant dates are between 2010 to 2015. Therefore, in the view of the Opposition Division, the evidence of use filed by the opponent contains sufficient indications concerning the time of use, also because the opponent has submitted material covering almost the whole period and the use is evenly distributed over this period of five years.

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.

In particular the invoices show that the total number of goods sold amounts to a very considerable number of sales to clients in Portugal, France and Austria, during almost the whole five-year period between 2010 and 2015 and provides the Opposition Division with sufficient information concerning the commercial volume, territorial scope, duration, and frequency of use and give sufficient indications concerning the extent of the use of the earlier mark.

Regarding the nature of use, the Opposition Division points out the following: In the present case, the earlier mark ‘LOVENOX’ is a word mark. In some of the evidence, such as on top of the packages, in the brochures, etc. it appears as a figurative mark, as can be seen from the representations shown above. Article 15(1)(a) EUTMR mentions that use of the mark in a form different from the one registered still constitutes use of the trade mark, as long as it does not alter the distinctive character of the trade mark. This means that differences between the form in which the mark is used on the market and the registered form are acceptable as long as the distinctive character of the mark is not altered. The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006), T-194/03, Brainbridge, EU:T:2006:65, § 50). Nevertheless, in this case the alterations confined to the stylisation of the script and ‘colours’ do not constitute an alteration of the distinctive character of the word mark ‘LOVENOX’. Therefore, there is sufficient use of the mark as registered or of a variation thereof according to Article 15(1)(a) EUTMR.

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

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

The earlier mark is registered for, and the opposition is based on, the following goods:

Class 5:        Pharmaceutical preparations.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories (14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for pharmaceutical preparations for the treatment of thrombosis. In this regard, the Opposition Division agrees with the applicant that the earlier mark is only used for medicines for preventing the formation of blood clots. In an overall assessment, it is possible to make the connections with the pieces of evidence, even though a translation has not been submitted. The terms that are used are close, or identical, to English terms (anticoagulante, tromboembolismo) and there also appears some English text amongst the evidence such as ‘duration of the risk of VTE in major orthopaedic surgery’ (VTE is deep vein thrombosis) and in the pamphlet. These goods can be considered to form an objective subcategory of pharmaceutical preparations in Class 5. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for the following goods: pharmaceutical preparations for the treatment of thrombosis in Class 5. 

Consequently, the Opposition Division will only consider these goods for which genuine use of the trade mark was shown, namely pharmaceutical preparations for the treatment of thrombosis in Class 5, in its further examination of the opposition.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 5:         Pharmaceutical preparations for the treatment of thrombosis.

The contested goods are the following:

Class 5:         Chemical contraceptives; slimming pills; menstruation bandages; sanitary napkins; chemical preparations for the diagnosis of pregnancy; diagnostic preparations for medical purposes; chemical reagents for medical or veterinary purposes; test paper, for medical purposes or for veterinary purposes; in vitro diagnostic reagents; digital in vitro diagnostic reagents; digital pregnancy tests; digital ovulation tests; veterinary preparations; chemical preparations for veterinary purposes.

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 in Class 5

When comparing the contested chemical contraceptives; slimming pills; chemical preparations for the diagnosis of pregnancy; diagnostic preparations for medical purposes; chemical reagents for medical or veterinary purposes; test paper, for medical purposes or for veterinary purposes; in vitro diagnostic reagents; digital in vitro diagnostic reagents; digital pregnancy tests; digital ovulation tests; veterinary preparations; chemical preparations for veterinary purposes with the opponent’s pharmaceutical preparations for the treatment of thrombosis, they are considered to be similar. The contested goods are all substances or a combination of substances for treating or preventing diseases in human beings or animals (i.e. chemical contraceptives, veterinary preparations), they are testing preparations (i.e. digital pregnancy tests), that is to say, chemical reagents for medical, including veterinary, purposes, which are also a sort of pharmaceutical preparations or they are substances prepared for special dietary requirements (i.e. slimming pills). Even though the opponent’s goods are very specific pharmaceuticals, usually they are considered to be similar to other specific pharmaceuticals or the like. This is because several, if not all, criteria for similarity are usually met: they share the same nature, because they are specific chemical products; their purpose is, broadly speaking, healing and/or curing; they are sold in the same places, namely, pharmacies; and they come from the same source, which is the pharmaceutical industry. This industry manufactures a wide variety of drugs with various therapeutic indications, something the general public is aware of. Furthermore, whether a specific pharmaceutical is sold under prescription, such as the one of the opponent, is not of particular relevance for the comparison of the goods. Therefore, a prescription medicine is generally to be considered similar to an over-the-counter drug for the reasons stated above.

The contested menstruation bandages; sanitary napkins are both sanitary preparations. When comparing these with the specific pharmaceutical preparations of the opponent, they are similar. These goods have the same distribution channels, target the same public and they could be produced by the same kind of undertakings.

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 specialised customers with specific professional knowledge or expertise, such as doctors, pharmacists, etc. Moreover, with regard to end consumers, it is apparent from the case-law that, in cases where pharmaceutical products are sold without prescription, 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 and 15/03/2012, T-288/08 Zydus, EU:T:2012:124, § 36 and quoted case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. With regard to non-professionals, they also show a higher degree of attention, regardless whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. The degree of attention varies from average, for example for sanitary napkins, to high, for example for diagnostic preparations for medical purposes.

 

3. The signs

LOVENOX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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).

Regarding the earlier mark and the contested sign, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Even though in this case the element ‘LOVE’ is not visually separated from the remaining letters, consumers naturally look for a meaning when reading a word. Since the element ‘LOVE’ belongs to the basic English vocabulary, it will be understood in all the Member States of the European Union and is perceived as meaning: ‘feel romantically or sexually attracted to someone; a very strong feeling or affection towards someone who you are romantically or sexually attracted to; a strong liking for something, or a belief that it is important; someone or something that you love’ (see Collins English Dictionary online). In any case, this element is not descriptive, allusive or otherwise weak with respect to the relevant goods. Nor do ‘-nox’ and ‘-xok,’ have any meaning. Consequently, both verbal elements of the marks are distinctive.

Visually, the signs coincide in the sequence of letters ‘L-O-V-E-*-O-*’, with the only difference the slightly fancy typeface in which these letters of the contested sign are written. Furthermore, they also coincide in the letter ‘X’, albeit in a different position in the marks; in the earlier mark it is placed at the end, while in the contested sign it occupies the fifth position. On the other hand, they differ in the fifth letter ‘N’ of the earlier mark versus the final letter ‘K’ of the contested sign and in the fact that the letter ‘X’ is placed in a different position, as mentioned in the previous sentence already.  

Regarding the slightly fancy typeface in which the verbal element of the contested sign is written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the element it seem to embellish.

Furthermore, the first parts of the conflicting marks coincide, ‘LOVE-‘. Consumers generally tend to focus on the first element of a sign when being confronted with 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.

Therefore, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /L-O-V-E-*-O-*/, present identically in both signs. The marks are both pronounced in two or three syllables, depending on the language, as /LOVE-NOX/ or /LO-VE-NOX/ versus /LOVE-XOK/ or /LO-VE-XOK/. Furthermore, even though the letter ‘X’ occupies another position in the marks, this letter is anyway pronounced in both marks and the marks have the same number and position of consonants and vowels. The marks differ in the sound of the letter ‘N’ versus ‘K’ in the contested sign. The marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on the account of the element ‘LOVE’, the signs are conceptually highly similar. 

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

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found similar and the level of attention varies from average to high. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually, aurally and conceptually similar to a high degree.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 152 298. It follows that the contested trade mark must be rejected for all the contested goods.

The applicant, in its observations of 31/05/2016, submits several customer surveys from Poland, Sweden and Slovenia with the question whether this part of the public would confuse the marks at hand. However, as can be seen from the above comparison of the marks, the Opposition Division is of another opinion and finds that the marks are confusingly similar. Therefore, the applicant’s argument has to be set aside. Likelihood of confusion means a probability of confusion on the part of the relevant consumer and does not require actual confusion. As expressly confirmed by the Court: ‘ … it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (judgment of 24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69).

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

Saida CRABBE

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

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.