MANTOMED | Decision 2543661 - Takeda GmbH v. Medochemie Ltd.

Date Published: Oct 1, 2017

OPPOSITION No B 2 543 661

Takeda GmbH, Byk-Gulden-Str. 2, 78467 Konstanz, Germany (opponent)

a g a i n s t

Medochemie Ltd., Constantinoupoleos Street, 3011 Limassol, Cyprus (applicant), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595DA Den Haag, Netherlands (professional representative).

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

DECISION:

1.        Opposition No B 2 543 661 is upheld for all the contested goods.

2.        European Union trade mark application No 14 101 091 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 101 091. The opposition is based on European Union trade mark registration No 5 547 501. 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.

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 03/06/2015. 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 03/06/2010 to 02/06/2015 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 for the treatment of gastrointestinal diseases.

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 05/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/06/2016 to submit evidence of use of the earlier trade mark. On 30/05/2016, 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:

• Items 1-19: 19 invoices dated between 2011 and 2015 (only one dated immediately after the end of the relevant period, 17/06/2015), all addressed to different clients in Belgium. The invoices are in French or German, but they mention, inter alia, the trade mark ‘PANTOMED’ and further indications as regards the product sold, for instance the dose content in milligrams (‘40 mg’ and ‘20 mg’), the number of tablets (‘28 tab’, ‘56 tab’ and ‘100 tab’) and the price.

• Item 20: a printout from the official website of the Belgian Federal Agency for Medicines and Health Products (updated on 29/05/2016) showing the medicinal product name ‘PANTOMED’, the status ‘authorised’, the form ‘gastro-resistant tablet’ (with the strengths ‘20 mg’ and ‘40 mg’) and ‘powder for solution for injection’ (with the strength ‘40 mg’). In addition, this document indicates that leaflets are available in Dutch (NL), French (FR) and German (DE) for each product.

• Item 21: a summary of the product ‘Pantomed 20 mg comprimés gastro-résistants’ in French showing, inter alia, the marketing authorisation numbers for the product and the Member States where this medicament is authorised under the name ‘Pantomed’, namely Belgium and Luxembourg. The last review of this text was in November 2015.

• Item 22: artwork for the packaging for the product named ‘FS Pantomed 20 mg 28 Tabl’ under the label  with information in Dutch, French and German. The date of this document is 12/09/2012.

• Item 23: artwork for the packaging for the product named ‘Pantomed 20 mg 100 Tabl’ under the label with information in Dutch, French and German. The date of this document is 18/07/2013.

• Item 24: artwork for the packaging for the product named ‘Pantomed 20 mg 100 Tabl’ under the label  with information in Dutch, French and German. The date of this document is 25/07/2013.

• Item 25: artwork for the blister packaging for the product named ‘Pantomed 20 mg 100 Tab’. The date of this document is 04/07/2012.

• Item 26: a package leaflet for the product named ‘Pantomed 20 mg blister’ with information in Dutch, French and German. The text indicates the Member States where this medicament is authorised under the name ‘Pantomed’, namely Belgium and Luxembourg, and that the last approval by the health authority was in June 2013. The date of this document is 09/10/2013.

• Item 27: an advertisement in Dutch for ‘PANTOMED’ dated May 2008 (outside the relevant period).

• Item 28: an advertisement in Dutch for ‘PANTOMED’ dated 23/06/2010.

• Item 29: an information leaflet in Dutch on ‘PANTOMED’ intended for healthcare professionals, according to the opponent, and dated 03/03/2014.

The applicant 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 that have not been translated and are considered relevant for the present proceedings, namely the summary of the product ‘Pantomed 20 mg comprimés gastro-résistants’ (Item 21), the advertisement in Dutch for ‘PANTOMED’ dated 23/06/2010 (Item 28) and the information leaflet in Dutch on ‘PANTOMED’ intended for healthcare professionals and dated 03/03/2014 (Item 29), and their self-explanatory character (at least as regards the information relevant to the purpose of the present assessment), the Opposition Division considers that there is no need to request a translation.

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 mark 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.

As the earlier mark is a European Union mark, it must be used ‘in the Union’ (Article 15(1) and Article 42(2) EUTMR). Article 15(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the Union. It is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity.

This issue was also raised by the applicant in its observations. However, it has to be recalled that ‘the territorial scope of the use is only one of several factors to be taken into account in the determination of whether that use is genuine or not’ (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 30).

The evidence listed above – the invoices, the artwork for the packaging and blister packaging for the product, etc. – show that the place of use is Belgium. This can be inferred from the language of the documents (French, Dutch and German) and from the invoices that show different addresses of clients in Belgium. 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, as stated above, 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 evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates exclusively to Belgium. 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. Moreover, the package leaflet for the product named ‘Pantomed 20 mg blister’ (Item 26) indicates the Member States where the medicament is authorised under the name ‘Pantomed’, namely Belgium and Luxembourg, and it is dated 2013; this information is also found in the summary for the product ‘Pantomed 20 mg comprimés gastro-résistants’ (Item 21), with a last review date of November 2015.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark. The invoices provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the product ‘PANTOMED’. In particular, the invoices submitted by way of example are evidence that ‘PANTOMED’ products were not only authorised for the Belgian market, but actually sold in this market during the relevant period. Furthermore, use of the mark need not be quantitatively significant for it to be deemed genuine and, although the opponent submitted only a few invoices, they cover most of the relevant period (2011-2015), they are all addressed to different clients in Belgium and they also indicate the quantity sold and the price. Therefore, although the evidence indicates a low commercial volume overall, it shows use of the earlier mark.

The evidence shows that the mark has been used as registered for all the goods for which the mark is registered.

In particular, the earlier word mark appears on the invoices, the packaging and information leaflets, the artwork for the packaging of the product and the advertisement submitted as Item 28. In some documents (i.e. Items 22, 23 and 24) the earlier mark appears under the label  (depicted in black in Item 24), and in the advertisement dated 2010 it also appears under the label  (Item 28). However, the additional element ‘20 mg’ indicates the dose content and, therefore, is merely informative and non-distinctive for the opponent’s goods in Class 5; the element ® means that it is a registered trade mark and so is negligible; and the element ‘PANTOPRAZOLE’ refers to the active ingredient of the product. The distinctive element ‘PANTOMED’ appears in standard upper case letters and only the first letter, ‘P’, is slightly larger. Consequently, the additional figurative and verbal elements do not alter the distinctive character of the mark (18/04/2008, R 1236/2007-2, BIONSEN) and Article 15(1)(a) EUTMR has been complied with.

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).

The printout from the official website of the Belgian Federal Agency for Medicines and Health Products (Item 20) showing the medicinal product authorised with the name ‘PANTOMED’ and the form ‘gastro-resistant tablet’ (with the strength ‘20 mg’ and ‘40 mg’), although it was updated on 29/05/2016, along with the invoices (2011-2015), the artwork for the packaging and the leaflets, which also show the trade mark ‘PANTOMED’ and refer to the same dose contents (‘20 mg’ and ‘40 mg’) are sufficient indications to conclude that the medicament branded ‘PANTOMED’ is used and sold for the treatment of gastrointestinal diseases.

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 and for all the goods for which the mark is registered.

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 gastrointestinal diseases.

The contested goods are, after a limitation requested by the applicant, the following:

Class 5:         Pharmaceutical products for the treatment of diseases of the central nervous system.

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.

In principle, specific pharmaceuticals are considered similar to other specific pharmaceuticals. Considering the factors to be taken into account when comparing the goods in question, it is clear that the goods covered by the conflicting marks are of the same kind, namely pharmaceutical products, they target the same consumers, namely health professionals and patients, and they use the same channels of distribution, namely health centres and chemist’s shops. The only difference between them is their therapeutic indication, and even this applies to only a certain extent (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 75).

A medical condition can often be treated using a number of different types of medication in various pharmaceutical forms containing different active ingredients, some of which are available over the counter, while others are available only on prescription and must be administered by medical staff. Therefore, despite a difference in their immediate therapeutic indications, the contested pharmaceutical products for the treatment of diseases of the central nervous system (CNS) are still complementary to the opponent’s pharmaceutical preparations for the treatment of gastrointestinal diseases in as much as the treatment of CNS-related disorders may, in fact, relate to the treatment of gastrointestinal problems, such as abdominal pain, or may cause gastrointestinal problems, which then have to be treated as well. Therefore, the goods under comparison are considered similar to a high degree.

The applicant refers to the decision of 17/06/2004, R 189/2002-2, TAMIN / ITAMI, in which the Board of Appeal confirmed the Opposition Division’s finding that the opponent’s ‘famotidine medications to reduce stomach acid’ were dissimilar to the contested ‘anti-rheumatic and anti-inflammatory preparations not for gastroenterological use’, since there was no obvious overlap between the goods. However, the specification of the goods in the case referred to excluded any possible complementarity between them, unlike in the present case for the reasons explained above.

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 to a high degree are directed at the public at large and at healthcare professionals.

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

PANTOMED	MANTOMED
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).

The conflicting signs are meaningless for the public in the relevant territory. However, 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). Accordingly, the element ‘MED’ at the end of the conflicting signs will be associated with ‘medical’. Bearing in mind that the relevant goods are healthcare products, this element is weak for these goods, as it indicates that the goods offered may have healing properties.

Visually, the signs coincide in the string of letters ‘*ANTOMED’. However, they differ in their first letters, ‘P’ of the earlier mark and ‘M’ of the contested sign.

Therefore, the signs are visually highly similar.

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 ‛*ANTOMED’, present identically in both signs. The pronunciation differs in the sound of their first letters, ‘P’ of the earlier mark and ‘M’ of the contested sign. The signs have the same number of syllables, namely three (‘PAN-TO-MED’ in the earlier mark and ‘MAN-TO-MED’ in the contested sign). Being relatively long marks of eight letters each and differing (partially) in only their first consonants, the signs have very similar rhythms and intonations.

Therefore, the signs are aurally highly similar.

Conceptually, although the signs do not have any meaning for the public in the relevant territory, the final letters, ‘MED’, of both signs will be associated by the relevant public with the meaning explained above and, therefore, this element is weak. To that extent, 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 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, as stated in section c) of the present decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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).

The goods under comparison are similar to a high degree and the earlier mark enjoys a normal degree of distinctiveness.

Taking into account especially the fact that the signs coincide in the string of letters ‘*ANTOMED’, placed in the same order, it is considered that the similarities between the signs are enough to counteract the dissimilarities that lie in only their first letters, ‘P of the earlier mark and ‘M’ of the contested sign. The mere presence of these different consonants is not sufficient to counteract the similarities between the signs and the fact that there is a likelihood of confusion even when the degree of attention of consumers is enhanced. A high degree of attention does not automatically lead to a finding of no likelihood of confusion. All other factors have to be taken into account. For example, when there is a strong likelihood of confusion created by other factors, such as identity or a high degree of overall similarity between the marks and the identity of the goods, the degree of attention of the relevant public alone cannot be relied upon to prevent confusion (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 53-56; 06/09/2010, R 1419/2009-4, Hasi). In the present case, the signs and the goods in question are highly similar, as seen above.

Although the letters ‘MED’, present identically at the end of the conflicting signs, are weak in relation to the goods in question, it cannot be overlooked that the presence of this element in both signs will establish a conceptual link between them for the relevant public, thus also contributing to the finding of similarity between the signs.

The applicant 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).

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 cases referred to by the applicant are not relevant to the present proceedings. In particular, the applicant makes reference to the opposition proceedings involving the following signs: ‘Eurodont’ versus ‘Curodont’ and ‘Juro-Pro’ versus ‘EURO-PRO’. Although these signs are also relatively long and differ in only their first letters, that small difference, however, was an important factor in the comparison of the signs, namely with regard to the conceptual aspect. In other words, the presence of the element ‘EURO’ at the beginning of one of the conflicting signs in each case was deemed to create a clear conceptual difference between the signs under comparison. However, this does not apply in the present case.

The applicant also refers to the decision of 23/12/2003 on opposition proceedings No B 386 583 involving the conflicting trade marks ‘T-Online’ and ‘P-Online’. However, these proceeding were terminated by the decision of 07/02/2005, R 65/2004-4, since, due to an agreement between the parties, the contested trade mark application was transferred to the opponent.

In its observations, the applicant also argues that the earlier trade mark has a low degree of distinctive character, but gives no reasons or evidence to support this claim. Therefore, the applicant’s argument must be set aside.

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 5 547 501. 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Alexandra APOSTOLAKIS

Marta GARCÍA COLLADO

Richard BIANCHI

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.