NEUROPHARMAGEN | Decision 2403767 - neuraxpharm Arzneimittel GmbH v. AB-BIOTICS, S. A.
Date Published: Oct 1, 2017
OPPOSITION No B 2 403 767
neuraxpharm Arzneimittel GmbH, Elisabeth-Selbert-Str. 23, 40764 Langenfeld, Germany (opponent), represented by Rospatt Osten Pross Intellectual Property Rechtsanwälte Partnerschaftsgesellschaft mbB, Kaiser-Friedrich-Ring 56, 40547 Düsseldorf, Germany (professional representative)
a g a i n s t
Ab-Biotics, S. A., Parc de recerca UAB, Campus UAB, s/n, Edificio Eureka, Bellaterra 08193, Cerdanyola Del Vallès, Spain (applicant), represented by ZBM Patents, Pl. Catalunya, 1, 08002 Barcelona, Spain (professional representative).
On 26/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 403 767 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services in Classes 5 and 42 of European Union trade mark application No 12 851 499 . The opposition is based on European Union trade mark registration No 4 796 157 for the word mark ‘NEUROPHARMA’, registered for goods and services in Classes 5 and 42. 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 European Union trade mark No 4 796 157.
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 30/05/2014. 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 30/05/2009 to 29/05/2014 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:
Class 5: Pharmaceutical and veterinary preparations, in particular preparations for combating neuron diseases, natural and synthetic bioactive preparations for application in the fields of human or animal medicine.
Class 42: Scientific and industrial research, in particular regarding natural and synthetic bioactive preparations for application in the fields of human or animal medicine.
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 10/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/08/2016 to submit evidence of use of the earlier trade mark. At the opponent’s request, this lime limit was subsequently extended until 10/10/2016. However, the Office rejected the opponent’s request for a second extension of the new time limit, since the opponent did not submit evidence of the occurrence of any exceptional circumstances that were beyond its reasonable control. Nevertheless, for reasons of equity, the Office granted one additional day to the opponent’s lime limit to submit proof of use, namely until 12/10/2016. On 11/10/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is, in particular, the following:
- Authorisation certificates for market sale, issued by the relevant national competent body in the name of the opponent’s company, dated 20/03/2012, 12/06/2012, 30/01/2012 and 12/09/2013, regarding the medical products ‘Lewetyracetam-neuraxpharm’ (250mg, 500mg and 750mg), ‘Rywastygmina-neuraxpharm’ (3mg, 4.5mg and 6mg), ‘Kwetiapina NEUROPHARMA’ (25mg, 100mg, 200mg and 300mg) and ‘Memantyna NEUROPHARMA’ (10mg and 20mg). The documents are in Polish and no translation was submitted (Exhibits 2a, 3a, 4a and 5a). According to the opponent, the names of the medical products ‘Lewetyracetam-neuraxpharm’ and ‘Rywastygmina-neuraxpharm’ have been changed to ‘Levetiracetam NeuroPharma’ (accepted by the relevant body on 17/01/2014) and ‘Revastigmin NeuroPharma’ (accepted on 12/03/2014), respectively. Nevertheless, the Opposition Division notes that the opponent did not provide the relevant documents proving this amendment in the registry of the national body.
- A page created by the opponent itself containing the turnover (units/sales in euros) of the relevant medical products mentioned in the authorisation certificates, bearing, inter alia, the trade mark ‘Neuropharma’ and concerning the periods July-December 2014, the entirety of 2015 and January-June 2016. By way of example, it can be seen from the overview that the opponent’s earliest sales were for a total amount of approximately EUR 11 000 in the period July-December 2014 and were in relation to all relevant products bearing, inter alia, the mark in question (Exhibit 2b).
- Mostly undated or out-dated samples of packaging of the medical products mentioned above, appearing as ‘Levetiracetam NeuroPharma®’ (500mg), ‘Rivastigmin NeuroPharma®’ (3mg, 4.5mg and 6mg), ‘Quetiapin NeuroPharma®’ (25mg, 100mg and 300mg) and ‘Memantin NeuroPharma®’ (10mg and 20mg) (Exhibits 2c, 3b, 4b and 5b).
- Printouts from the websites of pharmaceutical product distributors, in particular www.imed.com.pl and www.bazalekow.mp.pl, dated 11/10/2016, containing information about the opponent’s products ‘Memantin NeuroPharma’, ‘Quetiapin NeuroPharma’, ‘Rivastigmin NeuroPharma’ and ‘Levetiracetam NeuroPharma’ with a price sheet (Exhibit 6); within the content of the materials, an obvious reference is made to 2016.
- An affidavit signed by the CEO of the opponent’s company, in which she confirms the validity of the content of the opponent’s observations (Exhibit 7).
Preliminary remarks
In its observations of 27/02/2017, the applicant argues that the evidence is not in the language of the proceedings and, furthermore, the opponent did not submit translations of any of the materials; therefore, this evidence should not be taken into consideration. In principle, it is within the Office’s discretion to request such translations, namely where it is necessary for the other party to understand the content of the evidence and to be able to defend its interests in the proceedings (pursuant Rule 22(6) EUTMIR). In exercising its discretion, the Office should balance the interests of both parties.
In the present case, to avoid an unnecessary burdening of the proceedings from both time and cost perspectives, the Opposition Division will proceed with the analysis of the evidence, taking into account the opponent’s accompanying statements (in English), as well as the self-explanatory character of some of the evidence (the packaging, the printouts with illustrations of the products, etc.). Therefore, the Opposition Division considers that there is no need to request a translation.
The applicant further questioned the validity of some of the evidence, since, according to the applicant, some of the relevant facts do not align with each other. The Opposition Division notes that the opponent submitted an affidavit in which the truthfulness of the evidence submitted was confirmed. As far as this affidavit, submitted as Exhibit 7, is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining pieces of evidence to see whether or not the contents of the declaration are supported by the other items of evidence.
Analysis of the evidence
The authorisation certificates and the samples of packaging of the products, as well as the printouts, show that the place of use is Poland. This can be inferred from the language of the documents (Polish) and some addresses in Poland mentioned among the documents.
The opponent explains in its observations that the authorisation granted to market the products is a necessary pre-requirement for releasing medical products in Poland, a process that is supervised by the Office of Registration of Medicinal Products, Medical Devices and Biocidal Products in Warsaw (the relevant national body). Furthermore, according to the opponent, when labelling the medical products, the trade mark must be accompanied by the name of the active agent of the medicine. The opponent submits four sets of documents regarding the authorisation to market the following medicines: ‘Lewetyracetam–neuraxpharm’, ‘Rywastygmina-neuraxpharm’, ‘Kwetiapina NEUROPHARMA’ and ‘Memantyna NEUROPHARMA’. As noted by the applicant, the first two authorisation certificates concern the trade mark ‘neuraxpharm’, which obviously differs from the opponent’s mark ‘NEUROPHARMA’ in a way that alters its distinctive character. Furthermore, as referred to above, no proof was submitted to show that these names have been, indeed, changed and recorded by the national body as ‘Levetiracetam NeuroPharma’ and ‘Revastigmin NeuroPharma’. These two sets of documents will consequently be disregarded to the extent that they concern a sign that is different from the one relevant in the current proceedings (‘neuraxpharm’ versus ‘NEUROPHARMA’). In any event, the Opposition Division notes that the relevant authorisation certificates are only administrative documents or records, which do not constitute evidence of the relevant products having been launched on the market and or of commercial sales.
Furthermore, only a limited number of the documents are dated within the relevant period, as referred to above. Most of the packaging materials and all of the printouts either bear no date or are dated outside the relevant period (for example 29/09/2015 or 2016). Likewise, the self-composed sheet of the annual turnovers refers to the summary of financial results for periods after the relevant point in time, namely 29/05/2014; that is, they refer to the second half of 2014, 2015 and 2016.
In principle, evidence referring to use outside the relevant time frame is in general immaterial, unless it constitutes conclusive indirect proof that the mark must have also been put to genuine use during the relevant period. The Court held in this context that circumstances subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31). However, the documents in the present case are not supported by any additional materials that demonstrate use of the earlier mark on the market in the relevant period and in relation to the relevant goods and services.
In conclusion, the evidence submitted by the opponent dated within the relevant period to prove genuine use of the earlier EUTM relates exclusively to the administration of some medical products, in particular ‘Kwetiapina NEUROPHARMA’ and ‘Memantyna NEUROPHARMA’. However, no evidence has been submitted as regards the extent, the commercial sales of these products, for instance in the form of invoices or financial reports verified by a third party.
For the sake of completeness, it has to be mentioned that the opponent itself states the time frame in which its products were launched on the market and, as the applicant correctly notes, these launch dates are outside the relevant period for proving genuine use of the relevant mark. By way of example, the product ‘Memantin neuroPharma’ was granted a marketing authorisation by the relevant body on 12/09/2013; consequently, the opponent had a sufficient amount of time to put into use the relevant trade mark before the publication of the contested sign, in particular to launch on the market medical products bearing the mark. Furthermore, the opponent did not provide any justification of non-use of the trade mark in question, which might have been taken into account by the assessment of the genuine use (18/04/2007, R 155/2006-1, LEVENIA, § 34-40).
Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the time or 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).
The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.
Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Volker MENSING | Manuela RUSEVA | Martin EBERL |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
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.