WORTIE | Decision 2404344 - Wartner Europe B.V. v. YouMedical Brands B.V.

Date Published: Sep 24, 2017

OPPOSITION No B 2 404 344

Wartner Europe B.V., Kralingseweg 201, 3062 CE Rotterdam, The Netherlands (opponent), represented by Altius, Avenue du Port 86 C B414, 1000 Brussels, Belgium (professional representative)

a g a i n s t

Trimb Healthcare AB, Östermalmsgatan 19, 114 26 Stockholm, Sweden (applicant), represented by Hofhuis Alkema Groen Advocaten, Keizersgracht 212, 1016 DX Amsterdam, Netherlands (professional representative), and Advokatfirman Lindahl KB, Mäster Samuelsgatan 20, 101 39 Stockholm, Sweden (professional representative).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 404 344 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 of European Union trade mark application No 12 715 298 for the word mark ‘WORTIE’. The opposition is based on European Union trade mark registration No 6 380 661 for the word mark ‘WARTNER’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

On 23/03/2016, the Opposition Division rendered a decision that resulted in the rejection of the opposition, as it considered that there was no likelihood of confusion because the signs were not sufficiently similar under the ground of Article 8(1)(b) EUTMR in spite of the identity or similarity between the goods.

The decision was appealed and the Board of Appeal decided in case R 913/2016-2 on 29/05/2017. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the examination of the evidence of use submitted by the opponent was required.

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 European Union trade mark No 6 380 661 for the word mark ‘WARTNER’.

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 12/06/2014. 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 12/06/2009 to 11/06/2014 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 3:         Soaps; cosmetics.

Class 5:        Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; 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 24/04/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 29/06/2015 to submit evidence of use of the earlier trade mark. On 22/06/2015, within the time limit, the opponent submitted evidence of use and explicitly referred to evidence already submitted on 29/01/2015 to prove the enhanced distinctiveness and reputation of the earlier mark.

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:

• Annex I.1: various undated screenshots in English and other languages from the website www.wartner.com, on which the trade mark ‘WARTNER’ appears in relation to products for the removal of warts and verrucas, nail fungus, corns and persistent calluses.

• Annex II.A.1: documents from IMS (‘IMS Health is a leading global information and technology services company providing clients in the healthcare industry with end-to-end solutions to measure and improve their performance’; information extracted from the website www.imshealth.com on 11/03/2016) in English and dated August 2005, presenting a chart showing the number of sales and the market shares of wart removal products sold under the trade marks ‘WARTNER’ and ‘CRYOPHARMA’ for August 2003, 2004 and 2005, for certain territories (Belgium, France, Germany, Italy, the Netherlands, Portugal, Spain, Switzerland, the United Kingdom).

• Annex II.A.2: an undated document from IMS in English showing the market shares of the ‘WARTNER’ products for the removal of warts and corns in September 2013 for Europe.

• Annex II.A.3: a letter in English dated 23/02/2011 from Paul Jenner, Director of Marketing Communications at IMS Health, granting permission to the company Omega Pharma to use the claim ‘No1 anti-wart brand in the world’ on all packs of ‘WARTNER’ and ‘CRYOPHARMA’ products.

• Annex II.A.4: a letter in English dated 14/02/2014 from Tor Constantino, Director of Global Public Relations and External Affairs at IMS Health, granting permission to the company Omega Pharma to use the claim ‘No1 anti-wart brand in the world’ in all communications.

• Annex II.B.1: eight invoices in Dutch dated 2011, 2012, 2013 and 2014, addressed to customers in various towns in the Netherlands and on which can be seen ‘WARTNER’ products.

• Annex II.B.2: a CE certificate for medical devices issued on 14/05/1998 to Wartner B.V. for a wart treatment product.

• Annex II.B.3: an undated document of unknown provenance showing the number and amounts of sales of ‘WARTNER’ products from 2010 to 2014 for the territory of Germany.

• Annex II.B.4: three invoices in German dated 2001 for marketing expenditure, on which the trade mark ‘WARTNER’ appears.

• Annex II.B.5: 12 invoices in English dated 2012, 2013 and 2014, addressed in particular to clients in the United Kingdom and on which the trade mark ‘WARTNER’ appears.

• Annex II.C.1: various press articles on which the trade mark ‘WARTNER’ appears:

• an undated article in Dutch from an unknown source;
• an article in Dutch from Het Volk dated 27/05/2000;
• an article in Dutch from Het Nieuwsblad dated 25/05/2000;
• an article in French from Le Soir dated 06/06/2000;
• an article in French from DH dated 17/05/2000;
• an article in French from Vers L’Avenir dated 27/05/2000;
• an article in Dutch from Het Laatste Nieuws dated 27/05/2000;
• an article in Dutch from Het Laatste Nieuws dated 18/05/2000;
• an article in French from D-santé dated June 2000;
• an article in French from Flair dated 15/06/2000;
• an article in French from Notre Temps dated July 2000;
• an article in Dutch from Onze Tijd dated July 2000;
• an article in French from Gaël dated 01/08/2000;
• an article in Dutch from De Weekkrant dated 03/07/2000;
• an article in Dutch from Knack Weekend dated 27/07/2000;
• an article in French from Le Soir Illustré dated 26/07/2000;
• an article in French from Santé dated July 2000;
• an article in Dutch from Goed Gevoel dated August 2000;
• an article in Dutch from Teve Blad dated 15/07/2000;
• an article in French from Notre Temps dated 01/07/2000;
• an article in Dutch from Onze Tijd dated 19/06/2000;
• an article in Dutch from D-Gezondheid dated 20/06/2000;
• an article in Dutch from Flash dated 26/06/2000;

• Annex II.C.2: two undated leaflets in Dutch and in French on which the trade mark ‘WARTNER’ appears in relation to products for the removal of verrucas.

• Annex II.C.3: undated leaflets in Dutch and in French on which the trade mark ‘WARTNER’ appears in relation to products for the removal of verrucas and nail fungus.

• Annex II.C.4: various invoices relating to the marketing and advertising of ‘WARTNER’ products in Belgium, namely:

• Three invoices in Dutch dated 2001 for marketing and advertising (on TV and radio) on which the trade mark ‘WARTNER’ appears.
• A document in Dutch presenting the times of airing of a radio spot on Fréquence Wallonie between 24/09/2001 and 29/09/2001 (12 airings). There is no mention of the trade mark ‘WARTNER’.
• Two invoices in French without a clear source, dated in 2002, for advertisements in the newspapers Le Soir and De Standaard for ‘WARTNER’ products, on 11/05/2002, 25/05/2005, 08/06/2002 and 22/06/2002.
• Six invoices in Dutch, dated 2011 and 2012, for ‘WARTNER’ campaigns for verruca removal products on various channels (101 airings on seven channels between 01/08/2010 and 26/08/2010; 170 airings on four channels between 04/07/2011 and 31/07/2011; 96 airings on three channels between 01/09/2011 and 30/09/2011; 101 airings on four channels between 01/08/2011 and 31/08/2011; 138 airings on five channels between 09/07/2012 and 29/07/2012; 133 airings on five channels between 06/08/2012 and 31/08/2012).
• An invoice in French dated 25/06/2013 for the adaptation of a ‘WARTNER’ advertisement into French.
• Seven invoices in Dutch for ‘WARTNER’ campaigns, dated 2013 and 2014.
• An invoice in Dutch dated 2014 for updating the ‘WARTNER’ Belgian website.

• Annex II.C.5: 14 invoices in Dutch dated 2013 and 2014 relating to the marketing and advertising of ‘WARTNER’ products in the Netherlands, including two invoices for a ‘WARTNER’ campaign (300 airings on five channels between 15/04/2013 and 05/05/2013).

• Annex II.C.6: four photographs of ‘WARTNER’ displays or ‘WARTNER’ products displayed on shelves in various shops.

• Annex II.C.7:

• six undated examples of advertisements for ‘WARTNER’ products in Dutch;
• an advertisement for a ‘WARTNER’ product in an undated Kruidvat catalogue in Dutch;
• five advertisements for ‘WARTNER’ products in Dutch in unknown retail catalogues.

• Annexes II.C.8, 10 and 15: examples of TV commercials in Benelux, in Germany and in the United Kingdom in 2003-2014.

• Annex II.C.9: an undated leaflet in German showing various ‘WARTNER’ advertisements and packaging from 2004 to 2012.

• Annex II.C.11: a document in German presenting a 2001 campaign for ‘WARTNER’ products in various printed media.

• Annex II.C.12:

• a document dated 27/08/2014 from Nielsen showing marketing expenditures for ‘WARTNER’ products from 2005 to 2014;
• six invoices dated 2013 and 2014 for advertisements for ‘WARTNER’ products on TV.

• Annex II.C.13: an article mentioning ‘WARTNER’ products and an advertisement in German in Apotheker Krobe dated 2004.

• Annex II.C.14: a leaflet in English dated 2011 relating to ‘WARTNER’ products for the removal of verrucas, warts, corns and calluses.

The invoices, the advertisements, the press articles, the promotional material, the market share reports and other documents show that the place of use is the Netherlands, Belgium, the United Kingdom and Germany. This can be inferred mainly from the languages of the documents and some addresses in those countries.

Although some of the documents are not dated or precede the period for which the opponent had to prove genuine use of its mark (Exhibits II.A.1, II.B.4, II.C.1, II.C.11 and II.C.13), most of the evidence is dated within the relevant period.

The documents filed, such as the invoices, the advertisements, the press articles, the promotional material and the market share reports, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

The evidence shows that the mark has been used as 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).

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.

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 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 proves use only for products for removal of warts and verrucas, nail fungus as well as corns and persistent callus. These goods can be considered to form an objective subcategory of pharmaceutical preparations in Class 5, namely pharmaceutical preparations for dermatological use. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for pharmaceutical preparations for dermatological use.

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 dermatological use.

The contested goods are the following:

Class 3:         Cosmetics; disinfectant soap.

Class 5:        Pharmaceutical preparations for cosmetic purposes, including pharmaceutical preparations for dermatological use, also intended for treating external skin swellings, including warts; disinfectants for hygiene purposes.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 3

The contested cosmetics and disinfectant soap are used to enhance or protect the appearance or odour of the human body. The opponent’s pharmaceutical preparations for dermatological use, on the other hand, comprise products, such as skin or hair care preparations, with medical properties. These goods have the same purpose, that of caring for the body, in particular the skin or the nails, they coincide in their producers and end users, and they may also be found in the same places, namely pharmacies. Therefore, they are considered similar.

Contested goods in Class 5

The contested pharmaceutical preparations for cosmetic purposes, including pharmaceutical preparations for dermatological use, also intended for treating external skin swellings, including warts include, as a broader category, the opponent’s pharmaceutical preparations for dermatological use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested disinfectants for hygiene purposes are substances that destroy germs causing diseases. As such, they have the same general medical purpose as the opponent’s pharmaceutical preparations for dermatological use. They can originate from the same undertakings and have the same distribution channels as well as end users. Therefore, they must be considered similar.

2. Relevant public – degree of attention

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

In the present case, the goods found to be identical are directed at the public at large as well as business customers with specific professional knowledge or expertise, namely health professionals.

It is likely that the public will display a relatively high degree of attention when purchasing some of the aforementioned goods, given that they may, to a lesser or greater extent, affect their state of health. In particular, it is apparent from the case-law that, so far as pharmaceutical preparations and medicines are concerned, the relevant public’s degree of attention is considered 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). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also show a higher than average degree of attention, regardless of whether the pharmaceuticals are sold with or without prescription. Therefore, the public’s degree of attention is considered high as regards the relevant goods of Class 5. However, as regards cosmetics and disinfectant soap in Class 3, the public’s degree of attention is considered average.

3. The signs

WARTNER	WORTIE
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 bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

According to the applicant, the element ‘WART’ of the earlier sign is descriptive in English and resembles the word for warts in a wide variety of other languages of the European Union. This word refers to ‘a small, hard, benign growth on the skin, caused by a virus’ (information extracted from Oxford Dictionaries on16/08/2017) for the English-speaking part of the public and it cannot be excluded that this verbal component may be understood by, for example, some Dutch-speaking consumers, as its Dutch equivalent, ‘WRAT’, is very similar. Bearing in mind that the earlier goods are pharmaceutical preparations for dermatological use that could be used to treat such a disease, this element may appear at least weak or even non-distinctive.

That being said, the earlier sign will appear only a fanciful or foreign word to a part of the relevant public, with no element that could be considered clearly more distinctive than others.

The contested mark is meaningless and has no elements that could be considered clearly more distinctive than other elements.

Visually, the signs have in common four letters out of six/seven, placed in the same order: ‘W*RT*E*’. That being said, although both signs begin with the letter ‘W’, it is next to different vowels, namely ‘A’ in the earlier mark and ‘O’ in the contested mark. The coinciding letters ‘RT’ are situated in the middle of the signs, an area where consumers generally tend to focus less when encountering a trade mark. The coinciding vowel ‘E’ has very little impact on the visual comparison, as it is next to differing letters: ‘NER’ in the earlier sign and ‘IE’ in the contested sign. As a result, the similarities arising from these coinciding letters are largely counterbalanced by the differing letters. Moreover, the vowel structure of each sign is significantly divergent, that is, ‘*A*E*’ in the earlier mark (two vowels) versus ‘*O*IE’ in the contested sign (three vowels). In addition, the only vowel that the signs have in common, ‘E’, occupies a different place in each sign, namely the penultimate position in the earlier mark and the last position in the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, although the pronunciation of the signs coincides in the sound of the consonants ‘W*RT*’, the beginnings of the marks are still differentiated by the vowels juxtaposed with these consonants, namely ‘A’ in the earlier sign and ‘O’ in the contested sign: ‘WAR’ versus ‘WOR’. Moreover, as seen above, the coinciding consonants ‘RT’, although pronounced in the same manner, are situated in the middle of the signs, where consumers generally tend to focus less when encountering a trade mark. Furthermore, the endings of the signs, ‘TIE’/‘TNER’, differ quite considerably, notably because the earlier mark finishes on the consonant ‘R’ but the contested mark on the vowel ‘E’. Although the latter is identically contained in both signs, its impact on the aural comparison is limited, as it is next to differing letters. Finally, the previous assessment of the vowel structure of each sign also applies to the aural comparison.

Therefore, the signs are aurally similar to a low degree.

Conceptually, neither of the signs has any meaning as a whole for the public in the relevant territory and they may appear fanciful or foreign words.

Reference is made to the previous assertions regarding the meaning of ‘WART’ for English and Dutch speakers. Consequently, since only one sign has a meaning for this part of the public, the signs are not conceptually similar.

For the part of the public that will not perceive any meaning in the signs, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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 lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Moreover, although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. The more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

As a preliminary remark, it must be recalled that the relevant public is the general public, as well as professionals in the healthcare sector of the European Union, with a high degree of attention for the goods in Class 5 and with an average degree of attention for the goods in Class 3.

The contested goods are identical or similar to the opponent’s goods.

Although the signs have some visual and aural similarities due to their four letters in common, ‘W*RT*E*’, the impact of the similarities arising from these letters is limited, in particular given the central position of some of the letters, the different endings of the signs and their divergent vowel structures. As a result, the differences between the signs are more decisive for the outcome than the similarities.

Furthermore, the conceptual level is irrelevant for a part of the public, while, for the part of the public that will understand the meaning of the element ‘WART’, the signs are even further apart, since only the earlier mark may convey a concept. Moreover, for this part of the relevant public, the impact of this component and, consequently, of its coinciding letters, ‘W*RT’, is less.

Consequently, the visual and aural coincidences between the signs are outweighed by their differences and will not give rise to a likelihood of confusion, even in relation to identical goods. Therefore, the opposition must be rejected insofar as it was based on Article 8(1)(b) EUTMR.

The opponent 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 opponent referred to opposition decision No 2 130 725 of 24/04/2014, relating to the trade marks ‘WAHACA’ and . However, this decision appears irrelevant to the present proceedings, as the trade marks in that case had only one differing letter, in the penultimate position, and the signs had many more similarities in their verbal elements than in the present case.

Even assuming that the earlier mark enjoys an enhanced distinctiveness due to its extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of enhanced distinctiveness.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the United Kingdom, Germany, the Netherlands, Belgium and Luxembourg.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 21/03/2014. However, the contested trade mark has a priority date of 26/09/2013. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the United Kingdom, Germany, Netherlands, Belgium and Luxembourg prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation and has proven genuine use, namely:

Class 5:        Pharmaceutical preparations for dermatological use.

Moreover, the relevant public is the general public as well as professionals of the health sector in the relevant territory.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted evidence to support this claim. 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.

Some of the evidence related not to the trade mark ‘WARTNER’ but to the applicant’s trade mark applications or websites. Therefore, these pieces of evidence are irrelevant to the present assessment of the reputation of the mark ‘WARTNER’ and have to be put aside and are not included in the following list of evidence. Likewise, Annexes II.C.8, II.C.10 and II.C.15 on CD were submitted by the opponent after the time limit and are not taken into account in the present assessment. The evidence of reputation are the remaining annexes already listed above in the section related to proof of use, namely Annexes I.1, II.A.1, II.A.2, II.A.3, II.A.4, II.B.1, II.B.2, II.B.3, II.B.4, II.B.5, II.C.1, II.C.2, II.C.3, II.C.4, II.C.5, II.C.6, II.C.7, II.C.9, II.C.11, II.C.12, II.C.13 and II.C.14. Reference is made to this list and its content.

It is clear from the evidence that the earlier trade mark ‘WARTNER’ has been subject to long-standing and intensive use in the Netherlands, Belgium and Germany. In particular, the opponent submitted a document attesting its use in the Netherlands as far back as 1998 (Annex II.B.2). For the territory of Belgium, various press articles confirm the launching of ‘WARTNER’ products in 2000 (Annex II.B.4). Concerning the German territory, the opponent supplied invoices dated in 2001 (Annex II.B.4). Moreover, the opponent submitted several documents showing the continuous use of the trade mark ‘WARTNER’ until 2014, whether invoices (Annex II.B.1), sales or market share reports (Annexes II.A.1 and II.A.2), marketing expenditure reports or advertisements (Annexes II.C.7, II.C.9, II.C.11, II.C.12).

Furthermore, several pieces of evidence show the large financial investments in marketing, advertising and promotion for the trade mark ‘WARTNER’, in various media supports, for instance in the press, on television or on the radio. The substantial amount of advertising increases consumer exposure to the opponent’s mark. In particular, the opponent submitted documents attesting that advertising and promotional expenditures in connection with its ‘WARTNER’ products are substantial in the territory of Belgium (Annex II.C.4). For example, between July 2011 and September 2011, 367 television advertisements were aired on various Belgian channels, as well as 271 between July 2012 and August 2012. Similarly, between April 2013 and May 2013, 300 advertisements were aired on Dutch television (Annex II.C.5). For the German territory, the opponent supplied a document presenting the amount of promotional expenditure for various media supports between 2005 and 2014, here again confirming a considerable investment (Annex II.C.12).

The opponent also submitted documents relating to the sales numbers and market shares of ‘WARTNER’ products (Annex II.A.1). In particular, it can be observed that the opponent had an overall leading position in the European market for products for wart removal between 2003 and 2005, namely for the territories of the United Kingdom, Germany, the Netherlands, Belgium, France, Spain, Portugal, Italy and Switzerland. It must be noted that the last country is not part of the European Union and that some of the other countries, namely France, Italy, Portugal and Spain, are not relevant to the claim of reputation. Although the numbers also concern the products sold under the trade mark ‘CRYOPHARMA’, the opponent indicated in its observations that the latter was marketed under the mark ‘WARTNER’. The attached diagram showing the market shares in the aforementioned territories for wart removal products indicates that in 2004 and 2005 the opponent had a leading position with the ‘WARTNER’ trade mark alone. Several diagrams confirm the dominance of the opponent with the ‘WARTNER’ mark in this particular market for the territories of Belgium (around 40% in 2004, around 50% in 2005), Germany (around 40% in 2005) and the Netherlands (around 30% in 2004, around 40% in 2005). This dominant position is confirmed by the document submitted in Annex II.A.2 showing the market shares for Europe in September 2013 for ‘WARTNER’ products for the removal of warts and corns. This leading position is also attested more generally by the opponent’s right, given by the company IMS Health, to use the claim ‘No1 anti-wart brand in the world’ on all packs of ‘WARTNER’ and ‘CRYOPHARMA’ products and displays in 2011 and 2014 (Annexes II.A.3 and II.A.4).

As regards the products concerned by the submitted evidence, numerous documents directly concern products for the removal of verrucas, warts, calluses and corns (Annexes I.1, II.A.1, II.A.2, II.B.2, II.C.1, II.C.2, II.C.3, II.C.6, II.C.7, II.C.9 and II.C.14).

In the light of the above, and although the actual numbers for sales and marketing expenses cannot be disclosed due to confidentiality, the Opposition Division is of the opinion that the earlier trade mark has been subject to long-standing and intensive use and that it was generally well known by the consumers of Germany, Belgium and the Netherlands before the contested mark’s priority date, 26/09/2013, at least in relation to the following goods in Class 5: pharmaceutical preparations for dermatological use.

2. The ‘link’ between the signs

As seen above, the earlier mark is reputed. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As seen above, the contested pharmaceutical preparations for cosmetic purposes, including pharmaceutical preparations for dermatological use, also intended for treating external skin swellings, including warts in Class 5 are identical to the opponent’s pharmaceutical preparations for dermatological use, for which genuine use and reputation have been proven, and the contested disinfectants for hygiene purposes in Class 5 and the contested cosmetics and disinfectant soap in Class 3 are considered similar to those goods.

The relevant public is the general public as well as health professionals, with a high degree of attention for some of the goods, namely those in Class 5, and with an average degree of attention for the relevant goods in Class 3.

In addition, although the earlier trade mark may have a weak distinctive element for the relevant goods for the English- or Dutch-speaking part of the public, namely ‘WART’, it has inherent distinctive character, enhanced by its long-standing and intensive use, in Germany, Belgium and the Netherlands.

The degree of visual and aural similarity between the signs ‘WARTNER’ and ‘WORTIE’ is only very low. Although they have letters in common, this results in only limited similarities between the trade marks, as they are counterbalanced by their differences. Consequently, although both signs begin with the letter ‘W’, it is next to different vowels, namely ‘A’ in the earlier mark and ‘O’ in the contested mark. The coinciding consonants ‘RT’, although pronounced in the same manner, are situated in the middle of the signs, where consumers generally tend to focus less when encountering a trade mark. Moreover, the endings of the signs, ‘TIE’/‘TNER’, differ quite considerably, notably because the earlier mark finishes on the consonant ‘R’ whereas the contested mark finishes on the vowel ‘E’. Furthermore, the vowel structure of each sign is significantly divergent, that is, ‘*A*E*’ in the earlier mark (two vowels) versus ‘*O*IE’ in the contested sign (three vowels). Although they have one vowel (‘E’) in common, this is in a different place in each sign, namely the penultimate position in the earlier mark and the last position in the contested sign. As a result, and as seen above, there is no likelihood of confusion between the signs.

On this point it is relevant to clarify that the question of whether or not a link would be made is not solely dependent on the question of likelihood of confusion, as remarked from the outset. Protection under Article 8(1)(b) EUTMR is dependent on likelihood of confusion, but under Article 8(5) EUTMR there may be a lesser degree of similarity between the marks in question but still a risk of injury in the sense of the relevant provision. It is sufficient that the relevant public merely makes a connection between the marks, that is to say, establishes a link between them. Nevertheless the signs must display a sufficient degree of similarity for the later mark to bring to mind the earlier mark. If the signs are not sufficiently similar, the possibility of the consumer forming a link will not exist.

Although the public might be able to perceive some commonalities between the signs, they will appear only fortuitous and will not give rise to the déjà-vu feeling that the opponent indicates in its observations. The Opposition Division is of the opinion that the contested sign is too distant from the earlier sign to evoke the earlier mark in the mind of the relevant consumers, especially as the consumers will show a higher than average degree of attention given the nature of the relevant goods.

Furthermore, the opponent indicated in its observations that the applicant had filed a Benelux trade mark application for ‘WARTIE’ on 21/05/2013 for similar goods, which was later withdrawn following an opposition from the opponent. The opponent also stated that the applicant uses the trade mark ‘WARTIE’, as well as ‘WORTIE’, in some of the countries in which its wart removal products are commercialised. In particular, the opponent is of the opinion that, as this mark ‘WARTIE’ is closer to its own registered trade mark ‘WARTNER’, it will lead the public to confusion, thus reinforcing the link between the marks ‘WARTNER’ and ‘WORTIE’. Nevertheless, this consideration cannot be taken into account in the present assessment, as it does not concern the relevant trade marks.

In the light of the above, and in spite of the identity or similarity between the relevant goods and the reputation of the earlier mark, the differences between the signs and their different overall impressions are significant enough for the public not to make any connection between them. Therefore, one of the conditions for applying Article 8(5) EUTMR, namely that the signs be sufficiently similar to lead the relevant public to make a connection between them, has not been met.

Therefore, the opposition fails also as far as it is based on the ground of Article 8(5) EUTMR.

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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

Boyana NAYDENOVA

Benoit VLEMINCQ

Pedro JURADO MONTEJANO

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.