OPPOSITION No B 2 689 704

Biofarm SA, Str. Logofătul Tăutu nr. 99, 031212 Bucuresti, Romania (opponent), represented by Doina Țuluca, Bd. Lacul Tei 56, bl. 19, sc. B, ap, 52, sector 2, 020392 Bucuresti, Romania (professional representative)

a g a i n s t

Rockwell Medical, Inc., 30142 Wixom Road, Wixom MI 48393, United States of America (holder), represented by Kilburn & Strode LLP, 20 Red Lion Street, London  WC1R 4PJ, United Kingdom (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 689 704 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 international registration designating the European Union No 1 262 082 ‘TRIFERIC’. The opposition is based on the following earlier marks:

• Romanian trade mark registration No 4R006847 ‘TRIFERMENT’;
• Romanian trade mark registration No 87 828 ‘TRIFERMENT FORTE’;
• Romanian trade mark registration No 102 689 ;
• Romanian trade mark registration No 127 097 ‘3FERMENT’.

The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remarks on proof of use

Proof of use of earlier Romanian trade mark registrations No 4R006847 ‘TRIFERMENT’, No 87 828 ‘TRIFERMENT FORTE’ and No 102 689 ‘Triferment’ (figurative sign) was requested by the holder.

By notification of 29/08/2016, the Office invited the opponent to submit proof of use in relation to earlier trade marks No 87 828 and No 102 689, whilst in relation to trade mark No 4R006847 the Office informed that the request for proof of use could not be taken into account because, at the relevant date, this earlier mark had not been registered for at least five years.

The ‘relevant date’ for the contested international registration (that is, the date of international registration) is 24/06/2015.

On 20/10/2016, the opponent submitted some evidence aimed at demonstrating genuine use of the earlier marks. In its reply of 12/01/2017, the holder reiterated that all three of the abovementioned earlier marks were vulnerable to challenge on the basis of non-use as they had been registered for more than five years.

As regards earlier Romanian trade mark registration No 4R006847, in the notice of opposition the opponent indicated that its application date is 09/10/1970, and that the registration date is 09/10/2010. However, according to the evidence submitted by the opponent for substantiating this earlier right, namely the ‘Certificate of Trademark Registration’, when assessed in conjunction with the English translation of this document, it appears that this trade mark registration had been renewed on 23/11/2000. It means that at least one period of 10-year protection had elapsed before this date. Consequently, this earlier mark was subject to the use obligation within the meaning of Article 42(2) and (3) EUTMR.

However, at this point the Opposition Division considers it appropriate to not re-open opposition proceedings in order to invite the opponent to furnish evidence that would allow to ascertain the date of registration of Romanian trade mark No 4R006847, to not expressly invite the opponent to furnish proof of use in relation to this earlier mark, nor to grant a time limit for the holder to file observations in that regard, since this has no impact on the outcome of the present opposition.

Furthermore, the Opposition Division finds it appropriate to not undertake an assessment of the evidence of use submitted concerning earlier Romanian trade marks No 87 828 and No 102 689. The examination of the opposition will proceed as if genuine use of earlier Romanian trade mark registrations No 4R006847, No 87 828 and No 102 689 had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Romanian trade mark registration No 4R006847. 

1. The goods

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

Class 5:        Medicines for human and veterinary use.

The contested goods are the following:

Class 5:        Preparations for use in clinical and medical dialysis procedures; pharmaceutical solutions used in dialysis and hemodialysis; pharmaceutical preparations, namely, preparations for treating iron deficiency, anemia, kidney disease and renal disease; pharmaceutical preparations for injection, namely, preparations for treating iron deficiency, anemia, kidney disease and renal disease; iron delivery therapy, namely, commercial iron nutritional supplements, intravenous fluids used for the delivery of iron and soluble ferric pyrophosphate.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the holder’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

The contested preparations for use in clinical and medical dialysis procedures; pharmaceutical solutions used in dialysis and hemodialysis; pharmaceutical preparations, namely, preparations for treating iron deficiency, anemia, kidney disease and renal disease; pharmaceutical preparations for injection, namely, preparations for treating iron deficiency, anemia, kidney disease and renal disease; iron delivery therapy, namely, intravenous fluids used for the delivery of iron and soluble ferric pyrophosphate are included in the broad category of the opponent’s medicines for human and veterinary use. Therefore, they are identical.

As regards the contested iron delivery therapy, namely, commercial iron nutritional supplements, it is noted that nutritional supplements adapted for medical use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the opponent’s medicines for human and veterinary use, which is a broad category including pharmaceuticals (substances used to treat disease), insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are 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 relevant goods are directed at the public at large and at health-care 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. Given the therapeutic indication of the contested nutritional supplements which suggests a significant impact on the patient’s condition, the same considerations apply also to those goods. Therefore, the relevant public’s degree of attention is considered to be relatively high in relation to all of the goods at issue.

Given that the general public is more prone to confusion, the examination will proceed on this basis.  

3. The signs

TRIFERMENT	TRIFERIC
Earlier trade mark	Contested sign

The relevant territory is Romania.

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).

Although each of the signs is composed of one verbal element which does not exist as such in Romanian, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The relevant public will in all likelihood perceive the earlier mark as an invented expression comprising the words ‘TRI’ and ‘FERMENT’. ‘TRI’ is used in compounds to indicate ‘three’ (‘trei’ in Romanian). ‘FERMENT’ refers to a protein substance produced by living cells and acting as catalysts in specific biochemical reactions, with a fundamental role in regulating metabolic processes; synonymous to enzyme. Taken individually, both elements are descriptive and non-distinctive for medicines. As a whole, the expression conveying the idea of ‘triple ferment’ describes the composition or other objective characteristics of the goods at issue, for example a preparation consisting of three enzymes. It is, however, noted that the only element corresponding to the earlier mark is registered in Romania for the goods in question and, therefore, for the purpose of the present proceedings, it must be deemed to be endowed with at least some degree of distinctive character.

Although the contested sign as a whole lacks any clear meaning for the relevant public, it can be reasonably assumed that the average consumer will perceive the element ‘TRI’ in the contested sign just like in the earlier mark. Again, this element is non-distinctive on its own, given that it conveys descriptive information about the relevant goods which can have for example three components, triple effects etc. The rest of the sign, ‘FERIC’, corresponds to a word that exists in Romanian meaning a substance having in its composition trivalent iron. Whilst medical professionals will discern this concept, it cannot be expected that a significant part of the general public will be familiar with it, in view of its specialised nature and the distance to the Romanian word ‘fier’ (iron).

Conceptually, although the coinciding word ‘TRI’ will evoke a concept, it is not sufficient to establish any relevant conceptual similarity, as this element is non-distinctive and cannot indicate commercial origin of the goods. As regards the contested sign, the attention of the relevant public will be attracted by the additional, fanciful verbal element. Bearing in mind the above considerations, the signs are not conceptually similar.  

Visually and aurally, the signs coincide in the letters/sounds ‘TRIFER’. The opponent argues that signs have in common identical six letters in their beginning which is the part of a sign where the public tends to focus on. In that regard, the Opposition Division notes that, while, generally, the beginning of words has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45).

The signs differ in that the earlier mark ends in ‘MENT’, whereas the contested sign ends in ‘IC’. Given that the overlapping letter/sound string begins with, and is largely occupied by, the non-distinctive element, ‘TRI’, and that the differentiating parts of the signs are readily perceptible, the degree of visual and aural similarity between the signs is low.

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.

Firstly, the inherent distinctiveness of the earlier mark must be examined. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark lies in the specific juxtaposition of the descriptive elements. Therefore, the inherent distinctiveness of the earlier mark must be seen as low for the goods in question.

Secondly, according to the opponent, the earlier trade mark is well-known for the Romanian public and has acquired enhanced distinctiveness as result of its long standing and intensive use in connection with pharmaceuticals, food supplements, for regulating metabolic, digestive processes. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, 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).

The opponent submitted the following evidence:

• An undated photograph showing three examples of product packaging for ‘Triferment’ preparations.

• ‘Cegedim’ Report showing sales volumes for ‘Triferment’ and ‘Triferment Forte’ preparations in the ‘Digestives, including enzymes’ sector, from 1998 to 2015 (data relating to ‘Triferment Forte’ for 2014-2015 only). The figures for ‘Triferment’ range from around 1.400.000 units in 2003, to well above 2.300.000 units in 2014 and 2015 each. The sales volumes for ‘Triferment Forte’ are negligible in 2014, and somewhat above 38.000 in 2015.

• A report, prepared by the advertising company ‘Next’, summarising advertising campaigns for ‘Triferment’ preparations, as broadcast from 2011 to 2015 on a number of national and international TV channels available to the public in Romania. The number of TV spots per year ranges from 9.000 to over 26.000. For each year, the evidence contains a separate report, detailing the number of TV spots per month and per channel.

• 28 example invoices issued by the opponent to various customers in Romania from 2012 to 2015, showing, inter alia, sales of ‘Triferment’ and ‘Triferment Forte’ preparations.

• Excerpts from the opponent’s product catalogue, dated 2014, displaying the ‘Triferment’ preparation in the ‘Digestive & metabolic’ section.

The evidence indicates that the earlier ‘TRIFERMENT’ mark has been used for a substantial period of time (since 1998 which accounts for around 17 years of use prior to the ‘relevant date’ when the European Union was designated by the contested international registration). The sales volumes (expressed in millions of units annually) and marketing efforts (consisting of extensive advertising campaigns on television) suggest that the trade mark has a visible and consolidated position in the market of pharmaceutical preparations, particularly for digestives, enzymes. Under these circumstances, the Opposition Division finds that the evidence indicates that the earlier trade mark enjoyed a certain degree of recognition among the relevant public prior to the ‘relevant date’. That leads to the conclusion that the earlier trade mark, being inherently weak, had acquired a normal degree of distinctiveness for a part of the goods on which the opposition is based, namely digestives, enzymes.

It is necessary to note that the goods for which earlier mark has acquired distinctiveness and the contested goods, as listed in section a) of this decision, are similar. Although there is a clear difference in the therapeutic indications of digestives, enzymes and the contested goods that are used for clinical and medical dialysis, or preparations for treating iron deficiency, anemia, kidney disease and renal disease, these preparations share the same nature because they are specific medical products; their purpose is, broadly speaking, healing and/or curing; they are sold in the same places, namely pharmacies; and they come from the same source, which is the pharmaceutical industry.

On 23/03/2017 (after the expiry of the substantiation time limit which ended on 03/11/2016), the opponent submitted another piece of evidence aimed at supporting the initially submitted ‘Cegedim’ Report. The new report contains indications, with a translation into the language of proceedings, of the total market in Romania for digestives, including enzymes, and the market share of ‘Triferment’ which is well above 60% from 2011 to 2015. However, the above finding of acquired distinctiveness of the earlier mark is not based on this additional evidence, since the evidence submitted within the time limit is sufficient. Therefore, the Opposition Division considers that it is unnecessary at this point to re-open the opposition proceedings in order to invite the holder to submit its observations, as the outcome of the present opposition would not change.

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 (eighth recital 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).

As concluded above in section d) of this decision, the opponent has demonstrated that the earlier ‘TRIFERMENT’ mark has acquired distinctiveness for digestives, enzymes, which allows the earlier mark a normal scope of protection for the present assessment. The abovementioned opponent’s goods are similar to the contested goods.

These circumstances must be weighed against the other relevant factors for the global appreciation of likelihood of confusion, one of which is the relatively high degree of attention that the relevant public will display when purchasing the goods at issue, and the other is the degree of similarity between the signs which has been established as low from the visual and aural perspectives. On a conceptual level, the signs share the non-distinctive element, ‘TRI’, which is incapable in itself of rendering the signs similar.

In an overall assessment of the above, the Opposition Division finds that the differences identified between the signs are sufficient to counteract the similarities and to enable the general public, being the part of the public that is prone to being confused, to safely distinguish between the signs.

The opponent refers to the principle of interdependence which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that the goods are similar cannot, in this case, compensate for the differences identified between the signs.

Considering all the above, there is no likelihood of confusion on the part of the general public in the relevant territory. This absence of a likelihood of confusion equally applies to the remaining part of the public, since health-care professionals can be expected to perceive the contested sign’s element ‘FERIC’ as meaningful, which renders the signs even less similar. Therefore, the opposition must be rejected, insofar as it is based on Romanian trade mark registration No 4R006847 ‘TRIFERMENT’.

The opponent has also based its opposition on the following earlier trade marks:

• Romanian trade mark registration No 87 828 ‘TRIFERMENT FORTE’, based on pharmaceutical products in Class 5;
• Romanian trade mark registration No 102 689 , based on pharmaceutical and veterinary products; sanitary preparations for medical purposes; dietetic substances adapted for medical purposes in Class 5;

• Romanian trade mark registration No 127 097 ‘3FERMENT’, based on pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; food and dietetic substances adapted for medical use; food supplements for human and animals comprised in this class in Class 5.

The other earlier marks invoked by the opponent are less similar to the contested sign. This is because they contain additional verbal or figurative elements, such as ‘FORTE’ (despite the fact that it points to the strength of the pharmaceutical preparation and is non-distinctive), or the numeral ‘3’ (which replaces the element ‘TRI’ thus conveying the same concept), which are not present in the contested sign.  

The opponent claimed enhanced distinctiveness acquired through use for earlier Romanian trade mark registration No 87 828 ‘TRIFERMENT FORTE’. However, having examined the material listed in section d) of this decision, which equally refers to this earlier mark, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the opponent’s ‘TRIFERMENT FORTE’ mark acquired an enhanced degree of distinctiveness through its use. The fact that it was launched on the market roughly one year prior to the ‘relevant date’ of the contested international registration is insufficient for demonstrating use that would reach the threshold for enhanced distinctiveness. Furthermore, the evidence concerning the opponent’s advertising efforts contains no reference to this earlier mark.

Therefore, the outcome of the opposition cannot be different in relation to the other earlier rights invoked by the opponent; no likelihood of confusion exists with respect to those earlier rights, and the opposition is unsuccessful also in relation to them.

The opponent argues that the earlier trade marks, all characterised by the presence of the same word component ‘TRIFER’, constitute a ‘family of marks’. Moreover, the opponent asserts that, since the ending ‘IC’ is used to form adjectives in Romanian, the public will perceive the contested sign as referring to the opponent’s ‘family or marks’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

The concept of the family of marks was analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65. When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of, at the very least, of a number of marks capable of constituting a ‘series’. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. In this case, all of the earlier marks comprise the meaningful expression, consisting from the elements ‘TRI’, or ‘3’, conjoined to the element ‘FERMENT’. Although it cannot be denied that the contested sign, too, contains the element ‘TRI’ in the same position, this element is non-distinctive. Furthermore, the semantic content that is omnipresent in the earlier marks is missing in the contested sign. Therefore, the contested sign does not display any relevant characteristics which might give grounds for regarding it as belonging to the opponent’s family of marks. As one of the requisite conditions for successfully relying on the claim for a ‘family of marks’ is not fulfilled, the opponent’s claims in that regard are dismissed.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

Therefore, the opposition must be rejected in its entirety.  

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Angela DI BLASIO

Solveiga BIEZA

Oana-Alina STURZA

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.