CANCELLATION No 10 891 C (INVALIDITY)

L.F. Will et C° (Belgique), Société Anonyme, Rue du Manil, 80, 1301 Wavre, Belgium (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Mika Pharma Gesellschaft für die Entwicklung und Vermarktung pharmazeutischer Produkte mbH, Auestrasse 39, 67346 Speyer, Germany (EUTM proprietor), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative).

On 18/07/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 12 647 681 is declared invalid in its entirety.

3.        The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 647 681. The application is based on, inter alia, Benelux trade mark registration No 646 185. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the signs are similar, that the goods are identical or very similar and that there exists a likelihood of confusion.

The EUTM proprietor requested the applicant to submit evidence of use of the earlier marks. Regarding the signs, the EUTM proprietor argues that they are not similar and that there is no likelihood of confusion for the relevant public.

The applicant filed evidence of use (listed below) and reiterates its arguments regarding the likelihood of confusion.

In its final observations, the EUTM proprietor argues that use has been proved, at most, for only part of the goods and that these goods are not similar to the contested goods which explicitly exclude those with hygienic properties used for washing feet.

PROOF OF USE

The Cancellation Division finds it appropriate to first examine the proof of use in relation to the opponent’s Benelux trade mark registration No 646 185.

According to Article 57(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 42(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The EUTM proprietor requested the applicant to submit proof of use of, inter alia, Benelux trade mark registration No 646 185 on which the application is based.

The application for a declaration of invalidity was filed on 19/05/2015. The contested trade mark was published on 11/04/2014. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in  the Benelux from 19/05/2010 to 18/05/2015 inclusive. Since the earlier mark was registered more than five years prior to the date of publication of the contested mark, use of the earlier mark had to be shown also for the period from 11/04/2009 to 10/04/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 3: Cosmetics with hygienic properties used for washing feet.

Class 5: Pharmaceuticals and sanitary preparations, in particular remedies against foot perspiration.

According to Rule 40(6) EUTMIR in conjunction with Rule 22(3) EUTMIR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 22/04/2016 the applicant was given until 02/08/2016 to submit proof of use.

On 01/08/2016 the applicant submitted evidence as proof of use.

As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The evidence is the following:

• Extracts from a ‘GOOGLE’ search for ‘GYNO’ and ‘gynomyk’.

• Extracts from brochures showing inter alia the sign for a powder-spray intended for feet perspiration and painful feet.

• Invoices dated 2010-2015. They are issued by Will Pharma and are addressed to clients located in Luxembourg, Belgium and the Netherlands. They show sales of, inter alia, SPREEMYK products. The amounts and quantities sold are significant, all over the relevant periods.

Preliminary remark

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor will be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the applicant submitted evidence of use of its marks made by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

Consequently, it can be presumed that the evidence filed by the applicant is an implicit indication that the use was made with its consent. To this extent, and in accordance with Article 15(2) EUTMR, the Cancellation Division considers that the use made by ‘Will Pharma’ was made with the applicant’s consent and thus is equivalent to use made by the applicant.

The invoices are dated within the relevant periods and they show that the place of use is the Benelux countries. Furthermore, they provide sufficient information concerning the commercial volume, length of period and frequency of use. Finally, 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).

In the present case, the evidence of use in its entirety sufficiently indicates the time, place, extent and nature of use of the applicant’s trade mark.

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

According to Article 57(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those 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 subcategories 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 subcategory or subcategories 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.’ (applied by analogy 14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the earlier mark is registered for cosmetics with hygienic properties

for washing feet in Class 3 and pharmaceutical and sanitary preparations, in particular

remedies against foot perspiration in Class 5.

The term in particular, used in the applicant’s list of goods in Class 5, 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 (on the use of in particular see reference in judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The evidence proves use only for a powder-spray preparation for foot perspiration and painful feet. These goods can be considered to form an objective subcategory of pharmaceutical and sanitary preparations, in particular remedies against foot perspiration, namely pharmaceutical and sanitary preparations for foot care and in particular foot perspiration in Class 5.

Use is not proved for the goods in Class 3 since the product bearing the earlier mark is not a cosmetic product primarily intended for cleaning feet.

Therefore, the Cancellation Division considers that the evidence shows genuine use of the trade mark only for pharmaceutical and sanitary preparations for foot care and in particular foot perspiration in Class 5 and will only consider these goods in its further examination.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 assessment proceeds on the basis of Benelux trade mark registration No 646 185.

1. The 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 goods on which the application is based and for which use has been proved are the following:

Class 5: Pharmaceutical and sanitary preparations for foot care and in particular foot perspiration.        

After a partial surrender dated 22/10/2015, the contested goods are the following:

Class 3: Cosmetic preparations for beauty and care of hair, skin, face and body; disinfectant soaps; foam cleansers for personal use; germicidal and bactericides detergents for personal use; all the aforementioned products with the exclusion of products with hygienic properties used for washing feet.        

Class 5: Anti-inflammatory and antipyretic preparations, with the exclusion of products with hygienic properties used for washing feet.        

Contested goods in Class 3

The contested disinfectant soaps; foam cleansers for personal use; germicidal and bactericides detergents for personal use; all the aforementioned products with the exclusion of products with hygienic properties used for washing feet are similar to the applicant’s pharmaceutical and sanitary preparations for foot care and in particular foot perspiration. These goods can have the same purpose (to kill germs and bacteria or to inhibit micro-organisms), they target the same public, they come from the same source (pharmaceutical industry) and are distributed through the same channels (pharmacies).

The contested cosmetic preparations for beauty and care of hair, skin, face and body; all the aforementioned products with the exclusion of products with hygienic properties used for washing feet cover preparations used to enhance or protect the appearance or odour of the human body. Even though they exclude preparations for foot cleaning, they are similar at least to a low degree to the applicant’s sanitary preparations for feet care and in particular feet perspiration. These goods have the same purpose (body-care), they share the same distribution channels (pharmacies or other specialised shops) and they target the same public.        

Contested goods in Class 5

The contested anti-inflammatory and antipyretic preparations, with the exclusion of products with hygienic properties used for washing feet are similar to the applicant’s pharmaceutical preparations for foott care and in particular foot perspiration to the extent that these goods have the same nature and purpose (pharmaceutical preparations used to treat disease and to improve a patient’s medical condition). The relevant public also coincides, as the manufacturers and distribution channels.

2. Relevant public — degree of attention

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

In the present case, the goods found to be similar are directed at the public at large and at specialists.

In relation to the goods in Class 3, the degree of attention of the public is average.

Insofar as the goods in Class 5 are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 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 have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Given that the general public is more prone to confusion, the examination will proceed in relation to that public.

3. The signs

	SPRAYMIK
Earlier trade mark	Contested trade mark

The relevant territory consists of the Benelux countries.

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).

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).

In the present case, since the similarities between the signs, in particular from a phonetic point of view, are stronger for the Dutch-speaking part of the relevant public, the Cancellation Division finds it appropriate to focus the comparison of the signs on this part of the relevant public.

The contested sign is the word mark ‘SPRAYMIK’ which, taken as a whole, is meaningless. However, although it is composed of one verbal element, the relevant consumers 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). In the present case, the relevant public will perceive the element ‘SPRAY’ which is a basic English word commonly used in Dutch, as referring to a liquid kept under pressure in a can or other container, which can be forced out in very small drops. In relation to the goods this element is weak since it refers to their method of use (spray products). The element ‘MIK’ has no meaning and is therefore distinctive.

The earlier mark is a figurative sign containing a stylised foot print with the word ‘SPREEMYK’ written in capital italic letters, and underlined. It has no element that could be considered more dominant (visually eye-catching) than other elements.

Taken as a whole, the sign ‘SPREEMYK’ has no meaning and is therefore distinctive to an average degree. However, in relation to the relevant goods that can be sprayed, at least part of the relevant public will perceive the element ‘SPREE’ as referring to the English word ‘SPRAY’ since these words are phonetically equivalent in Dutch. This element is therefore less distinctive than the element ‘MYK’ which has no meaning.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, the figurative element and the stylisation of the earlier mark are essentially decorative. Furthermore, in relation to the goods, the figurative element depicting a foot print is non-distinctive since it clearly indicates that the goods are for foot care.

Visually, the signs coincide in the letters ‘S-P-R-*-*-M-*-K’. They share the same five consonants placed in the same order. They differ in their letters ‘E-E’ versus ‘A-Y’ and in ‘Y’ versus ‘I’. They further differ in the figurative element and in the slight stylisation of the earlier sign. However, as explained above, these figurative elements perform an essentially decorative function and the public will instantly attribute more trade mark significance to the verbal element of the earlier sign. Bearing in mind the foregoing assessment concerning the distinctive components of the signs, it is concluded that the signs are visually similar to an average degree.

Aurally, the signs are identical because the differing letters are pronounced in the same way (EE/AY and Y/I).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since at least part of the consumers will perceive in both signs the ‘spray’ concept, which is weak in relation to the goods at issue, the signs are conceptually similar to a low degree for this part of the public

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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods 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 some weak or descriptive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

The goods are partly similar and partly similar at least to a low degree. The inherent distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree, aurally identical and conceptually similar to a low degree where a meaning is perceived. Therefore, the Cancellation Division considers that the differences between the signs are insufficient to counterbalance the similarities.

Considering all the above, there is a likelihood of confusion on the part of the Dutch-speaking general part of the public, even displaying a high degree of attention. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the likelihood of confusion in relation to the remaining part of the public.

Therefore, the application is well founded on the basis of the applicant’s Benelux trade mark registration No 646 185. It follows that the contested trade mark must be declared invalid for all the contested goods. This is also valid for the goods found to be similar to at least a low degree given the relevant similarities between the signs.

As the earlier Benelux trade mark No 646 185 leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Catherine MEDINA

Frédérique SULPICE

Lucinda CARNEY

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 Cancellation 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.