APAISAC BIORGA | Decision 2344375 – MERCK SANTE (société par actions simplifiée) v. LABORATOIRES BAILLEUL INTERNATIONAL SA

OPPOSITION No B 2 344 375

Merck Santé (société par actions simplifiée), 37 rue Saint Romain, 69008 Lyon, France (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Laboratoires Bailleul International SA, Rue de Lyon 109, 1203 Genève, Switzerland (applicant), represented by Cabinet Beau De Lomenie, 158 rue de L'Université, 75340 Paris Cédex 07 France (professional representative).

On 13/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 344 375 is upheld for all the contested goods.

2.        European Union trade mark application No 12 447 199 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent initially filed an opposition against part of the goods of European Union trade mark application No 12 447 199, namely against all the goods in Class 5. On 13/11/2014 the applicant filed a division request for non-contested goods in Class 3. Therefore, only goods in Class 5 were maintained in EUTM No 12 447 199.The opposition is based on European trade mark registration No 1 164 870. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 21/01/2014. 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 21/01/2009 to 20/01/2014 inclusive.

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

Class 5:        Pharmaceutical products.

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 27/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 01/04/2016 to submit evidence of use of the earlier trade mark. This deadline was further extended until 01/06/2016, which coincides with the date on which the opponent submitted evidence of use.

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

The evidence to be taken into account is, in particular, the following:

  • Invoices, enclosures 22-33:

11 invoices dated from 2010 to 2014, issued to pharmacies in France. They refer to, amongst other items, ‘APAISYL GEL’, ‘BABYAPAISYL’, ‘CHOCAPAISYL’, ‘MYCOAPAISYL’, ‘CORTAPAISYL’, ASEPT APAISYL’, ‘BACTEO APAISYL’, ‘POUX APAISYL’, ‘APAISYL ONGLES ABIMÉS’, ‘APAISYL REPULSIF MOUSTIQUES’ and ‘APAISYL XPERT POUX ET LENTES’. The invoices include reference numbers, quantity of goods sold and total amounts.

  • Press clips, enclosures 10, 16, 18, 19, 20, 30, 32:

Article in French ‘Antiallergiques: ils servent aussi l’été’ in Top Santé of July 2009, article ‘Bouton de fièvre? Venez-en à bout!’ of 2010 in ‘France Dimanche’ making reference to ‘HerpApaisyl’. An extract from the website www.magazine.merckgroup.com (M-The Explorer Magazine) dated 2012 with an article in English on lice and advertising the shampoo preparation ‘Apaisyl Poux’. Article ‘Bouh, les poux!’ in Enfant Santé magazine dated 2011. Article ‘Ne cherchez plus les poux…’ in Santé magazine dated 2011. Article in French ‘Apaisyl Détect Lentes’ in Le Pharmacien de France dated 2014. An article in French, ‘Apaisyl, la marque experte des agressions de la peau’, in the French magazine Doses dated 2014.

  • Extracts from websites, enclosures 1-2:

cocooncenter.co.uk, powersante.com, idruginfo.com dated 09/08/2012 and 16/10/2012 showing the mark ‘Apaisyl’ and several figurative versions thereof in relation to products to be used to treat skin conditions, namely insect bites, bumps and contusions, nail mycosis, lice, nits and mosquitoes, cracks and crevices, as well as antibacterial solutions/gels/sprays.

  • Brochures enclosures 3, 26:

Brochures in French dated 2009, 2010 and 2011 for several Apaisyl products such as ‘mycoApaisyl’, ‘cortApaisyl’, ‘pouxApaisyl’ or ‘Apaisyl ongles abîmés’. Borchures in French for ‘Apaisyl répulsif moustiques’ and ApaisylXpert’ dated March 2013.

  • Enclosure 6, invoices for advertisement campaigns for ‘Apaisyl’ products in several French medias dated 2009, 2010, 2011.

  • Enclosure 12, screenshot of the youtube.com website with a still from a video called ‘Apaisyl Gel’, showing a scenario where a woman scratches her leg with a rake. At the bottom of the still, a pack of gel is depicted, showing the ‘Apaisyl’ mark.

The figurative marks depicted in the evidence are, amongst others, the following: