OPPOSITION DIVISION
OPPOSITION No B 2 747 064
Lab. Medizin Farma, S.L., P. Ind. Benieto, c/ del Transporte, 32, 6702 Gandia
(Valencia) Spain (opponent), represented by Molero Patentes Y Marcas S.L., Paseo
de la Castellana, 173-Bajo Izq., 28046 Madrid, Spain (professional representative)
a g a i n s t
Named S.p.A., Via Lega Lombarda 33, 20855 Lesmo (MB), Italy (applicant),
represented by Keltie LLP, No. 1 London Bridge, London, SE1 9BA, United
Kingdom (professional representative).
On 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 747 064 is upheld for all the contested goods.
2. European Union trade mark application No 15 222 201 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
Preliminary Remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 222 201, CISTINAM. The opposition is based on European Union
trade mark registration No 8 598 575, CISTIMAX. The opponent invoked Article 8(1)
(b) EUTMR.
PROOF OF USE
In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the
opponent must furnish proof that, during the five-year period preceding the date of
filing or, where applicable, the date of priority 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.
Decision on Opposition No B 2 747 064 page: 2 of 9
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 given that the earlier trade
mark was registered more than five years prior to the relevant date mentioned above.
The date of filing of the contested application is 15/03/2016. 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 15/03/2011 to 14/03/2016 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 and veterinary preparations; sanitary preparations for
medical purposes, dietetic substances adapted for medical use, food for
babies; dietetic substances adapted for medical use, food for babies;
excluding all sedative pharmaceutical preparations.
According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), 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 or services in
respect of which it is registered and on which the opposition is based.
On 26/09/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2)
EUTMIR, in force before 01/10/2017), the Office gave the opponent, after extension,
until 17/02/2017 to submit evidence of use of the earlier trade mark. On 02/02/2017,
within the time limit, 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 the
evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
Over 30 invoices dating from the years 2011, 2012, 2013, 2014, 2015 and the
beginning of 2016. The name of the products sold is mentioned as CISTIMAX
and they are addressed to many different customers all over Spain, like for
instance in Madrid, Barcelona and Oviedo.
An affidavit signed by the manager of the opponent, Mr J. Moscardo Montblanch,
on the 15/12/2016, where he declares that the turnover of goods bearing the
name CISTIMAX has reached several ten thousand Euros in the last five years.
Furthermore, the opponent submitted several invoices regarding the purchase of
packaging boxes and aluminium material printed with the name of the trade
mark in question.
He submitted also a picture of a sample of the product in its packaging, where the
word CISTIMAX can clearly be seen and where the content is described as
“food supplement containing plant extracts” (translation into English was
provided by the opponent).
As far as the affidavit is concerned, Article 10(4) EUTMDR (former Rule 22(4)
EUTMIR, in force before 01/10/2017) expressly mentions written statements referred
Decision on Opposition No B 2 747 064 page: 3 of 9
to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f)
EUTMR lists means of giving evidence, amongst which are sworn or affirmed written
statements or other statements that have a similar effect according to the law of the
State in which they have been drawn up. As far as the probative value of this kind of
evidence is concerned, statements drawn up by the interested parties themselves or
their employees are generally given less weight than independent evidence. This is
because the perception of the party involved in the dispute may be more or less
affected by its personal interests in the matter. However, this does not mean that
such statements do not have any probative value at all. The final outcome depends
on the overall assessment of the evidence in the particular case. This is because, in
general, further evidence is necessary to establish use, since such statements have
to be considered as having less probative value than physical evidence (labels,
packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to
see whether or not the contents of the declaration are supported by the other items of
evidence.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in
accordance with its essential function, which is to guarantee the identity of the origin
of the goods or services for which it is registered, in order to create or preserve an
outlet for those goods or services. Genuine use does not include token use for the
sole purpose of preserving the rights conferred by the mark. Furthermore, the
condition of genuine use of the mark requires that the mark, as protected in the
relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax,
EU:C:2003:145 and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
The invoices show that the place of use is Spain. This can be inferred from the
language of the documents, namely Spanish, the currency mentioned (Euros) and
some addresses in Spain. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
.
As regards the extent of use, all the relevant facts and circumstances must be taken
into account, including the nature of the relevant goods or services and the
characteristics of the market concerned, the territorial extent of use, and its
commercial volume, duration and frequency. The assessment of genuine use entails
a degree of interdependence between the factors taken into account. Thus, the fact
that commercial volume achieved under the mark was not high may be offset by the
fact that use of the mark was extensive or very regular, and vice versa. Likewise, the
territorial scope of the use is only one of several factors to be taken into account, so
that a limited territorial scope of use can be counteracted by a more significant
volume or duration of use.
The evidence submitted by the opponent in order to prove genuine use of the earlier
EUTM relates exclusively to Spain. However, as stated above, the territorial scope of
the use is only one of several factors to be assessed in the determination of whether
the use is genuine or not, and according to the case law, use in one member state
can be sufficient.
Taking into account the evidence in its entirety, although the evidence submitted by
the opponent is not particularly exhaustive, it provides the Opposition Division with
sufficient information concerning the commercial volume, the territorial scope, the
Decision on Opposition No B 2 747 064 page: 4 of 9
duration, and the frequency of use, and therefore does reach the minimum level
necessary to establish 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 47(2) EUTMR, if the earlier trade mark has been used in relation
to only some 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
those goods or services.
In the present case, the evidence shows genuine use of the trade mark for the
following goods:
Class 5: Dietetic substances adapted for medical use
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, § 45 and 46)
In the present case, the evidence proves use only for food supplement containing
plant extracts. These goods can be considered to form an objective subcategory of
Dietetic substances adapted for medical use. Therefore, the Opposition Division
considers that the evidence shows genuine use of the trade mark only for Dietetic
substances adapted for medical use.
Therefore, the Opposition Division will only consider the abovementioned goods in its
further examination of the opposition.
Decision on Opposition No B 2 747 064 page: 5 of 9
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.
a) The goods
The goods on which the opposition is based are the following:
Class 5: Dietetic substances adapted for medical use
The contested goods are the following:
Class 5: Nutritional supplements and food supplements containing cranberry extract.
Contested goods
The contested nutritional supplements and food supplements containing cranberry
extract overlap with the opponent’s dietetic substances adapted for medical use.
Therefore, they are identical.
b) 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, but also at the medical professionals with specific professional knowledge or
expertise.
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 that the general public is more prone to confusion, the examination will
proceed on this basis. Taking into account the abovementioned facts, the attention of
this part of the public will be higher than average.
Decision on Opposition No B 2 747 064 page: 6 of 9
c) The signs
CISTIMAX CISTINAM
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 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).
Both signs are word marks consisting of a single element and are written in upper
case letters. Nevertheless, in the case of words marks the word as such is protected
and not its written form; therefore, it is immaterial whether the marks are depicted in
lower or upper case letters.
The element CISTI***, identically contained in both signs, is meaningful in parts of
the EU as indicating something related to urinary infections, in particular for medical
professionals in the area, as well as for the English-, French-, Italian-, Portuguese-,
Romanian- and Spanish-speaking parts of the public, and therefore this element
might be weak (to the extent that it will be separately perceived by these parts of the
public) in relation to the relevant goods, namely the relevant dietetic substances in
Class 5.
However, for the remaining parts of at least the general public, for instance the
Bulgarian, Czech, Estonian, German, Finnish, Latvian, Lithuanian and Polish
speakers, the verbal element CISTI has no meaning.
The element MAX might be understood by at least part of the public as referring to a
maximum effect of the products. However, the word CISTIMAX as a whole has no
meaning for this part of the public and is, consequently, distinctive as a whole. The
same holds true for the sign CISTINAM.
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
For reasons of procedural economy, the Opposition Division will hence examine the
opposition in relation to the part of the public for which CISTI has no meaning and for
which the entire verbal elements CISTIMAX and CISTINAM have a normal degree of
distinctiveness, namely the Bulgarian-, Czech-, Estonian-, German-, Finnish-,
Latvian-, Lithuanian- and Polish-speaking parts of the general public, for the reasons
explained above.
Decision on Opposition No B 2 747 064 page: 7 of 9
Visually and aurally, the signs coincide in the letters CISTI*A* in identical positions
in the verbal elements. Furthermore they share the letter M, however at different
positions. They differ in only their letters X respectively N. However, it is clear from
case-law that the relevant public usually pays more attention to the beginnings of the
signs. This is because consumers read from right to left and the initial parts of signs
are those that first catch readers’ attention. In the present case, the signs coincide in
six out of eight letters. In addition, the signs share the penultimate vowel A in an
identical position. Therefore, although the signs might have slightly different endings
from a phonetic (the syllable MAX versus the syllable NAM) and visual point of view,
bearing in mind that they coincide in a significant number of letters, they are
considered visually and aurally similar to at least an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. 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.
d) 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 opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
Consequently, the 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 in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal..
e) 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).
The goods in the present case are identical and the degree of attention will be higher
than average for the reasons explained above in section b).
The signs are visually and aurally similar to at least an average degree, as they
coincide in 6 out of 8 letters placed identically in both signs. They only differ in their
endings, usually considered the less prominent parts of signs.
As far as the visual and aural perceptions of the signs are concerned, 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
Decision on Opposition No B 2 747 064 page: 8 of 9
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).
In addition, a conceptual comparison cannot be carried out, since the signs are
meaningless to the public under consideration. Consequently, consumers have no
way of safely differentiating between the signs on the basis of connotations that
might indicate something to them in relation to the goods.
The goods in question, to which a higher than average degree of attention will be
paid (Class 5), are identical. Furthermore, it has not been established that these
conflicting goods will be exclusively prescribed and purchased by a professional
public with some medical knowledge; on the contrary, the goods in question are
mainly nutritional supplements and preparations that could also be found on shelves
in pharmacies or common drug stores. Bearing in mind the identity of the goods in
Class 5, the only differences between the marks, at the ends, are not considered
sufficient to exclude a likelihood of confusion, including a likelihood of association.
Considering all the above, there is a likelihood of confusion on the part of the
Bulgarian-, Czech-, Estonian-, German-, Finnish-, Latvian-, Lithuanian- and Polish-
speaking parts of the general public. As stated above in section c) of this decision, a
likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 8 598 575. It follows that the contested trade mark
must be rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Sigrid DICKMANNS Karin KLÜPFEL Tobias KLEE
Decision on Opposition No B 2 747 064 page: 9 of 9
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.