OPPOSITION No B 2 546 714
Synergia, Le Poyet, 43 500 Beaune Sur Arzon, France (opponent), represented by Gerard Haas, 32 Rue La Boétie, 75008 Paris, France, (professional representative)
a g a i n s t
MedComb Holding ApS, Vesterbrogade 149, 1620 Copenhagen, Denmark, (applicant), represented by Plougmann Vingtoft A/S, Rued Langgaards Vej 8, 2300
Copenhagen S, Denmark (professional representative).
On 12/01/2017, the Opposition Division takes the following
1. Opposition No B 2 546 714 is upheld for all the contested goods, namely:
Class 5: Pharmaceutical and veterinary preparations; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals.
2. European Union trade mark application No 13 180 898 is rejected for all the contested goods. It may proceed for the remaining non-contested goods.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 180 898 in Class 5. The opposition is based on European Union trade mark registration No 6 384 937. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, European Union trade mark No 6 384 937.
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 publication of the contested application.
The contested application was published on 14/04/2015. 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 14/04/2010 to 13/04/2015 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: Dietetic substances; food supplements (or nutritional supplements) for medical purposes or not, containing plant extracts and/or edible oils and fats and/or vitamins.
According to Rule 22(3) EUTMIR, the evidence of use shall 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 11/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/02/2016, later prolonged by letter of 03/02/2016, until 11/04/2016, to submit evidence of use of the earlier trade mark. On 08/04/2016, 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 presented by the opponent is the following:
- Document 1: Certification statement of the opponent’s accountant, dated 25/03/2016, in which he certifies a considerable turnover with the product DAY OXYDOSE in the years 2011 to 2015.
- Document 2: Certification statement of the opponent’s lawyer dated 09/02/2016, in which he certifies that since June 2009 and until June 2015, the product DAY OXYDOSE were constantly commercially used.
- Document 3, 4, 5, 6: Those documents are copies of advertisements in several French monthly or bi-monthly journals showing publicity for DAY OXYDOSE dated respectively from March/April 2006, 09/10/2006, March/April 2007 and from the year 2009.
- Document 7: A leaflet with publicity for DAY OXYDOSE, undated.
- Document 8: Several invoices of the opponent to different clients. Part of those invoices is from 2007, 2008, 2009, and 25/01/2010 and therefore dated outside the relevant period. Furthermore it submitted 2 invoices concerning DAY OXYDOSE from the year 2010, within the relevant period, to clients in Portugal and France, 2 invoices concerning products marketed under the trade mark DAY OXYDOSE from the year 2011, to clients in Portugal and France, 6 invoices concerning DAY OXYDOSE from the year 2012, to clients in Portugal, Belgium and France, 8 invoices concerning DAY OXYDOSE from the year 2013, to clients in Portugal, Belgium and France, 4 invoices concerning DAY OXYDOSE from the year 2014, to clients in Portugal, Belgium and France, and 4 invoices concerning DAY OXYDOSE from the year 2015 to clients in France, about significant quantities. Each transaction is described by the relevant product code, product name (including the trade mark), quantity sold, unit price and total amount due.
- Document 9: 3 invoices of manufacturers for the opponent, concerning the production of products marketed under the trade mark DAY OXYDOSE, issued on 02/08/2012, 18/10/2013, and 24/04/2015.
- Document 10: 3 invoices to the opponent, for the production of the packaging of DAY OXYDOSE, dated 06/07/2012, 04/09/2013, 09/03/2015.
- Document 11: Several screen shots – undated – of European websites (of the United Kingdom, Luxembourg, Portugal and Belgium) offering the DAY OXYDOSE product.
- Document 12: Undated image of DAY OXYDOSE packaging, and use instructions.
- Document 13 and 13-1: – a production file of 21/12/2009 – and document 14 and 14-1: – a placing on the market declaration file of dietary supplement of 12/09/2007 – are dated outside the relevant period.
- Document 15: 5 invoices concerning DAY OXYDOSE from the year 2015, to clients in France, 5 invoices concerning DAY OXYDOSE from the year 2014, to clients in France, 5 invoices concerning DAY OXYDOSE from the year 2013, to clients in France, 5 invoices concerning DAY OXYDOSE from the year 2012, to clients in France, 5 invoices concerning DAY OXYDOSE from the year 2011, to clients in France, 9 invoices concerning DAY OXYDOSE from the year 2010, to clients in France. Each transaction is described by the relevant product code, product name (including the trade mark), quantity sold, unit price and total amount due.
- Document 16: Affidavit of the opponent’s accountant, dated from 02/09/2016, in which he certifies significant turnover with the product DAY OXYDOSE in the years 2010 to 2015.
Even if the evidence which is dated outside the relevant period would not be taken into account, this will not prejudice the opponent since the finding in relation to the genuine use would not be different if this evidence was to be taken into account.
As far as the affidavits of the opponents accountant and lawyer are concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(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 or people having economic links like accountants or lawyers 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.
Assessment of evidence
The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
As regards place of use, the invoices under documents 8 and 15 show that the place of use is France, Portugal, and Belgium. This can be inferred from the customer-specific information stated on the invoices (namely their addresses). Therefore, the evidence relates to the relevant territory.
In relation to time of use, the Opposition Division finds that, aside from the pieces of evidence that are undated or not within the relevant period, 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 and the characteristics of the market concerned, the territorial extent of use, 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 documents filed, namely the sales invoices, the production invoices and the packaging cost invoices to the opponent as well as the screen shots of webpages where DAY OXYDOSE can be purchased, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Both the physical volumes and the commercial value of the sales concerning the DAY OXYDOSE product might be defined as moderate, but not negligible. Together with the turnover figures, provided by the accountant of the opponent, and the statement of the opponent’s lawyer that the DAY OXYDOSE trade mark has been consistently used from June 2009 through June 2015, the information presented in the invoices indicates that the physical volumes of sales, whilst not high, were not merely token, but sufficient for establishing a commercial scale of transactions related to the goods at issue. In that regard, it is recalled that use of the mark need not be quantitatively significant for it to be deemed genuine. Moreover, the invoices submitted by the opponent are only samples and do not represent the total sales (which can be inferred from the non-consecutive numbering of the invoices). Taking into account the nature of the goods sold under the DAY OXYDOSE trade mark, namely relatively cheap dietetic or food supplements, the documents allow the finding that a sufficient commercial volume of sales is shown by the evidence.
The territorial scope is sufficiently indicated by the fact that, as shown in the invoices, the relevant goods were sold to customers that are based in several locations in France, Portugal and Belgium. The sufficient degree of the duration of use is clearly indicated by the fact that the opponent submitted several invoices for each year of the relevant period. With regard to the frequency of use, the invoices leave no doubt that sale transactions under the DAY OXYDOSE trade mark were carried out regularly throughout the relevant period. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the evidence shows that the opponent used the sign in a trade mark sense, publicly and outwardly. The trade mark was directly affixed on the packaging of the goods, in the form of labelling. Moreover, it appears next to the goods in the webpages where the products can be purchased.
Therefore, it is considered that the opponent’s DAY OXYDOSE trade mark is validly used.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
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 opponent’s trade mark during the relevant period in the relevant territory.
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 goods
The goods on which the opposition is based are the following:
Class 5: Dietetic substances; food supplements (or nutritional supplements) for medical purposes or not, containing plant extracts and/or edible oils and fats and/or vitamins.
The contested goods are the following:
Class 5: Pharmaceutical and veterinary preparations; dietetic food and substances adapted for medical or veterinary use; food for babies; dietary supplements for humans and animals.
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 5
The contested dietetic food and substances adapted for medical or veterinary use are included in the broad category of the opponent’s dietetic substances. Therefore they are identical.
The contested dietary supplements for humans and animals overlap with the opponent’s food supplements (or nutritional supplements) for medical purposes or not, containing plant extracts and/or edible oils and fats and/or vitamins. Therefore they are identical.
The contested pharmaceutical and veterinary preparations are similar to food supplements (or nutritional supplements) for medical purposes or not, containing plant extracts and/or edible oils and fats and/or vitamins as they have the same purpose, namely to improve health or to cure, they can have the same distribution channels and the relevant public might believe that they are produced by the same undertakings.
The contested food for babies is similar to dietetic substances, as they have the same purpose, namely to nourish the human body, they can have the same distribution channels and they can be produced by the same undertakings.
- 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 or similar are directed at the public at large. The degree of attention may vary from average to high, as at one hand, the products are just food supplements or dietetic substances, but on the other hand concern the long term health of the relevant public and therefore can also be purchased paying higher attention to them.
- The signs
Earlier trade mark
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).
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-speaking part of the relevant public.
The earlier mark is a word mark, composed of two verbal elements, namely DAY and OXYDOSE. As a word mark, the sign is protected as such, independently of the type script used.
The contested sign is a figurative mark, composed of two verbal elements, namely DAY and DOSE, written in uppercase bold letters, as well of a figurative element. This figurative element separates the two word elements and resembles a sheet of white paper whose lower part is bend slightly upwards.
None of the verbal elements has any meaning for the relevant public.
The earlier mark has no elements that could be considered clearly more distinctive than other elements.
The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the verbal element ‘DAY’ at their beginning. They also coincide in their endings, namely the identical letters ‘DOSE’. However, they differ in the letters ‘OXY’ at the beginning of the second verbal element of the earlier sign, and the figurative element of the contested sign.
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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Furthermore the first three letters as well as the last four letters of the conflicting marks are identical. Even if consumers generally tend to focus on the first element of a sign when being confronted with a trade mark – what is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader – they will also notice the identical ending of the signs.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DAY-DOSE’, present identically in both signs. The pronunciation differs in the sound of the letters ‛OXY’ of the earlier sign, which have no counterpart in the contested mark. The figurative element will not be pronounced. Since the beginning and the ending of the verbal elements is identically pronounced, and the differences consist of only three letters, the signs are considered to be aurally similar to an average degree.
Conceptually, neither of the verbal elements of the signs has a meaning for the public in the relevant territory. Part of the public might however perceive the contested sign to be composed of two – meaningless – verbal elements separated by a sheet of paper. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the rest of the public, since none of the signs have a meaning, a conceptual comparison is not possible.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 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 as a whole must be seen as normal for all of the goods.
- Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
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 are either identical or similar.
The figurative element of a white sheet of paper in the contested sign does not offset the presence of the verbal elements ‘DAY’ and ‘DOSE’. On the contrary as consumers generally pay more attention to verbal elements, it is very likely that consumers will refer to the sign as ‘DAY DOSE’, rather than describing its graphic depiction.
In the case at hand, even taking into account the additional different three letters of the earlier right and the figurative element of the contested sign, there exists a likelihood of confusion. The signs are visually similar and aurally similar to an average degree, and the goods are partially identical and partially similar. The first part of the earlier sign is identically contained in the contested sign, where it retains an independent distinctive role. Furthermore, the last four letters of the conflicting signs are also identical and will not go unnoticed by the consumers. The differences between the signs are linked to elements with a reduced visual impact, because they are in the middle of the earlier sign or have a less distinctive character in the case of the contested sign, which the public will not perceive as particularly relevant information on the commercial origin of the goods. In the Opposition Division’s view, those differences are not sufficient to dispel the likelihood that the relevant public may perceive the marks as variants of each other used by the same or economically linked companies.
Taking into account all the above, as well as the principle of imperfect recollection, according to which average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, it is considered that the similarities between the signs are sufficient to counteract the differences between them. The relevant consumers might be led by the visual and aural coincidences in the signs to believe that the identical or similar goods under the marks come from the same or economically linked undertakings. The public could think that the contested sign is a sub-brand or a brand extension of the opponent’s mark.
Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, even considering that the degree of attention with regard to some of the relevant goods may be higher than average.
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 6 384 937. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed for the non-contested goods.
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.