DIMINEX | Decision 2435892 – SOPHARMA AD v. Laboratorios Bagó S.A.

OPPOSITION No B 2 435 892

Sopharma AD,16, Iliensko shausse str., Sofia, Bulgaria (opponent), represented by Rumiana Hristova Peycheva, Sopharma AD, 16, Iliensko shausse, 1220 Sofia,  Bulgaria (employee representative)

a g a i n s t

Laboratorios Bagó S.A., Bernardo de Irigoyen 248., Ciudad de Buenos Aires,  Argentina (applicant), represented by Isern Patentes y Marcas S.L., Avenida Diagonal, 463 bis 2° piso, 08036 Barcelona, Spain (professional representative).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 435 892 is partially upheld, namely for the following contested goods:

Class 5:        Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical use, food for babies; dietary supplements for humans; plasters, materials for dressings; disinfectants.

2.        European Union trade mark application No 13 114 343 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 114 343, namely against all the goods in Class 5. The opposition is based on Bulgarian trade mark registrations No 21 958 and No 48 474. The opponent invoked Article 8(1)(b) EUTMR.

On 11/06/2015 the Opposition Division rendered a decision which resulted in the rejection of the opposition pursuant to Rule 20(1) CTMIR (now EUTMIR), since the opponent did not submit any evidence concerning the substantiation of the earlier trade marks within the relevant time limit.

The decision was appealed and the Board of Appeal decided in case R 1630/2015-1 on 07/07/2016 to annul the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that ‘the opponent’s submissions to substantiate the opposition were in time’.  

PRELIMINARY REMARK

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 Bulgarian trade mark registration No 21 958.

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, inter alia, Bulgarian trade mark registration No 21 958 ‘DIMEX’ 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 27/08/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Bulgaria from 27/08/2009 to 26/08/2014 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:        Medicines.

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 24/03/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 24/05/2015 to submit evidence of use of the earlier trade mark. On 26/05/2015, the Office received the opponent’s evidence of use. For the reasons explained in Boards of Appeal’s case R 1630/2015-1, this evidence was filed within the time limit.

The evidence to be taken into account is the following:

  • Annex 1: Marketing authorisations for the medicinal product ‘DIMEX’ for Bulgaria, last renewed on 09/05/2012. Annex 1 also includes copies showing packaging and use of ‘DIMEX’ in Latin and Cyrillic letters:

  • Annex 2: Information about the medicine bearing the trade mark ‘DIMEX’ from the opponent’s website www.sopharma.bg.
  • Annex 3: Samples of invoices addressed to Sopharma Trading AD, which is the daughter and distributing company of the opponent (Sopharma AD). The invoices show partly use within the relevant period (15 of these invoices are dated within the period 01/10/2012 – 24/02/2014).
  • Annex 4: A presentation of sales to the biggest pharmaceutical retailers in Bulgaria (provided by the opponent).

             

  • Annex 5: Samples of invoices to pharmacies located in 37 different cities and towns in Bulgaria. These invoices are partly from within the relevant period (57 out of 68 invoices are dated within the relevant period). The cities and towns to which the invoices are addressed are, inter alia, Popovo, Dulovo, Sofia, Chiren, Burgas, Svishtov, Varna, Plovdiv, Omurtag, Vratsa, Peshtera.
  • Annex 6: Extracts from www.imshealth.com and information about IMS, which audits the Bulgarian pharmaceutical retailing market. Although not corroborated by other evidence, the following sales information is (according to the opponent) based on a report from IMS:

  • Annex 7: Extracts of advertising approvals for products bearing the trade mark DIMEX, issued by the Bulgarian Drug Agency for 2011 and 2013. Moreover, this annex also contains samples from advertisement materials: