OPPOSITION No B 2 296 658

Doc Generici S.R.L., Via Filippo Turati, 40, 20121 Milano, Italy (opponent), represented by Davide Marchi, Viale Piave, 41, 20129 Milano, Italy (professional representative)

a g a i n s t

Guterrat Gesundheitsprodukte KG, Eduard-Bodem-Gasse 6, 6020 Innsbruck, Austria (applicant), represented by Sonn & Partner Patentanwälte, Riemergasse 14, 1010 Wien, Austria (professional representative).

On 01/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 296 658 is partially upheld, namely for the following contested goods:

Class 3:         Dentifrices, dental gels, mouthwash and mouth rinses; Mouth washes.

Class 5:         Soporifics and sedatives, medicines for gynaecological complaints, preparations for use in the gastro-intestinal area, preparations for strengthening the immune system, skincare creams, lotions, oils and tonics for scars, spider veins, warts and age spots, preparations for medical nail care, medical dentifrices, dental gels, mouthwash and mouth rinses, medical mouth washes.

2.        European Union trade mark application No 12 182 465 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 all the goods of European Union trade mark application No 12 182 465. The opposition is based on European Union trade mark registration No 5 561 774, Italian trade mark registration No 1 212 122, international trade mark registration No 837 018 designating Czech Republic, Spain, Ireland, Austria, Benelux, Slovenia, Sweden, Portugal, Denmark, Poland, Hungary, Greece, Germany, Finland, France and international trade mark  registration No 797 487 designating Czech Republic, Ireland, Portugal, Denmark, Poland, Hungary, Benelux, Greece, Finland, Germany, France, Slovenia. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

International registration No 837 018 ‘DOC GENERICI’ and International registration No 797 487 ‘DOC’.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier international registrations on which the opposition is based.

On 25/02/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after extensions, on 28/09/2014.

The opponent did not submit any evidence concerning the substantiation of the earlier international registrations.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier rights.

PROOF OF USE

The Opposition Division now examines the opposition in relation to the opponent’s European Union trade mark registration No 5 561 774 ‘DOCgen’ (word mark) and the Italian trade mark registration No 1 212 122 ‘DOC’ (word mark).

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 marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier European Union and the earlier Italian trade mark were both registered more than five years prior to the publication of the contested application.

The contested application was published on 15/11/2013. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and in Italy, respectively, from 15/11/2008 to 14/11/2013 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

European Union trade mark registration No 5 561 774 ‘DOCgen’  (word mark)

Class 5:        Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetical substances for medical use, foodstuffs for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Italian  trade mark registration No 1 212 122 ‘DOC’ (word mark).

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5:        Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

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 15/01/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent, together with an extension, until 15/05/2015 to submit evidence of use of the earlier trade marks. On 15/05/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• An affidavit of Mr. Pasquarelli, Chief Executive Officer of the opponent’s company, signed on 05/05/2015. The document states significant sales figures that range from EUR 59.2 to 156.6 million, for pharmaceutical products, sold under the ‘DOC’ mark during 2008-2013.
• A very large amount of invoices, issued between 2008-2013, to clients in Italy. All the invoices contain one of the opposing marks, namely ‘DOC’, next to the name of a huge variety of pharmaceutical product names. The opponent has also enclosed a product catalogue and a price list, all including the ‘DOC’ mark, so that it is possible to make a clear link between pharmaceutical products in various areas and the titles of these products listed on the invoices.
• Product packaging samples of pharmaceutical products, in Italian, for the ‘DOC’ mark.
• A company profile of the opponent enabling to see that the company works in the area of pharmaceuticals manufacturing.

 

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, e.g. invoices, packaging, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

As far as the affidavit is 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 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.

EUTM No 5 561 774 ‘DOCgen’ (word 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 will 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 relates only to the use of the word mark ‘DOC’, but not to the word mark ‘DOCgen’.

The opponent just argues that the evidence concerning the mark ‘DOC’ should be extended to prove use also of ‘DOCgen’ as an acceptable variation of ‘DOC’ since the letter sequence ‘gen’ is non-distinctive according to the opponent (as it refers to ‘generici’ – ‘generics’).

The Opposition Division is in the opinion that use has not been proven for the earlier EUTM ‘DOCgen’. First, there is no evidence of use of ‘DOCgen’ on file. Second, ‘DOCgen’ is not an acceptable variation of ‘DOC’ because the element ‘gen’ has some distinctiveness (it is weak because it alludes to ‘generici’ but it is not non-distinctive since ‘gen’ is not a common abbreviation of ‘generici’ in Italian). Third, the earlier EUTM ‘DOCgen’ is a word mark which means that the use of upper and lower case is irrelevant and it will not be easy for the public to split the mark into the elements ‘DOC’ and ‘gen’ (because ‘DOC’ has no meaning and ‘gen’ is only allusive) – the mark will rather be perceived as a whole, ‘DOCGEN’.

Overall, the distinctive character of the mark in question, ‘DOCGEN’, is altered and the evidence of proof of use for the earlier mark ‘DOC’ does not prove use for ‘DOCgen’.

In view of the above, the Opposition Division considers that the evidence does not show use of the sign, namely the EUTM No 5 561 774 ‘DOCgen’ 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).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark ‘DOCgen’ was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR as far as the European Union trade mark registration No 5 561 774 is concerned.

The examination continues with the other earlier mark.

Italian trade mark registration No 1 212 122 ‘DOC’ (word mark).

The documents presented clearly show that the place of use is Italy. This can be inferred from the language of the documents, the currency mentioned, and from the addresses on the invoices. 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, 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, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the mark ‘DOC’. The more than enough quantity of invoices issued for pharmaceutical products continuously during the relevant period in Italy, when compared to the price list and product list, give a clear evidence that the mark, present on all the documents, is being used.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier Italian mark.

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).

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 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following goods:

Class 5:        Pharmaceutical preparations.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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.

1. The goods

The goods on which the opposition is based are the following:

Class 5:        Pharmaceutical preparations.

The contested goods are the following:

Class 3:         Dentifrices, dental gels, mouthwash and mouth rinses; Mouth washes, nail care preparations, nail varnishes, nail hardeners, nail varnish removers.

Class 5:         Soporifics and sedatives, medicines for gynaecological complaints, preparations for use in the gastro-intestinal area, preparations for strengthening the immune system, skincare creams, lotions, oils and tonics for scars, spider veins, warts and age spots, preparations for medical nail care, medical dentifrices, dental gels, mouthwash and mouth rinses, medical mouth washes.

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 3

Dentifrices, dental gels, mouthwash and mouth rinses; Mouth washes are similar to the opponent’s Pharmaceutical preparations as they have the same purpose. They can coincide in producer, end user and distribution channels.

The contested nail care preparations, nail varnishes, nail hardeners, nail varnish removers are products used to enhance the image and appearance of one’s nails. The opponent’s goods are, however, substances used to treat disease. The goods have different nature, purpose and methods of use. They have different manufacturers, they are not complementary nor in competition. The goods are dissimilar.

Contested goods in Class 5

The contested Soporifics and sedatives, medicines for gynaecological complaints, preparations for use in the gastro-intestinal area, preparations for strengthening the immune system, skincare creams, lotions, oils and tonics for scars, spider veins, warts and age spots, preparations for medical nail care, medical dentifrices, dental gels, mouthwash and mouth rinses, medical mouth washes are included in the broad category of, or overlap with, the opponent’s Pharmaceutical preparations. Therefore, they are identical.

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 identical or similar are directed at the public at large and at customers 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.

The degree of attention varies, therefore, from average to higher than average depending on the nature of some goods.

3. The signs

DOC
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 earlier mark is a word mark ‘DOC’. The word DOC is an abbreviation of ‘denominazione di origine controllata’ indicating that the product (usually wine) has a protected designation of origin or a protected geographical indication under EU or national law. Contrary to the applicant’s claim, the word does not refer to a ‘doctor’ or ‘dottore’ or is not an abbreviation for such a medical professional, for which a term ‘Dott.’ is used (Collins Italian English dictionary).

The contested sign is a figurative mark in red, white and black. It contains a word element DOC, in slightly stylised lower case letters, placed on a red square shaped background (slightly resembling a suitcase) which has the upper corners drawn with curved lines and a handle placed on top, in the middle. Below this shape is a white rectangle with a word LABORATORIES written in it in small size upper case letters. The meaning of the word DOC has been described above. The word LABORATORIES, as such, is not present in Italian. However, the Italian public will perceive the word as referring to laboratories due to the presence of a highly similar word ‘laboratorio’. As this word may refer to a place where chemicals or medicines are manufactured, and since all the contested goods in classes 3 and 5 are chemical products, either cosmetic-sanitary or pharmaceutical preparations, it is considered, that the word is the weak element of the mark. The contested sign also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The red figurative element and the word DOC of the contested trade mark overshadow the other verbal elements of the mark by virtue of their central position and size and are the visually dominant elements of the contested trade mark.

Visually, the signs coincide in the distinctive element DOC. However, they differ in the weak element LABORATORIES, together with the stylisation, colours and device elements of the contested mark.

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).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllable DOC, present identically in the signs. The coinciding component is distinctive. The pronunciation differs in the element LABORATORIES of the contested mark, which has no counterpart in the earlier mark. The differing component LABORATORIES is weak.

Therefore, the signs are aurally highly similar.

Conceptually, the meaning of the signs and their elements has been described above. As the signs will be associated with a similar meaning in respect of the element DOC, the signs are conceptually similar to an average degree to that extent.

 

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 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.

5. Global assessment, other arguments and conclusion

The goods are partially identical, partially similar and partially dissimilar. The similarities and dissimilarities between the marks have been established.

The signs have been found to coincide visually and aurally to the extent that they share the letters DOC. These letters form the only word element of the earlier mark and are the dominant and distinctive element of the contested sign. The remaining stylisation elements in the contested mark, comprising a slight stylisation of the letters and the use of coloured  background tend to be overlooked and do not deflect attention from the word element DOC. Furthermore, in case of the word marks, such as the earlier mark, it is the word that is protected, and not its written form. The word element LABORATORIES, in the contested mark, has been found weak.

In addition, 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).

Based on the principle of imperfect recollection, as well as the interdependence principle between the relevant factors, it is considered that the established similarities between the signs are sufficient to cause at least part of the Italian public to believe that the conflicting identical and similar goods come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Italian trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DINU

Erkki MÜNTER

Irina SOTIROVA

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.