OPPOSITION DIVISION
OPPOSITION No B 2 758 434
Faes Farma, S.A., Avda. Autonomía nº 10, 48940 Lamiaco-Leioa (Vizcaya), Spain
(opponent), represented by Sonia Alvarez López, Nuñez de Balboa, 31,
28001 Madrid, Spain (professional representative)
a g a i n s t
Reiner Rittinghausen, Aitelstr. 29, 82266 Inning-Bachern, Germany (applicant),
represented by Michalski Hüttermann & Partner Patentanwälte mbB,
Speditionstraße 21, 40221 Düsseldorf, Germany (professional representative).
On 17/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 758 434 is upheld for all the contested goods, namely:
Class 5: Dietetic food and substances adapted for medical use, namely
dietetic food and substances for the dietetic treatment of
migraines and headaches; dietary supplements for human
beings for the dietetic treatment of migraines and headaches;
dietetic food for human beings for the dietetic treatment of
migraines and headaches; dietetic food or dietary
supplements, not for medical purposes, namely for the dietetic
treatment of migraines and headaches.
2. European Union trade mark application No 15 272 958 is rejected for all the
contested goods. It may proceed for the remaining goods.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods of European Union trade
mark application No 15 272 958 ‘DOLOVENT’ (word mark), namely against all the
goods in Class 5. The opposition is based on Spanish trade mark registration
No 265 160 ‘DOLOTREN’ (word mark). The opponent invoked Article 8(1)
(b) EUTMR.
Decision on Opposition No B 2 758 434 page: 2 of 9
PROOF OF USE
The applicant requested that the opponent submit proof of use of the trade mark on
which the opposition is based, namely Spanish trade mark registration No 265 160
‘DOLOTREN’.
The date of filing of the contested application is 22/03/2016. The opponent was
therefore required to prove that the trade mark on which the opposition is based was
put to genuine use in Spain from 22/03/2011 to 21/03/2016 inclusive.
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.
Furthermore, the evidence must show use of the trade mark for the goods on which
the opposition is based, namely the following:
Class 1: To distinguish: Chemicals.
Class 5: To distinguish: Pharmaceutical, medical and disinfectant products.
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 16/02/2017, in accordance with Article 10(2) EUTMDR (former
Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until
21/04/2017 to submit evidence of use of the earlier trade mark. On 21/04/2017,
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:
Exhibit No 1: IMS Health, S.A. certification of National Sales of ‘DOLOTREN’
products from 2011 to 2016. The document was issued on 01/03/2017 and
certifies that IMS Health, S.A. is a leading marketing company in the health
sector and that the information provided, compiled from various sources,
accurately reflects the data at the time they were extracted. The second page
of the document shows the number of units of ‘DOLOTREN’ sold in each year
from 2011 till 2016, as well as the total sales of ‘DOLOTREN’ products between
2011 and 2016.
Exhibit No 2: Faes Farma Vademecum 2016. The extract from the Vademecum
shows products under the ‘DOLOTREN’ trade mark in various compositions
and presentations (e.g. 100 mg suppositories, 50 mg tablets, 60 g gel). For
each product, the national code, laboratory selling price and retail price with
VAT are shown. All prices are in euros.
Exhibit No 3: patient information leaflets for various presentations of ‘DOLOTREN’
in Spain. The exhibit includes patient information leaflets for four presentations
of ‘DOLOTREN’, namely for 100 mg suppositories, 75 mg injectable solution,
Decision on Opposition No B 2 758 434 page: 3 of 9
100 mg hard capsules and 46.5 mg dispersible tablets. The active ingredient of
these four presentations is diclofenac sodium, which belongs to the group of
non-steroidal anti-inflammatory drugs used to treat pain and inflammation. All
the leaflets are in Spanish and they include the information that the producer of
these goods is the opponent. The dates on which the leaflets were last updated
are given as between January 2014 and February 2017.
Exhibit No 4: data sheets for various presentations of ‘DOLOTREN’ in Spain. The
data sheets contain detailed information about four presentations of
‘DOLOTREN’, namely 100 mg suppositories, 75 mg injectable solution, 100 mg
hard capsules and 46.5 mg dispersible tablets. The active ingredient of these
four presentations is diclofenac sodium. Therapeutic indications: ‘DOLOTREN’
is used for the treatment of pain or inflammatory diseases. The data sheets are
approved by the Spanish Ministry of Health, Social Policy and Equality, which
grants each type of medicine a marketing number. All the data sheets mention
the opponent as the holder of the marketing authorisation for the product. The
dates on which the data sheets were last updated are given as between
January 2014 and February 2017.
Exhibit No 5: invoices dating between 2011 and 2016. A total of 31 invoices dated
between 05/05/2011 and 04/04/2016, issued to pharmacies, hospitals and
wholesalers in various cities, towns and villages in Spain for sales amounting to
between several hundreds and several thousands of euros. The invoices refer
to the trade mark ‘DOLOTREN’ and to the various presentations mentioned in
Exhibits No 3 and No 4. Most of the invoices refer to the relevant products’
national codes, presentations and compositions (e.g. ‘DOLOTREN’ 100 mg
suppositories, 50 mg tablets, 60 g gel).
Exhibit No 6: complete price lists, issued by Faes Farma, S.A., for the years from
2011 to 2016. The price lists are dated between 01/03/2011 and 28/03/2016
and include a range of products under the ‘DOLOTREN’ trade mark, their
compositions and presentations, national codes, laboratory selling prices, retail
prices before taxes and retail prices after taxes. All the prices are in euros.
The invoices, the price lists, the patient information leaflets and the data sheets show
that the place of use is Spain. This can be inferred from the language of the
documents (Spanish), the currency mentioned (euros) and the fact that all the
addresses on the invoices are in Spain. Therefore, the evidence relates to the
relevant territory.
Most of the evidence is dated within the relevant period, in particular the invoices, the
price lists, the patient information leaflets and the data sheets.
The documents filed, namely the invoices and the certification of national sales,
provide the Opposition Division with sufficient information concerning the commercial
volume, the territorial scope, the duration, and the frequency of use.
The evidence shows that the mark has been used as registered.
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
Decision on Opposition No B 2 758 434 page: 4 of 9
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 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.
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 pharmaceutical products for
treatment of pain or inflammation in Class 5. These goods can be considered to form
an objective subcategory of pharmaceutical products. Therefore, the Opposition
Division considers that the evidence shows genuine use of the trade mark only for
pharmaceutical products for treatment of pain or inflammation.
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
Decision on Opposition No B 2 758 434 page: 5 of 9
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: Pharmaceutical products for treatment of pain or inflammation.
The contested goods are the following:
Class 5: Dietetic food and substances adapted for medical use, namely dietetic
food and substances for the dietetic treatment of migraines and
headaches; Dietary supplements for human beings for the dietetic
treatment of migraines and headaches; Dietetic food for human
beings for the dietetic treatment of migraines and headaches; Dietetic
food or dietary supplements, not for medical purposes, Namely for the
dietetic treatment of migraines and headaches.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of
individual goods and services to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
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.
The applicant’s dietetic food and substances adapted for medical use, namely
dietetic food and substances for the dietetic treatment of migraines and headaches;
dietary supplements for human beings for the dietetic treatment of migraines and
headaches; dietetic food for human beings for the dietetic treatment of migraines and
headaches; dietetic food or dietary supplements, not for medical purposes, namely
for the dietetic treatment of migraines and headaches are all preparations and
substances consumed by humans with the purpose of treating migraines and
headaches. The opponent’s pharmaceutical products for treatment of pain or
inflammation have the same purpose as the applicant’s goods, namely the treatment
of pain or inflammation, which includes the treatment of migraines and headaches.
These goods have the same distribution channels, as they can be found in
pharmacies and bought over the counter with or without a prescription. Finally, they
have the same relevant public, that is, the general consumer looking for pain relief
and trained medical professionals prescribing various treatments and/or supplements
to relieve pain. Consequently, these goods are similar.
Decision on Opposition No B 2 758 434 page: 6 of 9
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 similar are directed at the public at large
and medical professionals with specific professional knowledge or expertise.
It is apparent from the case-law that, insofar as pharmaceutical preparations,
whether or not issued on prescription, are concerned, the relevant public’s degree of
attention is relatively high (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.
c) The signs
DOLOTREN DOLOVENT
Earlier trade mark Contested sign
The relevant territory is Spain.
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 marks are word marks, ‘DOLOTREN’ and ‘DOLOVENT’, and, being word
marks, by definition, they have no dominant elements.
The coinciding beginning, ‘DOLO-’, may be perceived by a part of the relevant public
as alluding to the Spanish word ‘DOLOR’, which means ‘pain’. Taking into account
that the relevant goods are preparations and substances for pain relief, this element
may be perceived as allusive in relation to these goods and therefore has a lower
than average degree of distinctiveness.
Likewise, part of the public may identify the word ‘TREN’ in the earlier mark, which
means ‘train’. In any case, this element is distinctive, as it has no meaning in relation
to the goods. The contested sign’s remaining letters, ‘VENT’, do not form a
meaningful element.
Therefore, the Opposition Division considers that a substantial part of the relevant
public will not perceive the element ‘DOLO’ as a meaningful element in the signs,
because the signs are themselves meaningless as a whole, because consumers are
not in the habit of overanalysing or dissecting trade signs and because ‘DOLO’ does
Decision on Opposition No B 2 758 434 page: 7 of 9
not constitute an accepted (or even a frequently used) expression, form of speech or
abbreviation meaning ‘DOLOR’.
For that part of the public, the marks are two meaningless and fanciful words with a
normal degree of distinctiveness. Consequently, the Opposition Division finds it
appropriate to focus the comparison of signs on the aforementioned substantial part
of the public for which the signs have no meaningful element.
Visually, the signs coincide in the letters ‘DOLO’ at their beginnings. However, they
differ in their remaining letters (‘TREN’ in the earlier mark and ‘VENT’ in the
contested sign). Consumers generally tend to focus on the beginning of a sign when
they encounter a trade mark. This is because the public reads from left to right, which
makes the part at the left of the sign (the initial part) the first to catch readers’
attention. Consequently, the relevant public will tend to focus on the coinciding
element ‘DOLO’ at the beginnings of the signs.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‘DO-LO’ and differs
in their last syllables, ‘TREN’ and ‘VENT’. Taking into account that the signs coincide
in their first two syllables, that their third syllables have similar sounds due to the
coinciding letters ‘EN’, that some consumers would not pronounce the final letter ‘T’
in the contested sign, and bearing in mind that consumers tend to focus on the
beginnings of signs, the signs at issue are, therefore, aurally similar to an average
degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the substantial part of the public under
consideration will perceive the marks as two fanciful and meaningless terms, a
conceptual comparison is not possible. Therefore, 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 substantial part
of the public in the relevant territory under analysis. Therefore, the distinctiveness of
the earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
The goods are similar and the signs are visually and aurally similar to an average
degree. The goods target the public at large and medical professionals, whose
Decision on Opposition No B 2 758 434 page: 8 of 9
degree of attention is higher than average. The distinctiveness of the earlier mark is
normal.
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 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).
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 covered are from the same or
economically linked undertakings.
Taking account of the visual and aural similarities between the signs due to the
coinciding element ‘DOLO’ at their beginnings, and the similarity between the goods,
it is highly likely that even consumers with a high degree of attention would rely on
their imperfect recollection of the marks and would, therefore, be led to believe that
the goods in question come from the same undertaking or economically linked
undertakings.
Furthermore, as explained above, the signs have similar structures, the same length
(DO-LO-TREN versus DO-LO-VENT) and the same vowel sequence (O-O-E). This
must be taken into consideration in the light of the principle of imperfect recollection
explained above.
In his observations, the applicant argues that the earlier trade mark has a low degree
of distinctiveness, given that many trade marks include the element ‘DOLO’. In
support of his argument the applicant refers to numerous trade mark registrations in
Germany.
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of register data only, it cannot be assumed
that all such trade marks have been effectively used. It follows that the evidence filed
does not demonstrate that consumers have been exposed to widespread use of, and
have become accustomed to, trade marks that include the element ‘DOLO’. Under
these circumstances, the applicant’s claims must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the
substantial part of the public that will perceive the signs as two meaningless fanciful
terms. Since a likelihood of confusion for only part of the relevant public of the
European Union is sufficient to reject the contested application, the opposition is well
founded on the basis of the opponent’s Spanish trade mark registration No 265 160.
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, he must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
Decision on Opposition No B 2 758 434 page: 9 of 9
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
Gueorgui IVANOV Ieva SMILGAINE Marzena MACIAK
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.