OPPOSITION No B 2 609 389

Laboratorios Hipra, S.A., Avda. la Selva, 135, 17170 Amer (Girona), Spain (opponent), represented by Sugrañes Patentes y Marcas, S.L., Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Duke University, Non-profit corporation, 2812 Erwin Rd., Ste. 306, Durham NC 27705, United States of Amercial (holder), represented by Viering, Jentschura & Partner mbB, Grillparzerstraße 14, 81675 Munich, Germany (professional representative).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 609 389 is upheld for all the contested goods.

2.        International trade mark registration No 1 235 756 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international trade mark registration designating the European Union No 1 235 756. The opposition is based on, inter alia, Spanish trade mark registration No 2 713 887. The opponent invoked Article 8(1)(b) EUTMR.

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 Spanish trade mark registration No 2 713 887.

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 holder 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.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade mark on which the opposition is, inter alia, based, namely, Spanish trade mark registration No 2 713 887.

The request was submitted in due time and is admissible as said earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The relevant date (first republication of the contested international registration plus six months) is 20/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is, inter alia, based was put to genuine use in Spain from 20/08/2010 to 19/08/2015 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: Veterinary products.

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 20/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 25/08/2016 to submit evidence of use of the earlier trade mark. On 01/08/2016, 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 to be taken into account is the following:

• ANNEX Nº 1: Marketing authorisation renewal in Spanish and in English

EU Commission Decision of 10/02/2014 on the renewal of the marketing authorisation issued by the European Sanitary Authority for the veterinary medicinal product ‘STARTVAC’. It includes information on the specifications of the product.

• ANNEX Nº 2: Invoices 

Numerous invoices issued by HIPRA (Spain) and addressed to various customers in, among other countries, Denmark, Poland, Portugal, UK, Germany, Greece and across the Spanish territory, namely in the geographic areas of Barcelona, Cádiz, Segovia, Córdoba, A Coruña, Zamora, Girona, Jaén, Lugo, Pontevedra, Balears, Navarra, Granada, La Rioja, Lleida, dated between 25/02/2010 and 13/11/2014. They show the earlier mark ‘STARTVAC’ and the amounts.

• ANNEX Nº 3: Scientific magazine extracts

Copies of press releases and advertisements in, inter alia, English dated 2012, 2013, 2014 and 2015 and extracted from different international and national scientific magazines dealing with the ‘STARTVAC’ vaccine.

• ANNEX Nº 4: Triptychs 

Triptychs for the vaccine against bovine mastitis ‘STARTVAC’, inter alia, in Spanish and English both dated 2011.

• ANNEX Nº 5: Catalogues

Catalogues including the product ‘STARTVAC’ in, inter alia, Spanish and English, respectively dated 2011, 2012 and May 2014 where it is presented as the first vaccine against bovine mastitis registered through the European Medicines Agency.

• ANNEX Nº 6: Labelling of goods

Sample of labels for the ‘STARVAC’ products, inter alia, in English dated March 2014.

Assessment of the evidence

Some pieces of evidence, in particular, the invoices addressed at Spanish customers filed in ANNEX 2 show that the place of use is ‘Spain’. This can be inferred from the language of the documents (‘Spanish’), the currency mentioned (‘EUR’) and the addresses of the recipients being in several cities of Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. In particular, the marketing authorisation renewal filed as ANNEX 1 is dated within the relevant period and also refers to a lapse of time which, although it precedes that date, falls within the relevant period. Moreover, it is corroborated by all the other items of evidence, namely, the invoices, the press releases and advertisements published in scientific magazines as well as the catalogues and samples of products’ labels (ANNEXES 2 to 6). The criteria of time of use is therefore, met.

The documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices are numerous and refer to significant quantities. Moreover, they are regularly dated within four of the five-year relevant period. Therefore, they show use of the earlier mark which has to be qualified as effective, and consistent over time, in addition of being significant (in light of the figures contained therein).

Along with the marketing authorisation renewal, the advertisements and press releases published in scientific magazines, they show an outward, regular, constant and sufficiently significant use of the mark ‘STARTVAC’ across a substantial part of the Spanish territory during four of the five years period. Therefore, the extent of use is proven.

As regards the nature of use, it has to be borne in mind that the earlier mark is a word mark which is distinctive in the perception of the Spanish public. In that connection, it is considered that the fact that the earlier mark is always followed by the registration symbol (®) and is sometimes written in a standard coloured typeface does not affect its distinctive character. Indeed, said colours merely have a decorative purpose and both the banal typeface and the registration symbol lack any distinctive character (see by analogy, 12/12/2014, T-105/13, TrinkFix, EU:T:2014:1070, § 49 to 52 and 23/01/2014, T-551/12, Rebella, EU:T:2014:30, § 43). Therefore, the earlier mark was used as registered or in a form that does not alter its distinctive character. The nature of use is thus proven.

However, the evidence of use does not show use for all the goods of the broad category for which the earlier mark is registered.

In that connection, it is recalled that according to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to only part 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.

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).

In the present case, the earlier mark is registered for veterinary products and the evidence proves use of the earlier mark for vaccine for cattle immunisation against mastitis. Such goods can be considered to form an objective subcategory of veterinary products, namely, vaccine for cattle immunisation against mastitis. Therefore, the Opposition Division considers that the evidence shows genuine use of the earlier trade mark only for veterinary vaccine for cattle immunisation against mastitis (14/07/2005, T-126/03, Aladin, EU:T:2005:288).

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 for which genuine use was proven and hence, on which the opposition is based, are the following:

Class 5: Veterinary vaccine for cattle immunisation against mastitis.

The contested goods, after limitation, are the following:

Class 5: Vaccines, namely oncolytic virus vaccines for the treatment of solid tumors for human use only.

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.

In the present case, it is noted at the outset that the contested vaccines are for human use only and, as a result, expressly exclude any use for animals while genuine use of the earlier mark was proven in relation to a vaccine for animals, in particular, cows and heifers.

However, such exclusion is not sufficient, in itself, to exclude any similarity between such goods (see, to that effect, 11/06/2009, T-33/08, OPDREX, § 27; 24/05/2011, T-161/10, E-PLEX, EU:T:2011:244, § 22). Indeed, although expressly excluded by the holder, the contested vaccines could actually be used on animals.

As a result, their end users could coincide, that is, in particular, professionals of the human and animal medical sector and from the agricultural sector as well as the general consumer.

Moreover, both share the same nature of medicinal product, in particular, vaccine. They also coincide in usual producers, namely, pharmaceutical companies and their distribution channels overlap (in so far both could be sold in pharmacies). Finally, they might have the same method of use.

However, such goods obviously differ in their respective purpose since the goods for which genuine use was proven are for cattle immunisation against mastitis while the contested goods are for the treatment of solid tumors.

In that connection it has to be borne in mind that according to the case-law, in taking the factors above mentioned into account, a medicinal product’s therapeutic indication is of decisive importance (see, to that effect, 26/01/2016, T-88/16, ALPHAREN, EU:T:2017:32, § 80 and 15/12/2010) and the fact that medicinal products belong to the same general category of goods only allows the finding of a low degree of similarity between all medicinal products (15/12/2010, TOLPOSAN , T331/09, EU:T:2010:520, §35).

Therefore, the contested vaccines, namely oncolytic virus vaccines for the treatment of solid tumors for human use only are similar to a low degree to the earlier goods.

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 similar to a low degree are directed at the public at large as well as at health and/or agriculture professionals such as doctors, veterinaries and/or farmers.

It is apparent from the case-law that, insofar as pharmaceutical, including veterinary 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 or that of their animal(s).

3. The signs

STARTVAC	ISTARVAC-GBM
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).

The earlier mark is a word mark consisting of the word ‘STARTVAC’ which has no meaning as a whole in Spanish and, hence, is distinctive. The holder nevertheless considers that the relevant public will break down the signs into ‘START’ and ‘VAC’ and immediately understand that the goods covered by the earlier mark intend to start using a vaccine.

It is true that the average consumer, perceiving a word sign, will break it down into word elements which, for him, have a concrete meaning or which resemble words known to him (see 06/10/2004, T-356/02, VITAKRAFT, EU:T:2004:292, § 51 and 13/02/2007, T-256/04, RESPICUR, § 57).

However, that will not be so in the present case. Indeed, neither the word element ‘START’ nor the ending ‘VAC’ of the mark ‘STARTVAC’ has any concrete meaning for the Spanish public. It is therefore unlikely that it will be broken down by the Spanish consumer. Therefore, the holder’s argument is dismissed.

As a result, the earlier mark does not have any element that could be considered as clearly more distinctive or dominant (visually eye-catching) than other elements.

The contested sign is also a word mark. It consists of the elements ‘ISTARVAC’ and ‘GBM’ separated by a hyphen. The element ‘ISTARVAC’ does not have any meaning in Spanish and, hence, is distinctive. The element ‘GBM’ by contrast is a medical acronym of English origin standing for glioblastoma multiform, which is a kind of cancer. As a result, it will be understood as such, at least, by the professional part of the Spanish public (see 28/10/2009, T-80/08, RNAiFect, EU:T:2009:416, § 43, by analogy).

Therefore, GBM will be perceived as descriptive of the purpose of the contested goods by the professional public. It also follows from the above that ‘ISTARVAC’ is the most distinctive element of the mark for a part of the public while both elements of the contested sign are equally distinctive for the remaining part of the relevant public.

It does not have any element that could be considered as clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in ‘*STAR*VAC’. However, they differ in the letter ‘I’ of the contested sign and the ‘T’ of the earlier mark as well as in the additional element ‘-GBM’ of the contested sign which has no counterpart in the earlier mark.

The earlier mark ‘STARTVAC’ and the first element of the contested sign ‘ISTARVAC’ are visually highly similar since their differing letters – ‘I’ and ‘T’ on account of its position in the middle of the sign – might go overlooked. Moreover, when confronted to the contested sign, the relevant public would give more significance to the element ‘ISTARVAC’, or, due to its position at the beginning of the sign, and/or, due to its greater distinctiveness in comparison to the other element ‘GBM’.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in Spanish in the sound of the letters ‘*STAR*’ and ‘VAC’, present identically in both signs. The pronunciation slightly differs in the sound of the initial letters ‘I’ of the contested sign and ‘T’ in the middle of the earlier mark ‘STARTVAC’ and in the pronunciation of the letters ‘G’, ‘B’ and ‘M’ of the contested sign which have no counterparts in the earlier mark.

In that connection, the Opposition Division notes that, in the pronunciation of ‘STARTVAC’ and ‘ISTARVAC’, the stress will be in the coinciding letters ‘*STAR_’ and ‘VAC’. Finally, the opponent is right in claiming that ‘STAR’ and ‘ISTAR’ are phonetically very close in Spanish.

Bearing in mind that the coinciding letters ‘*STAR*VAC’ are placed in the same place and that the element ‘GBM’ has a descriptive character, at least for the professional part of the public, such element has a limited aural significance for that part of the public. Therefore, the signs are aurally similar to a high degree for that part of the public. For the remaining part of the relevant public, the signs are aurally similar to a medium degree.

Conceptually, although at least the professional part of the public in the relevant territory will understand the meaning of the element ‘GBM’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

For the part of the public to which the marks in question do not convey any concept, 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.

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, contrary to the holder’s claim, the distinctiveness of the earlier mark must be seen as normal.

5. 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).

In the present case, the goods in question were found to be similar to a low degree. However, the signs were found to be highly similar both visually and aurally for part of the public, and aurally similar to an average degree for the remaining part of the public. Conceptually they are not similar for a part of the public and, for the remaining part, the conceptual aspect has no influence on the comparison of the signs.

Lastly, the distinctive character of the earlier mark was considered to be average.

Considering all of the above and taking into account that 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), the Opposition Division considers that a likelihood of confusion on the part of the Spanish public within the meaning of Article 8(1)(b) EUTMR cannot be safely excluded.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 713 887. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 2 713 887 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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 holder 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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Julie GOUTARD

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.