OPPOSITION No B 2 548 686
Pro.Med.CS Praha a.s., Telčská 1, Praha 1, Czech Republic (opponent), represented by Klára Labalestra, Na Poříčí 12, 11000 Praha 1, Czech Republic (professional representative)
a g a i n s t
Renapur Limited, London Road, East Wolves, Ashington, West Sussex RH20 3AX, United Kingdom (applicant), represented by Bomhard IP, S.L., C/Bilbao 1, 5º, 03001 Alicante, Spain (professional representative).
On 31/03/2017, the Opposition Division takes the following
1. Opposition No B 2 548 686 is upheld for all the contested goods.
2. European Union trade mark application No 13 761 804 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 761 804. After the applicant limited the list of goods on 20/07/2015 and the opponent did not withdraw the opposition, the opposition is directed against all the remaining goods of the application. The opposition is based on Czech trade mark registration No 87 200 and international registration No 701 501 designating Lithuania, Romania, Bulgaria, Latvia, Slovakia, Poland, Estonia, Hungary, Croatia and Slovenia, both for the word mark “NITRESAN”. The opponent invoked Article 8(1)(b)EUTMR.
SUBSTANTIATION OF INTERNATIONAL REGISTRATION NO 701 501
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is 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 will 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 must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its 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 registration No 701 501 on which the opposition is based.
On 31/07/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 05/12/2015.
The opponent did not submit any evidence concerning the substantiation of the earlier international registration No 701 501.
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 its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.
The examination of the opposition will proceed based on the opponent´s earlier Czech trade mark registration No 87 200.
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 Czech trade mark No 87 200. 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 20/04/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Czech Republic from 20/04/2010 to 19/04/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods which the opposition is based, namely the following:
Class 5: Pharmaceuticals (substances), humane and veterinary curative preparations.
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 25/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/04/2016 to submit evidence of use of the earlier trade mark. On 28/04/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
- A statement regarding the use of the mark between 2010 and 2015 accompanied by a turnover table, 3 pages, English, dated 25/04/2016.
- A photograph of medication packaging, 1 page, undated, bearing the mark and the name of the opponent:
- A webpage printout of the “State Institute for Drug Control”, 2 pages, English, dated 27/04/2016, mentioning “NITRESAN” 10mg and 20mg; according to the opponent this document certifies the approval of the aforesaid medication for the Czech market.
- Examples of promotional materials, namely leaflets and labels, 7 pages, Czech, undated. The mark appears in the text as well as on images of packaging, as depicted above. The opponent´s name appears on several pages.
- A printout of a webpage (www.promed.cz), 4 pages, English, dated 27/04/2016, including information about “NITRESAN” medication. The mark appears in in the text as well as on images of packaging, as depicted above. The opponent´s name appears on several pages.
- A CD containing copies of 155 invoices from 2010, 2011, 2012, 2013, 2014 and 2015
148 of these invoices are dated within the relevant period, namely between 02/06/2010 and 31/03/2015. The invoices are presented together with a sample translation of the most relevant data. Issuer of the invoices is the opponent and the various recipients are located in the Czech Republic. The denomination “NITRESAN” appears with further specifications (10 mg, 20 mg, etc.), corresponding to the image of packaging above. These invoices show a considerable amount of sales of “NITRESAN” branded goods and the corresponding invoice amount in Czech crowns. Furthermore, a corresponding table is provided, enumerating the number of “NITRESAN” units sold and the respective invoice number and invoice amount.
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).
A considerable number of the documents filed, namely 148 of the abovementioned invoices, are dated within the relevant time period and relate to the relevant territory, which can be inferred by their language (Czech), addresses in the Czech Republic and the currency indicated (Czech crowns).
In conjunction with the other aforementioned evidence (which is partially undated, partially not dated within the relevant time period, however in general corresponds to the information shown in the invoices) ) they provide the Opposition Division with sufficient information concerning the nature of use, the commercial volume, the territorial scope, the duration, and the frequency of use.
They show that the opponent has sold a considerable amount of medication for the treatment of hypertension (high blood pressure) under the trade mark “NITRESAN” in the Czech Republic continuously throughout the relevant period. Taking into account the relevant market and its size, the Opposition Division considers that these sales demonstrate a sufficient commercial effort on the side of the opponent to maintain or create a share in the market for goods protected by the mark and cannot be considered to be merely token use.
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 will, 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 evidence proves use only for medication for the treatment of hypertension. These goods can be considered to form an objective subcategory of pharmaceuticals (substances), humane and veterinary curative preparations, namely pharmaceutical preparations for treating hypertension.
Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for pharmaceutical preparations for treating hypertension.
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: Pharmaceutical preparations for treating hypertension.
The contested goods are the following:
Class 5: First aid sprays, gels and mousses; antiseptics; disinfectants; preparations for disinfecting the skin; all including hypochlorous acid.
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 contested first aid sprays, gels and mousses; antiseptics; disinfectants; preparations for disinfecting the skin; all including hypochlorous acid are similar to a low degree to the opponent’s pharmaceutical preparations for treating hypertension.
Even though the opponent´s goods have a specific therapeutic indication that is clearly different from that of the contested goods, they have a similar general function and intended purpose (treat or prevent human health problems), and are directed at the same consumers (health professionals and patients).They use at least in part the same distribution channels (essentially pharmacies) and can be produced by the same kinds of companies (pharmaceutical companies).
- 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 a at medical professionals.
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.
Given that the general public is more prone to confusion, the examination will proceed on this basis. Taking into account the aforesaid, the degree of attention of this public will be higher than average.
- The signs
Earlier trade mark
The relevant territory is the Czech Republic.
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).
Contrary to the applicant’s arguments, both NITRESAN and NATRASAN are meaningless and, therefore, distinctive for the general public.
Neither will the general public identify the string of letters NITRE as an abbreviation for “nitrendipine”, as it is unlikely for them to be aware of it as an active ingredient of medication, nor will they associate the string of letters NATRA with “nature”, as the Czech word for “nature” is clearly different (i.e. “příroda”). Regarding the ending of the signs, namely the string of letters SAN, the Opposition Division considers that the general public in the present case is also not likely to associate it with health or health products. Whereas in Romance languages, such as e.g. Spanish or Italian, similar words referring to health do indeed exist (“sano, sana”) the same cannot be said for the Czech language. The equivalent words in Czech (“zdraví”: health, “zdravý, zdravá, zdravé”: healthy) bear no resemblance to the string of letters “SAN”.
Visually and aurally, the signs coincide in six out of eight letters, namely the letters N*TR*SAN. Both are comprised of a single word element that will be pronounced in three syllables. (NI/TRE/SAN and NA/TRA/SAN). They only differ in the letters *I**E*** in case of the earlier mark versus the letters *A**A*** in case of the contested sign.
Therefore, the signs are visually and aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.
- 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.
- 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 have been found to be similar to a low degree. The signs are visually and aurally highly similar. None of the signs conveys a concept that might help the public to differentiate between the signs. The level of attention of the relevant pubic will be higher than average.
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).
Taking into account the aforesaid, a likelihood of confusion cannot be safely excluded in the present case. Even though the goods are similar only to a low degree, the high aural and visual similarity between the signs may lead the relevant public into confusing the signs or at least into assuming that the goods in question may originate from the same or economically linked undertakings.
In that respect it has to be borne in mind that it is not uncommon for undertakings in the medical field to offer a rather wide range of products that may include very specific medication (such as the goods of the earlier mark) as well as more basic medicinal and sanitary products (such as the contested goods).
The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).
Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Czech trade mark registration No 87 200 It follows that the contested trade mark must be rejected for all the 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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.