OPPOSITION DIVISION
OPPOSITION No B 2 537 689
Omega Pharma Innovation & Development NV, Venecoweg 26, 9810 Nazareth,
Belgium (opponent), represented by Altius, Avenue du Port 86 C B414, 1000
Brussels, Belgium (professional representative)
a g a i n s t
Dts Oabe, S.L., Polígono industrial Zabale, Parcela 3, 48410 Orozco (Vizcaya),
Spain (applicant), represented by AB Asesores, Calle Bravo Murillo, 219 – 1º B,
28020 Madrid, Spain (professional representative).
On 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 537 689 is upheld for all the contested goods, namely
Class 5: Disinfectants, fungicides, herbicides, insecticides; preparations for
destroying vermin; all the aforementioned not for human use.
2. European Union trade mark application No 13 790 118 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 13 790 118, namely against all the goods in Class 5. The
opposition is based on Benelux trade mark registration No 916 907. The opponent
invoked Article 8(1)(b) and Article 8(5) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
Decision on Opposition No B 2 537 689 page: 2 of 10
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when
the following conditions are met.
The signs must be either identical or similar.
The opponent’s trade mark must have a reputation. The reputation must also
be prior to the filing of the contested trade mark; it must exist in the territory
concerned and for the goods and/or services on which the opposition is
based.
Risk of injury: use of the contested trade mark would take unfair advantage
of, or be detrimental to, the distinctive character or repute of the earlier trade
mark.
The abovementioned requirements are cumulative and, therefore, the absence of
any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR
(16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).
However, the fulfilment of all the abovementioned conditions may not be sufficient.
The opposition may still fail if the applicant establishes due cause for the use of the
contested trade mark.
In the present case, the applicant did not claim to have due cause for using the
contested mark. Therefore, in the absence of any indications to the contrary, it must
be assumed that no due cause exists.
a) Reputation of the earlier trade mark
According to the opponent, the earlier trade mark has a reputation in the Benelux.
Reputation implies a knowledge threshold that is reached only when the earlier mark
is known by a significant part of the relevant public for the goods or services it
covers. The relevant public is, depending on the goods or services marketed, either
the public at large or a more specialised public.
In the present case, the contested trade mark was filed on 03/03/2015. Therefore,
the opponent was required to prove that the trade mark on which the opposition is
based had acquired a reputation in the countries of the Benelux prior to that date.
The evidence must also show that the reputation was acquired for the goods for
which the opponent has claimed reputation, namely
Class 5: Medicines and pharmaceutical preparations for human use; preparations for
the treatment of colds and infections of the respiratory system; preparations for the
treatment of allergy.
The opposition is directed against the following goods:
Decision on Opposition No B 2 537 689 page: 3 of 10
Class 5: Disinfectants, fungicides, herbicides, insecticides; preparations for
destroying vermin; all the aforementioned not for human use.
In order to determine the mark’s level of reputation, all the relevant facts of the case
must be taken into consideration, including, in particular, the market share held by
the trade mark, the intensity, geographical extent and duration of its use, and the size
of the investment made by the undertaking in promoting it.
On 20/12/2016, the opponent submitted evidence to support this claim. Further
evidence was filed on 30/12/2016 (Exhibit C.5). However, as indicated by the Office
in its notification to the parties of 01/02/2017 and 08/02/2017, respectively, these
additional documents will not be taken into account as they were not received within
the time limit, in accordance with Rule 19(4) EUTMIR.
As the opponent requested that certain commercial data contained in the evidence
be kept 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 consists in particular of the following documents:
A. General Information on Prevalin
Exhibit A.3: Abstracts from the website www.prevalin.nl showing that the
product is marketed in different forms, such as tablets and nose spray, and is
currently on the market under the packaging shown.
Exhibit A.4: market authorization for Prevalin eyedrops, issued on 29/11/1993.
According to the opponent this document shows first examples of use dating
from 1993, when the opponent first received the Dutch marketing authorization
for “PREVALIN eye drops”. According to the opponent, use has been
undisrupted ever since and has, moreover, intensified, with an ever more
diversified range of products.
Exhibit A.5 gives an overview of the history of the brand and product range
(1999-2015) and evolutions undergone ever since the launch.
B. Intensity of the use in The Netherlands: market shares and volumes traded
(source of the data: AC Nielsen)
According to the opponent, the earlier mark is currently the undisputed leader in the
Netherlands on the market of pharmaceutical and other preparations for the
treatment of allergy, in particular hay fever. The opponent presents an overview of the
market shares as Exhibit B.1 – B-5 for the period of 2001 – 2016. The data originate
from AC Nielsen, an independent source, and show that “PREVALIN” has been one
of the or the market leader for preparations for the treatment of allergy in that period,
with shares ranging between 20% and close to 40% in a market representing initially
several million NLG and later several million EUR:
Exhibit B.1: 2001 presentation with the moving annual total and market shares
for 1998, 1999 and 2000, including samples of activities and promotions (such
as www.hooikoorts.com) projected for 2001.
Exhibit B.2: 2004 presentation with the turnover and market shares for 2003
and 2004, including examples of promotional activities
Exhibit B.3: 2011 presentation with the year-to-date turnover and market
shares for 2009, 2010 and 2011.
Exhibit B.4: 2014 presentation with year-to-date turnover and market shares
for 2012, 2013 and 2014.
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Exhibit B.5: 2016 presentation with the moving annual total and market shares
for 2014, 2015 and 2016, including samples of promotional activities projected
for 2016.
Exhibit B.6: Photos of products on sale in the Dutch market, on shelves or in
eye-catching displays. The opponent indicates in its submissions that the
products are widely available throughout The Netherlands in well-known OTC
points of sale or drug stores, such as Kruidvat (which has around 1 000 outlets
in The Netherlands).
C. Promotional expenditures in the Netherlands
Exhibit C.1 provides an overview of the promotional expenditures (whether on
TV, radio or in press) in the period of 2010 and 2016 with substantial amounts
spent on advertising and corresponding to around 40% of the turnover
generated.
Exhibit C.2: examples of advertising and coupons in printed matter, such as in
retail leaflets (like retail chain Kruidvat’s) or in magazines (date of publication is
often mentioned, for instance 2011/2013).
Exhibit C.3: abstracts from the website www.hooikoorts.com, powered (and
run) by the opponent, which gives information on the hay fever season and the
opponent’s range of products.
Exhibit C.4: abstracts from https://itunes.apple.com where consumers can
download Prevalin allergy app, launched in 2015.
On the basis of the above evidence which mainly relates to some of the goods for
which the opponent claims that the mark is reputed, the Opposition Division
concludes that the earlier trade mark has a reputation in the countries of the Benelux
at least for preparations for the treatment of allergy. Indeed, the abovementioned
evidence indicates that the earlier trade mark has been used for such goods for a
substantial period of time. The sales figures and marketing efforts suggest that the
trade mark has a consolidated position in the market. Under these circumstances,
the Opposition Division finds that, taken as a whole, the evidence indicates that the
earlier trade mark enjoys a certain degree of recognition among the relevant public,
which leads to the conclusion that the earlier trade mark enjoys some degree of
reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to
be applicable depends on other factors relevant under Article 8(5) EUTMR such as,
for example, the degree of similarity between the signs, the inherent characteristics
of the earlier trade mark, the type of goods and services in question, the relevant
consumers, etc.
b) The signs
PREVALIN
Earlier trade mark Contested sign
The relevant territory is the Benelux.
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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 and it must be borne in mind that it is protected for
the word itself not its specific depiction. Hence it is considered to be registered for the
words in both lower case or upper case or even a combination thereof. The word
'PREVALIN' has no meaning for the relevant public and it is distinctive.
The contested sign is a figurative mark consisting of the word element 'prevalien'
written in a combination of slightly stylised black and white characters, the latter
placed against a circular background. The figurative elements are not particularly
elaborate or sophisticated since they are limited to a geometrical element and the
alternation of the colours used to represent the characters and only a slight
stylisation of some of the latter, the remaining being rather standard. In any event, it
must be noted that 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). The word 'prevalien' has no meaning for the
relevant public and is distinctive.
Visually, while the differences in the layout of the signs and the specific stylisation of
the contested sign are perceptible, they form part of the figurative aspects to which
the public will give only limited importance. Of more relevance is the fact that the
earlier mark and the word element of the contested sign coincide in the letters
'PREVALI(*)N whereas they differ in the additional letter 'E' of the contested sign.
Therefore, the signs are high to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the additional letter 'E' in the contested sign slightly modifies its
pronunciation in comparison to the earlier mark; however such difference is not very
obvious in any of the languages of the relevant territory and even hardly perceptible
in Dutch. The signs are, therefore, similar to a high degree and, in Dutch at least,
they are even similar to such a degree that they are near-identical.
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.
The Opposition Division notes that the applicant refers to previous national decisions
to support its arguments with regard to such comparison. However, it must be noted
that decisions of national courts and national offices regarding conflicts between
identical or similar trade marks at national level do not have a binding effect on the
Office since the European Union trade mark regime is an autonomous system, which
applies independently of any national system (13/09/2010, T-292/08, Often,
EU:T:2010:399).
Even though previous national decisions are not binding, their reasoning and
outcome should be duly considered, particularly when the decision has been taken in
the Member State that is relevant to the proceedings.
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The previous cases referred to by the applicant are not relevant to the present
proceedings. Indeed, the differences displayed by the signs analysed in these
previous cases extend well beyond those that have been established above as those
signs display to the least differences in several letters of their word elements whereas
the differences between the above signs are limited to a single additional letter in the
contested sign and some rather banal figurative and graphic adjunctions which will
hardly have an impact on the consumers.
In view of the foregoing, it can be concluded that the signs here at issue are visually
and aurally similar to a high degree and taking into account that the signs have been
found similar in at least one aspect of the comparison, the examination of the
existence of a risk of injury will proceed.
c) The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs display similarities. In order
to establish the existence of a risk of injury, it is necessary to demonstrate that, given
all the relevant factors, the relevant public will establish a link (or association)
between the signs. The necessity of such a ‘link’ between the conflicting marks in
consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been
confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29
and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an
additional requirement but merely reflects the need to determine whether the
association that the public might establish between the signs is such that either
detriment or unfair advantage is likely to occur after all of the factors that are relevant
to the particular case have been assessed.
Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07,
Intel, EU:C:2008:655, § 42):
the degree of similarity between the signs;
the nature of the goods and services, including the degree of similarity or
dissimilarity between those goods or services, and the relevant public;
the strength of the earlier mark’s reputation;
the degree of the earlier mark’s distinctive character, whether inherent or
acquired through use;
the existence of likelihood of confusion on the part of the public.
This list is not exhaustive and other criteria may be relevant depending on the
particular circumstances. Moreover, the existence of a ‘link’ may be established on
the basis of only some of these criteria.
The fact that, for the average consumer, who is reasonably well informed and
reasonably observant and circumspect, the later mark would call the earlier mark to
mind is tantamount to the existence of a link (see 27/11/2008, C-252/07, Intel,
EU:C:2008:655, § 60). In the present case, as seen above, the signs are visually and
aurally similar to a high degree, and in Dutch, at least, their pronunciation is even
near-identical. Taking into account the earlier mark's repute, such circumstances
suffice to consider that the later mark would call the earlier mark to the consumers
Decision on Opposition No B 2 537 689 page: 7 of 10
minds thus establishing a link between the signs even if any of the contested goods
were not to be similar to the opponent's goods.
Therefore, taking into account and weighing up all the relevant factors of the present
case, the Opposition Division concludes that, when encountering the contested mark,
the relevant consumers will be likely to associate it with the earlier sign, that is to say,
establish a mental ‘link’ between the signs. However, although a ‘link’ between the
signs is a necessary condition for further assessing whether detriment or unfair
advantage are likely, the existence of such a link is not sufficient, in itself, for a finding
that there may be one of the forms of damage referred to in Article 8(5) EUTMR
(26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).
d) Risk of injury
Use of the contested mark will fall under Article 8(5) EUTMR when any of the
following situations arise:
it takes unfair advantage of the distinctive character or the repute of the earlier
mark;
it is detrimental to the repute of the earlier mark;
it is detrimental to the distinctive character of the earlier mark.
Although detriment or unfair advantage may be only potential in opposition
proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be
applicable. While the proprietor of the earlier mark is not required to demonstrate
actual and present harm to its mark, it must ‘adduce prima facie evidence of a future
risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012,
T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).
It follows that the opponent must establish that detriment or unfair advantage is
probable, in the sense that it is foreseeable in the ordinary course of events. For that
purpose, the opponent should file evidence, or at least put forward a coherent line of
argument demonstrating what the detriment or unfair advantage would consist of and
how it would occur, that could lead to the prima facie conclusion that such an event is
indeed likely in the ordinary course of events.
Tin the present case, the opponent claims that use of the contested trade mark
would take unfair advantage of the distinctive character or the repute of the earlier
trade mark and be detrimental to the repute of the earlier trade mark.
Detriment to repute (tarnishing)
Detriment to repute occurs where the goods or services covered by the contested
trade mark appeal to the public’s senses in such a way that the earlier mark’s power
of attraction is diminished. There is a risk of such detriment occurring, inter alia,
where the contested goods or services have a characteristic or a quality that may
have a negative influence on the image of an earlier mark with a reputation on
account of it being identical or similar to the contested trade mark (18/06/2009,
C-487/07, L’Oréal, EU:C:2009:378, § 40, and 22/03/2007, T-215/03, Vips,
EU:T:2007:93, § 39).
Decision on Opposition No B 2 537 689 page: 8 of 10
In this respect the opponent argues essentially the following.
'PREVALIN' has acquired a significant degree of reputation as a
pharmaceutical or OTC preparation for the treatment of allergy, in particular
hay fever. As such, its image is associated with concepts like health,
alleviation of physical nuisances, with well-being or comfort. The contested
goods on the other hand are poisonous preparations designed to kill.
In this regard, the detrimental effect on reputation of “PREVALIN” will occur
because the later mark is used for goods or services which provoke negative
feelings, a reaction of annoyance or displeasure, whether through their
intrinsic nature or because of the unpleasant mental association with the
goods for which the earlier mark is reputed. The contested goods indeed are
synonymous to anything which is but healthy or comfortable: those goods are
dangerous, poisonous to human beings, often acidulous and smell very bad.
Mentally, the goods will provoke the idea that they should not, under any
circumstances, be taken in orally or administered to a human in any way.
Moreover, such goods have to be handled with utmost care and have to be
kept outside the reach of toddlers and children. Conveying such concepts is
hardly compatible with the joyful, comfortable and healthy image of
'PREVALIN', including the 'Junior' range that is specifically intended for
children:
If the application is allowed to proceed to registration, “PREVALIN” will cease
to convey the desirable messages to the public which have been built up
through a particular image for years: hence the damage to the public image of
the sign.
The Opposition Division endorses the opponent's view according to which the case
where goods with a corrosive or poisonous effect cause detriment to goods for
human consumption or intended to be administered to humans, is a textbook
example of tarnishment. Indeed, "the concept of detriment to the repute of a trade
mark, often referred to as degradation or tarnishment of the mark, describes the
situation where – as it was put in the well-known Claeryn / Klarein decision of the
Benelux Court of Justice – the goods for which the infringing sign is used appeal to
the public's senses in such a way that the trade mark's power of attraction is affected.
That case concerned the identically pronounced marks ‘Claeryn' for a Dutch gin and
‘Klarein' for a liquid detergent. Since it was found that the similarity between the two
marks might cause consumers to think of detergent when drinking ‘Claeryn' gin, the
‘Klarein' mark was held to infringe the ‘Claeryn' mark” (Opinion of AG Jacobs in
23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 38).
Therefore, taking into account the high similarity between the marks and the
reputation of the opponent’s marks, the Opposition Division concludes that the use of
the applied mark in relation to these contested goods would adversely affect the
image of the opponent’s mark and diminish its power of attraction. This would
negatively affect the perception of the public buying the opponent’s goods relating to
health.
On the basis of the above, the Opposition Division concludes that the contested
trade mark is likely to be detrimental to the repute of the earlier trade mark.
Decision on Opposition No B 2 537 689 page: 9 of 10
Other types of injury
As seen above, the opponent also argues that use of the contested trade mark would
take unfair advantage of the distinctive character or repute of the earlier trade mark.
As seen above, the existence of a risk of injury is an essential condition for
Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an
opposition to be well founded in this respect it is sufficient if only one of these types is
found to exist. In the present case, as seen above, the Opposition Division has
already concluded that the contested trade mark would be detrimental to the repute
of the earlier trade mark. It follows that there is no need to examine whether other
types also apply.
e) Conclusion
Considering all the above, the opposition is well founded under Article 8(5) EUTMR.
Therefore, the contested trade mark must be rejected for all the contested goods.
Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not
necessary to examine the remaining ground on which the opposition was based,
namely article 8(1)(b).
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, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
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
Begoña URIARTE
VALIENTE
Martina GALLE Pedro JURADO
MONTEJANO
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
Decision on Opposition No B 2 537 689 page: 10 of 10
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.