CANCELLATION No 11 822 C (INVALIDITY)

Walmark a.s., Oldřichovice 44, 73961 Třinec, Czech Republic (applicant), represented by Dana Lukajová, Voršilská 10, 110 00 Praha 1, Czech Republic (professional representative)

a g a i n s t

Mission Pharmacal Company, P.O. Box 786009, San Antonio, Texas 78278-6099, United States of America (EUTM proprietor), represented by Lane IP Limited, 2 Throgmorton Avenue, London, EC2N 2DG, United Kingdom (professional representative).

On 17/01/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 13 445 242 is declared invalid in its entirety.

3.        The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 13 445 242. The application is based on international trade mark registration No 960 305 designating Bulgaria, Estonia, Hungary, Latvia, Lithuania, Poland, Romania and Slovakia, and Czech trade mark registration No 296 120. The applicant invoked Article 53(1)(a) EUTMR in connection with Articles 8(1)(b) and 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested EUTM, ‘URIBEL’, is visually and aurally similar to the applicant’s trade marks, ‘Urinal’. The signs at issue are registered for identical goods in Class 5. Therefore, there exists a likelihood of confusion on the part of the public. In addition, the applicant indicates that its trade marks have a reputation in Bulgaria, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Poland, Romania and Slovakia for some of the goods in Classes 5 and 30, as listed in section a) of this decision, and makes a general statement that use of the contested EUTM by the EUTM proprietor is without due cause and would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier ‘Urinal’ trade marks.

In support of its claim for reputation, the applicant files evidence that can be summarised as follows (detailed list under section d) of this decision):

• Evidence on DVD 1 contains catalogues, invoices for advertising and some consumer surveys.

• Evidence on DVD 2 contains confidential evidence, namely a large selection of invoices and third-party statements of sales volumes and market shares of the ‘Urinal’ products in the respective territories.

The EUTM proprietor argues that there are many trade marks containing the prefix or suffix ‘URI’, and that those trade marks are used in the course of trade for goods intended for treating urinary infections or for medically assisting the urinary tract in humans, or related to urine in some way. In support of that, the EUTM proprietor files printouts (Exhibit 1) from a search conducted among European Union trade marks and international registrations in respect of goods in Class 5. The submissions also contain printouts from websites of various undertakings offering for sale, or promoting preparations the names of which contain the prefix or suffix ‘URI’ (Exhibit 2). The EUTM proprietor claims that the material submitted not only demonstrates co-existence of such trade marks on the register, but also shows co-existence on the marketplace without any confusion on the part of the public. The EUTM proprietor points out that the element ‘URI’ is defined in the medical dictionary as ‘uric acid (urine)’ and refers to an entry found at http://medical-dictionary.thefreedictionary.com/uri- (Exhibit 3). The EUTM proprietor finds that the fact that the term has a recognised medical meaning contained in the dictionary as well as being present as a prefix in many different registered marks means that the element ‘URI’ clearly has little, or no distinctiveness.

 

The EUTM proprietor argues that, in view of the foregoing, the obvious points of differences between the respective marks are their endings, ‘NAL’ and ‘BEL’. They result in strong visual and aural differences between the signs. The EUTM proprietor mentions that the word ‘Urinal’ has a meaning in the English language, and to those who understand English, as ‘a bowl or other receptacle, typically attached to a wall in a public toilet, into which men may urinate’. On the other hand, the EUTM proprietor states that no conceptual comparison can be made between the signs, since the contested EUTM has no meaning whatsoever.

Turning to the goods at issue, the EUTM proprietor notes that the pharmaceutical preparations covered by the contested EUTM are only available on prescription and submits printouts from www.uribelinfo.com providing product description of the ‘URIBEL’ preparation (Exhibit 4). The EUTM proprietor emphasises that the applicant’s goods are, in contrast, dietary food supplements to aid the health of the lower urinary tract and that they are available over the counter, and submits a printout from www.walmark.eu (Exhibit 5).

Another point raised by the EUTM proprietor is that, whilst it is noted that the applicant submitted evidence of use of its ‘Urinal’ marks in the relevant territories, the evidence does not show use in respect of the broad term pharmaceutical and parapharmaceutical products. The EUTM proprietor elaborates this issue by stating the following (§ 20 of the EUTM proprietor’s observations of 03/02/2016):

‘Therefore, only the goods for which the Applicant has shown use in its evidence can be considered in the comparison of goods in these proceedings. Indeed, the Applicant’s earlier mark upon which it relies is clearly now vulnerable to revocation on the grounds of non-use in respect of the broad terms for which use cannot be shown.’

Further, the EUTM proprietor criticises the evidence submitted by the applicant and emphasises differences that can be observed between over the counter drugs, such as the applicant’s ‘Urinal’ products, and the contested prescription medication. In conclusion, the EUTM proprietor states that there is no likelihood of confusion on the part of the public pursuant to Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

As regards the applicant’s claim in relation to Article 53(1)(a) EUTMR in connection with Article 8(5) EUTMR, the EUTM proprietor contests the existence of any reputation of the applicant’s trade marks. The EUTM proprietor states that, even if the Office were to find reputation of the applicant’s marks, this would only be in respect of nutritional and dietetic preparations and supplements. In that regard, taking into account the limited distinctiveness of the ‘URI’ prefix and the fact that it is so commonplace on the market, the EUTM proprietor’s use of the ‘URIBEL’ sign for goods of a different kind of nature, namely pharmaceutical products only available on prescription, would in no way be without due cause nor would such use take any advantage of, or be detrimental to the distinctiveness of the applicant’s ‘Urinal’ marks.

In reply, the applicant rebuts the EUTM proprietor’s arguments in relation to the numerous trade marks that contain the element ‘URI’. In addition, the applicant raises counter-arguments against the EUTM proprietor’s claims of the meaning of the element ‘URI’. In particular, it is pointed out that, whilst the origin of the prefixes, or word stems ‘ur-’, ‘urin-’ etc. is Latin (from the words ‘urina’, ‘urinalis’ etc.) and means ‘related to urine and urination’, the element ‘URI’ is perceived quite differently in different language areas. The applicant notes that the word ‘urine’ translates as ‘moč’ in Czech and Slovak for instance, and that the meaning of the English word ‘urinal’ as such is not very known to the majority of the relevant public. The applicant also elaborates on the visual and aural similarities between the signs and maintains the claim for enhanced distinctiveness of its trade marks.

In reply, the EUTM proprietor maintains its line of argument about the existence of many trade marks containing the element ‘URI’. In addition, the EUTM proprietor claims that the contested goods, being prescription drugs, are not available for purchase by the general public. Professionals in the medical field, which is the relevant public for the goods at issue according to the EUTM proprietor, will understand the meaning of the prefix ‘URI’. Moreover, the EUTM proprietor puts forward examples in several of the relevant languages aimed at showing the existence of words containing the ‘URI’ stem, for instance ‘urinologie’ in Czech and Slovak. The EUTM proprietor asserts that the fact that the applicant has made no argument with regard to the narrow scope of use that has been demonstrated by the evidence is taken as an agreement that the entire specification of the earlier marks cannot be relied upon for the purposes of the comparison of goods, and, based on the evidence provided by the applicant, the cancellation application can, therefore, proceed on the basis of the applicant’s nutritional and dietetic preparations and supplements. In conclusion, the EUTM proprietor reiterates why there is no relevant similarity between the signs or the goods at issue which precludes the finding of any likelihood of confusion.

The cancellation application is based on more than one earlier trade mark and ground. The Cancellation Division finds it appropriate to first examine the cancellation application based on Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR in relation to the applicant’s international trade mark registration No 960 305 ‘Urinal’ designating Bulgaria, Estonia, Latvia, Lithuania, Poland and Slovakia (i.e. without the examination of the applicant’s claims in relation to Hungary and Romania), and Czech trade mark registration No 296 120.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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.

Preliminary remark

As a preliminary remark, the question of whether proof of use has been requested in the present case must be clarified. In its observations, the EUTM proprietor refers to the evidence submitted by the applicant for substantiating its claim for reputation and enhanced distinctiveness of its marks and implies that the evidence does not show use for all of the goods on which the cancellation application is based. In that regard, the Cancellation Division notes that, aside from merely stating that ‘the applicant’s earlier mark is vulnerable to revocation on the grounds of non-use in respect of the broad terms for which use cannot be shown’, the EUTM proprietor does not expressly request that the applicant furnishes proof of use that the marks on which it relies were put to genuine use, within the meaning of Article 42(2) EUTMR.

According to Office practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the applicant does not submit proof of use, the application must be rejected.

Since the EUTM proprietor’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the applicant was not under any obligation to submit proof that its earlier trade marks had been genuinely used. It is considered that the goods on which the applicant relies upon are the ones indicated in the application for declaration of invalidity.

1. The goods

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

Class 5:        Pharmaceutical and parapharmaceutical products, vitamins and minerals and trace elements, nutritional and dietetic preparations and medicines, medicinal syrups, extract of medicinal herbs and combined preparations of vitamins, minerals, trace elements and of medicinal plant extracts, food supplements with added vitamins or minerals or trace elements, vitamin-enriched preparations, vitamins and multi-vitamin preparations, minerals and multi-mineral preparations, herb teas, medicinal herbs, confectionery or pastils or tablets or gelatine capsules or capsules or chewing gums containing curative ingredients, dietetic products adapted for medical use, dietetic mineral waters and drinks adapted for medical purposes, dietetic foodstuffs adapted for medical use, nutritional supplements for medical use, protein preparations or foodstuffs for medical use, salves and creams and ointments for medical use, chemical products for medical use, curative oils, oils for medical use, greases for medical purposes, curative salts, tinctures for medical purposes, herbal extracts or syrups, vitamin and mineral enriched foodstuffs in the form of concentrates, concentrates of protein as nutritional food supplements, yeast for pharmaceutical use, medicinal food supplements, nutritional or dietetic preparations for medical purposes used as daily food supplements in the form of instant foodstuffs or separate mixtures, composed mainly of powdered milk or animal proteins or vegetable proteins, also with supplements of vitamins or minerals or trace elements or sugar.

Class 29:        Food supplements for non-medical use (included in this class) and containing animal substances, protein for human consumption, protein products and preparations for nutritional use, nutritional preparations for sportsmen and sportswomen or for individuals with high energy expenditure, edible gelatin, gelatin products and preparations for nutritional use, edible fats, edible oils, algae extracts for nutritional purposes, nutritional preparations for daily food supplement composed mainly of powdered milk or animal proteins or vegetable proteins, also with supplements of vitamins or minerals or trace elements or sugar, milk, milk products, yoghurts, tinned fruits or vegetables, fruit or vegetable slices, cooked fruit or vegetables or preserved fruits or pickles, thick soups, clear soups, bouillons.

Class 30:        Food supplements for non-medical use (included in this class) and containing plant-based substances, sugar confectionery, chewing gums, sweets, ice-creams, bakery goods, pastry goods, cocoa, coffee, tea, chocolate, chocolate-based beverages, beverages made with tea, cocoa or of coffee, cereal-based foodstuffs for human consumption, pasta, muesli, honey, bee glue (propolis) for human consumption.

The contested goods are the following:

Class 5:        Pharmaceutical preparations, namely, urinary analgesics.

An interpretation of the wording of the EUTM proprietor’s list of goods is required to determine the scope of protection of the contested goods. The term namely, used in the EUTM proprietor’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

In view of the foregoing, the contested pharmaceutical preparations, namely, urinary analgesics are included in the broader category of the applicant’s pharmaceutical products in Class 5. Therefore, they are identical.

In addition, the Cancellation Division notes that the applicant claims reputation and enhanced distinctiveness of the marks relied upon in the present proceedings. The claim refers to the following goods of both earlier marks:

Class 5:        Pharmaceutical and parapharmaceutical products, vitamins and minerals and trace elements, nutritional and dietetic preparations and medicines, medicinal syrups, extract of medicinal herbs and combined preparations of vitamins, minerals, trace elements and of medicinal plant extracts, medicinal herbs, dietetic products adapted for medical use, nutritional supplements for medical use, herbal extracts or syrups.

Class 30:        Food supplements for non-medical use (included in this class) and containing plant-based substances.

Therefore, it is important to establish that not only are the contested goods encompassed in the applicant’s broader category of pharmaceutical products, but they also have relevant commonalities with some of the applicant’s goods for which reputation and enhanced distinctiveness is claimed, for instance nutritional supplements for medical use in Class 5. The latter are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Being defined rather broadly, those goods include preparations intended for treating urinary tract disorders. Bearing this in mind, their purpose is similar to that of the contested goods (painkillers used in the urinary tract) insofar as they are used to improve a patient’s medical condition. The relevant public coincides (medical professionals as well as the public at large) and the goods generally have the same distribution channels (pharmacies). Therefore, these goods are considered similar.

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 relevant goods covered by the earlier marks are pharmaceutical products, encompassing the contested goods that are pharmaceuticals that require a doctor’s prescription prior to their sale to end-users in pharmacies. In addition, the contested goods are similar to the applicant’s nutritional supplements for medical use. According to the case-law, in such cases the general public cannot be excluded from the relevant public. Thus, the goods are directed at both qualified professionals in the medical field and the general public without any specific medical and pharmaceutical knowledge.

If a significant part of the relevant public for the goods at issue may be confused as to the origin of the goods, this will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused.

In view of the above, likelihood of confusion will be assessed against the perception of the general public, as it is a significant part of the public that will be more prone to being confused. Whilst the professional public in the given field are familiar with specific terminology and word compounds stemming from foreign languages, such sophistication and knowledge cannot be expected from the public at large.

It is apparent from the case-law that, insofar as pharmaceutical products 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 quoted case-law). The general public show a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. As regards nutritional supplements for medical use, it is considered that the relevant public’s degree of attention will also be higher than average when choosing those goods since they are expected to improve one’s state of health or wellbeing.

3. The signs

Urinal	URIBEL
Earlier trade marks	Contested trade mark

The relevant territories are Bulgaria, the Czech Republic, Estonia, Latvia, Lithuania, Poland and Slovakia.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Both earlier marks (international registration No 960 305 and Czech trade mark registration No 296 120) are composed of the word ‘Urinal’. The contested EUTM is the word ‘URIBEL’.

Although it may be true that, for some of the relevant public, the prefix ‘URI’ may constitute the weak part of the signs as it alludes to the characteristics of the goods at issue by evoking the fact that they are preparations for the urinary tract (e.g. the term for ‘urine’ is ‘uryna’ in Polish, ‘урина’ in Bulgarian, ‘uriin’ in Estonian and ‘urīns’ in Latvian), it remains that the conflicting marks, which have to be appreciated globally, lack any immediately perceptible meaning. Furthermore, whilst the endings of the marks, ‘-NAL’ and ‘-BEL’, are not meaningful in the context of the goods at issue, they cannot be considered the striking elements of the marks that might significantly affect the overall impression of the marks taken as a whole.

As regards the EUTM proprietor’s argument that the word ‘Urinal’ has a meaning in English (a sanitary fitting, or a medical device used by men for urination), the Cancellation Division notes additionally that this word, or a similar equivalent, has been loaned in some of the relevant languages. Nevertheless, it essentially is a medical or technical term. It is seldom used in common parlance because of other apt terms that are more commonplace. Therefore, the relevant public, as defined in section b) of this decision, is unlikely to perceive that meaning when encountering the applicant’s marks.

It can be reasonably assumed that none of the marks has any identifiable components in the perception of another—and not a negligible—part of the relevant public. It is important to note that, in some of the languages at issue, the most frequently used equivalents of the term ‘urinary’ are sufficiently far removed from the Latin-derived stem (e.g. ‘močový’ in Czech and Slovak, or ‘slapimo’ in Lithuanian). Therefore, it can be safely established that the prefix ‘URI’ will not trigger any specific semantic associations for a sizeable part of the relevant public who will perceive the marks as fanciful terms.

Visually, the marks coincide in the sequence of the letters ‘URI–L’. They differ in the letters ‘NA’ of the earlier marks and ‘BE’ of the contested EUTM.

For the part of the public that perceives the prefix ‘URI’ as weak in the context of the goods, the degree of visual similarity between the marks is somewhat below average. However, the similarity is not considered to be low as the limited distinctiveness of the shared prefix has to be assessed against other relevant factors.

Firstly, the marks share four out of six letters in identical positions. Secondly, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Lastly, the difference in the use of upper case or title case letters in case of word marks is immaterial.

For another part of the public that perceives the marks as undivided words, the degree of visual similarity is average.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciations of the marks coincide in the sound sequence corresponding to the letters ‛URI–L’, present identically in the marks. The pronunciations differ in the sound of the letters ‛NA’ of the earlier marks and ‘BE’ of the contested EUTM.

The fact that the marks are of the same lengths in terms of number of syllables, and that two of the syllables appearing in the initial parts of the marks are identical are important factors that influence the aural similarity.

Therefore, for the part of the public that perceives the prefix ‘URI’ as weak in the context of the goods in question, the degree of aural similarity between the marks is somewhat below average. For another part of the public that perceives the marks as undivided words, the degree of aural similarity is average.

Conceptually, a part of the relevant public may discern the prefix ‘URI’ in the marks, as explained above. On account of the limited distinctiveness of that concept for the relevant goods, the degree of conceptual similarity between the marks is somewhat below average for that part of the public.

For another part of the public that perceives the marks as undivided words, neither of them has any clear meaning. Since a conceptual comparison is not possible, to that extent the conceptual aspect does not influence the assessment of the similarity of the marks.

As the marks 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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the applicant, the earlier trade marks (international trade mark registration No 960 305 ‘Urinal’ and Czech trade mark registration No 296 120 ‘Urinal’) have a reputation and enjoy a high degree of distinctiveness as result of their long-standing and intensive use in Bulgaria, the Czech Republic, Estonia, Latvia, Lithuania, Poland and Slovakia for some of the goods for which they are registered, namely:

Class 5:        Pharmaceutical and parapharmaceutical products, vitamins and minerals and trace elements, nutritional and dietetic preparations and medicines, medicinal syrups, extract of medicinal herbs and combined preparations of vitamins, minerals, trace elements and of medicinal plant extracts, medicinal herbs, dietetic products adapted for medical use, nutritional supplements for medical use, herbal extracts or syrups.

Class 30:        Food supplements for non-medical use (included in this class) and containing plant-based substances.

For the sake of completeness, it is noted that the claim also refers to Hungary and Romania, but those territories are not included in the present assessment.

The applicant’s claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C-251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442).

The applicant submitted evidence to support this claim. As the applicant requested to keep certain commercial data contained in the evidence (namely that presented on DVD 2) confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

DVD 1 (no confidentiality request)

• Four catalogues in English, dated from 2012 to 2015, presenting the applicant’s business and its product portfolio. ‘Urinal’ food supplements are mentioned in all of the catalogues among the leading and commercially successful brands of the applicant. It is noteworthy that, in the company catalogue for 2012, it is stated that, for instance in Lithuania, ‘Urinal’ ranked 1st in the respective segment, with a market share of 39.7%. The product catalogues show that the ‘Urinal’ mark is used for food supplements for urinary tract care. The range includes ‘Urinal’ (for treating infection and inflammation), ‘Urinal Akut’ (for urinary tract care during a sudden and strong discomfort), ‘Urinal Drink’, ‘Urinal Syrup’ and ‘Urinal Probio’. The 2015 product catalogue specifies that the ‘Urinal’ brand is intended for ‘women’s intimate health’ and presents the sub-brand ‘Urinal Medical’ as indicated to treat and prevent cystitis and other infections of the lower urinary tract.

• Market research reports. The applicant submits four reports in relation to market studies conducted by Ipsos Marketing in the Czech Republic, Poland and Romania in 2014 (the latter not included in the present assessment). The reports show that the sample groups included in the research were small. In particular, the reports state that, in each of the countries, only one or two focus group discussions (for eight women) were held, and that the total number of respondents (in each country) for the questionnaire in relation to urinary tract infections was a couple of hundred women. However, it has to be noted that, according to the evidence, ‘Urinal’ and ‘Urinal Akut’ products enjoy ‘high awareness’ among the respondents. The report on ‘Women Intimate Health, U&A’ research of February 2014 states that ‘Urinal’ and ‘Urinal Akut’ products top the category among the over the counter drugs.

• Evidence in relation to the Czech Republic. The applicant submits a report on a consumer research conducted by Datamar in 2014. According to the document, the research had ‘total of 15 respondents’ composed of women in the Czech Republic aged 18-60, selected by ‘screening conditions for the use of products in that category’. The study revealed top of mind brand awareness of above 40% for ‘Urinal’ products. The evidence presents the questions included in the research and detailed analysis of the responses. The applicant’s submissions also contain nine product catalogues in Czech, some of them dated from 2011 to 2014. Each of the catalogues features the ‘Urinal’ product range. The evidence further contains a large selection of invoices issued to the applicant by third parties, in relation to the promotion of the ‘Urinal’ products on television and periodicals from 2010 to 2014. The invoices are accompanied by copies of the adverts and the corresponding cover page of the magazine. The evidence also contains eight website layouts presenting the ‘Urinal’ products.

• Evidence in relation to Bulgaria. The submissions contain five product catalogues in Bulgarian, dated from 2010 to 2014, showing the ‘Urinal’ product range. In addition, the applicant submits several invoices received from third parties for the promotion of the ‘Urinal’ products on television in the same timeframe.

• Evidence in relation to Lithuania. The submissions consist of invoices issued by third parties for the promotion of the ‘Urinal’ products on television, radio and periodicals as well as online from 2010 to 2014.

• Evidence in relation to Poland. The applicant submits five documents related to a survey on the efficiency of marketing activities, and a test study on concepts/names, conducted in 2013 and 2014 by MilwardBrown and TNS. Parts of the documents are not in the language of proceedings (although it is clear that they refer to, inter alia, the ‘Urinal’ brand, no further conclusions can be drawn). The applicant submits four product catalogues in Polish, dated from 2012 to May 2015, all of them presenting the ‘Urinal’ product range. The evidence also contains invoices issued by third parties for the promotion of the ‘Urinal’ products on television and periodicals, from 2010 to 2014.

• Evidence in relation to Slovakia. The applicant submits five product catalogues in Slovak, some being dated from 2010 to 2012, each featuring the ‘Urinal’ product range. In addition, the applicant submits a large selection of invoices for promotion of the ‘Urinal’ products on television and periodicals, covering the same period. The submissions also contain eight website layouts showing the ‘Urinal’ products.

DVD 2 (confidential evidence)

• Statements issued by IMS Health, signed by authorised signatories and dated 2015. The statements show annual retail sales volumes and values of various products from the ‘Urinal’ range, and their market share from 2010 to 2014 in Bulgaria, Czech Republic, Estonia, Latvia, Lithuania, Poland, Slovakia and Romania (the latter not included in the present assessment). Without divulging any business data, it can only be mentioned that the sales are impressive and the market shares, albeit not immense, reach a significant degree.  

• A large selection of invoices, issued from 2010 to 2014 by the local branches of the applicant in Bulgaria, Czech Republic, Lithuania, Poland, Slovakia and Romania (the latter not included in the present assessment). Although the invoices are not in the language of proceedings, it is evident that they refer to sales transactions dealing with, inter alia, the ‘Urinal’ products. For confidentiality reasons the sales figures or names of customers cannot be divulged. However, it can be said that the sales are regular, directed at a number of customers in each country and the volumes are significant, both monetarily and physically. Besides, purchases in bulk suggest that the customers are retailers in the pharmaceutical field – individual pharmacies or pharmacy franchises.

For the sake of completeness, the Cancellation Division notes that the applicant also submitted some evidence of reputation and enhanced distinctiveness in relation to Romania. However, that part of the evidence will not be listed or examined since that territory is not included in the present assessment.

Having examined the material listed above, the Cancellation Division concludes that the earlier trade marks have acquired a certain degree of enhanced distinctiveness through use on the relevant market.

The abovementioned evidence indicates that the earlier trade marks have been used for a sufficiently long period of time (as from 2010 – in other words, more than four years before the filing date of the contested EUTM, and six years before taking this decision). The impressive sales figures, the frequent and extensive marketing efforts (expensive advertising on television, long-standing promotion on other mass media) demonstrate that the ‘Urinal’ brand has a visible position in the relevant market segment. The evidence related to market research shows that the applicant invests both time and money to study the market situation and consumer perceptions prior to any marketing moves or even naming a product. It is clear that the commercial success of the ‘Urinal’ brand is a result of serious preparatory work, and careful product placement in a highly saturated market. Therefore, the market research reports, albeit not conclusive on their own, demonstrate that the target audience of the ‘Urinal’ brand is addressed in a very efficient way and suggest brand recognition at least for some part of the relevant public. Under these circumstances, the Cancellation Division finds that, taken as a whole, the evidence indicates that, on account of the extensive use to which the applicant has put its ‘Urinal’ brand in the relevant territories, the earlier trade marks enjoy a certain degree of recognition among the relevant public, which leads to the conclusion that the distinctiveness of the applicant’s trade marks is to some extent enhanced.

However, the evidence does not succeed in establishing that the applicant’s trade marks have enhanced distinctiveness for all the goods on which the cancellation application is based and for which reputation/enhanced distinctiveness is claimed. The evidence mainly relates to nutritional supplements for medical use for treating urinary tract disorders in Class 5, whereas there is no or little reference to the remaining goods in Classes 5 and 30. This is clear, for example, from the market share reports, the sales figures in conjunction with the product catalogues and advertisements, where essentially nutritional (food) supplements are mentioned.

The Cancellation Division finds it appropriate to recall that the applicant’s goods that have been found identical or similar to the contested ones are pharmaceutical products and nutritional supplements for medical use in Class 5. The foregoing findings do not automatically apply to the broad category of pharmaceutical products that can include different kinds of preparations for a number of therapeutic indications.

Consequently, the assessment of the distinctiveness of the earlier marks in relation to pharmaceutical products will rest on their distinctiveness per se. In the present case, the earlier trade marks, as a whole, have no clear, evident or unambiguous meaning for these goods from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak element in the marks in the perception of a part of the relevant public, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

As shown in section d) of this decision, the applicant’s ‘Urinal’ marks have acquired certain recognition among the relevant public in relation to goods that are similar to the goods of the contested EUTM.

The degree of visual and aural similarity between the marks varies from somewhat below average to average, depending on whether the public perceives the prefix ‘URI’ as weak or not. However, it must be borne in mind that a sizeable part of the public will perceive the marks in their entirety without artificially dissecting the words. Despite the fact that a part of the public may recognise a weak element in the marks, in the absence of striking differentiating elements or conceptual aspects, the similarities between the marks will not go overlooked by the relevant public. Given the enhanced distinctiveness of the earlier marks, the Cancellation Division finds that the coinciding letter sequence, ‘URI–L’, has sufficient capacity to give rise to a situation where the public makes an association between the marks. When encountering the conflicting marks, the relevant public may attribute the same, or an economically linked commercial origin to the goods at issue, notwithstanding the relatively high degree of attention that the public will display. That finding is not altered by the fact that the applicant’s goods are over the counter preparations, whilst the pharmaceutical products covered by the contested EUTM are only available on prescription.  

In its observations, the EUTM proprietor argues that the earlier trade marks have a weak distinctive character since many trade marks include the element ‘URI’ as a prefix or suffix. In support of its argument the EUTM proprietor refers to a number of European Union trade mark registrations and international registrations designating, inter alia, EU Member States. Furthermore, the EUTM proprietor submits some evidence aimed at demonstrating that those trade marks are actually used on the relevant market and claims that such use has not created any confusion on the part of the public.  

The Cancellation 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. The fact that there is some evidence showing commercial use of trade marks comprising the element ‘URI’ has to be weighed up against other relevant factors of the case, especially the fact that the applicant has proved a certain degree of enhanced distinctiveness acquired through sufficiently long-standing and extensive use. A noteworthy aspect is that, in the market research reports submitted by the applicant, the competitors’ product names are provided. Some of them include the element ‘URI’. Nevertheless, as a result of massive advertising campaigns and careful brand management, the applicant’s ‘Urinal’ brand has a consolidated position in the pertinent market segment. The evidence suggests that, despite being exposed to many trade marks that include the element ‘URI’, customers are able to immediately recognise the ‘Urinal’ branded products.

Likelihood of confusion means a probability of confusion on the part of the relevant consumer and does not require actual confusion. As expressly confirmed by the Court: ‘ … it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69). The evidence furnished by the EUTM proprietor, let alone its assertions concerning the lack of incidences of actual confusion, are insufficient for calling into question the finding of a likelihood of confusion on the part of the relevant public.

Under these circumstances, the EUTM proprietor’s claims must be set aside.

Considering all the above and especially taking into account the certain degree of enhanced distinctiveness of the earlier marks, the Cancellation Division concludes that the differences identified between the marks are insufficient, in the present case, to counteract the similarities so as to enable the relevant public to safely distinguish between the marks in the context of the relevant goods.

Therefore, there is a likelihood of confusion on the part of the relevant public, namely the general public in Bulgaria, the Czech Republic, Estonia, Latvia, Lithuania, Poland and Slovakia. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested EUTM it is redundant to analyse the remaining part of the public.

Therefore, the application is well founded on the basis of the applicant’s international registration No 960 305 designating Bulgaria, Estonia, Latvia, Lithuania, Poland and Slovakia, and Czech trade mark registration No 296 120. It follows that the contested trade mark must be declared invalid for all the contested goods.

As earlier international registration No 960 305 designating Bulgaria, Estonia, Latvia, Lithuania, Poland and Slovakia, and Czech trade mark registration No 296 120 lead to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(5) EUTMR in conjunction with Article 53(1)(a) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Oana-Alina STURZA

Solveiga BIEZA

José Antonio GARRIDO OTAOLA

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