BABYSPASMYL | Decision 2649385
Date Published: Oct 2, 2017
OPPOSITION No B 2 649 385
Sopharma AD, 16 Iliensko Shausse Str., 1220 Sofia, Bulgaria (opponent), represented by Rumiana Hristova Peycheva, c/o Sopharma AD, 16 Iliensko Shausse Str., 1220 Sofia, Bulgaria (employee representative)
a g a i n s t
Scorpius, 55 Rue Jouffroy d'Abbans, 75017 Paris, France (applicant), represented by Gevers & Ores, 41 Avenue de Friedland, 75008 Paris, France (professional representative).
On 29/06/2017, the Opposition Division takes the following
1. Opposition No B 2 649 385 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 246 936, namely all the goods in Class 5. The opposition is based on Bulgarian trade mark registration No 41 697. The opponent invoked Article 8(1)(b) EUTMR.
Earlier trade mark
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.
For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Bulgarian trade mark registration No 41 697.
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 relevant date (first republication of the contested international registration plus six months) is 18/11/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Bulgaria from 18/11/2010 to 17/11/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based.
In the notice of the opposition, the opponent indicated that the opposition is based on ‘all goods’ covered by the earlier mark. The evidence submitted for substantiating the opponent’s earlier mark shows that the registration covers goods in Classes 5 and 30, namely:
Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic products for children and sick persons; plasters and materials for dressings; material for stopping teeth and dental wax; disinfectants; preparation for destroying vermin, fungicides, herbicides
Class 30: Food improvers and dietary supplements.
However, the goods listed as basis of opposition in the notice of opposition concern only part of the goods that are covered by the earlier mark, namely pharmaceutical; veterinary and sanitary preparations children and sick people; plasters and materials for dressings; material for stopping teeth in Class 5. In case of such a discrepancy, in order to overcome the contradictory information contained in the notice of opposition, the Office assumes that the opposition is based on ‘all goods’ for which the earlier right is registered.
It follows that the evidence must show use of the earlier mark in relation to all the goods invoked as basis of the opposition, as listed above.
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 31/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 31/12/2016 to submit evidence of use of the earlier trade mark. On 22 and 23/12/2016, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
Annex 1, consisting of:
- An affidavit, given on 06/10/2016 by Mr. Ognian Ivanov Donev, executive director of Sopharma AD (the opponent) certifying that the ‘SPASMIL’ mark has been used in connection with products intended for the treatment of pain, temperature and inflammation. The drug received a marketing Authorization for the Ukrainian territory valid from 2003 until 2018. The declaration also contains a table indicating relevant amounts of manufactured products and the sales realized between 2012 and 2014.
- Marketing Authorization renewal certificate, issued on 12/09/2013 and valid until 06/09/2018 for the territory of Ukraine in relation to the pharmaceutical products ‘SPASMIL-M’ and ‘SPASMIL-M’ tablets’.
- Instruction leaflets for the pharmaceutical product ‘SPASMIL-M’ (or ‘СПАЗМИЛ-М’ in the Cyrillic version), containing a description of its relevant characteristics (e.g. composition, posology, side effects). The pharmaceutical preparation is qualified as an analgesic, spasmolytic, cholinolytic and anti-inflammatory drug. The document was approved by the Ukrainian Ministry of Health on 06/09/2013 and modified on 09/10/2015.
- Packaging sample of ‘SPASMIL-M’ in its version of 2011:
Annex 2: a selection of invoices, issued between 2012 and 2014, showing substantial sales figures referring to the export, from Bulgaria to Ukraine, of ‘SPASMIL-M tablets №20’. The opponent submitted three invoices and three packing lists for the year 2012, six invoices and six packing lists for the year 2013, two invoices and two packing lists for the year 2014. On all invoices and accompanying documents, the sign is shown as ‘SPASMIL-M®’, or as ‘СПАЗМИЛ-М®’ in the Cyrillic version.
Annex 3: a selection of warehouse receipts, dated between 2012 and 2015, in particular, six receipts for the year 2012, 6 for the year 2013, 11 for the year 2014, 11 for the year 2015. The documentation refers to ‘SPASMIL-M’ or ‘СПАЗМИЛ-М’ products.
In accordance with Rule 22(3) EUTMIR, the indications and evidence required to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. These requirements for proof of use are cumulative (05/10/2010, T-92/09, ‘STRATEGI’, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. The sufficiency of the indication and proof as to the place, time, extent and nature of use has to be determined by considering the entirety of the evidence submitted.
At this point, the Opposition Division considers it appropriate to begin the assessment of the evidence with the criterion of nature of use.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the sole item of evidence that shows the sign in its registered form, ‘SPASMIL’, is the affidavit given by the opponent’s executive director.
As far as the affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the affidavit are supported by the other items of evidence.
The rest of the evidence, namely the market authorisation, the instruction leaflets, the image showing the packaging of goods, the invoices and the warehouse receipts, does not refer to the mark ‘SPASMIL’ but shows use of ‘SPASMIL-M’ or ‘SPASMIL-M®’ (along with the Cyrillic versions as indicated in the list of evidence). These items of evidence, having a higher probative value for reasons given above, do not support the statements expressed in the affidavit.
Therefore, the evidence shows that the mark is used as a unicum, consisting of the word ‘SPASMIL’ plus the hyphen and the letter ‘M’.
In its observations, the opponent alleges that the additional letter ‘M’ in the actual manner of use of the mark will be perceived by the relevant public as a descriptive indication of the nature of the goods for which the mark is protected. However, the opponent fails to give any further explanation as to the possible reasons of that perception.
According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
The letter ‘M’ is not immediately recognisable as a meaningful term used in relation to pharmaceutical products. In the absence of convincing arguments, let alone evidence to the contrary, it must be considered that the addition of the letter ‘M’ amounts to an addition of a distinctive component.
Another circumstance that casts doubt on the nature of use of the earlier mark in its registered form is the actual manner of use as shown on the invoices: ‘SPASMIL-M®’. The symbol of a ‘registered trade mark’ is added after the denomination ‘SPASMIL-M’, suggesting that ‘SPASMIL-M’ as a whole is the trade mark used for the goods sold.
The opponent argues that, despite the additional letter ‘M’ used with the ‘SPASMIL’ mark, the public will instantly read and perceive the sign as ‘SPASMIL’. The opponent also points out the position of the letter ‘M’ in the end of the mark and the fact that it is separated by a dash. In that regard, the Opposition Division notes that the position of the additional component has to be weighted against all other relevant factors, including the inherent distinctiveness of the mark and the distinctiveness of the additional element.
As explained by the General Court (13/09/2016, T-146/15, Fig. mark, ECLI:EU:T:2016:469, § 28-29), in order to determine if the opponent used the mark in a way that does not alter the distinctive character of the mark in the form in which it was registered, account must be taken of the intrinsic qualities and, in particular, the greater or lesser degree of distinctive character of the earlier mark. The weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark will lose its ability to be perceived as an indication of the origin of the good (see also 24/09/2015, T-317/14, Klement v OHIM — Bullerjan (Form of an oven), not published, EU:T:2015:689, §33).
In the present case, the word ‘SPASMIL’ has a weak distinctive character, since the relevant public will perceive an allusion to ‘spasm’, as sudden and uncontrollable tightening of muscles, the medical disorder that the pharmaceutical preparation at issue treats. This is due to the fact that the word is very close to the equivalent word in the official language in the relevant territory (i.e. Bulgarian), which is ‘spazma’ (‘спазма’). Although the hyphen ‘-’ does not have any distinctive character in itself, it suggests that the letter ‘M’ is a separate element added to the word ‘SPASMIL’.
Considering all the above, the Opposition Division finds that the entirety of the opponent’s submissions does not contain any evidence as to why the addition of the letter ‘M’ would be perceived as a descriptive or otherwise non-distinctive indication of the goods covered by the mark.
Therefore, the additional elements alter the distinctive character of the mark.
In view of the above, the Opposition Division considers that the evidence does not show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
As stated above, the factors of time, place, extent and nature of use are cumulative. This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as the nature of use does not fulfil the legal requirements, it is not necessary to assess the other criteria.
The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Francesca CANGERI SERRANO
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.