Decision on Opposition No B 2 758 434 page: 3 of 9
100 mg hard capsules and 46.5 mg dispersible tablets. The active ingredient of
these four presentations is diclofenac sodium, which belongs to the group of
non-steroidal anti-inflammatory drugs used to treat pain and inflammation. All
the leaflets are in Spanish and they include the information that the producer of
these goods is the opponent. The dates on which the leaflets were last updated
are given as between January 2014 and February 2017.
Exhibit No 4: data sheets for various presentations of ‘DOLOTREN’ in Spain. The
data sheets contain detailed information about four presentations of
‘DOLOTREN’, namely 100 mg suppositories, 75 mg injectable solution, 100 mg
hard capsules and 46.5 mg dispersible tablets. The active ingredient of these
four presentations is diclofenac sodium. Therapeutic indications: ‘DOLOTREN’
is used for the treatment of pain or inflammatory diseases. The data sheets are
approved by the Spanish Ministry of Health, Social Policy and Equality, which
grants each type of medicine a marketing number. All the data sheets mention
the opponent as the holder of the marketing authorisation for the product. The
dates on which the data sheets were last updated are given as between
January 2014 and February 2017.
Exhibit No 5: invoices dating between 2011 and 2016. A total of 31 invoices dated
between 05/05/2011 and 04/04/2016, issued to pharmacies, hospitals and
wholesalers in various cities, towns and villages in Spain for sales amounting to
between several hundreds and several thousands of euros. The invoices refer
to the trade mark ‘DOLOTREN’ and to the various presentations mentioned in
Exhibits No 3 and No 4. Most of the invoices refer to the relevant products’
national codes, presentations and compositions (e.g. ‘DOLOTREN’ 100 mg
suppositories, 50 mg tablets, 60 g gel).
Exhibit No 6: complete price lists, issued by Faes Farma, S.A., for the years from
2011 to 2016. The price lists are dated between 01/03/2011 and 28/03/2016
and include a range of products under the ‘DOLOTREN’ trade mark, their
compositions and presentations, national codes, laboratory selling prices, retail
prices before taxes and retail prices after taxes. All the prices are in euros.
The invoices, the price lists, the patient information leaflets and the data sheets show
that the place of use is Spain. This can be inferred from the language of the
documents (Spanish), the currency mentioned (euros) and the fact that all the
addresses on the invoices are in Spain. Therefore, the evidence relates to the
Most of the evidence is dated within the relevant period, in particular the invoices, the
price lists, the patient information leaflets and the data sheets.
The documents filed, namely the invoices and the certification of national sales,
provide the Opposition Division with sufficient information concerning the commercial
volume, the territorial scope, the duration, and the frequency of use.
The evidence shows that the mark has been used as registered.
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