ENTEROSGEL | Decision 0012412

Date Published: Oct 10, 2017

CANCELLATION No 12412 C (INVALIDITY)

Bioline Pharmaceutical AG, Blegistrasse 5, Baar, Switzerland (applicant), represented by Klára Labalestra, Na Pořičí 12, 11000 Prague 1, Czech Republic (professional representative)

a g a i n s t

Tetyana Taraskina, al. Stanów Zjednoczonych 65/A8, 04-028 Warsaw, Poland (EUTM proprietor), represented by Kancelaria Patentowa, Irena Janicka, Magellana 8/39, 02-777 Warsaw, Poland (professional representative).

On 17/03/2017, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 13 508 817 is declared invalid for some of the contested services, namely:

Class 44: Hygienic and beauty care for human beings or animals.

3. The European Union trade mark remains registered for all the remaining services, namely:

Class 35: Promotion, organisation of demonstrations and exhibitions for commercial or advertising purposes, business management consultancy, commercial information, the bringing together, for the benefit of others, of goods, including pharmaceutical preparations, cosmetics, cosmetic preparations for medical purposes, and dietary supplements, enabling customers to conveniently view and purchase those goods in shops, including online shops.

Class 43: Services for providing food and drink, temporary accommodation.

Class 44: Medical services, Veterinary services.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 13 508 817 ‘ENTEROSGEL’. The application is based on international trade mark registration No 896 788 ‘ENTEROSGEL’ designating the European Union and each of the Member States except Malta. The applicant invoked Article 53(1)(a) EUTMR in connection with Articles 8(1)(b) and (5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

Insofar Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR is invoked, the invalidity applicant argues that the trade marks in conflict are almost identical. The sign ‘ENTEROSGEL’ is an invented sign. Therefore, the earlier international trade mark registration (hereinafter, the earlier IR) enjoys a high distinctive character. Moreover, the applicant claims that the earlier trade mark is reputed or at least has an enhanced distinctive character, in view of the high volume of sales of the goods and the massive publicity.

Regarding the comparison of the goods and services, the applicant submits that there is a connection between the earlier goods in Classes 1, 3 and 5 and the contested services in Classes 35 (promotion, consultancy services, bringing together of goods) and 44 (medical services, veterinary services, beauty care). Finally, as regards the comparison with the contested services in Class 43 (providing food and drink and temporary accommodation), it refers to the interdependence principle alleging the ‘sameness’ of the signs.

In light of the foregoing, the applicant considers that there is a likelihood of confusion.

As regards the ground based on Article 53(1)(a) EUTMR in connection with Article 8(5) EUTMR, the applicant argues that the earlier IR has a reputation in the European Union. The applicant submits evidence to prove the reputation of the IR in the following Member States: Czech Republic, Germany and Poland. In particular, as regards the Czech Republic, the applicant refers to long-term extensive advertising campaigns and user reviews of Czech Internet pages allegedly showing the popularity of the product. The applicant also contends that the product is massively publicized in Poland and Germany. It finally indicates that the World Health Organization recommends ‘ENTEROSGEL’ product as an effective first aid to ailments.

The applicant alleges that the contested mark takes unfair advantage of the distinctive character of the earlier IR, obtained thorough a long-term and wide-spread and promotion, and of its reputation, build among consumers. In this sense, it claims that the consumers may associate the contested mark with the earlier IR. If the level of the contested services is low or combined with pharmaceutical of quality not guaranteed by the applicant, it can cause negative reactions from consumers who will associate the negative experience with the IR.

In support of its observations, the applicant filed the evidence listed below, in the section assessing the reputation of the earlier trade mark.

The EUTM proprietor argues in reply that ENTEROSGEL is not a name invented by the IR proprietor as it was originally protected by a Russian company. Moreover, it claims that the goods and services in conflict are dissimilar: the concept of the services does not comprise production, manufacture and advertising, sales and distribution of the goods. As a result, there is no likelihood of confusion.

With respect to the claimed reputation of the earlier IR, the EUTM proprietor argues that the invalidity applicant has not provided quantitative information on the knowledge of the IR among a sufficiently large group of consumers. Finally, it considers that the applicant has not demonstrated how the contested mark has subdued or degraded the earlier IR.

In support of its observations, the EUTM proprietor filed an extract from the web page TMView with information on the trade mark application No 2002 726 142 ENTEROSGEL, registered by the Russian ROSPATENT on 01/06/2004.

In reply to the EUTM proprietor’s arguments, the invalidity applicant claims that it is irrelevant whether ENTEROSGEL is a term invented by the applicant or not. In any event, it argues that it is the legal successor of TNK Silma, the previous owner of the earlier IR. It refers to the ROMARIN extract already filed. Moreover, it alleges that the EUTM proprietor has acted in bad faith when registering the sign, with the intention to benefit from the fame and good reputation of the earlier IR. Finally, against the goods and services dissimilarity arguments, it refers to its previous submission and the interdependence principle.

In its second round for observations, the EUTM proprietor insists on the fact that ‘ENTEROSGEL’ is not an invented term. It refers to the Global Brand Database where two US trade marks ‘ENTEROGEL’ are registered in Class 5 (it submits print-outs). Secondly, it dismisses the applicant’s arguments regarding bad faith, as there is no relation between the EUTM proprietor and the applicant’s activities. It finally reiterates the dissimilarity of the relevant goods and services.

Finally, the invalidity applicant submits for information a copy of EUIPO decision on opposition B 2 579 855 ENTEROSGEL (Classes 1, 3 and 5)/DETOX-ENTEROSGEL (Classes 1, 3 and 5), confronting the same parties, where the Opposition Division found likelihood of confusion in the United Kingdom. It finally argues that the US trade marks mentioned by the EUTM proprietor are not relevant in this case.

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.

The goods and services

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 goods on which the application is based are the following:

Class 1: Silicon organic compounds; siloxanes.

Class 3: Cosmetic preparations for skin care; beauty masks; cosmetic preparations for hair care; dentifrices

Class 5: Medicines for human and animals; nutritional additives for medical purposes; dietetic foods adapted for medical, purposes; teas for medical purposes; medicinal herbs

The contested services are the following:

Class 43: Services for providing food and drink, temporary accommodation.

Class 44: Medical services, Veterinary services, Hygienic and beauty care for human beings or animals.

Contested services in Class 35

An interpretation of the wording of the list services is required to determine the scope of protection of these services.

The term including, used in the EUTM proprietor’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of in particular see reference in judgment of 09/04/2003, T 224/01, Nu-Tride, EU:T:2003:107).

As a result, the contested services the bringing together, for the benefit of others, of goods, including pharmaceutical preparations, cosmetics, cosmetic preparations for medical purposes, and dietary supplements, enabling customers to conveniently view and purchase those goods in shops, including online shops refer to retail services of a non-exhaustive list of goods.

Retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary.

The Cancellation Division cannot dissect ex officio the broad category of the contested retail services and base the comparison, as argued by the applicant, on the similarities between the retail services given in the specification as examples (that is, retail of pharmaceutical preparations, cosmetics, cosmetic preparations for medical purposes, and dietary supplements) and the earlier goods.

Therefore, the earlier goods in Classes 1, 3 and 5 are dissimilar to the contested services the bringing together, for the benefit of others, of goods, including pharmaceutical preparations, cosmetics, cosmetic preparations for medical purposes, and dietary supplements, enabling customers to conveniently view and purchase those goods in shops, including online shops in Class 35.

The contested promotion, organisation of demonstrations and exhibitions for commercial or advertising purposes, are broadly speaking advertising services. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

The contested business management consultancy and commercial information services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

These services are fundamentally different in nature and purpose from the manufacture of goods in Classes 1, 3 and 5. The earlier goods in Class 1 cover chemical products; the goods in Class 3 cover cosmetics, beauty-care and hygiene-care products; finally, the goods in Class 5 cover medicines and products for medical purposes.

Therefore, promotion, organisation of demonstrations and exhibitions for commercial or advertising purposes, business management consultancy and commercial information are dissimilar to the earlier goods.

Contested services in Class 43

The contested services for providing food and drink mainly cover services of a restaurant or similar services, such as catering, cafeterias and snack bars. These services are intended to serve food and drinks directly for consumption.

These services are fundamentally different in nature and purpose from the manufacture of goods in Classes 1 and 3. Similarly, the contested services are different in nature and purpose to the earlier medicinal products in Class 5. Clearly, the earlier goods do not include foods and drinks generally served in a restaurant or bar. Therefore, the goods and services in conflict are dissimilar.

The contested temporary accommodation covers services aimed at providing lodging for a definite period of time, such as the services provided by a hostel or a hotel. They are different in nature and purpose from the earlier goods. They are therefore dissimilar.

Contested services in Class 44

The contested hygienic and beauty care for human beings or animals are similar to the earlier goods in Class 3 cosmetic preparations for skin care; beauty masks; cosmetic preparations for hair care; dentifrices . The earlier goods and human beauty care services may have the same purpose: both intend to enhance or protect the appearance or odour of the human body or animals. They may be complementary and coincide in end users, as well as distribution channels.

The contested services medical services, veterinary services are services provided by professionals in the health-care field such as doctors, veterinarians provided to third parties.

Even though a certain link cannot be denied between the aforementioned services and the earlier goods medicines for human and animals; nutritional additives for medical purposes; dietetic foods adapted for medical, purposes; teas for medical purposes; medicinal herbs in Class 5 due to the common goal of treating diseases, the differences in nature and especially in the usual origin clearly outweigh any similarities. The relevant public does not expect a doctor to develop and market a drug or a medical product. Therefore, the goods and services are dissimilar.

The contested medical services, veterinary services are even more dissimilar with the earlier chemical products in Class 1 and beauty-care products in Class 3 due to their different nature and purpose.

The signs

ENTEROSGEL

Earlier trade mark

Contested trade mark

The signs are identical.

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).

Some of the contested services in Class 44 have been found similar to the earlier goods in Class 3. The signs are identical.

In light of the identity of the signs and the similarity of the earlier goods with the contested services hygienic and beauty care for human beings or animals, the Cancellation Division finds that there is a likelihood of confusion on the part of the public even with a high degree of attention. Therefore, the application is partly well founded on the basis of the applicant’s IR trade mark registration.

Pursuant to the above, the contested trade mark must be declared invalid for the services found to be similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these services cannot be successful.

In this regard, the Cancellation Division notes that the applicant cannot validly invoke the interdependence principle in order to find the contested services similar to the earlier goods in light of the identity of the signs. According to settled case-law, in assessing the similarity between the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned. The degree of similarity of the conflicting signs or the distinctiveness of the earlier mark is not one of the factors to be taken into account. It is only in the overall assessment on the existence of likelihood of confusion that such factors are taken into account (see 24/06/2014, T-330/12, THE HUT, ECLI:EU:T:2014:569, § 23 and more recently, 22/09/2016, T-512/15 SUN CALI ECLI:EU:T:2016:527§ 52).

There is no need to assess the claimed enhanced degree of distinctiveness of the earlier mark for dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The Cancellation Division will now continue with the analysis of the request for invalidity with regards to the contested services found to be dissimilar to the earlier goods on the basis of Article 53(1)(a) EUTMR in connection with Article 8(5) EUTMR.

REPUTATION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon application for cancellation by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade 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 of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The applicant’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 application is based.

Risk of injury: the 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 cancellation application 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 above mentioned conditions may not be sufficient. The invalidity request may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the present case, the EUTM proprietor 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.

Reputation of the earlier trade mark

According to the applicant, the earlier IR has a reputation in the European Union, Germany, the Czech Republic and Poland.

Reputation implies a knowledge threshold which 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 25/11/2014. Therefore, the applicant was required to prove that the trade mark on which the invalidity request is based had acquired a reputation in Germany, the Czech Republic and Poland prior to that date. The evidence must also show that the reputation was acquired for the goods for which the applicant has claimed reputation, namely for medicines for humans, namely preparation used for treatment of intestinal disorders; nutritional additives for medical purposes; dietetic foods applied for medical purposes.

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.

Together with the invalidity application, the applicant submitted the evidence listed in the section SUMMARY OF THE PARTIES’ ARGUMENTS to support this claim, described more in detail below:

Czech Republic

Examples of advertising campaign in magazines and newspapers (TV magazín, TV pohoda, Blesk pro ženy) dated 2009 (5 examples), 2010 (15 examples), 2012 (31 examples), 2013 (15 examples) and 2014 (7 examples). The evidence contains copies of the advertising of ENTEROSGEL product appearing in the magazines and newspapers such as below. The information is provided in Czech.