CANCELLATION No C 41 941 (INVALIDITY) 

 

SC Romedor Pharma SRL, Str. Dinicu Golescu nr. 26, Jud. Vrancea, Focsani, Romania (applicant), represented by Radu Borlan, Strada Tepes Voda nr. 130, etaj 1, ap. C1, sector 2, Bucuresti, Sector 2, Romania (professional representative)

 

a g a i n s t

 

Perfect Care Distribution, str. Lt. Nicolae Pascu nr. 4, 011017 Bucharest, Romania (EUTM proprietor), represented by Rominvent S.A., 35, Ermil Pangratti Str., 1st Floor, Sector 1, 011882 Bucharest, Romania (professional representative).

 

On 01/02/2021, the Cancellation Division takes the following

 

 

DECISION

 

1.	The application for a declaration of invalidity is rejected in its entirety.

 

2.	The applicant bears the costs, fixed at EUR 450.

 

 

REASONS

 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 10 864 511 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely against all the goods in Classes 5 and 10. The application is based on a non-registered trade mark ’CERVIRON’ used in the course of trade in Romania and Italy. The applicant invoked Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

  

The applicant argues that it has been using the mark ‘CERVIRON’ since 2011, when it signed a contract with the Italian company Innate srl, that manufactured the products under the mark and sold them to the applicant, which distributed them in Romania. It argues that it is the only entity that has the marketing authorization for products under the mark ‘CERVIRON’ in Romania. It puts forward that the EUTM proprietor is one of the big wholesale distributors of pharmaceutical products in Romania and according to the applicant, there is no doubt that it is aware of the fact that the applicant has been using the name ‘CERVIRON’ since 2011, but it nevertheless applied for the contested trade mark and sent a cease and desist letter to the applicant’s manufacturer, Innate. It argues that the EUTM proprietor does not use the contested mark.

The applicant submitted the following documents to support its arguments:

 Annex 1: the cease and desist letter sent by the EUTM proprietor to Innate, dated 11/12/2019.

 Annex 2: a supply agreement between the applicant and Innate for the manufacture of medical products, dated 04/10/2011. The mark ‘CERVIRON’ is specifically mentioned in the Annex.

 Annex 3: revisions of the contract submitted in Annex 2, dated in 2013, 2017 and 2018.

 Annex 4: a declaration of origin and a declaration of conformity regarding ‘Cerviron Ovule’ products and a medical leaflet regarding the product ‘Cerviron ovule’.

 Annex 5: transport documents and invoices issued by Innate for sales of Cerviron products to the applicant, dated between 2011 and 2019.

 Annex 6: marketing authorization issued by the Romanian authority to the applicant for ‘CERVIRON’.

 Annex 7: distribution agreements between the applicant and a Romanian distributor, dated in 2012 and 2018, various Cerviron products are specifically mentioned in the Annexes; several invoices issued by the applicant to the distributor, for Cerviron products, dated in 2018 and 2019.

 Annex 8: three invoices issued by the applicant to Romanian pharmacies for CERVIRON products, dated in 2012 and 2019.

 Annex 9: certificates issued by the Italian authority that certify the compliance of the products ‘Cerviron’ with the EU directives, and a photograph of the product packaging bearing the mark ‘CERVIRON ovule’ and the logo of Innate.

Moreover, the applicant indicated that it wished to rely on online substantiation pursuant to Article 16 EUTMDR for the identification of the contents of the relevant national law. In this context, it provided the following three links:

https://www.anm.ro/nomenclator-dm/f3-display

https://sunnypharma.ro/genitale/8589-cerviron-10-ovule.html

https://farmacia-viridis.ro/cerviron-x-10-ovule

 

The EUTM proprietor quotes the Guidelines of the EUIPO and points out that the applicant relying on the grounds of Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR is obliged to provide the content of the relevant national law, something the applicant did not do. Moreover, the EUTM proprietor contends that the evidence submitted by the applicant to prove use of the non-registered mark shows only insignificant local use and the evidence is especially insufficient as regards use before the filing of the contested mark. It concludes that the application should be rejected.

The applicant argues that the sign ‘Cerviron’ can be considered to be a non-registered trade mark and it refers to Article 6(4)(b) of Romanian Trade Mark Act No 84/1998. It argues that it acquired rights to the name ‘Cerviron’ before the contested mark was filed, as proven by the evidence submitted previously. It puts forward, regarding the condition of proving that it is the person authorized by the applicable law to prohibit the use of the contested mark, that it is the sole holder of the authorization issued by the Ministry of Health and it is the sole distributor of the products in Romania. Furthermore, the applicant contends that the use of the mark is of more than a local significance, as the name has also been used in Italy, through the company Innate. Finally, the applicant specifies that the application is based on the unregistered trade mark, the commercial denomination of the products, ‘Cerviron’, not on the commercial name of the applicant, Romedor Pharma SRL.

The applicant re-sent the previously submitted documents and to further reiterate the extent of use of the non-registered mark, it added the following:

 Annex 10: invoices issued by the applicant in March 2020 for ‘CERVIRON’ and sales report for April 2020, including a statement by an applicant’s business partner regarding sales of ‘Cerviron’ products in Romania in March and April 2020.

The EUTM proprietor reiterates its previous arguments and maintains that the use shown by the documents submitted by the applicant does not constitute use of more than mere local significance in the sense of Article 8(4) EUTMR. The EUTM proprietor also contends that the reference to the legal provision made by the applicant is insufficient in the context of providing information about the national law. It puts forward that the applicant did not mention that as a general rule, unregistered marks are not protected under Romanian law, unless such a mark is well known in Romania. It concludes that the applicant failed to substantiate its application, which must, therefore, be rejected.

 

NON-REGISTERED MARK OR OTHER SIGN USED IN THE COURSE OF TRADE ─ ARTICLE 60(1)(c) EUTMR IN CONNECTION WITH ARTICLE 8(4) EUTMR

 

The application is based on non-registered trade mark ‘CERVIRON’, purportedly used in the course of trade in Italy and Romania, in relation to commercialization/distribution of medical products.

The applicant states, in the application form, that the application is based on a trade name. Trade names are the names used to identify businesses, as distinguished from trade marks that identify goods or services as produced or marketed by a particular undertaking. From the applicant’s observations (in particular those from 17/07/2020 where the applicant explicitly states that the right on which the application is based is a non-registered trade mark, the commercial denomination of the products) as well as from the evidence submitted by it, it is evident that the sign ‘Cerviron’ on which the application is based is a non-registered trade mark and not a trade name, because it clearly identifies particular pharmaceutical products, and not a business entity.

 

According to Article 60(1)(c) EUTMR, a European Union trade mark will be declared invalid on application to the Office where there is an earlier right, as referred to in Article 8(4) EUTMR, and the conditions set out in that paragraph are fulfilled.

 

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to Union legislation or the law of the Member State governing that sign:

 

(a)   rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the     date of the priority claimed for the application for registration of the European Union trade mark;

 

(b)   that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

 

Therefore, the grounds of refusal of Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR are subject to the following requirements:

 

 the earlier sign must have been used in the course of trade of more than local significance;

 pursuant to the law governing it, prior to the filing or the priority date of the contested trade mark, the applicant must have acquired rights to the sign on which the invalidity action is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited must be fulfilled in respect of the contested trade mark.

  

The abovementioned conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the invalidity action based on a non‑registered trade mark or other sign used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

 

The right under the applicable law

 

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it. However, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

 

According to Article 16(1)(b) EUTMDR in conjunction with Article 7(2)(d) EUTMDR, if the application is based on an earlier right within the meaning of Article 8(4) EUTMR, the applicant must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, and a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

 

Therefore, the onus is on the applicant to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the applicant ‘… to provide OHIM [now the EUIPO] not only with particulars showing that it satisfies the necessary conditions of the national law under which protection is sought but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

 

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the proprietor of the contested trade mark to exercise the right of defence.

 

As regards the provisions of the applicable law, the applicant must clearly identify the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 16(1)(b) EUTMDR in conjunction with Article 7(2)(d) EUTMDR). The applicant must provide the reference to the relevant legal provision (article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the EUTM proprietor and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the applicant may provide this evidence by referencing that source (Article 16(1)(c) EUTMDR).

 

As stated above, the onus to provide the necessary information about the applicable national law is on the applicant. The evidence to be submitted must allow the Cancellation Division to safely determine that a particular right is provided for under the law in question as well as the conditions for acquisition of that right. Furthermore, the applicant must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. The evidence must clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark as well as the conditions under which the right may prevail and be enforced vis‑à‑vis a subsequent trade mark.

The only information regarding the relevant national law provided by the applicant is the following:

 

As stated above, the applicant also declared that it wished to rely on online substantiation pursuant to Article 16 EUTMDR for the identification of the contents of the relevant national law and it provided the following three links:

https://www.anm.ro/nomenclator-dm/f3-display

https://sunnypharma.ro/genitale/8589-cerviron-10-ovule.html

https://farmacia-viridis.ro/cerviron-x-10-ovule

However, none of the links leads to any website with information about Romanian law. The first one leads to a website of ‘ANMDMR - Baza Națională de Date a Dispozitivelor Medicale’ and it contains a list of pharmaceutical products available in Romania. The second link leads to a website on which ‘Cerviron ovule’ is offered for sale, and the third website belongs to a Romanian pharmacy, but the link gives a message that the page was not found.

Therefore, the only information about Romanian law available to the Cancellation Division is the above displayed reference to Article 6(4)(b) of Romanian Trade mark Act No 84/1998.

The applicant did not provide a comprehensive and complete image of the national law nor did it submit the original text of the relevant code and a translation thereof; rather, it merely makes a reference to one article, which, moreover, leaves all the relevant questions unanswered. From the applicant’s reference to the law it is not clear what are the conditions of acquisition of a right to a non-registered trade mark (this is particularly relevant in view of the EUTM proprietor’s claim that only well-known unregistered trade marks enjoy protection under Romanian law), what is the scope of protection of non-registered marks and under what circumstances is a holder of such a right entitled to prohibit use of a subsequent trade mark. All these are essential information necessary for the Cancellation Division to be able to assess whether or not the conditions of Article 8(4) EUTMR are fulfilled in the present case. It is not sufficient for the applicant to explain vaguely how the law would be applied, in its opinion, unless it also provides the Cancellation Division with the wording of the relevant parts of the national law, and, if necessary, also how the relevant provisions are interpreted and applied by the national relevant authorities.

The applicant also invoked the non-registered mark used in the course of trade in Italy but it did not provide any information whatsoever regarding Italian law.

It follows from the above that the applicant did not submit sufficient (in case of Romania) or any (in case of Italy) information on the legal protection granted to the type of trade sign invoked. The applicant did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the applicant to be able to prohibit the use of the contested trade mark under the laws in both of the Member States mentioned by the applicant.

 

Therefore, the application must be rejected.

For the sake of completeness, the Cancellation Division acknowledges that the applicant argues that the EUTM proprietor was certainly aware of the applicant’s use of the mark ‘Cerviron’ in Romania, that the EUTM proprietor is not using the contested trade mark and that it sent a cease-and-desist letter to the applicant’s Italian manufacturer. This type of claims are typical for an application based on Article 59(1)(b) EUTMR. However, in the present case, since the applicant does not mention explicitly this ground anywhere, nor does it claim explicitly that the EUTM proprietor acted in bad faith when filing the application for the contested mark, and because it does not elaborate on the abovementioned claims or provides any evidence in their support (except for the cease-and desist letter which it submitted in view of documenting that it has a legal interest in filing the invalidity application), the Cancellation Division considers that it was not the intention of the applicant to base the present invalidity request on Article 59(1)(b) EUTMR.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

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

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. 

 

 

The Cancellation Division

 

Oana-Alina STURZA

Michaela SIMANDLOVA

Carmen SÁNCHEZ PALOMARES

 

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 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.