OPPOSITION No B 2 397 555

Mylan Inc., 1500 Corporate Drive, Suite 400, Canonsburg, Pa 15317, United States of America (opponent), represented by HGF Limited, 8th Floor, 140 London Wall, London EC2Y 5DN, United Kingdom (professional representative)

a g a i n s t

Chemigrup International Limited Inc., MMG Tower, 16th Floor, 53rd E Street Marbella, World Trade Center, Panama 0832-00232, Panamá (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative).

On 16/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 397 555 is upheld for all the contested goods.

2. European Union trade mark application No 12 424 107 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 424 107. The opposition is based on, inter alia, United Kingdom trade mark registration No 1 403 978, the first of a series of three marks. The opponent invoked Article 8(1)(b), Article 8(4) and Article 8(5) EUTMR.

SUBSTANTIATION OF INTERNATIONAL TRADE MARK REGISTRATION No 1 165 057

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.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier International trade mark registration No 1 165 057 designating Austria, Benelux, Denmark, Finland, France, Germany,  Greece, Ireland, Italy, Portugal, Spain, Sweden and the United Kingdom on which the opposition is based.

On 05/09/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension, on 10/03/2015.

The opponent did not submit any evidence concerning the substantiation of this earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registration No 3 410 685 and United Kingdom trade mark registration No 1 403 978.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 28/05/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and the United Kingdom from 28/05/2009 to 27/05/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

European Union trade mark registration No 3 410 685 for the word mark ‘EPIPEN’

Class 5: Pharmaceutical preparations, sanitary preparations for medical purposes.

Class 10: Apparatus and instruments containing pharmaceutical preparations, substances and medicines, parts and fittings thereof included in class 10.

United Kingdom trade mark registration No 1 403 978, the first of a series of three marks, for the word mark ‘EPIPEN’, hereinafter, United Kingdom trade mark registration No 1 403 978

Class 5: Pharmaceutical preparations, substances and medicines, all for the treatment of insect stings and all contained in hypodermic syringes; all included in Class 5; but not including erythropoetin.

Class 10: Dispensing apparatus and instruments, all containing pharmaceutical preparations, substances or medicines; parts and fittings for all the aforesaid goods; all included in Class 10.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 31/08/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/11/2015 to submit evidence of use of the earlier trade marks. This time limit was extended until 05/01/2016. On this date, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Witness statement from Jeffrey S. Mastrangelo, Senior Director Global Alliance Management of Mylan Inc. dated 05/03/2015 giving information regarding types of products of the opponent’s company; explaining that the ‘EPIPEN’ trademark is applied to adrenaline automatic injection device used for emergency treatment of severe allergic reactions and that it has been available worldwide for more than 25 years and with over 46 million injector devices dispensed worldwide; declaring that the opponent has invested in increasing the awareness of the professional public to anaphylaxis and the EPIPEN auto-injectors in Europe for the years 2011-2014 exceeds 10 million Euros; stating that EPIPEN is the leading auto-injector in European markets with greater than 90% market share of the UK’s adrenaline auto-injectors market.

• Excerpt from www.epipen.co.uk dated 27/02/2015 showing the mark ‘EpiPen’ for an emergency treatment of the signs and symptoms of anaphylaxis and the auto-injector devices to apply this pharmaceutical.

• Leaflet, undated, explaining how to use the auto-injector devise with the mark ‘EpiPen’.

• 6 tables with figures of gross sales in $USD. The table from 2008 refers to Europe as a whole and the tables dated from 2009 to 2013 refers to different European countries, some of them from the European Union such as Austria, Belgium, Czech Republic, Denmark, Finland, the Netherlands, Poland, Slovak Republic, Sweden and the United Kingdom. The documents are of unknown origin and none of them has a reference to the mark. The opponent attributes this figures to the total sales value of ‘EPIPEN’ in Europe.

• Excerpt from www.pharmafield.co.uk with reference to news from March 2011 showing a piece of news which refers to a long-term agreement with the opponent and Meda Pharmaceuticals for the exclusive marketing and distribution rights for the ‘EpiPen’ auto-injector in April 2011. It is informed that EpiPen Auto-Injector is the UK’s market-leading adrenaline auto-injector for the treatment of severe allergic reactions (anaphylaxis) with a 97% market share, according to data from IMS. This article also mentions about the launching of MyEpiPenApp for use with smart phones.

• Press release from the opponent dated 23/12/2010 referring to the above-mentioned long-term agreement.

• Three pamphlets with information about adrenaline auto-injectors proprieties under the mark EpiPen. Two of them from 2013 and the other one not before 2014. The latter can be inferred from the dates of the brochure references. According to the opponent these pamphlets have been distributed inter alia to hospitals, clinics, doctors and emergency personnel for information purposes.

• Excerpt from www.eaaci2014.com showing the opponent as a founder sponsor in the European Academy of Allergy and Clinical Immunology Congress 2014 held from 7 to 11 of June in Copenhagen, Denmark without any mention to the mark.

• Excerpt from www.mylan.com dated 21/02/2012 explaining financial data of the opponent sales figures over the world without specific reference to the European Union data and the sales of ‘EPIPEN’ goods in that territory.

• Excerpt from https://play.google.com/store/apps, dated 23/01/2014 and excerpt from https://itunes.apple.com from 2014 showing a software application developed by the opponent under the name My EpiPlan providing ‘EPIPEN’ users with information about their auto-injector, the symptoms of allergic reaction and how to use their auto-injector. The excerpt shows the mark ‘EpiPen’.

• Excerpts from www.epipen.com.uk and www.epipen.com.nl showing information of the use of the ‘EPIPEN’ auto-injector and anaphylaxis directed to the patients and the healthcare professional public showing the mark ‘EpiPen’.

• Excerpts from https://web.archive.org from 2011, 2012, 2013 and 2014 showing 10, 13, 16 and 16 captures respectively of the EPIPEN website in the United Kingdom and the Netherlands.

• Document showing the inscription on 08/01/2014 of an adrenaline injectable solution under the mark ‘EPIPEN’ in the French official body HAS-Direction de l’Evaluation Médicale, Economique et de Santé Publique.

• Excerpts from www.vidal.fr dated 16/07/2014, http//news.bbc.co.uk dated 03/12/2009, www.bbc.co.uk dated 07/07/2010, www.bbc.co.uk dated 24/10/2011, www.theguardian.com dated 06/05/2013, www.ipswichstar.co.uk dated 13/08/2013, www.pharmafield.co.uk dated February 2001 and www.allergyuk.org dated 12/09/2012 with pieces of news about the use of the mark EpiPen for adrenaline injectors.

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 declaration are supported by the other items of evidence.

Some of the website excerpts show that the place of use is the United Kingdom. This can be inferred from the language of the documents (English) and address of the websites. Therefore, the evidence relates to at least the United Kingdom.

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely, the affidavit, the tables with sales figures from the opponent and the excerpts from websites of independent sources provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use in the United Kingdom. Although the opponent did not submit any invoice and the financial information comes directly from the opponent, this latter has been confirmed and completed by external sources. Moreover, the fact that the opponent has developed its own application for smartphones indicates a use of its mark enough to make such an investment.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark in the United Kingdom.

However, the evidence does not provide the Opposition Division with sufficient information concerning the use of the mark for the European Union. Contrary to what occurs with the evidence relating to the use of the mark in the United Kingdom, the figures regarding the use of the mark in the European Union contained in the opponent’s affidavit are not confirmed nor contrasted by any other mean of evidence submitted by the opponent. Although there are some other evidences relating to France and the Netherlands, these are limited to an inscription in an official register and the announcement of the launching of the mark in France or to the own opponent’s website in the Netherlands. This evidence does not prove sufficient indications to ascertain if there were any actual sales of the goods in question on the market within the relevant period or to what extent the goods have been distributed.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier mark in the European Union.

Consequently, 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) EUTMR and Rule 22(2) EUTMIR as far as it concerns to the earlier European Union trade mark registration No 3 410 685.

The analysis of the proof of use will continue regarding the United Kingdom trade mark registration No 1 403 978.

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 shall 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, most of the evidence shows the use of the mark as ‘EPIPEN’ and ‘EpiPen’. In case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

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 relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory (the United Kingdom).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use at least for adrenaline auto-injectors in Class 10. These goods can be considered to form an objective subcategory of dispensing apparatus and instruments, all containing pharmaceutical preparations, substances or medicines, namely pharmaceutical preparations auto-injectors.

Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for adrenaline auto-injectors.

LIKELIHOOD OF CONFUSION – 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.

1. The goods

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

Class 10: Adrenaline auto-injectors.

The contested goods are the following:

Class 5: Antiviral pharmaceutical preparations.

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 contested antiviral pharmaceutical preparations are drugs or substances used for treating, preventing or alleviating the symptoms of viral diseases. The opponent’s adrenaline auto-injectors are devices for administration of adrenaline. These goods target the same public and coincide in distribution channels. Furthermore, they are complementary. Since the goods covered by the earlier mark consist of devices specially adapted for use with a certain medication, the goods may also have the same producers. Therefore, these goods are considered at least similar to a low degree.

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 goods found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of health. Due to the nature of the goods in question, the degree of attention will be high.

3. The signs

EPIPEN	EPIGEN
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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

The earlier mark is the word mark ‘EPIPEN’.

The contested sign is the word mark ‘EPIGEN’.

Contrary to the applicant’s arguments, the marks as a whole do not have a meaning for the public in the relevant territory. The signs have no elements that could be considered clearly more distinctive or dominant than other elements.

Visually, the signs coincide in ‘EPI*EN’. However, they differ in the consonant in the fourth position in each mark, namely the letter ‘P’ in the earlier mark and the letter ‘G’ in the contested sign.

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.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‘E-PI’ and in the sound of the last letters ‘EN’, present identically in both signs. Moreover, the signs have the same number of syllables. The pronunciation differs in the sound of the letter ‛P’ of the earlier mark and in the sound of the letter ‘G’ of the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs 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 mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are at least similar to a low degree and target both the general public and the business public in health field who will pay a high degree of attention when purchasing, prescribing or selling them.

The signs are highly similar to the extent that they coincide in five out of six letters in each mark. The only differing letter is in the middle of the signs, and thus, less noticeable.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Therefore, on an overall assessment, and in particular against the background of the principle of interdependence, namely that a lesser degree of similarity of the signs may be offset by a higher degree of similarity of the goods, the high similarity of the signs, outweighs the low similarity of the goods being suffice to create a likelihood of confusion within the meaning of article 8(1)(b) EUTMR on the part of both an average and a specialised public with a high degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 1 403 978. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right United Kingdom trade mark registration No 1 403 978 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and Article 8(5) EUTMR.

COSTS

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Lena FRANKENBERG GLANTZ

Victoria DAFAUCE MENÉNDEZ

Sigrid DICKMANNS

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