CANCELLATION No 15 367 C (INVALIDITY)

Invest Nature, Aale Wee 2, 9647 Doncols, Luxembourg (applicant), represented by Office Hanssens SPRL, Square Marie-Louise 40, bte 19, 1000 Brussels, Belgium (professional representative)

a g a i n s t

Σ.ΚΟΝΤΗΣ-Α.ΤΣΑΜΗ ΟΕ., Μονεμβασίας 56, 14341 Νέα Φιλαδέλφεια, Athens, Greece (EUTM proprietor), represented by Malamis & Associates, Palaia Tatoiou 8, Kifisia, 14564 Athens, Greece (professional representative).

On 04/07/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 428 207 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 428 207 ‘THYMOSEPT’ (word mark), namely against all the goods in Class 3. The application is based on (i) international trade mark registration No 617 947 designating Bulgaria, Germany, Spain, France, Italy, Hungary, Austria, Poland, Portugal, Romania, Slovenia and Slovakia and (ii) Benelux trade mark registration No 539 701, both for the word mark ‘THYMOSEPTINE’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

With the letter dated 27/08/2018, the applicant limited the basis of the invalidity to the following earlier right - Benelux trade mark registration No 539 701.

SUMMARY OF THE PARTIES’ ARGUMENTS

On 31/07/2017 the applicant submitted an application for a declaration of invalidity against the EUTM along with documents substantiating its earlier rights. In its arguments in support of the application, it states that there is a likelihood of confusion because of the similarity between the signs and the goods. According to the applicant, despite the fact that the contested goods belong to different classes, they are still sufficiently similar because they have a common purpose; to maintain ‘mouth and throat hygiene’. The applicant insists that likelihood of association is inevitable because the products could be displayed on the same shelf or in the same department in sales outlets, because its chest syrup is available without prescription. The applicant also refers to the cancellation petition from 14/02/2017, filed by the current EUTM proprietor in Greece, against its international trade mark registration, stressing the proprietor’s arguments for existence of likelihood of confusion between the marks.

On 15/06/2018, the EUTM proprietor submitted a request for proof of use of the applicant’s earlier rights, based on the current invalidity application. Along with the request, the EUTM proprietor submitted observations against the invalidity application. In the observations, it stated that the applicant’s substantiation of its international trade mark registration is insufficient, and pointed out that the other earlier right’s registration certificate lacks translation into the language of proceedings. According to the applicant, the signs are aurally and visually ‘different’ and there is no degree of similarity between the contested goods. The EUTM proprietor outlined the different scope and method of use of the goods under comparison, and the fact that the contested goods are sold in ‘supermarkets, cosmetic stores and are chosen and purchased by the consumer without the help/advice of a professional (doctor or pharmacist)’.

On 27/08/2018 the applicant submitted evidence of use, which will be listed and analysed further in this decision. It also limited the basis of its application to its Benelux trade mark registration for purposes of procedural economy, and submitted a copy of a database extract of the Benelux trade mark registration, in English, for the same mark with a translation of the goods.

The applicant also submitted an additional letter with counter arguments against the EUTM proprietor’s statement that states there is no likelihood of confusion. In support of its observations, the applicant filed the following evidence: a copy of the cancellation petition filed by the current EUTM proprietor in Greece against the applicant’s international trade mark registration, along with its English translation. The applicant outlined that in the aforementioned document, the EUTM proprietor expressed intention to commercialise cough syrup bearing the contested trade mark.

On 02/11/2018 the EUTM proprietor filed observations in reply stating that the application should be considered inadmissible, since the applicant did not submit an English translation of the registration certificate substantiating the earlier right. The EUTM proprietor also disputed the applicant’s proof of use, stating that the sale figures are too low to prove genuine use. Regarding Annex 9, described later in this decision, the EUTM proprietor insisted that it should be considered inadmissible as it neither bears certification or sworn declaration, nor is it clear as to what type of goods the figures refer.

SUBSTANTIATION OF BENELUX TRADE MARK REGISTRATION No 539 701

The adversarial part of the present invalidity proceedings commenced on 10/04/2018. In accordance with Article 82(2)(g) EUTMDR, Articles 16 and 17 EUTMDR shall not apply to proceedings, the adversarial part of which started before 01/10/2017. Since in the present case the adversarial part commenced after this date, on 10/04/2018, the abovementioned regulation and its provisions regarding substantiation of an application for a declaration of invalidity are applicable to the present case.

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

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

According to Article 16(1) EUTMDR, the applicant will present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of the proceedings.

According to Article 16(1)(b) EUTMDR in conjunction with Article 7(2) EUTMDR, within the period referred to above, the applicant must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the application.

In particular, if the application is based on a registered trade mark that is not a European Union trade mark, the applicant must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, or equivalent documents emanating from the administration by which the trade mark was registered — Article 16(1)(b) in conjunction with Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the applicant may provide such evidence by making reference to that source — Article 16(1)(b) in conjunction with Article 7(3) EUTMDR.

According to Article 16(2) EUTMDR, evidence concerning the filing, registration or renewal certificates or equivalent documents, including evidence accessible online, must be in the language of the proceedings or accompanied by a translation into that language. This must be submitted with the applicant’s own motion within one month of filing of the original document.

In the present case, the invalidity application is based on Benelux trade mark registration No 539 701.

On 31/07/2017 the applicant filed excerpts from the official database of the Benelux Office for Intellectual Property in respect of the substantiation of its earlier right in French. These documents were submitted together with the application for declaration of invalidity. On 27/08/2018, and before the closure of the adversarial part of these proceedings, the applicant submitted an extract from the Benelux Office for Intellectual Property, in English. Since the Benelux Office for Intellectual Property provides its service in several languages, the second submission is not considered an English translation of the initially submitted Benelux database excerpt in French as the EUTM proprietor claims, but as an extract of the official Benelux database in English. Evidence proving the existence, validity and scope of protection of the earlier right can be submitted until the closure of the adversarial part of the proceedings.

The translation from French, of the goods, was added by the applicant to the submission form of 27/08/2018. In addition, the same one was also provided along with the cancellation application in the applicant’s observation letter. Moreover, it is evident to the Cancellation Division that the EUTM proprietor comprehended which goods the application is based on, as it provided arguments in relation to the similarity of the goods even before the second submission of the applicant.

Consequently, the applicant submitted the necessary extract of the official database in the language of the proceedings and in due time on 27/08/2018, before the closure of the adversarial part of these proceedings on 08/11/2018.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of filing or, where applicable, priority, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 31/07/2017. The date of filing of the contested trade mark was 13/12/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Benelux from 31/07/2012 to 30/07/2017 inclusive. Since the earlier mark was registered more than five years prior to the date of filing of the contested mark, use of the earlier mark had to be shown also for the period from 13/12/2008 to 12/12/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 5: Chest syrup based on plants.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 27/06/2018, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 27/08/2018 to submit evidence of use of the earlier trade mark.

On 27/08/2018 the applicant submitted evidence as proof of use.

The organisation of the evidence follows the proprietor’s description provided in its observation letter.

The evidence to be taken into account is the following:

• Annexes 1 - 6: Eight invoices dated in 2012. Ten invoices dated in each of the following years: 2013, 2014, 2015 and 2016. Four invoices dated at the beginning of 2017. All of these invoices were issued to buyers with Belgian addresses. The invoices are issued by the company TILMAN S.A., which is a licensee of the applicant’s trade mark, as is evident from its registration certificate. In the invoices, the applicant’s trade mark ‘THYMOSEPTINE’ always appears in capital letters followed by the product’s description, ‘syrup’, and with the same reference number, 1 086 610. The total amount of all the invoices that were issued for this product, has been calculated at about EUR 214 000, for approximately 48 600 units.

• Annex 7: Two images of leaflet samples in Dutch and French dated 01/10/2014, with the therapeutic indications of ‘THYMOSEPTINE’ syrup, where the applicant’s trade mark appears multiple times as .

• Annex 8: Two undated images showing the product, its packaging and its leaflet with instructions for use, where the contested trade mark appears on the product as , and on the leaflet as . The leaflet is in French, while the product’s label contains information in French, Dutch and Slovak.

• Annex 9: Undated table which according to the applicant ‘shows the sales revenue from 2010 to 2017 in Belgium with turnover’ varying from EUR 1 066 014 to EUR 1 474 691, yearly.

The Cancellation Division finds that the abovementioned evidence proves that the earlier trade mark has been genuinely used in the course of trade.

Some of the documents are not dated, such as the packaging sample and the table with sales figures. However, the information contained in the samples of invoices and leaflets clearly refers to both of the relevant periods. In addition, although the applicant did not file an affidavit, it provided an explanation of the submitted proof of use with the observation letter that accompanied them.

The applicant’s goods had been diligently indicated with the trade mark name, the type of medicine and the same identification number in each of the invoices, along with the total units sold that show sufficient sales during the relevant periods. The extent of use is adequately demonstrated in the evidence, which contains sufficient information concerning the commercial volume, length and frequency of use. The invoices show that the place of use is Belgium. This can be inferred from the currency used – EURO, and the addresses of the buyers, which are all in Belgium. Finally, it is evident from the representation of the mark on the product and its packaging that the mark has been used as registered, or at least as a variation, not altering the distinctive character of the mark. Therefore, the evidence as a whole provides sufficient indications to conclude that the earlier trade mark was genuinely used in Benelux during the relevant period, for ‘chest syrup based on plants’.

LIKELIHOOD OF CONFUSION — ARTICLE 60(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.

1. The goods

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 5: Chest syrup based on plants.

The contested goods are the following:

Class 3: Breath freshening sprays; disclosing tablets for personal use in indicating tartar on the teeth; dental bleaching gels; preparations for cleaning dentures; teeth cleaning lotions; dental rinses, non-medicated; non-medicated mouth sprays; non-medicated dentifrices; dentifrices; tooth care preparations; breath fresheners; throat sprays [non-medicated]; mouth [breath] fresheners not for medical use; denture polishes; tooth polish; mouth sprays, not for medical use; mouthwash; breath freshening strips.

As a preliminary remark, according to Article 33(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 3

The applicant’s good in Class 5 is characterised by its medical purpose. Chest syrup based on plants is used as a cough expectorant during colds and has the primary purpose of relieving and curing coughs caused by chest congestion conditions. The contested goods in Class 3, such as breath freshening sprays, dentifrices, mouthwash, throat sprays, belong to oral cavity hygiene and beauty care products. Since, the former has a medical purpose and the latter are intended to prevent disease, they coincide in their purpose. Moreover, the method of use of the goods is also similar, as they are ingested through or applied in the mouth.

Both the applicant’s goods and contested goods might be sold in pharmacies as well as through other commercial outlets, such as beauty shops or special areas of department stores, because the applicant’s product is available without a prescription and they could be offered close to each other in these commercial outlets.

Consequently, the goods under comparison are similar to a low degree as they have the same purpose and they usually coincide in producer, relevant public and distribution channels.

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 to a low degree are directed at the public at large as well as at medical professionals. Since the contested goods in Class 3 are related to oral cavity beauty care or hygiene, they are often recommended by dentists to patients.

It is apparent from the case law that, so far as pharmaceuticals are concerned, the relevant public’s degree of attention is relatively high, whether or not they are issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26).

In particular, medical professionals have a high degree of attention when prescribing medicines, as well as dentists, when recommending products for oral cavity care and hygiene. With regard to non-professionals, they also display a higher degree of attention, regardless of whether the pharmaceuticals or the products are sold with or without prescription, as these goods affect their state of health.

3. The signs

THYMOSEPTINE	THYMOSEPT
Earlier trade mark	Contested trade mark

The relevant territory is Benelux.

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

The contested signs are word marks composed of one verbal element.

The consumer in the relevant territory will perceive the coinciding verbal elements of the marks, ‘THYMO’ and ‘SEPT’, in the entire contested sign and the first nine letters of the earlier sign, respectively, as a combination of two words, ‘thyme’ and ‘septic’. These two words in Dutch, French and German have an identical/similar beginning or are entirely contained in the marks. The meaning of these two components might be associated with specific characteristic of all of the contested goods, except for disclosing tablets for personal use in indicating tartar on the teeth; dental bleaching gels; denture polishes; tooth polish. Therefore, the components are distinctive for the aforementioned goods, while for the rest they are allusive and have weak distinctive character.

The designation of pharmaceutically active ingredients and medicinal products with the suffix ‘-INE’ is common practice in German, French and Dutch languages. Therefore, the ending of the earlier mark is a weak component in relation to all the relevant goods.

However, the weak distinctive character attributed to these components will not contribute any material importance in deciding the likelihood of confusion, as both of the marks contain some of them identically.

Visually and aurally, the marks are highly similar as they only differ in the earlier mark’s suffix (and its sound) ‘-INE’, which is also a weak component. 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.

Conceptually, reference is made to the findings regarding the meaning of the marks, established above. Since only the coinciding components of the signs have a meaning for the public in the relevant territory, the signs are conceptually highly similar.

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.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what was stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for all the contested goods in Class 5, except for disclosing tablets for personal use in indicating tartar on the teeth; dental bleaching gels; denture polishes; tooth polish. For the listed goods the mark has a normal degree of distinctiveness.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks must be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, considering all the circumstances of the case.

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). This applies to the present case because the high aural and visual similarity of the signs outweighs any lower level of similarity between the goods.

The earlier mark has a normal degree of distinctiveness for part of the relevant goods and below average for the rest. The contested goods are similar to a low degree. The targeted public is the public at large and the professional public. The level of attention is considered to be high. The signs are visually, aurally and conceptually highly similar, as they share nine identically placed letters and they only differ in the earlier mark’s suffix, which is typical for pharmaceuticals.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

As the signs are both composed of one verbal element and only differ in the last letters of the earlier mark, which have a weak distinctive character, it is reasonable to assume that consumers would believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public, even taking into account the higher degree of attention, and therefore, the application is well founded on the basis of the applicant’s Benelux trade mark registration. It follows that the contested trade mark must be declared invalid for all the contested goods.

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

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

The Cancellation Division

Plamen IVANOV

Birgit Holst FILTENBORG

Boyana NAYDENOVA

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.