OPPOSITION No B 2 417 288

Merck Sharp & Dohme Corp., a New Jersey corporation, One Merck Drive 08889, Whitehouse Station, United States of America (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands (professional representative)

a g a i n s t

Singular Nutrition S.L., Torneros 14, Polígono Industrial La Ermita, 45215 El Viso de San Juan (Toledo), Spain (applicant), represented by Polopatent, Dr. Fleming 16, 28036 Madrid, Spain (professional representative)

On 24/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 417 288 is upheld for all the contested goods, namely:

Class 5: Nutritional, vitamin, mineral and dietary supplements; dietetic food and drinks adapted for medical use, for sports nutrition; Dietetic preparations for sports use; nutritional food products for athletes; Nutritional and dietary supplements; Nutritional, energy and protein food supplements; Combinations of vitamins and minerals, multivitamin preparations; Sports energy drinks, sports nutrition drinks, sports nutrition additives and drinks, including powders to be added to an existing drink; Sports nutrition additive to add to an existing drink.

2. European Union trade mark application No 12 897 823 is rejected for all the contested goods. It may proceed for the remaining non contested goods in Classes 29, 30 and 32.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against part of the goods of European Union trade mark application No 12 897 823 , namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 3 422 681 ‘SINGULAIR’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

On 27/07/2018 the Opposition Division rendered a decision that resulted in the rejection of the opposition pursuant to Article 47(2) and (3) EUTMR on the grounds that the evidence submitted by the opponent was insufficient to prove that the earlier trade mark was genuinely used.

The decision was appealed and the Board of Appeal decided in case R 1831/2018-1 on 18/09/2019. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered the following points:

- The opponent submits new evidence.

- The Board may accept facts or evidence submitted for the first time before it only where those facts or evidence are on the face of it, likely to be relevant for the outcome of the case and that the evidence filed by the opponent is clearly relevant since, in particular, it was submitted in order to respond to criticisms raised by the Opposition Division which expressly indicated that the sales indications contained in the report had not been corroborated by ‘complementary invoices showing actual sales’.

- On the basis of the evidence submitted at the opposition and appeal stages, the Board considered that the opponent has duly proved all the requirements set out in Rule 22 CTMIR. The extent of use has been proved by means of sales indications released by a third party and corroborated by invoices. The nature of use has been shown by means of packaging, leaflets and advertisements.

- The Board considered that the goods for which the earlier mark may be ‘deemed to be registered’ within the meaning of Article 42(2) of Regulation (EC) No 209/2009 (now Article 47(2) EUTMR) are ‘pharmaceutical preparations for the treatment of respiratory disorders’.

- The case is remitted to the Opposition Division as the genuine use of the earlier mark must be re-examined on the basis of all the evidence in the file, including the documents filed in the appeal proceedings.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, 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.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark registration No 3 422 681 for the word mark ‘SINGULAIR’ for part of the goods on which the opposition is based, namely for:

Class 5: Medicinal and pharmaceutical preparations and substances; pharmaceutical preparations for the treatment of respiratory disorders; preparations for health care.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant data mentioned above.

The contested application was published on 15/07/2014. 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 from 15/07/2009 to 14/07/2014 inclusive.

On 07/07/2015, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 12/09/2015 to submit evidence of use of the earlier mark.

On 29/01/2016, the Office suspended the opposition proceedings due to the pending revocation case No 10 409C against European Union trade mark registration No 3 422 681 on which the current opposition is based. On 22/12/2015 the Cancellation Division issued decision No 10 409C in which it upheld the application for revocation and revoked the aforesaid registration for all the contested goods in Class 5, which was upheld by the Boards of Appeal in R 367/2016-5 of 06/03/2017. Following that decision the request for proof of use submitted by the applicant in the present proceedings is applicable to the following goods:

Class 5: Medicinal and pharmaceutical preparations and substances for the treatment of diseases of the respiratory system; pharmaceutical preparations for the treatment of respiratory disorders; preparations for health care; sanitary substances.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

The evidence, which was submitted on 08/09/2015 and thus filed during the opposition proceedings, to be taken into account is the following:

 Document nº 1: Two copies of advertisements for the British Medical Journal showing the specifications of SINGULAIR. It contains information of, among others, the coverage area (UK), the date of actual first use of the product (2012) and the therapeutic area (respiratory). The signs ‘SINGULAIR’ and appear. It makes reference to tablets, chewed and granules. The advertisements show the following dates: “date of preparation: February 2012”, 14/02/2012 and “date of preparation: January 2013”.

 Document nº 2: Copy of a package leaflet of SINGULAIR including information on the use of this product to treat asthma and other allergy symptoms. The leaflet also includes a reference to contacts in the UK, Ireland and Malta to report side effects. The marketing authorization holder and manufacturer is Merck Sharp & Dome for the United Kingdom and Ireland and it was revised in November 2014.

 Document nº 3: Copy of an order form in German issued by CHILLA CTS GmbH in Germany on 12/02/2015 and addressed at MDS Deutschland. It includes a description of Singulair 10 mg and the total amount of 18 088,00 Euros.

 Document nº 4: Copies of the Rote Liste from 2010 to 2014 in German. ‘SINGULAIR’ appears under the chapter Antiasthmatika. No translation was provided.

 Document nº 5: Copy of extracts in German from 2010 issued by MSD which includes the sign SINGULAIR®.

 Document nº 6: Samples of packaging in German which includes the signs SINGULAR®, and The word “Asthma” appears and MSD (Merck Sharp & Dohme). According to the opponent, the information was last revised in 2014.

 Document nº 7: Copies of promotional material, in Italian, where the signs and appear. On the first page the following text appears “Prendi il controllo dell’asma”. The opponent provided an English translation, namely “take control of Asthma”. The date 04/07/2014 and “2014” appear.

 Document nº 8: Samples of packaging which includes the sign . The word ‘Asthma’ and MSD are quoted. The expiry date “11-2010” appears.

 Document nº 9: Extracts from the SAEGIS report of 23/06/2015. It presents hits of SINGULAIR of the database Pharma In-Use in different countries of Europe, such as Austria, Belgium, Spain or the United Kingdom. It also includes information such as the Local company, the code description (Anti-Leukotrine Anti-Asthmatics, systemic) and the sales indication of more than 10 000 US$ and 2014 as the year of last recorded sales. According to the opponent, the data contained in this database originates from IMS Health which is an independent, market driven provider of medical information.

Evidence dated 22/11/2018 filed and accepted during the appeal proceedings to be taken into account is the following:

- 7 invoices dated between December 2011 and December 2014, made out to clients in various cities in Italy, in which the ‘SINGULAIR’ product appears. The amounts sold in relation to this product range from 100 to almost 20.000 euro, in total amounting to: 60,322.30 euro.

- 5 invoices dated between October 2011 and May 2015, made out to clients in various cities in France, in which the ‘SINGULAIR’ product appears. The amounts sold in relation to this product range from 50 to more than 12.000 euro, in total amounting to: 29,521.05 euro.

- 9 invoices dated between May 2011 and February 2015, made out to clients in Madrid, Spain, in which the ‘SINGULAIR’ product appears. The amounts sold in relation to this product range from 11.000 to around 620.000 euro, in total amounting to: 5,219,071.51 euro.

- 6 invoices dated between June 2011 and January 2015, made out to clients in two different cities in Germany, in which the ‘SINGULAIR’ product appears. The amounts sold in relation to this product range from 90 euro to almost 1.000 euro, in total amounting to: 9,098.17 euro.

- 5 invoices dated between September 2011 and February 2015, made out to clients in various cities in the United Kingdom, in which the ‘SINGULAIR’ product appears. The amounts sold in relation to this product range from 200 euro to 180.000 GBP, in total amounting to: 371,629.99 GBP.

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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent, both during the opposition and appeal proceedings, has become sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

Concerning the extent of use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, as well as the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

The invoices, in support of the evidence filed during the previous opposition proceedings, show that the places of use are Italy, Spain, France, Germany and the United Kingdom. This can be inferred from the language on the invoices; the currency mentioned (‘EUR’ and ‘GBP’) and the cities to which they are addressed. Therefore, the evidence relates to the relevant territory. Also, the majority of the evidence is dated within the relevant period.

The opponent submitted several invoices, dated between 2011 and 2015 (several invoices per year). The amounts shown in the invoices are significant ranging from thousands to millions of euros. Therefore, the invoices submitted are sufficient to show that there has been a serious and continuous use.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In the present case, the evidence of use filed by the opponent, as listed above, shows use of the signs ‘SINGULAIR’, , and as trade marks to identify the commercial origin of the goods produced by the opponent.

It is clear from the packaging that the earlier mark has been affixed to the goods. Taking this into account, the Opposition Division considers that the evidence shows use of the sign as a trade mark, that is, in accordance with its function.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that 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 47(2) and (3) EUTMR, Article 18 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

The purpose of Article 18(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

The opponent’s earlier mark is the word mark ‘SINGULAIR’. The evidence demonstrates use of the figurative marks in a different font and colour, as shown above, or as word mark on the invoices.

It is appropriate to consider whether the marks as used differ from their registered forms in a way that would affect their distinctive character or, in spite of some differences, the marks as used and their registered forms are essentially the same.

The font and colours are not considered the main contributors to the overall distinctiveness of the signs, since they are mostly decorative. The depiction of the mark in the ways shown above constitutes an acceptable means of bringing the marks in question to the public’s attention and, consequently, does not materially affect the distinctiveness of the element ‘SINGULAIR’.

In view of the above, the Opposition Division considers that the evidence shows use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR. However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by it.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to only part 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.

The evidence shows genuine use in relation to anti-asthma preparations. The goods on which the opposition is based are medicinal and pharmaceutical preparations and substances; pharmaceutical preparations for the treatment of respiratory disorders; preparations for health care in Class 5. As also confirmed by the Board of Appeal, anti-asthma preparations fall within the definition pharmaceutical preparations for the treatment of respiratory disorders and therefore, the earlier mark has been used only for some of the goods for which it is registered.

Therefore, the Opposition Division will consider only the pharmaceutical preparations for the treatment of respiratory disorders in its further examination of the opposition.

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.

a) The goods

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

Class 5: Pharmaceutical preparations for the treatment of respiratory disorders.

The contested goods are the following:

Class 5: Nutritional, vitamin, mineral and dietary supplements; dietetic food and drinks adapted for medical use, for sports nutrition; dietetic preparations for sports use; nutritional food products for athletes; nutritional and dietary supplements; Nutritional, energy and protein food supplements; combinations of vitamins and minerals, multivitamin preparations; sports energy drinks, sports nutrition drinks, sports nutrition additives and drinks, including powders to be added to an existing drink; sports nutrition additive to add to an existing drink.

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.

In the present case the opponent’s goods are used to treat health problems in relation to respiration. The contested goods on the other hand are preparations and supplements designated for carbohydrate, lipid, protein, vitamin, and other metabolism correction.

The contested goods all fall within the category of dietetic substances and food supplements (adapted for medical use) which are substances prepared for special dietary requirements with the purpose of treating or preventing a disease. Bearing this in mind, their purpose is similar to that of pharmaceutical products (substances used in the treatment of respiratory diseases) insofar as they are used to improve a patient’s health. The relevant public coincides, regardless of the fact that the some of the contested goods target athletes, given the fact that the goods generally share the same distribution channels. For these reasons, these goods are considered to be similar.

b) 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 both at the public at large and at business customers with specific professional knowledge or expertise.

Insofar as the goods at issue, whether or not issued on prescription, are concerned, it is apparent from the case-law that the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). Medical professionals have a high degree of attention when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

c) Comparison of the signs and the distinctiveness of the earlier mark

SINGULAIR
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, given that the pronunciation of the words ‘SINGULAIR’ and ‘SINGULAR’ by English-speaking consumers is almost identical, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public, which constitutes the best-case scenario for a likelihood of confusion to occur. In fact, the only small phonetic difference between the signs from the perspective of English consumers is in their last vowel, /AI/ of the earlier mark versus /A/ of the contested sign.

In this respect it should be considered that the word ‘PROTEIN’ of the contested figurative sign directly and unambiguously relates to one of the potential and/or important components of the goods in question, consumers will ascribe little or no trade mark significance to this word as they would merely presume that the goods offered include or could potentially be supplemented with protein (17/10/2012, T-485/10, Miss B, EU:T:2012:554, § 29 and the case-law cited). In that regard, it should be borne in mind that the public will not generally consider a descriptive or highly allusive element, forming part of a complex mark, as the distinctive and dominant element of the overall impression conveyed by that mark (31/01/2013, T-54/12, Sport, EU:T:2013:50, § 30, and 06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 34). Therefore, the element ‘SINGULAR’ is the element on which the consumer will focus and as such refer to the sign thereby also taking into account its size within the sign.

Although ‘SINGULAIR’ has no meaning for the English-speaking public, this part of the public is very likely to associate it with the word ‘singular’ of the contested sign, meaning ‘remarkable’ or ‘unique’, due to its resemblance. Therefore, the word ‘singular’ has a clearly laudatory character, as it conveys the message that the goods provided are of a remarkable or unique quality. Consequently, the association with this concept makes the verbal elements of the two signs weakly distinctive. The fact that the word ‘SINGULAR’ of the contested sign is depicted with a stylized first letter ‘S’ through which a white stripe runs, does not change this, since its nature is decorative.

It is relevant to note that the opponent did not explicitly claim that its earlier mark has an enhanced distinctive character. Therefore based on the inherent distinctiveness, considering that the earlier mark as a whole conveys a laudatory message, as explained above, its distinctiveness is considered less than normal.

Visually, the earlier mark is reproduced exactly in the contested sign, apart from the second ‘I’, which has no counterpart in the contested sign. Furthermore, the first letter ‘S’ of the contested sign’s element ‘SINGULAR’ is somewhat stylized and the element ‘PROTEIN’ has no counterpart in the earlier mark, however, as stated before, this element is likely to be ignored. Despite these differences, it is considered that they do not produce sufficient visual differences to set them apart. It should be borne in mind that the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details. Therefore, small differences in letters are often not sufficient to exclude a finding of visual similarity, particularly when the signs are long and have a common structure.

Therefore, the signs are visually similar to an average degree.

Aurally, the minor difference in the last vowel of the signs’ almost identical common element ‘SINGULAIR’ and ‘SINGULAR’, as explained above, is not likely to be clearly noticed by consumers, given that the signs’ pronunciation is otherwise identical. The element ‘PROTEIN’ of the contested sign will most likely not be pronounced when referring to the sign aurally.

Therefore, the signs are considered to be aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Taking into account that the additional element ‘PROTEIN’ of the contested sign has, if any, a very low degree of distinctiveness, as both signs refer to the analogous concept of ‘remarkable’ or ‘unique’, conveyed by their almost identical common element and bearing in mind its lower than average distinctiveness, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

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.

In the present case, the contested goods have been found similar to the opponent’s goods and they are directed at a public whose degree of attention is considered to be high. The distinctiveness of the earlier mark is less than normal. The earlier trade mark and the contested sign are visually and conceptually similar to an average degree and aurally highly similar.

In addition, although the average consumer of the goods concerned is deemed to have a high degree of attention, it must be borne in mind that even consumers who pay a high degree of attention 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, 21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54). In light of this, it is considered that the minor differences the signs at issue is clearly not sufficient to enable consumers to safely distinguish between them.

Bearing in mind that the relevant goods belong to the same market sector, the relevant public is likely to make a connection between the signs and assume that the goods are different lines of products manufactured by the same producer. It is even conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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

The finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, as in the present case, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited therein; 13/09/2010, T-72/08, smartWings, EU:T:2010:395, § 63 and 27/02/2014, T-25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 422 681 ‘SINGULAIR’. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Loreto URRACE LUQUE

Cynthia DEN DEKKER

Erkki MÜNTER

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.