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 27/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 417 288 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

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.

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. 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, 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.

Assessment of evidence

The requirements for proof of use, that the place, time, extent and nature of use must be indicated, are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). Therefore, the opponent is obliged to prove use with reference to each of these requirements.

The final outcome depends on the overall assessment of the evidence in the particular case. All the circumstances of the specific case have to be taken into account and all the materials submitted must be assessed in conjunction with each other. However, since the evidence submitted in the present case is not considered to be sufficient all together, the Opposition Division finds it appropriate to focus the assessment on the extent of use.

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 the 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.

It should also be considered that the evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and the structure of the relevant market (30/04/2008, T‑131/06, Sonia Rykiel, EU:T:2008:135, § 53).

In this respect, the evidence provided by the opponent does not clearly demonstrate that the trade mark is used in a more than ‘token’ use. Aside from the evidence being sparse, it is not possible to make any links unless on the basis of speculation. Article 47 EUTMR requires proof of genuine use of the earlier mark. Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

In the present case, the evidence as a whole is deficient. For example, one order form at one point in time and outside the relevant period to complement some brochures with preparation, revision or expiration dates and some examples of packaging/leaflets showing the sign ‘SINGULAIR’, does not provide the Opposition Division with enough information concerning the commercial volume, the territorial scope, the duration and frequency of use and can hardly be considered corroborative evidence.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). In the case at hand, even though the order form, that bears a date outside the relevant period, demonstrates an amount of 500 items of “Singular 10 mg” amounting to 18.088,00 euros, this evidence is not conclusive. Even if it is true that evidence that relates to a time outside the relevant period can be ‘indirect’ proof, this depends on the range of materials that are provided and indeed, deficiencies in one aspect can be compensated in this regard. However, in the present circumstances, due to the shortcomings of the evidence as a whole, the order form cannot be determined as ‘conclusive’ evidence.

The existence of advertisements, product leaflets, an order form or appearance of the mark in the ‘Rote Liste’ can, at most, make it probable or credible that the goods advertised under the earlier mark were, at least, offered for sale within the relevant territory, but it cannot prove its extent. In this regard, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market. The trade mark has to be used for goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (judgment of 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37). In this respect the evidence is not clear as it does not paint a convincing picture that the mark was used in such a manner that could amount to genuine use.

As regards the SAEGIS report, the opponent explained that this data is provided by an independent provider (IMS Health). However, the extracts only show hits of the trade mark search ‘SINGULAIR’ with which the opponent is not able to prove use of the mark on the market for the relevant goods without any complementary invoices showing actual sales. A mere “sales indication” alone is not conclusive evidence of the extent of use. There is no reliable information about the possibility of buying the products via a website, nor at points of sale. Therefore, this document does not demonstrate, in itself, if, when and to what extent goods bearing the earlier trade mark were distributed within the relevant territory.

The smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opposing party to produce additional evidence to dispel possible doubts as to its genuineness (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 37). Even applying this premise, which is the most favourable situation for the opponent, the Opposition Division notes that the evidence on file refers to use of the goods for ‘asthma’ and other allergy related treatments which relates to a field of medicine that is fairly common, as is the case with sufferers of hay fever for example.

Low turnover and sales, in absolute terms, of a medium- or low-priced product might support the conclusion that use of the trade mark in question is not genuine. This is contrary to the situation with regard to expensive goods or an exclusive market, low turnover figures can be sufficient (decision of 04/09/2007, R 35/2007-2, Dinky, § 22). It is, therefore, always necessary to take the characteristics of the market in question into account (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 51).

Considering the characteristics of the market and the submissions of the opponent, in their entirety, there is no convincing evidence regarding other relevant factors of extent of use (such as extensive geographical scope of use or high frequency or long duration of use) that would offset the rather low quantitative aspect.

As shown above, the requirements for proof of use are cumulative. As the evidence fails to demonstrate sufficient extent of use, there is no need to further examine the other factors of use.

Taking all the above into account, 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 47(2) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vanessa PAGE

Cynthia DEN DEKKER

Francesca DRAGOSTIN

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.