OPPOSITION No B 2 422 296

Ipsen Pharma S.A.S, 65, Quai Georges Gorse, 92100 Boulogne Billancourt, France (opponent), represented by Hélène Bernard-Boyle, Ipsen Pharma S.A.S, 65, quai Georges Gorse, 92100 Boulogne-Billancourt, France (professional employee)

a g a i n s t

Rottapharm S.P.A., Galleria Unione 5, 20122 Milan, Italy (applicant), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative).

On 25/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 422 296 is upheld for all the contested goods.

2. European Union trade mark application No 13 007 703 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 13 007 703, namely against all the goods in Class 5. The opposition is based on French trade mark registration No 1 501 087. The opponent invoked Article 8(1)(b) EUTMR.

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 mark on which the opposition is based, namely French trade mark No 1 501 087 for the word mark ‘BEDELIX’.

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

The contested application was published on 08/07/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 08/07/2009 to 07/07/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5: Pharmaceutical products.

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 15/06/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/08/2015 to submit evidence of use of the earlier trade mark. On 18/06/2015, following a notification of a restriction to the opponent, this time limit was extended until 18/08/2015. On 17/08/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Exhibit 1: 10 invoices, dated between 16/07/2009 and 4/03/2014, issued by the opponent and addressed to different clients in the territory of France. All the invoices contain a reference to the mark in question, namely ‘BEDELIX’, as well as an indication of the items sold under the trade mark. The invoices concern the sales of the products in two standard packaging forms, namely as units containing 30 or 60 sachets. Furthermore, the total quantity of the products sold for the relevant period and shown in the invoices is over 1000 units.

• Exhibit 2: packaging samples of the medicine sold under the trade mark ´BEDELIX’. The samples are accompanied by patient leaflets with information about the content and the application of the pharmaceutical product, namely as a sort of a medicine for treatment of functional disorders of the colon. The leaflets are available in both languages, French and English.

• Exhibit 3: Extract from a private database, ‘Saegis’, regarding the use of the pharmaceutical product ‘BEDELIX’ together with its inscription number, relevant territory of use, namely France, and sales indication, estimated to ‘more than USD10 000 yearly’. The document was extracted by the opponent at http://saegis.compumark.thomson.com on 6/08/2015.

• Exhibit 4: Publications regarding the pharmaceutical product in ‘VIDAL’, a medical dictionary, whereby the name ‘BEDELIX’ appears as listed in the editions of 2009, 2011 and 2013. According to the opponent the medical dictionary collects medical information about different medicines considered important for the pharmaceutical industry in France.

The invoices, the leaflets and the extracts submitted by the opponent show that the place of use is France. This can be inferred from the language of the documents (French), as well as from the clients addressed in France. Therefore, the evidence relates to the relevant territory.

Furthermore, the evidence is dated within the relevant period.

The documents filed, in particular the invoices and the extracts from various sources, provide the Opposition Division with relevant information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used as registered for the word mark ‘BEDELIX’.

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.

In the present case the invoices submitted by the opponent’s make altogether a reference to the constant income generated by the opponent’s company throughout the relevant period, in particular between 2009 and 2014.

In this respect, reference is made to the applicant’s allegations in its observations that the opponent did not prove use as it did not provide sufficient proof of the commercial volume of the goods sold under the trade mark in question. However, the Opposition Division notes that the Court has stressed that any evaluation of evidence of use does not mean assessing commercial success or reviewing the economic strategy of an undertaking, nor is it intended to restrict trade mark protection where large-scale commercial use has been made of the marks (08.07.2004, T-203/02, Vitafruit, EU:T:2004:225, § 38). The opponent was, consequently, not requested to furnish evidence that will show exquisite records of its sales activities throughout the relevant years but rather to confirm the general commercial outlet of the trade mark in question supporting it with various sorts of evidence that may be taken into account. Furthermore, use of the mark need not be quantitatively significant for it to be deemed genuine. Therefore, the applicant’s argument must be set aside.

In addition, it must be noted that all the relevant evidence must be taken into consideration by the overall assessment and the relevant materials must be assessed in conjunction with each other. Therefore, although pieces of evidence may not constitute themselves a sufficient prove of use, they may contribute to proving use in combination with other documentation and information.

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. The opponent has shown in its evidence that the products sold under the trade mark ‘BEDELIX’ have been marketed during the relevant period and the mark itself was present in an active status as further indicated in some consecutive editions of medical dictionaries, in particular the editions from 2009, 2011 and 2013.

Therefore, taking into account all the furnished evidence the information that the documents show assessed in their entirety is considered sufficient to reach the minimum threshold providing genuine use.

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).

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 earlier mark is registered for the broad category of pharmaceutical products in Class 5. The evidence of use shows that the mark has been used in connection with a specific pharmaceutical preparation, namely medicines for treatment of functional disorders of the colon in Class 5. This specific pharmaceutical preparation is considered an independent subcategory under the more general category of pharmaceutical preparations. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for medicines for treatment of functional disorders of the colon.

Therefore, the Opposition Division will only consider the abovementioned goods 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.

1. The goods

The goods on which the opposition is based and for which use has been proven are the following:

Class 5: Medicines for treatment of functional disorders of the colon

The contested goods, after a limitation, are the following:

Class 5: Nutraceutical compounds for use in the treatment of excess weight; Nutraceutical compounds for use in the treatment of obesity; Nutraceutical compounds for regulating the absorption and metabolism of carbohydrates and fats; Nutraceutical compounds for controlling glycaemic metabolism; Nutraceutical compounds for controlling body weight and glycaemic metabolism; Food supplements for controlling body weight and controlling metabolic syndrome.

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.

Contested goods in Class 5

In the present case, the contested nutraceutical compounds for use in the treatment of excess weight; nutraceutical compounds for use in the treatment of obesity; nutraceutical compounds for regulating the absorption and metabolism of carbohydrates and fats; nutraceutical compounds for controlling glycaemic metabolism; nutraceutical compounds for controlling body weight and glycaemic metabolism, food supplements for controlling body weight and controlling metabolic syndrome are products containing additives which provide extra nutrition value, in particular additives related to controlling and regulating specific medical conditions such as obesity. The opponent’s medicines for treatment of functional disorders of the colon, on the other hand, are pharmaceuticals used by the treatment of the colon, part of the human digestive system. In principle, specific pharmaceuticals are considered similar to other specific pharmaceuticals. In the present case, the opponent’s goods are considered to be similar to the contested goods because they all treat or prevent in a way digestive-related disorders in the human body, or at least, diseases,. Consequently, the goods may coincide in their distribution channels, in particular pharmacies, and may have the same relevant public, in particular patients with disorders in the digestive functions of the body. In addition, the goods may be produced by the same pharmaceutical companies.

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.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (judgments of 15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and quoted case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. With regard to non-professionals, they also show a higher degree of attention, regardless of whether the pharmaceuticals or dietetic substances are sold without prescription, as these goods affect their state of health.

In the present case, the goods found to be similar are directed at the public at large, as well as at the professional public with medical knowledge and expertise, namely pharmaceutics’. As commented above, the degree of attention will be high since pharmaceutic products and dietetic substances have an important impact on health.

3. The signs

BEDELIX	BETULLIX
Earlier trade mark	Contested sign

The relevant territory is France.

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 marks are word marks consisting of a sole verbal element written in upper case letters.

The marks have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘BE***LIX’. However, they differ in their letters placed in the middle, namely ‘DE’ in the earlier mark and ‘TUL’ in the contested sign. However, 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 similar to a high degree.

Aurally, the pronunciation of the signs coincides in the syllables [bé] in their beginnings and [lix] in their endings. The pronunciation differs in the middle syllables [dé] versus [tu]. Account must be taken of the fact that even though the contested sign contains the double letter L, this will not change the identical uttering of the last syllable [lix]. Therefore, the signs have only one differentiating syllable positioned in their middle parts. Therefore, the signs are similar to an average degree.

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.

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

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

The goods have been found similar and the level of attention will be high since pharmaceutical products concerning human health are involved in the assessment.

The signs are word marks consisting of sole verbal elements that have the same two letters in their beginnings, ‘BE’, and the same three letters in their last parts, ‘LIX’. In fact, the only differences between the signs arise from the letters positioned in the middle, ‘DE’ and ‘TU’. In respect of this it must be recalled 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, differences such as two different letters placed between other identical letters, may be easily overlooked or misheard by consumers. This may be the case especially taking into account the nature of the goods in question as pharmaceuticals that may be referred to aurally when purchased in a pharmacy. As illustrated, the contested goods that have been compared are nutraceuticals, that although health-related products may not need a prescription to be freely purchased by the relevant consumer.

In addition, 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.

Therefore, in spite of the differences in the word elements based on the two (or visually three) differentiating characters in non-prominent positions, there is a likelihood of confusion because the visual and aural coincidences are overwhelming.

The applicant argues in its observations that the suffix ‘–LIX’ being the last part of the two signs is a commonly used suffix in relation to pharmaceutical products in France. In support of its argument the applicant refers to several trade mark registrations in France such as ‘ACCULLIX’, ‘BRITENLLIX’, ‘TERAPHLIX’, ‘ALDALIX’, etc.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘-LIX’. Under these circumstances, the applicant’s claims must be set aside.

Furthermore, the applicant claims that the beginning of the contested sign, namely ‘BETULL-‘ will be understood by the French public as the Latin word (Betula) for ‘birch’ and associated with the ingredients of the goods in question and as such is less distinctive. However, the Opposition Division notes that consumers will rarely break down a single verbal element into parts, especially considering the fact that this element has not kept its independence as a meaningful word but would otherwise be rather allusive to it. Furthermore, it cannot be expected that all the relevant public will be familiar with the Latin origin of the word in question and will understand it. Moreover the applicant has not submitted any evidence to prove that the public will perceive ‘BETULL’ as claimed and as such these assertions must also be set aside.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. As regards the case of the Board of Appeal of 01/08/2013, R 837/2012-1, ‘Combiotic’/ ‘COMBIX (FIG.MARK)’) to which the applicant referred to the aural comparison of the signs, it must be noted that the two elements in that case have a different number of syllables, which is not the case here.

As regards the rest of the cases that the applicant referred to, the Opposition Division notes that their findings cannot be directly applied in the same way as they involve different circumstances and factors. For instance, in the Opposition Decision No B 773 541 of 29/07/2007, CEFORAL vs. CERTOFAL, the signs under comparison were found aurally and conceptually dissimilar. In the case of 4/11/2014, R 775/2014-2, MALUMPAZ vs. MARYPAZ, the conflicting goods concerned Classes 18 and 25 and the signs showed dissimilarity on an aural and conceptual level. Likewise, in the rest of the cases referred to in the applicant’s observations, there were striking dissimilarities between the signs on visual, aural or/and conceptual levels or there were more distinctive and weak elements within the signs that had to be taken into account, for example, the decision of 23/06/2010, R 1418/2009-1, TETEMED vs. TENSIMED.

In addition, although the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, even taking into account the high degree of attention, 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 French trade mark registration No 1 501 087. It follows that the contested trade mark must be rejected for all the contested goods.

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

Vanessa PAGE

Steve HAUSER

Benoît VLEMINCQ

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.