OPPOSITION No B 2 456 278

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

a g a i n s t

Diagnosis S.A., ul. Generała Andersa 38A, 15-113 Białystok, Poland (applicant), represented by Kancelaria Prawno-Patentowa Rzecznicy Patentowi Dobkowska Iwaniuk Sp. Partnerska, ul. Rycerska 79, 15-157 Białystok, Poland (professional representative).

On 16/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 456 278 is upheld for all the contested goods, namely:

Class 5: Tablets and lozenges; syrups and lollipops for pharmaceutical use; dietary supplements; herbs for medical purposes; Treatment confectionery; all the goods for the treatment of sore throat.

2. Community trade mark application No 13 217 005 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 13 217 005, namely against all the goods in Class 5. The opposition is based on Community trade mark registration No 3 570 884. The opponent invoked Article 8(1)(b) CTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) CTMR, 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.

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 12/11/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 12/11/2009 to 11/11/2014 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 preparations; vaccines.

According to Rule 22(3) CTMIR, 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 30/03/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 17/06/2015 to submit evidence of use of the earlier trade mark. On 02/07/2015, within the extended time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Nos 1-6: copies of invoices for the sale of tens of thousands of units of ‘GARDASIL’ to clients in France (No 1), Germany (No 2), Austria (No 3), Italy (No 4), Spain (No 5) and the United Kingdom (No 6) in 2011-2014.

• No 7: copies of various promotional and information materials for the French-, German- and English-speaking markets mentioning that ‘GARDASIL’ is a human papillomavirus vaccine.

• No 8: report of a Pharma-in-Use search for the trade mark ‘GARDASIL’ confirming sales of the vaccine for more than USD 10 000 in 16 Member States of the EU in the relevant period.

• No 9: website printouts with information concerning the joint venture between the opponent and Sanofi Pasteur, the company that developed ‘GARDASIL’ and launched it on the EU market in 2006.

• No 10: website printout with general information about the ‘GARDASIL’ vaccine.

The invoices and the Pharma-in-Use report show that the place of use is the European Union. This can be inferred from the names of various EU countries in those documents. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely the invoices and the Pharma-in-Use report, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used in the form in which it is registered.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods on which the opposition is based.

According to Article 42(2) CTMR, 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 goods on which the opposition is based are pharmaceutical preparations, vaccines. The evidence shows use of the mark only for human papillomavirus vaccine.

The opponent’s pharmaceutical preparations are a very broad category indeed, within which a number of subcategories can be identified. Bearing in mind the specific goods for which the mark was used, the Opposition Division considers that the pertinent subcategory of pharmaceutical preparations in the present case is vaccines. Therefore, contrary to the opponent’s assertions, it is considered that use was proven not for the broad category of pharmaceutical preparations but only for vaccines.

Regarding the opponent’s vaccines (on which the opposition is based), the Opposition Division considers that, based on their specific nature and purpose, this is already a sufficiently narrow category of goods within which it is not appropriate to make any subdivisions based on different types of vaccines. Therefore, bearing in mind that the mark was effectively used for a human papillomavirus vaccine, it is considered that the mark was genuinely used for vaccines.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the documents submitted by the opponent are sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory, but only for vaccines in Class 5. The assessment of likelihood of confusion will, therefore, be based only on these goods.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 5: Vaccines.

After a limitation by the applicant, the contested goods are the following:

Class 5: Tablets and lozenges; syrups and lollipops for pharmaceutical use; dietary supplements; herbs for medical purposes; Treatment confectionery; all the goods for the treatment of sore throat.

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

The opponent’s vaccines are pharmaceutical preparations typically in the form of injections that enhance immunity against a particular (usually serious) disease. The contested goods can be generally described as pharmaceutical preparations and dietary products for the treatment of sore throat (i.e. a mild disorder). Although these goods satisfy different needs and have different methods of use, they have in general a similar purpose because they are used for treating or preventing a disease and thus improving the medical conditions in people. The goods can have the same commercial origin, distribution channels and retail outlets. Overall, the goods are considered similar to a low degree.

2. The signs

GARDASIL	GARDISAN
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in five out of eight letters placed in the same position, namely ‘GARD*S*’. Furthermore, the marks contain two identical letters that are placed in opposite positions: ‘*A*I*’ versus ‘*I*A*’. Finally, the marks have the same structure and length because they are each composed of a single word containing eight letters. On the other hand, the marks differ in the final letter, ‘L’/‘N’, and in the position of the letters ‘*A*I*’/‘*I*A*’.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the sound of the letters ‛GARD*S*’ present identically in both signs, and to that extent the signs are aurally similar. There is a further similarity in that both signs contain the sound of the letters ‘A’ and ‘I’ in the second half of the marks, although placed in different positions. Each sign is composed of three syllables and, therefore, they have the same length and rhythm when pronounced. The pronunciation differs in the sound of the last letters, ‛L’ and ‘N’ (should the letter ‘N’ be pronounced), and, as mentioned above, in the positions of the vowels ‘A’ and ‘I’ in the second half of the marks.

Conceptually, neither of the signs has a meaning for a large part of 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 for this part of the public.

Nevertheless, it cannot be excluded that, as argued by the opponent, a part of the public will associate the beginning of both marks, ‘GARD*’, with certain meanings, for example ‘(to) guard’ in English, ‘fence’ in Romanian or the Polish word ‘gardło’ meaning ‘throat’. For this part of the public, the signs are, therefore, conceptually similar.

Taking into account the abovementioned visual, aural and, for part of the public, conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The element ‘GARD*’ of the earlier mark will be associated by a part of the public with the notion of ‘(to) guard’. Bearing in mind that the relevant goods are vaccines, it is considered that this element is weak for these goods because it evokes the protective effect of the vaccines. The part of the relevant public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

For the remaining part of the public, the earlier trade mark has no element that is more distinctive than other elements.

The element ‘GARD*’ of the contested sign will be associated by some consumers either with the notion ‘(to) guard’ or with the word ‘gardło’ (meaning ‘throat’). Bearing in mind that the relevant goods are pharmaceuticals and dietary products for the treatment of sore throat, it is considered that this element is weak for all the contested goods. The part of the relevant public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

For the remaining part of the public, the contested sign has no element that is more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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, despite the presence of a weak element in the mark (for a part of the public) as stated above in section c) of this decision.

5. 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 opponent’s goods (vaccines) are typically available only on prescription, which means that they target specialists. The contested goods (products for treating sore throat) are normally sold over the counter without a prescription and target, therefore, the general public.

According to case law, the general public cannot be excluded from the relevant public, including for pharmaceuticals that require a doctor’s prescription prior to their sale to end users in pharmacies. Therefore, the relevant public comprises both the general public and health professionals, such as doctors and pharmacists. Consequently, even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for the general public, since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products at various times (judgments of 09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, §§ 42-45; 26/04/2007, C‑412/05 P, Travatan, EU:C:2007:252, §§ 56-63).

This means that the relevant public in the present case is the general public. The degree of attention of the public will be high because the goods in question are health-related.

6. Global assessment, other arguments and conclusion

The goods are similar to a low degree.

The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the relevant public is high.

The overall impressions created by the marks are similar because they have the letters ‘GARD*S’ in common and contain two further identical letters, ‘A’ and ‘I’, albeit placed in different positions. The length and structure of the marks are the same, both visually and aurally. For a part of the public, there may also be a conceptual link between the marks.

The first parts of the conflicting marks, ‘GARD*’, 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Overall, it is considered that the similarity of the marks is sufficiently pronounced to cause confusion in respect of the goods that are similar to a low degree, especially on the part of the public for which the coinciding element ‘GARD*’ is not weak.

The applicant submitted extensive arguments for the absence of a likelihood of confusion in the present case, essentially based on the differences between the goods (a vaccine sold on prescription versus products for the treatment of sore throat sold over the counter) and the involvement of medical professionals when dealing with the opponent’s vaccines. Nevertheless, it was found in section a) of this decision that the goods are similar to a low degree (i.e. not dissimilar) and in section e) that the relevant public on the part of which likelihood of confusion must be assessed is the general public. Consequently, the opponent’s arguments are not persuasive in the present case.

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

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 3 570 884. It follows that the contested trade mark must be rejected for all the contested goods.

As a final remark, the Opposition Division notes that a partial revocation request for non-use is pending against earlier CTM No 3 570 884. Nevertheless, the request is not directed at vaccines. Consequently, bearing in mind the facts and findings of the present case (in particular the goods on which the opposition is based and the outcome of the assessment of proof of use), it is not necessary to suspend the current opposition proceedings pending the outcome of the revocation proceedings.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Anna BAKALARZ

Vít MAHELKA

María Belén IBARRA DE DIEGO

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.