OPPOSITION No B 2 947 219

S.C. Pharco Impex 93 S.R.L, Str. Coriolan Marcius, Nr. 23, Sector 5, Bucuresti, Romania (opponent), represented by Anna Nicoleta Costache Demes, Str. Constantin Lacea nr 12-14, Biroul 2, 500112 Brasov, Romania (professional representative)

a g a i n s t

ADW-Betreuung Nord UG (haftungsbeschränkt), Neuer Wall 63, 20354 Hamburg, Germany (applicant), represented by Leo Schmidt-Hollburg Witte & Frank Rechtsanwälte Partnerschaftgesellschaft mbB, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).

On 06/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 947 219 is upheld for all the contested goods, namely

Class 5: Dietary foods, food supplements and preparations for medical purposes; dietetic substances adapted for medical use based on amino acids, trace elements, minerals, mineral substances, vitamins, pro-vitamins, with added enzymes and other customary dietary ingredients, including being based on plants (plant fibres); dietetic food for healthcare, adapted for medical use, based on amino acids, vitamins, minerals, trace elements, either singly or in combination, including in combination with other ingredients; dietetic substances adapted for medical use; food supplements; dietetic foods adapted for medical use; dietetic foods for use in clinical nutrition; dietetic food adapted for medical use, based on fats, fatty acids, carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination; dietary supplements not adapted for medical use based on fats, fatty acids, carbohydrates, roughage, with added vitamins, minerals, trace elements, either individually or in combination; foodstuffs and dietetic substances for medical or veterinary purposes; infant formula; nutraceuticals for use as a dietary supplement; meal replacement and food supplement drink mixes; medical preparations for body and beauty care, medical preparations for care and cleaning of the hair; medicated bath and shower preparations; medicated sun screens; medical preparations for the prevention of skin ageing, medical substances being bases for ointments; mineral food supplements, dietary supplements for medical use in liquid form; food supplements for non-medical purposes; health food supplements for persons with special dietary requirements; dietary supplements, not for medical purposes, with a base of protein, fats, fatty acids, with added vitamins, minerals and trace elements, either singly or in combination; nutritional supplements; glucose dietary supplements; food supplements, consisting of vitamins, amino acids, minerals and trace elements; nutritional supplements; protein dietary supplements; dietary supplements for humans and animals; food supplements; plant extracts being dietetic supplements for medical purposes, namely edible plant fibres; pharmaceuticals; healthcare preparations for medical purposes; combinations of vitamins and minerals; vitamin preparations in the nature of food supplements; health food supplements made principally of vitamins; vitamins and vitamin preparations.

2. European Union trade mark application No 16 186 512 is rejected for all the contested goods. It may proceed for the remaining non-contested goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 186 512 for the word mark ‘Gynomol’, namely against all the goods in Class 5. The opposition is based on Romanian trade mark No 108 719 for the word mark ‘GYNOZOL’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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 the trade mark on which the opposition is based, namely Romanian trade mark No 108 719 for the word mark ‘GYNOZOL’.

The date of filing of the contested application is 20/12/2016. The opponent was, therefore, required to prove that the trade mark on which the opposition is based was put to genuine use in Romania from 20/12/2011 to 19/12/2016 inclusive.

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 relevant date mentioned above.

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 and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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.

On 05/04/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 10/06/2018 to submit evidence of use of the earlier trade mark. On 17/01/2018 and 08/06/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

 various documents, such as promotional leaflets, presentations, and extracts from Romanian public authorities (i.e. the National Agency of Medicines) providing a description of the goods under the mark ‘GYNOZOL’, as vaginal capsules and vaginal creams used for treating vaginal and vulvovaginal candidiasis, mycotic vulvovaginitis and leukorrhea, and describing the goods as soft vaginal capsules, with anti-infective and gynaecological antiseptic properties, available on prescription only. The product is presented in the following packaging .

 sales figures for the product ‘GYNOZOL’ in Romania for the period 1999-2017. In 2011, 127 632 boxes were sold for USD 188 447; in 2012, 131 599 boxes for USD 247 581; in 2013, 126 024 boxes for USD 161 414; in 2014, 64 630 boxes for USD 87 617; in 2015, 119 693 boxes for USD 129 122; in 2016, 59 922 boxes for USD 66 957. For the years 2014-2016 there is additional data concerning sales from the company ‘Cegedim’, an independent company specialised in pharmaceutical market research activities and providing data on product sales in pharmacies.

 invoices (dated 2010–2018) for the sale of ‘GYNOZOL’ to different distributors in different areas of Romania, in quantities such as 180 to 8 694 boxes (a value of between EUR 200 to EUR 7 000 or more). The mark is referred to, for example, as ‘GYNOZOL 400MG X34’ or ‘GYNOZOL 200mg x6’.

 screenshots (2018) from online pharmacies and forums in Romanian, commenting on the opponent’s goods under the mark ‘GYNOZOL’.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR, in force before 01/10/2017). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely the invoices, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The applicant, furthermore, argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices show that the place of use is Romania. This can be inferred from the language of the documents (Romanian), the currency mentioned (Romanian lei) and some addresses in Romania. Therefore, the evidence relates to the relevant territory.

A substantial part of the evidence is dated within the relevant period.

The documents submitted, namely the invoices and the sales figures, 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 accordance with its function and as registered. The earlier mark is a word mark and the trade mark as used appears on the packaging of the goods in standard font and colour.

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 is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those 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, § 45‑46.)

In the present case, the evidence proves use only for vaginal capsules and creams used for treating vaginal and vulvovaginal candidiasis, mycotic vulvovaginitis and leukorrhea. These goods can be considered to form an objective subcategory of pharmaceutical preparations, namely anti-infective and antiseptic pharmaceutical preparations for gynaecological use. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for anti-infective and antiseptic pharmaceutical preparations for gynaecological use.

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: Anti-infective and antiseptic pharmaceutical preparations for gynaecological use.

The contested goods are the following:

Class 5: Dietary foods, food supplements and preparations for medical purposes; dietetic substances adapted for medical use based on amino acids, trace elements, minerals, mineral substances, vitamins, pro-vitamins, with added enzymes and other customary dietary ingredients, including being based on plants (plant fibres); dietetic food for healthcare, adapted for medical use, based on amino acids, vitamins, minerals, trace elements, either singly or in combination, including in combination with other ingredients; dietetic substances adapted for medical use; food supplements; dietetic foods adapted for medical use; dietetic foods for use in clinical nutrition; dietetic food adapted for medical use, based on fats, fatty acids, carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination; dietary supplements not adapted for medical use based on fats, fatty acids, carbohydrates, roughage, with added vitamins, minerals, trace elements, either individually or in combination; foodstuffs and dietetic substances for medical or veterinary purposes; infant formula; nutraceuticals for use as a dietary supplement; meal replacement and food supplement drink mixes; medical preparations for body and beauty care, medical preparations for care and cleaning of the hair; medicated bath and shower preparations; medicated sun screens; medical preparations for the prevention of skin ageing, medical substances being bases for ointments; mineral food supplements, dietary supplements for medical use in liquid form; food supplements for non-medical purposes; health food supplements for persons with special dietary requirements; dietary supplements, not for medical purposes, with a base of protein, fats, fatty acids, with added vitamins, minerals and trace elements, either singly or in combination; nutritional supplements; glucose dietary supplements; food supplements, consisting of vitamins, amino acids, minerals and trace elements; nutritional supplements; protein dietary supplements; dietary supplements for humans and animals; food supplements; plant extracts being dietetic supplements for medical purposes, namely edible plant fibres; pharmaceuticals; healthcare preparations for medical purposes; combinations of vitamins and minerals; vitamin preparations in the nature of food supplements; health food supplements made principally of vitamins; vitamins and vitamin preparations.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 contested pharmaceuticals; healthcare preparations for medical purposes include, as broader categories, or overlap with, the opponent’s anti-infective and antiseptic pharmaceutical preparations for gynaecological use. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested dietary foods, food supplements and preparations for medical purposes; dietetic substances adapted for medical use based on amino acids, trace elements, minerals, mineral substances, vitamins, pro-vitamins, with added enzymes and other customary dietary ingredients, including being based on plants (plant fibres); dietetic food for healthcare, adapted for medical use, based on amino acids, vitamins, minerals, trace elements, either singly or in combination, including in combination with other ingredients; dietetic substances adapted for medical use; food supplements; dietetic foods adapted for medical use; dietetic foods for use in clinical nutrition; dietetic food adapted for medical use, based on fats, fatty acids, carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination; dietary supplements not adapted for medical use based on fats, fatty acids, carbohydrates, roughage, with added vitamins, minerals, trace elements, either individually or in combination; foodstuffs and dietetic substances for medical or veterinary purposes; nutraceuticals for use as a dietary supplement; meal replacement and food supplement drink mixes; medical preparations for body and beauty care, medical preparations for care and cleaning of the hair; medicated bath and shower preparations; medicated sun screens; medical preparations for the prevention of skin ageing, medical substances being bases for ointments; mineral food supplements, dietary supplements for medical use in liquid form; food supplements for non-medical purposes; health food supplements for persons with special dietary requirements; dietary supplements, not for medical purposes, with a base of protein, fats, fatty acids, with added vitamins, minerals and trace elements, either singly or in combination; nutritional supplements; glucose dietary supplements; food supplements, consisting of vitamins, amino acids, minerals and trace elements; nutritional supplements; protein dietary supplements; dietary supplements for humans and animals; food supplements; plant extracts being dietetic supplements for medical purposes, namely edible plant fibres; combinations of vitamins and minerals; vitamin preparations in the nature of food supplements; health food supplements made principally of vitamins; vitamins and vitamin preparations are at least similar to the opponent’s anti-infective and antiseptic pharmaceutical preparations for gynaecological use. These goods have the same purpose (treating or preventing disease), share the same distribution channels and target the same relevant public.

The contested infant formula is similar to a low degree to the opponent’s anti-infective and antiseptic pharmaceutical preparations for gynaecological use. These goods have the same purpose (preventing disease) and are distributed through the same channels.

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 identical or similar (to varying degrees) are directed at the public at large and at a professional public with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, 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).

In particular, 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.

The same can be said for the remaining goods in Class 5, as those goods affect one’s health and, consequently, the degree of attention will be high.

c) The signs

GYNOZOL	Gynomol
Earlier trade mark	Contested sign

The relevant territory is Romania.

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).

Both the earlier mark and the contested sign are word marks. This means not only do they not claim any particular figurative element or appearance, but also that differences in the use of lower- or upper-case letters are immaterial, even if lower-case and upper-case letters alternate (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57).

A part of the relevant public might see the beginning of the signs ‘GYN’ as an indirect reference to ‘gynaecology’. For this part of the relevant public, the distinctiveness of this element is below average, as it alludes to the purpose of the goods. However, as the Romanian prefix is ‘GINECO-’, used in words like ‘ginecolog’, ‘ginecologie’ or ‘ginecologic’, there is also a significant part of the relevant public that will not notice the element ‘GYN’ and that will perceive the entire signs as meaningless. For this part of the relevant public, the distinctiveness of the verbal elements of the signs is normal.

Visually and aurally, the signs coincide in the letters/sound of the letters ‘GYNO*OL’. However, they differ in their fifth letters, ‘Z’ in the earlier mark and ‘M’ in the contested sign. As these letters are positioned in the middle of coinciding letters, rather than at the end of the signs, this difference might not be noticed.

Therefore, for the part of the relevant public that will perceive both signs as meaningless, the signs are visually and aurally highly similar. For the remaining part of the relevant public, the signs are visually and aurally similar to an average degree, as, although their beginnings have a lower than average distinctiveness, they only differ in one letter.

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

For the part of the relevant public that will associate the beginnings of the signs, ‘GYN’, with ‘gynaecology’, which has below-average distinctiveness, the signs are conceptually similar to a low 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) 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 containing an element with below-average distinctiveness for part of the relevant public.

e) 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. 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 (see, to that effect, 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 earlier mark has an inherent normal degree of distinctiveness. The relevant public is the public at large and the professional public, and the level of attention is high.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The conflicting goods are partly identical and partly similar (to varying degrees).

The signs are, for part of the relevant public, visually and aurally similar to a high degree, for another part of the relevant public they are visually and aurally similar to an average degree. For part of the relevant public, the signs are conceptually similar to a low degree, for another part of the relevant public the conceptual aspect does not influence the assessment of the similarity of the signs, as both signs, as a whole, will be perceived as meaningless.

Taking into account all relevant factors, and especially the similarity between the signs due to the fact that they only differ in their fifth letter out of seven, it is considered that the relevant public, which has an imperfect recollection of the marks, might be led to believe that the identical and similar (to varying degrees) marks come from the same or economically linked undertakings, even with a high degree of attention.

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

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark No 108 719. It follows that the contested trade mark must be rejected for all the contested goods. According to the interdependence principle mentioned above, the low degree of similarity between some of the goods is counterbalanced by the higher similarity between the signs.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Chantal VAN RIEL

Saida CRABBE

Michal KRUK

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.