OPPOSITION No B 3 023 218

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

Provitim - Paulina Plenkiewicz i Wojciech Florysiak spółka jawna, ul. Stefana Stefańskiego 34, 62-002 Suchy Las, Poland (applicant), represented by Poraj Kancelaria Prawno-Patentowa sp. z o.o., ul. Słowackiego 31/33 lok.1, 60-824 Poznań, Poland (professional representative).

On 14/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 023 218 is upheld for all the contested goods, namely

Class 5: Nutritional supplements for livestock feed; medicated supplements for foodstuffs for animals.

2. European Union trade mark application No 17 286 816 is rejected for all the contested goods. It may proceed for the remaining 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 17 286 816, ‘URINEX’, namely against all the goods in Class 5. The opposition is based on Romanian trade mark registration No 108 948 for the word mark ‘URINEX’. The opponent invoked Article 8(1)(a) and (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 Romanian trade mark registration No 108 948, ‘URINEX’.

The date of filing of the contested application is 04/10/2017. 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 04/10/2012 to 03/10/2017 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 products; hygienic products for medicine; dietetic substances for medical use, infant food; patches and dressings; materials for teeth filling and for dental castings; disinfectants; products for destroying harmful animals, fungicides, herbicides.

According to Article 10(3) EUTMDR, 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 17/08/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 21/10/2018 to submit evidence of use of the earlier trade mark. On 19/10/2018, within the time limit, the opponent submitted evidence of use.

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

• 27 invoices in Romanian, dated between 30/07/2010 and 31/10/2018 containing the trade mark name ‘URINEX’, the quantities sold (several thousands of packs per invoice), price per unit (between RON 8 000 and 10 900) and the total price with and without taxes (reaching considerable amounts, up to RON 96 000 on some invoices); one delivery receipt in Romanian dated 29/09/2008.

• an affidavit in English, dated 21/05/2018 and signed by Dr Maria Malai, Chief Marketing Officer of the opponent containing information on URINEX sales between 1999 and 2017; expenditures relating to promotions of the URINEX products between 2008 and 2017; product description referring to soft capsules used in dissolution and expulsion of urinary stones or as antiseptic and anti-inflammatory drugs for urinary tracts; and images of packaging.

• turnover and sales figures: undated URINEX market share data between 2008 and 2009; an undated list of sales figures and the URINEX market share during the year 2009; an undated list of sales figures and the URINEX market share between 2014 and 2017, all provided by Cegedim, an independent company specialised in pharmaceutical market research; an unverified and undated list of invoices related to marketing reports and promotional expenditures for URINEX between 2008 and 2016; an unverified and undated list of sales figures showing quantity and value of URINEX products sold to warehouses and distributors between 2010 and 2018, all data and documents in English.

• eight screenshots in Romanian from online forums with testimonies of pet owners commenting on the URINEX product (dated between 2006 and 2016);

• samples of products/packaging: 12 screenshots in Romanian from the online archive ‘Wayback Machine’ showing packaging with the URINEX logo and/or product description (referring to soft capsules used in the dissolution and expulsion of urinary stones or as an antiseptic and anti-inflammatory drug for urinary tracts), dated between 2007 and 2013

• advertisements/promotional materials: one notebook cover in Romanian (undated); an image of a bullet pen with the URINEX logo dated 22/10/2014; an undated medical flyer showing an image of packaging and the detailed product description in Romanian; two undated calendar pages in Romanian showing images of URINEX products; one Pharco Pharmaceuticals catalogue dated 2006 in English with URINEX mentioned on page 10.

• others: classification of URINEX for human use dated 2007 and an undated market authorisation for URINEX issued by the Romanian Ministry of Public Health and National Agency of Drugs; two unsigned agreements between the opponent and the company Cegedim dated 28/02/2008 and 20/11/2009 and one signed agreement dated 27/02/2014 (with a subsequent signed amendment dated 17/03/2017) regarding market research services.

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. Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, in particular the invoices, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

As far as the affidavit is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the Member State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant 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 documents such as the invoices, promotional materials and market authorisation or classification of URINEX as a drug, show that the place of use is Romania. This can be inferred from the language of the documents (Romanian), some addresses in Romania or the authority issuing the document. Therefore, most of the evidence relates to the relevant territory.

Some of the evidence, in particular: invoices, market research data, sales figures, fall within the relevant period. However, in its observations the applicant argues that some of the evidence such as the promotional materials, market authorisation, screenshots from online forums or web pages, is either undated or outside the relevant period. 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 during the relevant period of time as well. 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 present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the evidence dated before the relevant period — for example invoices issued by the opponent — show that the use of the earlier mark had already begun before the relevant time period, as claimed by the opponent and corroborated by market data from the independent market research company Cegedim. All these are relevant factors for assessing the extent of use of the earlier mark.

Regarding the extent of use, it is noted that the documents filed, namely the affidavit, the invoices and the market research data, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. In fact, the sales appear to have occurred at regular intervals and have generated stable revenues throughout the years which — in view of their illustrative character — makes the invoices and the market research information suitable to corroborate the data provided in the affidavit and make it possible to draw the conclusion that the use of the earlier mark was consistent over time and effective.

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

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the mark on which the opposition is based is a word mark ‘URINEX’ which has no meaning as a whole in Romanian. Although it refers to the Romanian word ‘urină’ (urine), it should be considered distinctive to an average degree. In the evidence, the earlier mark is represented as a word sign or in a figurative form, as follows:

, or

Considering that the slightly stylised typeface in different colours (mostly white or black) in which the word ‘URINEX’ is written and the different backgrounds against which the word is depicted clearly play a decorative role, the distinctive character of the sign as registered is not affected (12/12/2014, T‑105/13, TrinkFix, EU:T:2014:1070; 23/01/2014, T‑551/12, Rebella, EU:T:2014:30).

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

Therefore, the evidence shows that the mark has been used in accordance with its function and in a form that does not alter the distinctive character of the earlier mark as registered, at least in relation to some of the goods and services for which it is registered.

Although not particularly exhaustive, the evidence in its entirety does reach the minimum level necessary to establish 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 subcategories 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 subcategory or subcategories 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 subcategories.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

In the present case the evidence shows genuine use of the trade marks for some of the goods — Class 5: Pharmaceutical products — and for a subcategory of these goods.

In relation to pharmaceutical preparations/products, according to case-law, the category of pharmaceutical preparations is sufficiently broad for several subcategories to be identified within it.

The concept of pharmaceutical preparations covers goods which are sufficiently different in their intended purpose and end consumers, specific therapeutic indications and channels of distribution, depending on whether they are available on medical prescription or over the counter, for several subcategories to be identified within it (23/09/2009, T‑493/07, T‑26/08 & T‑27/08, Famoxin, EU:T:2009:355, § 35 and 36 with further references).

It follows from this that the subcategory of goods must be determined on the basis of the criterion of therapeutic indication (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 33).

From the evidence filed by the opponent such as the affidavit, product packages or medical flyers and promotional materials, genuine use of the trade mark ‘URINEX’ has only been proven for the following goods:

Class 5: Pharmaceutical products used in the treatment of kidney diseases, urinary tracts inflammation and bladder infections.

The opponent did not file any evidence for the remaining goods for which the earlier mark is registered.

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 are the following:

Class 5: Pharmaceutical products used in the treatment of kidney diseases, urinary tracts inflammation and bladder infections.

The contested goods are the following:

Class 5: Nutritional supplements for livestock feed; medicated supplements for foodstuffs for animals.

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.

The contested nutritional supplements for livestock feed; medicated supplements for foodstuffs for animals are substances prepared for special dietary requirements with the purpose of treating or preventing a disease. Bearing this in mind, their purpose is similar to those of the opponent’s pharmaceutical products used in the treatment of kidney diseases, urinary tracts inflammation and bladder infections, insofar as they are used to improve a health condition (human or animal). The relevant public coincides and the goods generally share the same distribution channels. For the above reasons, these goods are considered similar.

2. The signs

URINEX	URINEX
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and the goods are similar.

In its observations the applicant correctly refers to the fact that insofar as pharmaceutical products, nutritional and medicated supplements are concerned the relevant public’s degree of attention is relatively high, whether or not issued on prescription (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 attentiveness when prescribing medicines. With regard to non-professionals, they also show a higher degree of attention, regardless of whether the goods in question are sold without prescription, as these goods affect the health of a human or animal.

However, this factor is not of particular relevance for identical signs as in the present case. Indeed, in relation to goods that are similar, identical signs do not by definition allow consumers to distinguish between them and this is so regardless of the degree of attention displayed by the public and of the degree of distinctiveness of the signs. Therefore, these factors are immaterial for the sake of establishing likelihood of confusion between identical signs.

The signs were found to be identical and the contested goods were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must be upheld for these goods. Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 108 948. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Plamen IVANOV

Arkadiusz GORNY

Cindy BAREL

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.