OPPOSITION No B 3 027 391

Laboratorios Ern, S.A., C. Perú, 228, 08020 Barcelona, Spain (opponent), represented by Ponti & Partners, S.L.P, C.Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

ICA AB, Svetsarvägen 16, 171 93 Solna, Sweden (applicant), represented by Nihlmark & Zacharoff Advokatbyrå AB, Regeringsgatan 67 4 TR Stockholm, Sweden (professional representative).

On 12/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B027 391 is partially upheld, namely for the following contested goods:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions; non-medicated dentifrices.

2. European Union trade mark application No 17 333 221  is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 333 221 for the figurative mark , namely against all the goods in Classes 3, 5, 16 and 34. The goods in Class 5 were subsequently eliminated from the specification by the applicant. The opposition is based on Spanish trade mark registrations No 70 127 and No 3 642 068, or the word marks ‘RYM’ and ‘R Y M’ respectvely. 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 one of the trade marks on which the opposition is based, namely Spanish trade mark registration No 70 127 for the word mark ‘RYM’.

The date of filing of the contested application is 13/10/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 13/10/2012 to 12/10/2017 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 marks for the goods on which the opposition is based, namely the following:

Class 1: Chemical preparations.

Class 5: Biological and pharmaceutical preparations.

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 14/08/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 19/10/2018 to submit evidence of use of the earlier trade marks. On 18/12/2018, after an extension granted by the Office and within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

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

 Document nº 1: Printout dated 18/12/2018 of the opponent´s web page showing some ‘RYM’ products and explanations regarding their main components and purpose. The documents contain images of the products as commercialised:

,

, and states that the goods are intented to ‘reduce the time of wound and improve the quality of the scar’ , ‘wound healing action in first and second degree burns, vascular and metabolic ulcers and pressure scores, especially those at risk of infection’ or ‘helps restore the natural barrier of the skin…in case of sunbun and erythema, redness’. This document also contains a list of search results for the words ‘rym laboratorios ern’ dated between 15/01/2013 and 01/07/2017.

 Document nº 2: About 69 invoices, issued by the company ‘LABORATORIOS ERN S.A.’ during the years 2013 to 2017. All the invoices show sales of the pharmaceutical products ‘RYM cicatrizante’ and ‘RYM quemaduras’ to different persons and pharmacies with addresses in Spain.

 Document nº 3: A list of search results for the terms ‘RYM LABORATORIOS ERN’, showing online pharmacies such as www.pharmabuy.es, www.farmahouse.com or www.farmawonder.es as well as printouts dated 18/12/2018 of the web pages of said online pharmacies ( ‘PHARMABUY’, ‘FARMACIABA’, ‘FARMACIA.es’, ‘FARMAHOUSE.COM’ OR ‘FARMAWONDER’), offering the products ‘product ‘RYM cicatrizante’, ‘RYM plata’ and ‘RYM quemaduras’ with prices expressed in euros.

Place of use

The invoices show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned in the invoices (Euros), and the clients´ addresses (in different cities in Spain). Therefore, the evidence relates to the relevant territory as regards the earlier Spanish mark.

Time of use

The invoices are dated within the relevant period and show a continued use of the sign on the marketplace in Spain, at least since 2013.

Nature of use

The documents filed, namely the invoices, and the printouts from online pharmacies provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

In addition, the evidence shows that the mark has been used in accordance with its function and as registered, on the invoices and on the packaging of the goods. The minimal stylisation of the verbal element on the packages is a standard market practice and constitutes a valid use of a word mark.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The opponent submitted examples of packaging of products as well as invoices which certainly show use of the earlier mark in relation to certain pharmaceutical products.

The Opposition Division is of the opinion that the evidence, in particular the numerous invoices give sufficient information regarding the extent of use of the mark. The evidence shows that the opponent sold its goods uninterruptedly and regularly throughout a great part of relevant period and in many different cities in Spain.

The Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

It is not possible to determine a priori, the threshold for use to be considered genuine. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

Overall, the number of units sold is sufficiently large and the volume and frequency of use of the mark throughout the relevant period and territory is far from being token. Therefore, the use of the trade mark was sufficient.

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 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 submitted show that the earlier mark has been used by the opponent for pharmaceutical preparations with wound healing.

These goods can be considered to form an objective subcategory of pharmaceutical preprations. Therefore, the Opposition Division considers that the evidence shows genuine use of the Spanish trade mark registration No 70 127 only for pharmaceutical preparations for wound healing.

a) The goods

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

Spanish Trade mark registration No 70 127 (1)

Class 5: Pharmaceutical preparations with wound healing.

Spanish Trade mark registration No 3 642 068 (2)

Class 3: Perfumery products; cosmetics; soaps, essential oils; essential oils for personal use; aromas (essential oils); scented water; eaux de cologne; perfumes; toilet water; shower gels; bathing salts; body deodorants; skin-care cosmetics ; spraying products (perfumes); products to perfume the room; impregnated towels with cosmetic lotions; body oil (cosmetics); scented oils; impregnated pads with scented substances; impregnated pads with perfumed substances; air fresheners; aromatising for fragrances; skin balms (non-medical); body emulsions; bath herbs; perfumed body lotions; room perfumes in spray form; skin care preparations; perfumed preparations; room fragrancing preparations; aromatised body spray; cologne impregnated disposable wipes; ointments (non-medical); non-medical preparations for the relief of sunburn; cosmetic preparations for protection against sunburn; suntan lotions; sun blocking lipsticks (cosmetics); compounds for skin care after exposure to the sun rays; after-sun oil (cosmetics); sunscreen preparations; after-sun lotions; sunscreen lotions; cosmetics patches containing sun screen and sun block for use on the skin; sunscreens; dermatological creams (other than medicated); skin care creams other than medicated; skin care preparations; skin fresheners.

Class 5: Pharmaceutical and veterinary preparations; hygiene and sanitary preparations for medical use; disinfectants; preparations for destroying vermin; fungicides; herbicides; preparations for destroying insects; insecticides; mosquito repellents; insects repellents in the form of bracelets, anklets, neck kerchief, necklaces, and parches; pain relievers; balm for medical use; preparations for pain, itching and skin irritation relief caused by insect bites; impregnated towels with pharmaceutical lotions; impregnated towels with insects repellents; burn dressings; pharmaceutical preparations for treating sunburn; pharmaceutical preparations for skin care; sunburn ointments; body cream (medicated); creams (medicated) for the lips; pain relief creams; skin care creams for medical use; protective creams (medicated); bandages for skin wounds; wound dressings; dermatological preparations; dermatological products.

After a limitation by the applicant on 28/03/2019, the contested goods are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions; non-medicated dentifrices.

Class 16 : Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; artists' and drawing materials; paint brushes; instructional and teaching material; plastic sheets, films and bags for wrapping and packaging; printers' type; printing blocks.

Class 34: Tobacco; smokers' articles; matches

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 3.

Perfumery, essential oils are identically contained in the opponent´s list of goods in Class 3 of Earlier mark nº 2 and the contested list.

The contested non-medicated soaps are included in the opponent´s broader category of soaps in Class 3 of earlier mark nº 2. Therefore, they are identical.

The contested non-medicated cosmetics, non-medicated hair lotions are included in the opponent´s broader category of cosmetics in Class 3 of earlier mark nº 2. Therefore, they are identical.

The contested non-medicated dentifrices are contained in the opponent´s broader category of toiletries in Class 3 of earlier mark nº 2. Therefore, they are identical.

The contested bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations are similar to the opponent´s soap in Class 3 of earlier mark nº 2 as they usually coincide in producer, relevant public and distribution channels.

Contested goods in Classes 16 and 34

The contested goods in Class 16 mainly include paper and goods made from that material as well as office requisites. The contested goods in Class 34 are tobacco and smoker´s articles.

To that extent, the Opposition Division sees no relevant points in common with the opponent´s goods. In particular, they have clearly different purposes, methods of use, distribution channels and producers. In addition, they are neither complementary nor in competition. Therefore, they are dissimilar.

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 and similar are directed at the public at large whose degree of attention is considered to be average.

c) The signs

R Y M (earlier mark Nº 1) RYM (earlier mark Nº 2)
Earlier trade marks	Contested sign

The relevant territory is Spain.

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).

Neither ‘RYM’ from the earlier marks nor ‘RIMI’ from the contested one have a meaning in the relevant territory and are both, distinctive to an average degree.

In the contested sign, ‘RIMI’ is depicted in slightly stylised and white letters into a red label, that is usually used in market and lacks any distinctive character. The figurative elements, placed in the right hand side of the verbal element, lack any specific meaning and are therefore distinctive to an average degree. In any event, at this regard, it is worth reminding that when a sign consists of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign has no element that could be considered visually more dominant (eye catching) than others.

Visually, the signs coincide in the presence of letters ‘R*M*’ placed in the same positions. They differ in the letters ‘Y’ in the earlier marks versus ‘I’ in the contested one and in the additional letter ‘I’ placed at the end of the mark applied for The fact that earlier mark Nº 1 is represented with little spaces between the letters has not a significant impact on consumers. The signs also differ in the figurative elements of the contested sign that will have a lesser impact for reasons already explained.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /RIM/ as in the relevant territory , letter /I/ and /Y/ are pronounced identically. The signs, only differ in the final sound /*I/, only present in the contested sign.

Bearing in mind that the sound of the differing letter in the contested sign is a repetition of the sole vowel of the earlier mark, the signs are aurally similar to a high 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.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods have been found to be partly identical, partly similar and partly dissimilar and they target the general public whose degree of attention is deemed to be average.

The signs under comparison are visually similar to an average degree and aurally similar to a high degree. Conceptually, the comparison remains neutral. The earlier mark is distinctive to an average degree, which affords it an average degree of protection.

In the present case, the fact that the sound of the signs coincide in their first letters and that the last one is aurally identical to the vowel of the earlier mark is a relevant factor to consider when evaluating the similarity of the signs; the signs are considered to be similar overall (23/10/2002, T‑388/00, ELS, EU:T:2002:260). Furthermore, the signs do not convey any meaning that could help to distinguish them.

This is all the more true if we take into account 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registrations No  3 642 068 and No 70 127.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity between goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Helen Louise MOSBACK

Claudia SCHLIE

Marzena MACIAK

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.