OPPOSITION No B 3 005 009

Medoderm GmbH, Friedrich-Koenig-Str. 3, 55129 Mainz, Germany (opponent), represented by Maiwald Patentanwalts- und Rechtsanwaltsgesellschaft mbH, Elisenhof, Elisenstr. 3, 80335 Munich, Germany (professional representative)

a g a i n s t

Kuractive Milano S.r.l., Via Panizza 4, 20144 Milano, Italy (applicant), represented by Notarbartolo & Gervasi S.p.A., Corso di Porta Vittoria 9, 20122 Milano, Italy (professional representative).

On 17/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 005 009 is partially upheld, namely for the following contested goods:

Class 3: Make-up preparations.

2. European Union trade mark application No 17 446 824 is rejected for the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods (Class 3) of European Union trade mark application No 17 446 824 . The opposition is based on European Union trade mark registration No 10 696 789 for the word mark ‘Quractiv’. 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 the trade mark on which the opposition is based: EUTM No 10 696 789.

The date of filing of the contested application is 08/11/2017. 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 08/11/2012 to 07/11/2017 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 as well as sanitary preparations, being solely dermatological and cosmetic preparations, namely products for application to biological tissue for pharmaceutical and veterinary purposes and for health care purposes, including preparations for treating wounds, in particular for covering wounds, preparations for treating skin disease, including mucus membrane disorders and preparations for treating insect bites; plasters, including solid, semi-liquid and liquid plasters, material for dressings.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, namely medical suture materials and implants, in particular medical stents and medical catheters.

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 03/09/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 08/11/2018 to submit evidence of use of the earlier trade mark. On 31/10/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

In its arguments, the opponent claims that the trade mark has been used for a spray that is an ‘all-in-one healer for the treatment of chronic wounds’. Moreover, a table showing the number of goods sold, turnover achieved and advertising expenditure for 2012-2017 in the German territory is provided.

 Annex 1: several invoices issued by the opponent to clients in Germany, they are dated in 2013, 2014, 2015, 2016 and 2017 and relate to ‘QURACTIV’ products, which are followed by the term ‘Derm’ (and 7 ml, 12 ml, 20 ml). The quantities and prices can be seen within these documents.

 Annexes 2 and 11: undated pictures and packaging of ‘QURACTIV DERM’ products (a spray is depicted). These documents also contain instructions in German.

 Annexes 3, 4 and 5: Annex 3 is an undated excerpt from the opponent in German, it shows the products ‘QUARACTIV DERM’ and pictures of fair stands where the opponent’s mark can be seen. Annex 4 is a printout of a congress that took place in Bremen (‘Kongressberitch’) in May 2014. Annex 5 is a table showing different places in German and dates (2016) of trade fairs.

 Annex 6: undated pictures of the opponent’s trade fair booth from a trade fair showing the mark ‘QURACTIVE’.

 Annexes 7, 8, 9 and 10: some newspaper articles (such as ‘Pro-Vita’ and ‘Monitor’) in German. The opponent’s mark is seen with some explanations of its characteristics. The only one dated is from 2016, in this evidence is a depiction of a spray, tables and pictures of patients’ treatments.

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, namely the invoices, packaging and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The submitted evidence, in particular the invoices, shows that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euro) and the addresses in Germany. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

In the context of Article 10(3) EUTMDR, 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 national registration for the purposes of Article 47(2) and (3) 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.

Regarding the additions of terms such as ‘Derm’ (and 7 ml, 12 ml, 20 ml), use of a registered word mark (or any other mark) together with a generic indication of the product or descriptive term will be considered use of the registered mark. Additions that are simply indications of characteristics of the goods and services, such as their kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services, do not in general constitute use of a variant but use of the mark itself. The additions are not such as to call into question the conclusion on use of the mark, since, because of their brevity, their weak distinctive character (‘ml’ is the abbreviation of ‘millilitres’, and the numbers are the quantity) and their ancillary position, the additions do not alter the distinctive character of the mark in the form in which it was registered. As regards the term ‘Derm’, it is a common prefix for ‘dermatology’, therefore, its distinctive character is reduced.

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, although the evidence submitted by the opponent is not particularly exhaustive, it 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 marks 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.

In the light of the above, the evidence shows genuine use of the trade mark for the following goods and services:

Class 5: Preparations for treating wounds, in particular for covering wounds, preparations for treating skin disease, including mucus membrane disorders and preparations for treating insect bites; plasters, including solid, semi-liquid and liquid plasters, material for dressings.

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.

a) The goods

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

Class 5: Preparations for treating wounds, in particular for covering wounds, preparations for treating skin disease, including mucus membrane disorders and preparations for treating insect bites; plasters, including solid, semi-liquid and liquid plasters, material for dressings.

The contested goods are the following (after limitation of 14/05/2018):

Class 3: Hair preparations and treatments; shampoo; hair grooming preparations; shampoo; shampoo-conditioners; tints for the hair; hair mousse; hair nourishers; hair masks; hair balm; hair strengthening treatment lotions; hair glaze; hair gel; hair care lotions; hair emollients; hair lighteners; hair bleaching preparations; hair spray; hair spray; hair mousse; hair protection lotions; hair texturizers; hair permanent treatments; hair straightening preparations; products for protecting coloured hair; hairstyling serums; make-up preparations; make-up preparations.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘in particular’, used in the opponent’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).

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 make-up preparations (listed twice) are products usually applied on the face or body to enhance the appearance of the consumer. However, these goods are sometimes sold in chemists as products adapted to different specific needs of consumers; for example, they may or may not contain certain ingredients, target consumers with skin problems or improve particular health conditions. Consequently, these goods may coincide in their purpose, distribution channels and relevant public with the opponent’s pharmaceutical preparations. The opponent’s pharmaceutical preparations and sanitary materials used for the treatment of wounds often involves a cosmetic factor in the sense that in addition to treating the patients’ disease, they also aim to enhance the consumers’ appearance. The purpose of the opponent’s goods may therefore overlap with the contested make-up preparations. In the light of the foregoing, they are considered similar.

However, while it is true that the opponent’s goods serve a specific medical purpose, that is, they are intended for treating wounds, the contested mark covers many types of hair products. These goods are preparations used to beautify, groom, or otherwise improve the appearance or condition of a human, in a non-medicinal way. Consequently, the purpose of the opponent’s goods is different from the purpose of the remaining contested goods (enhancing or protecting the appearance of the human body v medical treatment). These goods do not usually have the same retail outlets and they are usually not made by the same manufacturers. Furthermore, they do not have the same distribution channels and they are neither in competition nor complementary. These goods are, therefore, considered dissimilar.

The opponent refers to previous the decision No 2 577 875 to demonstrate the similarity between the goods in question. However, the comparison referred to hair care preparations in Class 3 against the general term ‘pharmaceutical preparations’ in Class 5, which may also include pharmaceutical preparations for treating dandruff or other hair and scalp related problems. Due to the factual differences, this case is not relevant to the present proceedings.

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 similar are directed at the public at large and at medical or pharmaceutical professionals. Depending on the nature or price of the goods, the degree of attention is likely to vary from average (e.g. for make-up preparations in Class 3) to higher than average (e.g. for the goods in Class 5).

In particular, 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). Medical professionals have a high degree of attentiveness 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.

c) The signs

Quractiv
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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).

For word marks such as the earlier mark, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether a word mark is depicted in upper- or lower-case characters or a combination of both (21/09/2012, T‑278/10, WESTERN GOLD / WeserGold et al., EU:T:2012:1257, § 44, 46).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public for which the degree of aural similarity between the signs is higher.

Firstly, the Opposition Division cannot exclude the possibility that the marks’ suffix ‘activ’/‘ACTIVE’ could be perceived by the public as ‘characterized by busy or lively activity; engaging or ready to engage in physically energetic pursuits’ (information extracted from Oxford English Dictionary on 17/06/2019 at https://www.lexico.com/en/definition/active), this word evokes associations with something that energises the body cells, makes them lively. Due to their allusiveness regarding characteristics of the goods in question (able to energise the body cells, to make them more vital), ‘activ’/‘ACTIVE’ will be of reduced degree of distinctiveness and are on an equal footing.

Secondly, the element ‘MILANO’ of the contested sign will be associated with a location, namely a town in Italy that is well known for its fashion and design shows. Bearing in mind that the relevant goods are multiple industries, fashion-related articles and can include cosmetics. Therefore, ‘MILANO’ is considered descriptive in relation to those goods. Moreover, due to its small size and position in the sign, it will play a lesser role overall.

Thirdly, the depiction of the letter ‘K’ in the contested sign has an important place within the mark, which is positioned in the centre. The position of the verbal element ‘KURACTIVE’ is also important within the mark as it is depicted in large, stylised black upper-case letters. The figurative elements, such as the stylisation of the verbal elements, serve decorative purposes and will barely be attributed any trade mark significance. The figurative element depicting the letter ‘K’ will be seen as only reinforcing the first letter of the verbal element of the mark, and does not add any substantial distinctiveness to the mark.

Finally, when signs consist 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; 19/12/2011, R 233/2011‑4, BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Visually, the signs are similar in the letters ‘*uractiv*’, placed in the same position. The signs differ in their first letters ‘Q’ v ‘K’, and the additional letter ‘E’ at the end of the contested sign’s verbal element, its stylisation and the depiction of the letter ‘K’ above the verbal element of the contested sign. The verbal element ‘MILANO’ is only depicted in the contested sign. However, due to its secondary position and lack of distinctiveness, it has minimal impact, if any. For the reasons set above, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /q/ and /k/. The letter ‘E’ of the contested sign will not be pronounced in English. Moreover, the depiction of the letter ‘K’ above the verbal element of the contested sign will likely not be pronounced by the relevant public who will see it merely as a reference to the word ‘KURACTIVE’ that follows it. Consumers will perceive the additional word ‘MILANO’ as descriptive and will most likely omit this word in the pronunciation of the contested sign, as it will not be perceived as a reference to the origin of the goods in question and it occupies a secondary position within the sign. Therefore, the signs are considered to be aurally highly similar, if not identical.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘activ’/‘ACTIVE’, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to a very low degree.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, 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 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 the letters ‘activ’ as mentioned in section c) of this decision.

e) Global assessment, other arguments and conclusion

Some of the contested goods are similar to the goods on which the opposition is based, and the rest are dissimilar. The relevant goods target the public at large and the professional public whose degree of attention varies from average to high when purchasing them. The earlier mark has a normal degree of distinctiveness.

The signs are visually similar to an average degree and aurally highly similar (if not identical) to the extent that they coincide in the sequence of letters and sounds ‘Quractiv-KURACTIV’, which constitute almost the entire earlier mark and one of the dominant and distinctive verbal elements of the contested sign. The figurative element of the contested sign (the letter ‘K’) is co-dominant but the fact remains that consumers will refer to the mark by its verbal element. The signs are conceptually similar only to a very low degree, as both could evoke the concept of ‘active’.

Account is taken of the normal degree of distinctiveness of the earlier mark and 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).

Therefore, it is considered that there is a strong coincidence between the signs with a decisive impact. The similarities pointed out above are clearly enough to outweigh the differences between the signs and they are likely to lead the relevant public to believe that the conflicting similar goods come from the same undertaking or economically linked undertakings, despite a higher level of attention displayed by the public.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

The rest of the contested goods are dissimilar. As similarity of 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and/or the goods are obviously not identical.

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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tu Nhi VAN

Gonzalo BILBAO TEJADA

Martin EBERL

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.