CANCELLATION No 18221 C (INVALIDITY)

Laboratório Edol-Produtos Farmacêuticos, S.A., Av. 25 de Abril, 6, 6 A, 2795-195 Linda-A-Velha, Portugal (applicant), represented by Filipa Romão, Rua Actor Chaby Pinheiro, nº 4 R/C dto, 2795-060 Lisbon, Portugal (professional representative)

a g a i n s t

Swiss Pharma International AG, Waldmannstrasse 8, 8001 Zürich, Switzerland (EUTM proprietor), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative).

On 06/03/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 10 047 322 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 10 047 322 ‘BRIGLAU’. The application is based on Portuguese trade mark registration No 433 916 ‘BGLAU’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the marks are identical and/or visually and aurally highly similar and there is identity between the goods under comparison. Therefore, a likelihood of confusion exists.

The EUTM proprietor requests the applicant to submit proof of use of its earlier mark and argues that the marks are not identical. It also claims lack of substantiation of the earlier mark.

In reply, the applicant submits evidence of use of its earlier mark which will be analysed later on in this decision. It explains that it is a Portuguese Pharmaceutical company specializing in the development, manufacture and sale of medicines, medical devices, cosmetic products and body hygiene and food supplements, in the area of Ophthalmology. BGLAU is a product used to the reduction of elevated intraocular pressure in patients with open-angle glaucoma or ocular hypertension.

In its final observations, the proprietor states that the applicant did not provide solid evidence of the genuine use of the earlier mark and challenges the documents provided by the applicant.

PRELIMINARY REMARK

The proprietor states that the applicant did not provide any written substantiation of the application and that there are no arguments or evidence proving that there are any grounds for invalidation.

The specification of grounds should consist of a statement to the effect that the respective requirements under Article 60(1)(a) EUTMR in relation to Article 8 EUTMR are fulfilled.

In the present case, the applicant clearly indicated that the application for invalidity is based on Article 8(1)(a) and (b) EUTMR, namely, that the contested mark is identical/similar to the earlier trade mark and covers identical/similar goods and/or services and/or there exists a likelihood of confusion on the part of the public.

As regards the arguments or evidence in support of the application, pursuant to Article 16(1) EUTMDR, the cancellation applicant has until the closure of the adversarial part of the proceedings to present the facts, evidence and arguments in support of the application.

In this case, the Cancellation Division considers that the grounds of invalidity are properly indicated and that facts and evidence in support of the application were submitted by the applicant before the closure of the adversarial part. Therefore, proprietor’s argument is dismissed as unfounded.

SUBSTANTIATION

The proprietor argues that the documents submitted by the applicant together with the application were all filed only in Portuguese without any translation while the language of the proceedings is English. Consequently, they should not be taken into account as they are not at all apt to meet the requirement of Article 16 EUTMDR.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the applicant does not submit appropriate evidence.

According to Article 16(1) EUTMDR, the applicant will present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of the proceedings.

According to Article 16(1)(b) EUTMDR in conjunction with Article 7(2) EUTMDR, within the period referred to above, the applicant must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the application.

In particular, if the application is based on a registered trade mark that is not a European Union trade mark, the applicant must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, or equivalent documents emanating from the administration by which the trade mark was registered — Article 16(1)(b) in conjunction with Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the applicant may provide such evidence by making reference to that source — Article 16(1)(b) in conjunction with Article 7(3) EUTMDR.

In the present case, the invalidity application is based on the Portuguese trade mark registration No 433 916. Together with the request, the applicant filed an extract in Portuguese from the Portuguese Trade mark Office. However, the applicant did also tick the box included in the application form for invalidity that contains the following statement: ‘the opposing party accepts that the necessary information for this trade mark is imported from the relevant online official database, accessible through TMVIEW, and that this source is used for substantiation purposes without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR’.

By this formal declaration, the applicant asks the Office to access the necessary information for the earlier trade mark from the relevant online official source. A close examination of the information provided by the relevant online evidence shows the particulars of the earlier Portuguese mark where the relevant content of the extract is provided in the language of the proceedings i.e. English except for the list of goods for which the earlier mark is protected.

According to Article 16(2) EUTMDR, evidence concerning the filing, registration or renewal certificates or equivalent documents including evidence accessible online, must be in the language of the proceedings or accompanied by a translation into that language which must be submitted of the applicant’s own motion within one month of filing of the original document. Article 7(4) EUTMDR states that ‘evidence accessible online’ shall also either be in the language of the proceedings, or shall be accompanied by a translation.

When the entire original document is in the language of the proceedings as in the present case except for the list of goods and services, there will be no need to provide a complete translation following the structure of the original document. In this case, it is acceptable if only the goods and services on which the application is based have been translated separately in the application for invalidity, or in documents attached thereto or submitted later within the one month time limit to file the translation of the relevant documents. The same applies to extracts/certificates that make use of INID or national codes, where the only information that still needs to be translated into the language of the proceedings is the list of goods and services.

In the present case, on 30/07/2019, the applicant re-filed the certificate from the Portuguese trade mark Office and a translation of the said certificate in English including all the particulars of the earlier Portuguese mark before the closure of the cancellation proceedings.

The proprietor insists on the fact that submitting the translation of the registration certificate of the earlier mark only at the end of the proceedings is deemed to be late and should result in disregarding the evidence.

However, pursuant to Article 16(1) EUTMDR, the cancellation applicant has until the closure of the adversarial part of the proceedings to present the facts, evidence and arguments in support of the application.

Therefore, the applicant did properly substantiate the earlier Portuguese trade mark registration No 433 916 and the proprietor’s claim is rejected as unfounded.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based, namely Portuguese trade mark No 433 916.

The request has been filed in due time and is admissible given that the earlier trade mark was registered (02/09/2008) more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 06/12/2017. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Portugal from 06/12/2012 to 05/12/2017 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 5: Eye drops.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 03/06/2019, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 08/08/2019 to submit evidence of use of the earlier trade mark.

On 30/07/2019, within the time limit, the applicant submitted evidence as proof of use which consists on the following:

• Annex 1: Extract from www.drugs.com (22/07/2019) about the BRIGLAU product (eye drops) including its characteristics and its therapeutic indications along with a Google extract showing the packaging of the products.

• Annex 2: A leaflet (22/07/2019) of the BGLAU products showing the mark on the products as . It includes the prospectus in Portuguese and in English.

• Annex 3: Certificate of registration of the earlier mark in Portuguese with its English translation.

• Annexes 4-5: Certificates of marketing authorizations together with English translations issued by Infarmed in Portugal in 2008 and in other countries (Ivory Coast – 2011, Benin – 2012, Azerbaijan – 2017, Iraq – 2018, Ethiopia – 2018, Mozambique) to be able to commercialize the medicines. They show the mark BGLAU for eye drops.

• Annex 6: More than forty invoices in Portuguese issued by the applicant and addressed at customers in Portugal between 2016 and 2019. They include the name of the mark BGLAU, COL. or COLIRIO and a code. The amounts are in Euros.

• Annex 7: Annual lists of prices in Portuguese and in English between 2015 and 2019. It includes the codes, the earlier mark and the type of products (eye drops) as well as the unity price.

• Annex 8: Sales and volume of sales in Portuguese between 2014 and 2019. They include the name of the mark BGLAU, together with COL. or COLIRIO and a code.

• Annex 9: Prospectus of the products for advertisement and marketing with translations into English showing . Some of them are not dated.

• Annex 10: Resume of characteristics of a medicine with its translation as well as a resume of medicine in INFARMED – National competent authority in Portuguese with the English translation.

Assessment of genuine use – factors

The EUTM proprietor argues that the applicant submitted invoices in Portuguese and that, therefore, this evidence should not be taken into consideration.

However, the applicant 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, applicable by analogy to cancellation proceedings). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, the invoices, sales volumes and their self-explanatory character, the Cancellation Division considers that there is no need to request a translation.

As regards place of use, trade marks must be used in the territory where they are protected. In the present case, the invoices (annex 6), the annual list of prices (annex 7) and the sales figures (annex 8), and the characteristics of the products (annex 2) are written in Portuguese and the invoices are addressed at several places in Portugal.

Trade marks must be used in the territory where they are protected (use in the relevant Member State for national marks as in this case). In this case, the evidence provided shows that the earlier mark has reached customers within Portugal. Therefore, the information contained in the evidence, taken as a whole, is sufficient to demonstrate the place of use of the earlier mark.

As far as the time of use is concerned, the proprietor contends that the documents cover the period between 2015 and 2019 and therefore all the evidence exceeding the relevant period should not be taken into account.

Indeed, the Cancellation Division points out that some documents are not dated or some are dated outside the relevant period.

Evidence referring to use made outside the relevant time frame is in general immaterial, unless it constitutes conclusive indirect proof that the mark must have also been put to genuine use during the relevant period. The Court held in this context that circumstances subsequent to the relevant point of time may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31).

The use need not have been made throughout the period of 5 years, but rather within the 5 years. The provisions on the use requirement do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52).

In the present case, from the invoices, the sales figures and the annual price lists, it is clearly shown that the evidence relates to the relevant period and that the requirement of use of the earlier trade mark in the relevant period, namely, from 06/12/2012 to 05/12/2017 inclusive was met, contrary to the proprietor’s arguments.

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, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The invoices show the amounts corresponding to the mark ‘BGLAU’, the majority of them within the relevant period. The amounts are expressed in Euros being regular during the relevant period and targeting several places within the relevant territory. The sign ‘BGLAU’ appears with some figures (for instance 5ML), which can be interpreted as the dose, and the description of the product COL. or COLIRIO. Even if the invoices do not mention the name of the products or are written in Portuguese, they do include codes which are cross-referenced with the annual lists of prices which expressly refer to eye drops. They allow the Cancellation Division to identify the earlier mark ‘BGLAU’ with the goods.

The proprietor states that the volume of sale is very low, especially considering that such products as eye drops are not exclusive goods, but are easily available used on a daily basis and relatively cheap.

Although the amounts included in the invoices are not significantly high, taking into account the type of goods, 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, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. 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) as in this case.

The proprietor also claims that some of the documents are internal documents that cannot prove the actual use.

Indeed, the applicant has submitted annual sales and price lists issued by the company itself. The Cancellation Division considers that as far as the probative value of this kind of evidence is concerned, those pieces of evidence are generally given less weight than independent evidence. Even though these extracts cannot be disregarded, they should be supported by further objective evidence drawn independently of the proceedings and corroborating the contents of the said evidence.

The proprietor’s arguments are based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation 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.

Therefore, in the present case, the Cancellation Division considers that the invoices, supported by the remaining relevant documents, provide sufficient information concerning the commercial volume of use, the length of time of use and the frequency of use. It is clear from the evidence that the applicant’s mark was used in the market as can be seen from the name of the customers and the addresses indicated in the invoices. Therefore, the proprietor’s arguments are dismissed as unfounded.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1)(a) EUTMR, and of its use for the goods and services for which it is registered.

Nature of use requires, inter alia, that the earlier trade marks are used as trade marks that are for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

In the present case, the majority of the documents show that the signs , or BGLAU are used, publicly and outwardly, in connection with the goods and therefore they are used as a trade mark.

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the trade mark.

In the present case, the majority of the evidence provided, namely, the invoices, the annual price lists and the leaflet of the prospectus show the word mark ‘ BGLAU’ or the figurative sign . The signs used do constitute use of the earlier trade mark because the figurative features as shown above do not alter the distinctive character of the earlier trade mark. In the Cancellation Division´s view, the mere addition of the colours of the background and the stylization of the verbal element as well as the symbol ®, which refers to ‘registered mark’ and has no trade mark significance, do not alter the distinctive character of the earlier mark.

As regards use for the relevant goods, the earlier mark is registered for eyes drops which are a kind of medicine that you put in your eyes one drop at a time. The evidence (prospectus, annual price lists) shows that the mark has been used for these goods. Therefore, the applicant has shown use for all the goods for which the mark is registered.

Overall assessment

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 36).

Conclusion

It follows from the above that the applicant has proven genuine use of the earlier mark for eye drops in Class 5.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based are the following:

Class 5: Eye drops.

The contested goods are the following:

Class 5: Pharmaceutical and veterinary preparations.

As it was mentioned above, eye drops are a kind of medicine that is put in human and animal eyes one drop at a time.

In this case, the contested pharmaceutical and veterinary preparations include, as a broader category, the applicant’s eye drops. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.

2. 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 are directed at the public at large and at business customers with specific professional knowledge or expertise in the medical field.

The degree of attention will be relatively high. It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (judgments of 15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and quoted case-law). 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 pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

BGLAU	BRIGLAU
Earlier trade mark	Contested trade mark

The relevant territory is Portugal.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are word marks, the earlier trade mark consists of the word ‘BGLAU’ whereas the contested sign includes the term ‘BRIGLAU’. Since each of the signs under comparison is composed of an arbitrary verbal element which does not exist as such in the relevant language, the marks will be perceived in their entirety as fanciful verbal elements and are therefore distinctive.

Visually, the signs coincide in the sequence of letters ‘B**GLAU’ however they differ in the middle letters ‘RI’ included in the contested mark. Therefore, the signs are visually highly similar.

Aurally, the earlier mark will be pronounced as ‘b(e)-glau’ whereas the contested mark will be pronounced as ‘bri-glau’ by the relevant public. Therefore, the pronunciation of the signs coincides in the sound of the letters ‘b**glau’, present identically in both signs in the same position whereas they differ in the sounds (e) vs ri included in both signs respectively. Since the signs share the same five letters ‘b**glau’, they have the same rhythm and intonation. In this case, the signs are aurally highly similar.

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.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The applicant 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.

5. Global assessment, other arguments and conclusion

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are identical and the distinctiveness of the earlier mark is normal.

The overall impression produced by the signs is very close. Taking into account especially the fact that the signs coincide in the sequence of letters ‘B**GLAU’ placed in the same order, it is considered that the similarities between the signs are enough to counteract the dissimilarities, even for the public showing a high attentiveness. The mere presence of the middle letters ‘RI’ in the contested mark is not sufficient to counteract that the signs are similar and that there is a likelihood of confusion contrary to the EUTM proprietor’s observations.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the application is well founded on the basis of the applicant’s Portuguese trade mark registration No 433 916. It follows that the contested trade mark must be declared invalid for all the contested goods.

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR. In any case, the Cancellation Division concurs with the proprietor’s argument that the marks are not identical, contrary to the applicant’s assertions.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Boyana NAYDENOVA

Carmen SÁNCHEZ PALOMARES

Ana MUÑIZ RODRIGUEZ

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.