OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 1 998 106
Biokanol Pharma GmbH, Kehler Str. 7, 76437 Rastatt, Germany (opponent), represented by Lichti Patentawälte, Bergwaldstr. 1, 76227 Karlsruhe, Germany (professional representative)
a g a i n s t
Laboratorios Genesse, S.L., Avenida Carrilet, 293, 08907 L'Hospitalet de Llobregat (Barcelona), Spain (applicant), represented by Canela Patentes Y Marcas, S.L., Girona ,148 1-2, 08037 Barcelona, Spain (professional representative).
On 15/12/2015, the Opposition Division takes the following
Class 5: Pharmaceutical and veterinary preparations.
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against some of the goods of Community
trade mark application No
PROOF OF USE
According to Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication 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 in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected. If the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
‘Genuine use’ must be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark. Such use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. It follows that ‘genuine use’ of the mark entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned. The use need not necessarily be quantitatively significant but must, in accordance with the essential function of a mark, guarantee the identity of the origin of the goods or services by creating or preserving an outlet for those goods or services (see judgment of 11/03/2003, C-40/01, ‘Minimax’, paragraphs 36, 37 and 43).
As is clear from Article 15(1) CTMR only trade marks in respect of which genuine use has been suspended during an uninterrupted period of five years are subject to the sanctions provided for by the regulation. Accordingly, it is sufficient that a trade mark should have been put to genuine use during a part of the relevant period for it not to be subject to the sanctions (see judgment of 08/07/2004, T-203/02, ‘Vitafruit’, paragraph 45).
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely German trade mark No 811 381. 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 publication of the contested application.
The contested application was published on 21/02/2012. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 21/02/2007 to 20/02/2012 inclusive. Furthermore, the evidence must show use of the word mark ‘Lactovital’ for the goods on which the opposition is based, namely the following:
Class 5: Dietetic foodstuffs.
According to Rule 22(3) CTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 24/02/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 24/04/2015 to submit evidence of use of the earlier trade mark. Upon request of the opponent this time limit was extended with two months, namely until 24/06/2015. On 22/05/2015 and 09/06/2015, within the time limit, the opponent submitted evidence of use.
On 09/10/2015, after expiry of the time limit, the opponent submitted additional evidence consisting of five invoices dated 23/05/2008, 20/12/2010, 23/11/2010, 09/08/2010 and 06/04/2010 to clients in Köln-Junkersdorf, Winnenden-Hertmannsw., Dortmund and Neumünster showing sales of in total 11215 packages of Lacotvital milk sugar indicated with article number 715001.
In the present case the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) CTMR to take into account the additional evidence submitted on 09/10/2015 can remain open, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the earlier trade mark.
The evidence to be taken into account is the following:
Translated witness statement of the sales manager of opponent dated 01/03/2012 in which it is declared that the opponent achieved in Germany the following sales with a digestive aid, mainly containing milk sugar, bearing the mark Lactovital:
2006 more than 10.000 packages
2007 more than 9.000 packages
2008 more than 10.000 packages
2009 more than 7.000 packages
2010 more than 3.000 packages
Translated photographs of a package of milk sugar and its inner foil bag showing an expiry date of 10/2012. Both packaging bear the sign ‘LACTOVITAL’.
Two price lists of 01/08/2010 and 01/06/2011 of opponent’s products. They show inter alia the opponent’s Lactovital milk sugar with article number 715001 ranging in price from 3,66 to 6,95 EUR.
Four invoices dated 14/08/2007, 24/04/2008, 26/08/2010 and 10/01/2011 to clients in Köln-Junkersdorf, Dortmund, Winnenden-Hertmannsw. and Neumünster showing sales of in total 1951 packages of Lacotvital milk sugar indicated with article number 715001.
Assessment of genuine use – factors
As indicated above, pursuant to Rule 22(3) CTMIR, proof of use must relate to the place, time, extent and nature of the use made of the earlier trade mark.
Place of use
The evidence relates to the relevant territory, Germany. This can be inferred from the addresses mentioned in the invoices and the language of the invoices, packaging and price lists. In addition, the affidavit makes reference to sales in Germany.
Time of use
As mentioned above, the CTM proprietor had the burden of showing that its German mark was put to genuine use for the goods registered in the period from 21/02/2007 to 20/02/2012 inclusive. In the present case the evidence sufficiently indicates the period of use within Germany, showing use of the mark on different types of materials dated within the relevant time period such as invoices dated 14/08/2007, 24/04/2008, 26/08/2010 and 10/01/2011, two price lists dated 01/08/2010 and 01/06/2011, the expiry date of 10/2012 on the inner foil bag of milk sugar and the years 2007-2012 mentioned in the affidavit which all relate to use of the mark ‘LACOTVITAL’.
Extent of use
The invoices show sales in 2007, 2010 and 2011 to different costumers in Germany for ‘Lactovital’ milk sugars. Furthermore, the affidavit indicates that almost 30,000 milk sugar products bearing this sign were sold during the years 2007-2010. According to the applicant the affidavit should be considered as having less probative value than evidence originating from independent sources and should have been supported by further material considering the limited amounts of 671, 720 and 381 sold products per invoice.
Whilst the Opposition Division agrees that the amounts of invoiced goods are not very impressive, it should be noted that it is irrelevant whether the use results in actual commercial success (see, to that effect, conclusions delivered on 05/07/2012, C‑149/11, ‘Leno’, paragraph 50). Considering the very specific nature of the goods in question, being a digestive health supplement, and the fact that the sales mentioned in the affidavit are not very high, it does not seem appropriate to require a higher amount of invoices to corroborate the sales figures mentioned therein.
Therefore, also considering that the invoices are merely exemplary intended to support the affidavit, it must be concluded that, contrary to the applicant’s argument, the use is not merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (see judgments of 11/03/2003, C 40/01, ‘Minimax’, paragraphs 35 and 36 and of 08/07/2004, T-203/02, ‘Vitafruit I’, paragraph 49), but must be considered to just meet the requirement of the extent of use provided for in Rule 22(2) CTMIR.
Nature of use
As mentioned above the earlier mark is registered for dietetic foodstuffs. However, all items of evidence merely show use of the mark ‘Lactovital’ for milk sugar. This means that the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the term dietetic foodstuffs for which the mark is registered but only one specific type of dietetic foodstuff.
According to Article 42(2) CTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for the following goods: milk sugar and will only consider these goods in its further examination of the opposition.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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.
The goods on which the opposition is based are the following:
Class 5: Milk sugar.
The contested goods are the following:
Class 5: Pharmaceutical and veterinary preparations.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 5
The opponent’s milk sugar is a substance prepared for special dietary requirements, with the purpose of treating or preventing a disease. Bearing this in mind, their purpose is similar to that of the contested pharmaceutical and veterinary preparations, insofar as they are used to improve the medical condition of patients. They can also coincide in producer, distribution channels and relevant public. Therefore they are similar.
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, including both of end consumers and health professionals. In addition, both medicinal products, whether or not acquired on prescription, and dietetic products in general may be regarded as products to which consumers, who are reasonably well‑informed and reasonably observant and circumspect, pay a high degree of attention (see judgment of 15/12/2009, T‑412/08, ‘TRUBION/BION, TriBion Harmonis’, paragraph 28 and the case law mentioned therein).
Earlier trade mark
The relevant territory is Germany.
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 their distinctive and dominant components (Judgment of 11/11/1997, C-251/95 ‘Sabèl’, paragraph 23).
Both marks are word marks. The earlier mark consists of the elements ‘lacto-’ and ‘vital’ and the contested sign of the elements ‘lacto‑‘ and ‘vit’. As to the distinctive character of these different components, it must be noted that the shared element ‘lacto-’, which is of Latin derivation, is generally known in the relevant territory. The term is a commonly used prefix, especially in the medical field, to indicate that something is made from or relates to milk or lactose. Therefore, when used in relation to the goods in question, it will be perceived as indicating that they are made of or contain milk or lactose.
As regard the signs’ differentiating elements, ‘vital’ of the earlier mark and ‘‑vit’ of the contested sign, it is likely that most German consumers would perceive both elements as references to the healthy nature of the goods in question. The word ‘vital’ means ‘vigorous, energetic or absolutely necessary or important’ in German and, therefore, will immediately be perceived as indicating that the relevant products are beneficial to health or to vitality. Although the word ’‑vit’ has no meaning in German, in relation to the health related goods in question most German consumers are likely to perceive it as a short form of the German word ‘vital’ or ‘Vitamin, as these German words also allude to health and stem from the same Latin word for life, ‘vita’.
Therefore, both marks are composed of elements allusive of the nature of the goods and have no elements which are clearly more distinctive than others.
Visually, the signs are highly similar because the contested sign is completely represented in the earlier mark which merely differs in the additional last two letters ‘AL’. This different ending is of minor importance in the overall perception of the signs, as it is significantly shorter than the identical initial part of the signs and is placed in a less prominent position at the end of the contested sign. This is generally the part that does not catch the prime attention of the consumer, all the more so since the marks cannot be considered to be short, which would make it easier for the public to perceive all of their constituent elements at first glance.
Aurally too, there is a high degree of similarity, even if, owing to the absence of the final syllable ‘AL’, the contested sign has one syllable less than the earlier mark: ‘LAC‑TO‑VIT’ as against ‘LAC‑TO‑VI‑TAL’. However, in terms of the global impression, these differences cannot dispel the similarity arising out of the identity in sound of the letters ‘LACTOVIT’. Not only are they more numerous, they are also located at the more memorable beginnings of the signs and, therefore, have a significant influence on the overall impression made by the mark (judgment of 15/12/2009, T‑412/08, ‘Trubion’, paragraph 40; judgment of 25/03/2009, T-109/07, ‘Spa Therapy’, paragraph 30).
Conceptually, the parties agree that the shared first element ‘lacto-‘ indicates milk or lactose. However, the parties disagree whether the element ‘-vit’ of the contested sign gives the marks a different connotation or not. The applicant argues that the earlier mark makes reference to ‘milk’ and ‘vitality’ and the contested sign to ‘milk vitamins’, two different concepts which will not be mixed up by the relevant public. The opponent, on the other hand, argues that the element ‘‑vit’ of the contested sign has no concrete meaning and, therefore, will not be perceived exclusively as referring to vitamins; it may allude to vitamins or vitality or has no semantic content at all for the relevant German public.
For reasons explained above the Opposition Division considers it likely that the word ’‑vit’, although meaningless as such, in relation to the health related goods in question is likely to be perceived as a short form of the German word ‘vital’ or ‘Vitamin’. Either way, a conceptual similarity with the earlier mark is evident, as in both cases this element will evoke the idea that the relevant products are beneficial to health or to vitality. Therefore, the signs must be considered conceptually highly similar.
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, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The earlier mark is an imaginary term, even if it is composed exclusively of elements that possess specific connotations. Therefore, it must be considered to have a normal degree of distinctiveness.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, paragraph 18; judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 22). It is further observed that the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, paragraph 20; judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 24; judgment of 29/09/1998, C-39/97, ‘Canon’, paragraph 17).
As has been concluded above, the contested goods in Class 5 were found similar to those of the earlier mark and are directed at a public, be it professional or not, whose level of attention is high. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually, aurally and conceptually highly similar.
In light of all the foregoing considerations, also taking into account the notion of imperfect recollection, it must be held that, in spite of the higher degree of attention displayed by the relevant public, the differences between the signs in question, are not sufficient to rule out a likelihood of confusion. Given the overall highly similar impression created by the marks and the similarity of the goods, a substantial part of the relevant public, could reasonably believe that the contested goods come from the same undertaking or from economically-lined undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 811 381. It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.