CANCELLATION No 35 062 C (REVOCATION)

Difass International Srl, Via Ausa, 181 Località Cerasolo, 47853 Coriano (RN), Italy (applicant), represented by Jacobacci & Partners s.p.a., Via Senato, 8, 20121 Milano (MI), Italy (professional representative)

 

a g a i n s t

 

Helixor Heilmittel GmbH, Fischermühle 1, 72348 Rosenfeld, Germany  (EUTM proprietor), represented by Rüger Abel Patentanwälte PartGmbB, Webergasse 3, 73728 Esslingen am Neckar, Germany (professional representative).

On 26/02/2021, the Cancellation Division takes the following

DECISION

1. The application for revocation is partially upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 10 604 701 are revoked as from 14/05/2019 for some of the contested goods, namely:

Class 5: Pharmaceutical preparations and medicines, with the exception of natural pharmaceutical preparations and medicines for the treatment for leukaemia and cancer; nutritional additives for medical and non-medical purposes.

3. The European Union trade mark remains registered for all the remaining goods, namely:

Class 5: Natural pharmaceutical preparations and medicines for the treatment for leukaemia and cancer.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 10 604 701 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 5: Pharmaceutical preparations and medicines, in particular for the treatment for leukaemia and cancer; nutritional additives for medical and non-medical purposes.

The applicant invoked Article 58(1)(a) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that since the contested EUTM is no longer within the grace period, the EUTM proprietor must prove that the mark has been genuinely used for a continuous period of five years within the EU.

The EUTM proprietor provides information about its company. It points out that it began its research into pharmaceutical products in 1969 and that the trade mark ‘HELIXOR’ has been established in the market for almost 45 years. It files the following evidence to proof use of the contested sign, listed according to the proprietor’s proposal.

Annex 1: screenshots from the proprietor’s website www.helixor.com with information on the company’s history and activities as well as on the HELIXOR goods’ therapeutic indications.

Annex 2: screenshots from the proprietor’s website www.helixor.com with contact details for its network of distribution partners within the European Union: Austria, Denmark, Finland, Latvia, Lithuania and Luxembourg.

Annex 3: examples of pharmaceutical product packaging showing the mark ‘HELIXOR’, dated in the period 2016-2019. It includes several information sheets, written in German and Lithuanian, with references to years 2013, 2014 and 2015.

Annex 4: invoices, written in German, addressed to clients in, inter alia, Austria, Belgium, Denmark, Finland, Germany, Latvia, Lithuania, Luxembourg, the Netherlands and Sweden. They are dated between 2008 and 2019 and refer to pharmaceuticals. The trade mark ‘HELIXOR’ is at the top of each invoice and referenced in the description of goods of each invoice.

Annex 5: price lists for ‘HELIXOR’ products in Austria, Latvia, Lithuania, Luxembourg, the Netherlands and Norway for the period 2011-2012.

Annex 8: marketing materials for HELIXOR goods, written in German and English, dated in 2019. It also includes a product information sheet from 2018, written in English, with the therapeutic indications of HELIXOR pharmaceuticals.

Annex 9: marketing materials showing the presence of the proprietor’s company and trade mark at trade fairs, congresses, seminars and workshops, most of them with direct references to oncology. The documents give indications of the place of the events (in the European Union) and are dated between 2011 and 2016.

The applicant requested that the proof of use submitted by the EUTM proprietor be resent because part of the evidence indicated by the proprietor was missing and the file it originally received did not reflect the structure indicated in the proprietor’s observations. It further requested that the proprietor submit a translation into English of the evidence submitted.

The EUTM proprietor explained that Annexes 1, 2, 5, 6 and 8 were in English and therefore did not require translation. It provided a partial translation of the evidence submitted in Annexes 3, 4, 7 and 9. It pointed out that the evidence of use showed the use of the contested mark for a variety of pharmaceutical preparations. If a variety of products belonging to the same category are covered by the evidence of use, use is established for the general category of the products themselves.

In reply, the applicant considered that the evidence submitted by the proprietor proved some use of the contested trade mark, but only in relation to part of the goods, namely pharmaceutical preparations and medicines for the treatment for leukaemia and cancer in human patients. Therefore, the scope of protection of the contested mark should be limited to this sub-category. No evidence was submitted in relation to the remaining goods.

Finally, in reply, the EUTM proprietor contested the applicant’s conclusions. It considered that Annexes 1-8 showed use of the contested mark for a wide range of pharmaceutical preparations and medicines, including leukemia preparations, preparations for swellings and neoplasms, cancer support medicines and also anthroposophic medicines, osteoarthritis preparations and homeopathic preparations, which are not exclusively cancer medicines. ‘HELIXOR’ goods are herbal products used to support the general health condition and the immune system without being specific cancer cure medicines. In particular, ‘HELIXOR HF’ is a pure nutritional additive for medical and non-medical purposes. The general term pharmaceutical preparations is a very broad class heading which comprises many subcategories, amongst them, the subcategory of nutritional preparations serving as additives. ‘HELIXOR’ pharmaceutical preparations are in fact nutritional additives for medical and non-medical purposes. Therefore, the use of the contested mark is proven also for nutritional additives for medical and non-medical purposes.

Preliminary remark

As claimed by the applicant, part of the evidence referred to in the proprietor’s observations was not filed, namely part of the evidence included in Annexes 5 and 8 as well as the totality of the evidence included in Annexes 6 and 7. According to the descriptions given by the EUTM proprietor, this part of the evidence consists of the following.

Annex 5: additional price lists for ‘HELIXOR’ products for the period 2011-2016.

Annex 6: invoices, written in English, dated between 2011 and 2016, and addressed to clients in Belgium, Bulgaria, Ireland, Greece, Spain, France, Croatia, Italy, Luxembourg, Hungary, the Netherlands, Poland, Portugal, Slovenia and Finland. They are for the sale of ‘HELIXOR’ products, allegedly via the proprietor’s online-pharmacy at www.mistletoe-pharmacy.com.

Annex 7: information sheets for ‘HELIXOR’ products for Austria, Latvia, Lithuania and Sweden, dated in the period 2011-2016.

Annex 8: additional marketing material for Germany, Austria and Sweden dated between 2011 and 2019.

Article 63(3) EUTMDR and Article 66(2) CDIR stipulate that where a communication received by electronic means is incomplete or illegible, the Office shall inform the sender accordingly, inviting them to retransmit the original within a specified period. In this case, the proprietor submission of 22/07/2019 is not considered to be an incomplete transmission, but must simply be considered as not filed. From the 1226 pages sent as evidence, only those corresponding to 801-1000 were not included. Therefore, this part of the evidence referred to by the proprietor cannot be taken into account.

The Office did not invite the proprietor to submit the missing evidence, since even if it had been filed in the present proceedings, it would not have any impact on the outcome. This can be inferred to by combining the description of the evidence provided by the proprietor in the present case and the identical submission made on the same day, 22/07/2019, in the parallel proceedings 35061C, where the same parties are involved.

GROUNDS FOR THE DECISION

According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

Genuine use of a trade mark exists where the mark 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 requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, in particular § 35-37, 43).

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non‑use.

In the present case, the EUTM was registered on 11/06/2012. The revocation request was filed on 14/05/2019. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 14/05/2014 to 13/05/2019 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 22/07/2019 the EUTM proprietor submitted evidence as proof of use, which has been listed above.

Assessment of genuine use – factors

Time and place of use

The evidence must show genuine use of the contested EUTM within the relevant period and in the European Union (Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

Part of the evidence, such as part of the invoices, information sheets and examples of marketing, is dated within the relevant period.

The invoices in Annex 4 show that goods bearing the contested EUTM have been sold to customers located in several Member States of the European Union (as detailed above in the evidence of use). This can be inferred from the delivery addresses in the respective countries, the language of the documents (English, German) and the currency mentioned (EUR). Further indications as to the place of use can be deduced from the information sheets written in English, German and Lithuanian in Annexes 3 and 8, and examples of the participation in trade fairs for the promotion of the contested mark in Germany.

Therefore, it is considered that the evidence of use filed by the EUTM proprietor relates to the relevant territory and contains sufficient indications concerning the time of use.

Extent of use

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

The Court has held that ‘use 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).

The invoices submitted by the EUTM proprietor show a significant commercial volume and regular and frequent use of the contested mark, at least in relation to some of the goods. Moreover, the invoices, price lists and examples of participation in trade fairs and congresses cover a long period of time and prove that the territorial extent of use was significant.

Therefore, the evidence submitted by the EUTM proprietor, taken as a whole, provides the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the contested mark, at least in relation to some of the goods.

Nature of use

Nature of use requires, firstly, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers. Secondly, in the context of Article 10(3) EUTMDR, ‘nature of use’ 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 contested European Union trade mark.

The materials submitted, taken as a whole, show that the contested EUTM was used essentially in such a way as to establish a clear link between some of the contested goods and the EUTM proprietor. Therefore it was used as a trade mark. In addition, the evidence submitted, as the examples of packaging, shows use of the contested mark as registered.

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

According to Article 58(2) EUTMR, where there are grounds for revocation for only some of the goods for which the contested mark is registered, the proprietor’s rights will be revoked for those goods only.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

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

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

The contested EUTM is registered for pharmaceutical preparations and medicines, in particular for the treatment for leukaemia and cancer; nutritional additives for medical and non-medical purposes in Class 5.

The term ‘in particular’, used in the EUTM proprietor’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 (on the use of ‘in particular’ see reference in 09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

The applicant argued that the evidence submitted by the proprietor only proved use of the contested mark in relation to pharmaceutical preparations and medicines for the treatment for leukaemia and cancer in human patients, and therefore the scope of protection of the contested mark should be limited to this sub-category. The EUTM proprietor replied that the documents submitted showed use of the contested mark for a wide range of pharmaceutical preparations and medicines, not limited to cancer therapies.

According to case-law, the category of pharmaceutical preparations is sufficiently broad for several subcategories to be identified within it.

The concept of pharmaceutical preparations covers goods which are sufficiently different in their intended purpose, end consumers, specific therapeutic indications and channels of distribution, depending on whether they are available on medical prescription or over the counter, for several subcategories to be identified within it (23/09/2009, T‑493/07, T‑26/08 & T‑27/08, Famoxin, EU:T:2009:355, § 35-36). It follows that the subcategory of goods must be determined on the basis of the criterion of therapeutic indication (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 33).

The evidence provided by the proprietor shows the use of the contested mark in relation to natural herbal pharmaceutical preparations, used in cancer therapies in combination with other conventional medicines, to improve the general health of patients.

The proprietor argued that, despite the widespread use of ‘HELIXOR’ preparations in cancer therapies, its products were, in particular ‘HELIXOR HF’, anthroposophic preparations with no specific therapeutic indication that could be used more generally to improve the immune system, health and well-being of patients.

However, the evidence submitted by the EUTM proprietor, in particular the extracts from the proprietor’s website and marketing materials, shows that the contested mark is used in relation to natural oncological products. Indeed, the printouts from the proprietor’s website as well as the information sheet and the marketing material included in Annex 8 show that ‘HELIXOR’ natural pharmaceutical preparations are prescribed for patients with leukaemia, tumours and cancers. Moreover, the proprietor’s website and examples of packaging define ‘HELIXOR’ goods as herbal and homeopathic medicines to be used in integrative oncology and anthroposophic medicine with the following approved therapeutic indications: malignant tumors, also accompanied by disorders of the hematopoietic organs; prophylaxis of recurrence after tumor surgery; defined precancerous conditions and benign tumours. As argued by the proprietor, it is true that the anthroposophic medicine is not only directed at cancer patients, however the therapeutic indications of ‘HELIXOR’ goods as shown in the evidence and the information extracted from the marketing material only show the use of ‘HELIXOR’ medicines as part of oncologic therapies. Therefore, the proprietor’s arguments are dismissed.

The Cancellation Division does not judge the commercial success of a business; however, it cannot make its assessment based on assumptions. Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47).

Despite other possible uses of the proprietor’s products in different medicine fields, the Cancellation Division considers that the evidence shows genuine use of the contested trade mark for natural pharmaceutical preparations and medicines for the treatment for leukaemia and cancer in Class 5.

The contested nutritional additives for medical and non-medical purposes fall under the category of dietary supplements for human beings and animals, which supplement the nutritional value of the normal diet of a human being or an animal. Broadly speaking their purpose is similar to that of pharmaceutical products (substances used in the treatment of diseases) insofar as they are used to improve a patient’s health. Even though dietary supplements are to this extent linked to pharmaceutical products, they are not however encompassed by the latter ones, as the EUTM proprietor puts forward.

Against this background, and bearing in mind that the Cancellation Division can only base its findings on the overall assessment of the documents before it and cannot reach a finding of genuine use by resorting to probabilities and presumptions (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43), it must be concluded that use of the contested mark for natural pharmaceutical preparations and medicines for the treatment for leukaemia and cancer cannot be deemed as use for the registered nutritional additives for medical and non-medical purposes.

Consequently, the Cancellation Division declares the EUTM to be revoked for the remaining goods for which it is registered.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods, for which it must, therefore, be revoked:

Class 5: Pharmaceutical preparations and medicines, with the exception of natural pharmaceutical preparations and medicines for the treatment for leukaemia and cancer; nutritional additives for medical and non-medical purposes.

The EUTM proprietor has proven genuine use for the remaining contested goods; therefore, the application is not successful in this respect.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 14/05/2019.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part 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 Cancellation Division

Oana-Alina STURZA

Ana MUÑIZ RODRIGUEZ

Frédérique SULPICE

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.