OPPOSITION No B 2 443 425

Laboratorios Normon, S.A., Rda. Valdecarrizo (Zade Tres Cantos), 6, 28760 Tres Cantos (Madrid), Spain (opponent), represented by Vadimark, S.L., Galería de Vallehermoso, 4 -1º, 28003 Madrid, Spain (professional representative)

a g a i n s t

Recordati Orphan Drugs, Immeuble le Wilson, 70 Avenue Charles de Gaulle, 92800 Puteaux, France (applicant), represented by Gilbey Legal, 43, Boulevard Haussmann, 75009 Paris, France (professional representative).

On 09/06/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 443 425 is upheld for all the contested goods.

2. European Union trade mark application No 13 134 804 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 134 804. The opposition is based on inter alia, Spanish trade mark registration No 2 402 142. The opponent invoked Article Article 8(1)(b) and 8(5) EUTMR.

The opposition is based on more than one earlier trade mark. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Spanish trade mark registration No 2 402 142.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, 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 it cites as justification for its 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.

The applicant requested that the opponent submit proof of use of Spanish trade mark registration No 2 402 142 on which the opposition is based.

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 03/09/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 03/09/2009 to 02/09/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods which the opposition is based, namely the following:

Class 5: Pharmaceutical products, veterinary and hygienic; dietetic substances adapted for medical use; food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

According to Rule 22(3) EUTMIR, 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 22/06/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 27/08/2015 to submit evidence of use of the earlier trade mark. On 26/10/2015, after an extension and within the time limit, the opponent submitted evidence of use.

The evidence is the following:

• 14 invoices, in Spanish, dated between 30/03/2009 and 13/01/2014, thirteen within the relevant period of time, issued in Spain by Laboratorios Normon, S.A., bearing the marks

and

to different clients in Spain and referring to sales of products referred to as ‘ALOPURINOL NORMON 100mg’, ‘AMOXICILINA NORMON 300mg’, ‘CITALOPRAM NORMOM 30mg’, ‘ENALAPRIL NORMON 20mg’ and ‘IBUPROFENO NORMON 600mg’, ‘OMPEPRAZOL NORMON 40mg’, ‘PANTOPRAZOL NORMON 40mg’, ‘LIDOCAINA NORMON 5% 10 ml’, ‘CEFTRIAXONA NORMON 1g’, ‘ARTICAINA+ADRENAL NORMON 72mg’ and ‘AMOX/CLAVULANICO NORMON 2g/200mg inter alia.

• A certificate dated 17/10/2014, in Spanish, signed by Mr Chris Wynne, Financial Director of IMS HEALTH, S.A., a company providing information and technology services in the healthcare industry, of which Laboratorios Normon, S.A., is a client, confirming the turnover figures and units sold under the ‘NORMON’ trade marks, dated between 2009 and 2014, and claiming that the information submitted was obtained from different databases, namely EMF2S, Otcem and PERCARE, with national and international data, and showing the marks ‘AMBROXOL NORMON’, ‘ATENOLOL NORMON’, ‘ANASTROZOL NORMON’, ‘TRAMADOL NORMON’ and ‘BROMAZEPAM NORMON’, inter alia.

• An excerpt from the online database of the official website of the Spanish Agency of Medicines and Sanitary Products, www.aemps.gob.es, 39 pages long, dated 06/03/2014, in Spanish, showing the marks ‘FLUCONAZOL NORMON’, ‘FLUOXETINA NORMON’, FLUVASTATINA NORMON’, ‘GABAPENTINA NORMON’ and ‘GLIMEPIRIDA NORMON’, inter alia, and mentioning for each the active substance, lab producer, authorisation status, dosage form and prescription, and commercial status, as well as providing information regarding the 508 medicines registered in the name of the opponent, Laboratorios Normon, S.A.

• An excerpt from the online database of the official website of the Portuguese Authority of Medicines and Health Products, www.infarmed.pt, 11 pages long, dated 07/03/2014, in Portuguese, showing the marks ‘OMEPRAZOL NORMON’, ‘ONDANSETROM NORMON’, ‘PANTOPRAZOL NORMON’, LORATADINA NORMON’ and ‘TOPRAMATO NORMON’, inter alia, mentioning for each the active substance, lab producer, authorisation status, dosage form and strength, as well as providing more information regarding the 135 medicines registered in the name of the opponent, Laboratorios Normon, S.A.

• An institutional catalogue produced by Laboratorios Normon, S.A., 12 pages long, dated in 2012, with the serial number 1937/2012, in English, showing the marks , and , containing promotional information about the company, for example regarding its history, quality, safety and reliability standards, certifications, regulatory affairs, technology, manufacturing lines and worldwide presence.

• Samples of packaging for Normon medicines distributed in Spain, dated between 2009 and 2013, and accompanied by an excerpt relating to each of them from the online database of the official website of the Spanish Agency of Medicines and Sanitary Products, www.aemps.gob.es, proving its existence and giving its authorisation status and dosage, among other information, in Spanish. The marks in question are the following:

		Undated
		04/07/2012
		28/02/2012
		Undated
		03/05/2011
		29/03/2011
		Undated
		Undated
		13/03/2012
		27/02/2013

samples are of packaging for Normon medicines distributed in Portugal, dated between 2009 and 2012, and accompanied by an excerpt relating to each of them from the online database of the official website of the Portuguese Authority of Medicines and Health Products, www.infarmed.pt, proving its existence and giving its authorisation status and dosage, among other information, in Portuguese. The marks in question are the following:

		13/07/2009
		Undated
		07/07/2010
		Undated
		12/11/2012

• An excerpt, 9 pages long, from the online database of the official website of the Spanish Patents and Trademarks Office, https://sede.oepm.es/Sitadex/WS/, dated 23/04/2015 and 16/10/2014, in Spanish and English, proving the existence of the opponent’s Spanish trade marks.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition 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.

The invoices, the excerpts from the official databases of the Spanish Agency of Medicines and Sanitary Products and the samples of packaging show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

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 documents filed, namely invoices and packaging samples indicating the producer’s address in Spain, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of Spanish trade mark registration No 2 402 142.

Although ‘NORMON’ appears in several documents as the name of the laboratory, it also appears, clearly, as a trade mark, for instance on the packaging of the goods.

Furthermore, according to Article 15(1), second subparagraph, point (a) CTMR, the following shall also constitute use within the meaning of paragraph 1: use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) CTMR, Article 15 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.

In the present case, the element ‘NORMON’ is mostly used together with other indications such as the active ingredient of the medicine, the dosage, the form in which the medicine is made available, etc. Considering that these additional elements are descriptive indications that consumers will not perceive as indicators of origin, it is considered that their presence does not alter the distinctive character of the mark as registered.

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, and 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 Spanish trade mark registration No 2 402 142 during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the abovementioned earlier trade mark for all the goods covered.

In the present case, the evidence shows genuine use of the trade mark for different types of pharmaceutical products. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proven do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for pharmaceutical products.

The evidence listed above does not relate to the other goods for which the earlier mark is registered. Therefore, it is considered that the opponent has not proved genuine use of the earlier mark in relation to those goods.

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 will only consider the abovementioned pharmaceutical products 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.

1. The goods

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

Class 5: Pharmaceutical products.

The contested goods are the following:

Class 5: Pharmaceutical preparations containing human hemin for administration by injection or perorally for the treatment of hepatic porphyria.

The contested pharmaceutical preparations containing human hemin for administration by injection or perorally for the treatment of hepatic porphyria are included in the opponent’s pharmaceutical products; the goods are therefore 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 both at the public at large and at business customers with specific professional knowledge or expertise, namely healthcare professionals (including doctors and pharmacists).

These goods are likely to receive a heightened degree of attention from the general public, given that they are health related. Indeed, it is apparent from case law that, as far as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not the goods in question are issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, §§ 26 and 27).

In particular, medical professionals have a high degree of attention when prescribing or dispensing medicines. Non-professionals also show a higher than average degree of attention, even if the pharmaceuticals are sold without prescription, as these goods affect their health.

3. The signs

NORMON	NORMOSANG ORPHAN
Earlier trade mark	Contested sign

The relevant territory is Spain.

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

Both signs are word marks.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

Part of the public will perceive the first word of the contested sign as a whole. However, it cannot be excluded that the element ‘SANG’ will be associated with ‘sangre’, the Spanish word for blood, by the professional medical public and part of the public with knowledge of the intended use of the goods for which registration is sought. For the same part of the public, the sequence of letters ‘NORMO’ might suggest a prefix related to the word ‘normal’ in Spanish, which denotes normality.

The element ‘ORPHAN’ of the contested sign will be associated with ‘orphan drugs’. An orphan drug is a pharmaceutical agent that has been developed specifically to treat a rare medical condition, the condition itself being referred to as an orphan disease. http://www.ema.europa.eu/ema/index.jsp?curl=pages/medicines/landing/orphan_search.jsp

Bearing in mind that the relevant goods are ‘specific pharmaceuticals for the treatment of hepatic porphyria’, the proximity of the word ORPHAN with its Spanish correspondent and the level of attention of the relevant public, this element is weak for these goods.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘NORMO’, present identically at the beginning of both signs, and in the letter ‘N’, which is the final letter of the earlier mark and the penultimate letter of the first term contested sign. However, they differ in the letters ‘SA*G’ of the contested sign, which follow the coinciding letters ‘NORMO’ and in the additional word ORPHAN.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛NORMO**N*’, present identically in both signs. The pronunciation differs in the sound of the letters ‛SA*G’ of the contested mark and ‘ORPHAN’, which have no counterparts in the earlier sign.

Taking into account that the sounds of the first five letters out of six (in the earlier mark) are identical, the signs are aurally similar to an average degree.

Conceptually, while the public in the relevant territory might perceive some elements of the contested sign as explained above, the earlier sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the 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 in question 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

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C 251/95, Sabèl, EU:C:1997:528).

The contested goods are identical and they target health professionals and the general public.

The similarities between the signs lie in the letters ‘NORMO*N’, present identically in both signs. However, they differ in the additional letters ‘SA*G’ of the contested sign, which follow the coinciding letters ‘NORMO’ and the additional word ORPHAN.

The similarities are placed at the beginnings of the signs. These letters will initially catch the consumer’s attention, focused on the beginnings and also because it cannot be excluded that the elements sang and orphan will be perceived as such. The marks have a certain aural and visual resemblance, as they have the sequence of letters ‘NORMO’ in common.

In addition, the signs, in view of the coinciding elements referred to above, could be perceived as two different product lines coming from the same undertaking or economically-linked undertakings. Moreover, even though the degree of attention is higher than average, since the goods affect the user’s health, this cannot exclude the risk of likelihood of confusion, because the signs are identical in their first parts.

In view of the foregoing and taking into account all the relevant circumstances of the case, as well as the principle of interdependence between the relevant factors, namely that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services and vice versa, given the identity between the goods in question, the Opposition Division concludes that the signs are sufficiently similar to cause a likelihood of confusion on the part of the Spanish-speaking public, based on the inherent distinctiveness of the earlier mark.

Finally, the applicant also argues that the opposition should have been found to be inadmissible. According to Rule 15(2)(h)(ii) EUTMIR, where the opponent has appointed a representative the notice of opposition shall contain the name and business address of the representative in accordance with Rule 1(1)(e) EUTMIR.

In the present case, the opponent has appointed a representative and its name and/or business address of the representative has been indicated. Consequently, this claim must be set aside.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 402 142. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right Spanish trade mark registration No 2 402 142 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Ignacio IGLESIAS ARROYO

Agueda MAS PASTOR

Victoria DAFAUCE MENÉNDEZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.