|
OPPOSITION DIVISION |
|
|
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. European
Union trade mark application No
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
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 |
|
|
