OPPOSITION No B 2 683 012

Casa Santiveri, S.L., c/ Encuny, 8, 08038 Barcelona, Spain (opponent), represented by Durán - Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Aga Pharma & Supplements S.L., C/Holanda 11, 41840 Sevilla/Pilas, Spain (applicant), represented by Iglobax, C/Astronomía, 1, Torre 5, Planta 10, Oficina 5, 41015 Sevilla, Spain (professional representative).

On 11/12/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 683 012 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 937 205 for the word mark ‘ARTROSY’, namely against all the goods in Class 5. The opposition is based on Spanish trade mark registration No 2 436 681 for the word mark ‘SANTIVERI ARTROSIN’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, 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.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark registration No 2 436 681 for the word mark ‘SANTIVERI ARTROSIN’.

The date of filing of the contested application is 18/12/2015. 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 18/12/2010 to 17/12/2015 inclusive.

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 relevant date mentioned above.

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

Class 5: Pharmaceutical, veterinary and sanitary preparations; 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 Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 22/02/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 21/04/2017 to submit evidence of use of the earlier trade mark. On 24/03/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Annex 1: Copy of promotional material (undated) showing preparations related to joint health:

. Although this evidence is not translated, it is clear that the Spanish word ‘articulaciones’ refers to the English ‘articulation’ being a ‘joint’. This is supported by the fact that there is an image of a joint on the packaging of the goods and the words ‘Joint Health Revolution’ mentioned on the lower left side of the document. The indications on the goods depicted are, for example, ‘COLÁGENO LÍQUIDO’, ‘GLUCOSAMINA’, ‘BÁLSAMO-GEL’, which are easily understandable in English as ‘liquid collagen, glucosamine and balm-gel’.

• Annex 2: Copies of three advertisements (undated) in the magazine Dietética y Salud, in which the goods are depicted (same as in annex 1) and the mark appears on top of the page as .

• Annexes 3-6: Invoices dated 2012 (15 in total), 2013 (19 in total), 2014 (21 in total), 2015 (19 in total) issued to different clients in Spain (Madrid, Barcelona, Tenerife, Bilbao, Toledo, Girona, Malaga, Valencia, etc.) referring to the earlier mark as ‘ARTROSIN CARTILAGO MANTA RAYA’, ‘PACK ARTROSIN’, ‘ARTROSIN GELARTRINA’, ‘ARTROSIN GLUCOSAMINA VEGETAL’, etc. The logo appears on top and on the background of the invoices.

The invoices show that the place of use is Spain. This can be inferred from the language of the documents (Spanish) 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, and 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 the 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 provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Use of the mark need not be quantitatively significant for it to be deemed genuine. Although the total amount of the goods sold under the earlier mark is not particularly high, it can be seen that the sales of the goods were consistent over the years and related to the entire relevant territory.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 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 earlier mark as registered ‘SANTIVERI ARTROSIN’ is used in the promotional material over two lines, ‘ARTROSIN’ being depicted in large upper case letters and, beneath this, the word ‘Santiveri’ in much smaller white title case letters placed in a green figurative element. On the packaging of the goods, the word ‘ARTROSIN’ appears vertically and the word ‘Santiveri’ in white title case letters placed in a green figurative element horizontally, next to it. Consequently, it is considered that the use of the mark does not alter the distinctive character of the trade mark as registered. Being the earlier mark a word mark, it does not matter in which font or size the verbal elements are presented. The fact that the word ‘Santiveri’ is depicted against a green background is also not affecting its distinctive character since this background will be seen as merely decorative. Furthermore, also the fact that the two words are used in a different position, of which one vertical or both words in inversed order over two lines, is also not sufficient to alter the distinctive character of the earlier mark as registered since the full mark is used, containing all its verbal elements. The fact that the mark is mentioned in the invoices as ‘ARTROSIN CARTILAGO MANTA RAYA’, ‘PACK ARTROSIN’, ‘ARTROSIN GELARTRINA’, ‘ARTROSIN GLUCOSAMINA VEGETAL’, etc. is not altering the distinctive character either since it is not unusual to use shorter references in the invoices to refer to a mark, especially for marks used in combination with a house brand or company name, and the specific names, such as ‘GELARTINA’ and ‘GLUCOSAMINA’, only indicate the specific type of product under the earlier mark, as can be seen in annexes 1 and 2. The applicant refers to Office decision 22/02/2011, B 1 554 537 in support of its arguments that the mark as used is altering the distinctive character of the mark as registered. However, although the evidence submitted in B 1 554 537 is to some extent comparable, it is not the same and refers to another trade mark. In the evidence submitted in the present case, the marks are used much closer together, as explained above, which does prevent the Opposition Division in the present case from reaching the conclusion that the mark as used are in fact two separate marks.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

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 the earlier trade mark during the relevant period in the relevant territory.

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

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

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 sub‑categories 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 sub‑category or sub‑categories 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 sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45 and 46).

In the present case, the evidence proves use only for dietetic supplements (in the form of, for example, collagen or glucosamine) and for balms, all in relation to joint health. These goods can be considered to form objective subcategories of dietetic substances adapted for medical use and pharmaceutical preparations. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for dietetic substances adapted for medical use, namely for the protection of joints for human use; pharmaceutical preparations, namely balms for the protection of joints for human use.

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 and for which use has been proven are the following:

Class 5: Dietetic substances adapted for medical use, namely for the protection of joints for human use; pharmaceutical preparations, namely balms for the protection of joints for human use.

The contested goods are the following:

Class 5: Sanitary preparations for medical purposes; Plasters, materials for dressings; Disinfectants; Preparations for destroying noxious animals; Food for babies; Fungicides; Herbicides; Medical and veterinary preparations and articles; Pharmaceutical preparations; Veterinary preparations and substances; Nutritional supplements; Dental impression materials; Teeth filling material; Dietetic foods adapted for medical use; Dietetic food adapted for veterinary use.

An interpretation of the wording of the opponent’s list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The contested dietetic foods adapted for medical use; nutritional supplements include, as broader categories, the opponent’s dietetic substances adapted for medical use, namely for the protection of joints for human use. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested medical preparations and articles; pharmaceutical preparations include, as broader categories, the opponent’s pharmaceutical preparations, namely balms for the protection of joints for human use. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested plasters, materials for dressings are similar to the opponent’s pharmaceutical preparations, namely balms for the protection of joints for human use. These goods have the same purpose, they coincide in their distribution channels and target the same relevant public.

The contested food for babies is food that must be eaten by babies because they are physically incapable of eating any other type of food or it is medically required that they eat this particular type of food. These goods are similar to the opponent’s dietetic substances adapted for medical use, namely for the protection of joints for human use. These goods may have the same purpose (protecting joint health), they can coincide in producer and distribution channels.

The contested veterinary preparations and substances; veterinary preparations and articles are similar to the opponent’s pharmaceutical preparations, namely balms for the protection of joints for human use. These goods have the same nature, the same general purpose and the same method of use.

The contested dietetic food adapted for veterinary use is similar to the opponent’s dietetic substances adapted for medical use, namely for the protection of joints for human use. These goods have the same nature, the same general purpose and the same method of use.

All the remaining contested goods are dissimilar to the opponent’s dietetic substances adapted for medical use, namely for the protection of joints for human use; pharmaceutical preparations, namely balms for the protection of joints for human use. The contested sanitary preparations for medical purposes are preparations for personal hygiene. The contested disinfectants are for destroying bacteria; preparations for destroying noxious animals are for destroying vermin; fungicides are for destroying fungi; herbicides are for destroying weeds. The contested dental impression materials; teeth filling material are goods for dentistry. All these contested goods have a different nature, different purpose and different method of use compared with the opponent’s goods. They are not complementary, nor in competition with each other. They are usually not produced by the same undertakings and they are distributed through different distribution channels.

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 or similar are directed at the public at large and at a professional public with specific professional knowledge or expertise. The degree of attention may vary from average to high, taking into account that a rather high degree of attention is to be expected for goods that have an impact on one’s health.

3. The signs

SANTIVERI ARTROSIN	ARTROSY
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).

The elements ‘ARTRO(SI)’ in the earlier mark and ‘ARTRO(SY)’ in the contested sign will evoke an association with ‘joints’ (‘artro’) or will be associated with ‘arthrosis’ (‘artrosis’ in Spanish), a joint disease. Taking into account that the relevant goods in Class 5 are or might be related to joint health, these elements are weak.

The element ‘SANTIVERI’ in the earlier mark has no specific meaning for the relevant public and is distinctive. Therefore, this element is the most distinctive element of the earlier mark.

Visually, the signs coincide in the letters ‘ARTROS**’, which are weak in relation to the relevant goods, and they differ in the final letters of this element, namely ‘IN’ at the end of the earlier mark and the final letter ‘Y’ in the contested sign. Furthermore, the marks differ in the additional first distinctive element ‘SANTIVERI’ in the earlier mark, which has no counterpart in the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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 visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛AR‑TRO-SI*’/’AR-TRO-SY’, corresponding to weak elements in both signs, and differs in the final letter ‘N’ of this word in the earlier mark. The pronunciation further differs in the sound of the distinctive word ‘SANTIVERI’ in the earlier mark, which is moreover in the first position where it will attract the primary attention of the relevant public, as explained above.

Therefore, the signs are aurally similar to a low degree.

Conceptually, although the coinciding elements ‘ARTROSIN’/‘ARTROSY’ will evoke a concept as explained above, it will only lead to a low degree of conceptual similarity, as these elements have a weak degree of distinctiveness.

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 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. 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. 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. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 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, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large and the professional public, and the level of attention will vary from average to high.

The conflicting goods are partly identical, partly similar and partly dissimilar.

The signs are visually, aurally and conceptually similar to a low degree since all coincidences are in weak elements. The differences between the marks are in the elements that give the words ‘ARTROSIN’ and ‘ARTROSY’ some distinctive character, namely in their respective endings ‘IN’ and ‘Y’, and in the fact that the earlier mark has a distinctive additional element ‘SANTIVERI’ at its beginning.

It is considered that the differences between the marks are largely outweighing the similarities, which, as already mentioned above, are in weak elements, and that the low degree of similarity between the signs cannot be counterbalanced by the identity between some of the goods. The differences between the marks will enable the relevant public to safely distinguish between them, even taking into account that some of the goods are identical and that the relevant public might only display an average degree of attention in relation to some of the goods.

The opponent refers to the judgement of 30/11/2006, T-43/05, Brothers By Camper, EU:T:2006:370 in support of its arguments that there exists a likelihood of confusion. However, this case is not comparable to the present case. While it was clear in the case referred to by the opponent that the word ‘CAMPER’ in the mark ‘Brothers By Camper’ referred to the company name due to the use of the word ‘by’, this is not the case at present. Moreover, the word ‘BROTHERS’ (which is the shared element in the cited case) appears at the beginning of the signs and was distinctive, while in the present case the word ‘ARTROSIN’ appears at the end of the sign and has a weak distinctive character.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ric WASLEY

Saida CRABBE

Marta GARCÍA COLLADO

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.