In July 2014, Allergan Inc (the Applicant) filed an application for the EU word mark NOCUVANT for "Pharmaceutical preparation for the treatment of nocturia" in class 5. Gebro Holding GmbH (the Opponent) opposed the application based on its earlier trade marks NOCUTIL covering identical goods in class 5.
The Opposition Division upheld the opposition. The Applicant filed a notice of appeal and the Second Board of Appeal of EUIPO confirmed that the marks at issue were similar and a likelihood of confusion did exist. Allergan Inc (now Serenity Pharmaceuticals LLC) appealed the decision before the General Court.
The Applicant required the Opponent to provide proof of use. The General Court stated that the purpose of the requirement is not intended to assess the commercial success or to review the economic strategy of one undertaking. The Court also noted that it is not possible to determine in abstract the quantitative threshold and the territorial scope that are necessary to determine whether the use of the mark is genuine.
When assessing the use, it is necessary to take into consideration all the relevant factors (frequency of the use, whether the mark is used for the purpose of the marketing, territorial scope) to establish if the commercial exploitation of the mark is real and whether the use is significant enough to create or maintain a market share for the goods and services covered by the registration.
In the present case, the Opponent was able to produce a number of documents, such as copies of marketing leaflets, publications on the manufacturing and marketing of the pharmaceutical product, invoices, advertising and marketing material in various languages, which were sufficient to prove the genuine use of the earlier registration.
In relation to the likelihood of confusion, the General Court noted that, according to settled case law, there are two cumulative conditions that must exist in order to positively find a likelihood of confusion:
Additionally, the likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and the goods and services in question.
Regarding the similarity of the marks NOCUVANT – NOCUTIL, the Court stated that consumers normally place more importance on the first part of the sign. Only when the beginning of the mark is not distinctive will consumers attach more importance to the final part of the sign.
In the present case, it was not established that the term 'nocu' would be perceived by the relevant public, which consists of members of the general public and professionals with particular knowledge in the field of healthcare, as alluding to the terms 'nocturia' or 'nocturnal'.
The marks were found to be visually and phonetically similar. The applicant was not able to show that the prefix "noc" had a weak distinctive character in relation to the goods covered by the marks.
In conclusion, the General Court confirmed the findings of the Board of Appeal stating that the marks at issue had an average degree of similarity and that there was a likelihood of confusion as the goods covered by the marks were identical, despite the high level of attention of the relevant public.
Case Ref: T-321/18