OPPOSITION No B 2 528 449
Coopérative Even, Lieu-dit Traon Bihan, 29260 Ploudaniel, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative)
a g a i n s t
Orion Corporation, Orionintie 1, 02200 Espoo, Finland (applicant), represented by Boco IP Oy AB, Itämerenkatu 5, 00180 Helsinki, Finland (professional representative).
On 20/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 528 449 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 13 745 831 (word mark: ‘ORILAN’), namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 3 791 464 (word mark: ‘ORIANE’). The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period 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 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 shall be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, European Union trade mark No 3 791 464.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 20/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 20/02/2010 to 19/02/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 5: 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.
Class 31: Agricultural, horticultural and forestry products (neither prepared, nor processed); grains (seeds); live animals, fresh fruits and vegetables; fresh vegetables and fruits; natural plants and flowers; foodstuffs for animals, malt.
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 08/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 08/05/2016 to submit evidence of use of the earlier trade mark. The Office extended this deadline and, on 28/04/2016, gave the opponent until 08/07/2016 to submit evidence of use of the earlier trade mark. On 04/07/2016 and 07/07/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
- Declaration under oath
The Declaration under oath was signed by Jean-Louis Bourgés, sales manager of the opponent, on 07/07/2016. It makes reference to all the evidence submitted and declares that the earlier mark is used for a range of veterinary and dietary products for animals and that the opponent reached a turnover of about EUR 1 500 000 for each year from 2010 to 2015 from sales of the abovementioned products in the European Union.
- Invoices (12 items, Documents A1-A12)
Only four of the invoices submitted are dated within the relevant period (namely Documents A3, A6, A9 and A12); these are dated between 06/05/2014 and 31/10/2014. The invoices do not refer to the sign but they contain product names such as ‘RUMISTRUM’ or ‘FIBREX’.
- Technical notices (Documents B1-B5)
These documents show an address and phone numbers from France and the language is French. They are not dated. In all the five technical notices submitted, the sign is depicted. The technical notices refer to the products ‘FIBRATOP’, ‘HYDROPLUS’, ‘PATAVIE’ and ‘RUMISTRUM’.
- Advertisements (Documents C1-C3)
Two of the three advertisements submitted are dated December 2014 (Document C1) and December 2015 (Document C2). The third (Document C3) is dated 2015, according to the ‘Declaration under oath’. Therefore, only one of the three advertisements is dated undoubtedly within the relevant period. The language of the advertisements is French. In the advertisements, the sign is depicted. Furthermore, they refer to the product ‘RUMISTRUM’.
- Tariff for products from 2014 (Document D)
This document is entitled ‘GRILLE TARIFE ORIANE France en €’, it is dated 01/06/2014 and the prices are in euros. The author of the document is unknown. The price list refers to a range of different products: ‘RUMISTRUM’, ‘FIBRATOP’, ‘HYDROPLUS’, ‘PATAVIE’, etc.
- Turnover (Document E)
This shows a table entitled ‘CA ORIANE 2010-2015 et CUMUL 3 MOIS 2016’, dated 28/04/2016, that lists products that were sold between 2010 and 2016 including, inter alia, ‘RUMISTRUM’, ‘FIBRATOP’, ‘HYDROPLUS’ and ‘PATAVIE’. The author of the document is unknown.
As far as the declaration under oath is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all.
The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Following a similar line of reasoning, the submitted ‘Tariff for the range of products ORIANE in the year 2014’ (Document D) and the ‘Turnover’ (Document E), because they originate from the opponent (not signed and without indication of the source of information), have less probative value than physical or any other evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the said documents are supported by the other items of evidence.
Taking into account the evidence as a whole, the Opposition Division considers that the opponent failed to prove genuine use.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union 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, 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 42(2) and (3) EUTMR, 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 sign used as shown in the technical notices and the advertisements does not constitute use of the registered European Union trade mark. The registered earlier mark consists of one element only, that is, the distinctive word ‘ORIANE’.
The fact that the sign has been used in a figurative form would not necessarily be a hindrance to proving genuine use. In the present case, the additional figurative element at the beginning of the sign as used and the stylisation of the verbal element, as such, may be regarded as an acceptable variation of the earlier mark. However, when encountering the sign as used, the relevant public will not recognise the word ‘ORIANE’ but will perceive it as a separate figurative mark containing the verbal element ‘riane’. The omission of one letter constitutes an alteration of the distinctive character of the mark, especially considering that the registered mark consists only of the verbal element ‘ORIANE’.
The invoices that are dated within the relevant period do not refer to the sign. Although the price list and the turnover table do make reference to the registered mark and to the individual goods, these documents were prepared by the opponent and there is no evidence or indication that they were ever distributed to the public.
In view of the above, the Opposition Division considers that the evidence does not show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
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 documents filed in their entirety do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use.
There are four invoices submitted that are dated within the relevant period (Documents A3, A6, A9 and A12). However, only one of these invoices (Document A3) refers to a product name that appears in the technical notices or the advertisements, namely ‘RUMISTRUM’, and therefore only one of the invoices refers to goods that were marketed with the opponent’s sign.
Only one invoice for 20 packages of a product and one advertisement were clearly dated within the relevant period; these cannot adequately prove a commercial volume that would suffice for genuine use of the registered European Union trade mark.
Moreover, the undated technical notices are not convincing proof that the relevant goods have been commercialised effectively within the relevant market. They neither contain any reference regarding commercial transactions nor indicate when or to what extent the sign as used has come to the attention of the public.
Similarly, concerning the advertisements, the existence of the promotional materials does not establish the extent of any distribution of the advertisements or the number of sales made of the relevant goods. The opponent has failed to provide any further information and evidence that would allow the Opposition Division to make a realistic assessment of the market presence of the sign as used, such as the amount of promotional material distributed and the territorial spread thereof, which could have given more conclusive weight to this evidence.
Other documents that could prove the use of the earlier trade mark, such as contributions from professional associations or other independent sources, extracts from tax and/or commercial balances and/or other informative documents for the goods in question, have not been submitted.
Therefore, the documents submitted do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.
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).
The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.
Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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
|
Magnus ABRAMSSON |
Martin EBERL
|
Denitza STOYANOVA-VALCHANOVA |
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.