OPPOSITION DIVISION
OPPOSITION No B 2 529 132
Laboratorio Lucas Nicolas, S.L., Calle Valle de Alcudia, 1 – 1ª pta. Edif. Fiteni VIII.,
28230 Madrid/Las Rozas, Spain (opponent), represented by J. Lahidalga, Calle
Arturo Soria, 243 Dpl. Esc. 4-1º Izd., 28033 Madrid, Spain (professional
representative)
a g a i n s t
Pelican Healthcare Limited, Greypoint, Cardiff Business Park, Cardiff CF14 5WF,
United Kingdom (applicant), represented by Urquhart-Dykes & Lord LLP, Churchill
House, Churchill Way, Cardiff CF10 2HH, United Kingdom (professional
representative).
On 30/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 529 132 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
Preliminary remarks
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 all the goods of European Union trade mark
application No 13 665 468 for the word mark VITADERM, namely against all the
goods in Classes 5 and 10. The opposition is based on European Union trade mark
registration No 7 051 634 for the word mark VITALDENT and European Union trade
mark registration No 6 983 639 for the figurative mark
. 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, now Article 47(2) and (3) EUTMR), if the applicant so
Decision on Opposition No B 2 529 132 page: 2 of 5
requests, the opponent must 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 will be
rejected.
The applicant requested that the opponent submit proof of use of the trade marks on
which the opposition is based, namely European Union trade mark registration
No 7 051 634 for the word mark VITALDENT and European Union trade mark
registration No 6 983 639 for the figurative mark
.
The contested application was published on 04/03/2015. The opponent was therefore
required to prove that the trade marks on which the opposition is based were put to
genuine use in the European Union from 04/03/2010 to 03/03/2015 inclusive.
The request was submitted in due time and is admissible as the earlier trade marks
were registered more than five years prior to the relevant date mentioned above.
Furthermore, the evidence must show use of the trade marks for the goods and
services on which the opposition is based, namely the following:
Class 3: Oral care preparations (for non-medical use), preparations for polishing and
cleaning dentures, dentifrices, disinfectant and medicated soaps, soaps, essential
oils, cosmetics, hair lotions.
Class 5: Pharmaceuticals, material for stopping teeth and dental wax, denture
adhesives, alloys of precious metals for dental use, dental amalgams, antiseptics,
oral care preparations, cements, lacquers, putty, porcelain for dentures and
disinfectants.
Class 10: Surgical, medical, dental and veterinary apparatus and instruments,
artificial teeth; orthopedic articles; suture materials.
Class 35: Business management assistance and franchising.
Class 44: Dental clinics.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the
request for proof of use), the evidence of use must consist of indications concerning
the place, time, extent and nature of use of the opposing trade marks for the goods
or services in respect of which they are registered and on which the opposition is
based.
On 10/02/2017, in accordance with Rule 22(2) EUTMIR (in the version in force at the
moment of filing the request for proof of use), the Office gave the opponent until
Decision on Opposition No B 2 529 132 page: 3 of 5
15/04/2017 to submit evidence of use of the earlier trade marks. On 12/04/2017,
within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Annex I: a mock-up of a leaflet for a VITALDENT dental clinic in Spanish, with the
date 08/01/2016 indicated outside the document next to the pdf file name.
Annex II: a leaflet for Clínicas Vital Dent (dental clinics) in Spanish, with the date
30/06/2007 indicated as the end date for the validity of the prices advertised.
Annex III: a draft leaflet for a VITALDENT dental clinic in Italian, with the date
31/12/2016 indicated as the end date of a promotional offer.
Annex IV: a draft leaflet for a VITALDENT dental clinic in Italian, with the date
31/12/2016 indicated as the end date of a promotional offer.
Annex V: a draft leaflet for a VITALDENT dental clinic in Italian, with the date
31/08/2017 indicated as the end date of a promotional offer.
Annex VI: a draft leaflet for a VITALDENT dental clinic in Italian, with the date
31/12/2016 indicated as the end date of a promotional offer.
Annex VII: a draft leaflet for a VITALDENT dental clinic in Italian, with the date
31/08/2017 indicated as the end date of a promotional offer.
Annex VIII: a draft leaflet for a VITALDENT dental clinic in Italian, with the date
31/12/2016 indicated as the end date of a promotional offer.
Annex IX: a draft leaflet for a VITALDENT dental clinic in Italian, with the date
31/08/2017 indicated as the end date of a promotional offer.
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 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 evidence provided consists of one leaflet and one mock-up of a leaflet in
Spanish, and seven draft leaflets for dental clinics in Italian. Aside from the fact that
all of these documents are dated outside the relevant time period, no indication has
been given that these leaflets were ever made public. So while the leaflets prove that
there was intention to do business, there is no real indication that any commercial
transactions have been carried out under the earlier marks.
Therefore, the evidence of use filed by the opponent does not provide the Opposition
Division with any information concerning the commercial volume, the duration, or the
Decision on Opposition No B 2 529 132 page: 4 of 5
frequency of use. The opponent could have furnished evidence showing the actual
sales of the products, such as invoices, price lists, orders from customers, proof of
shipments, turnover figures, financial statements, annual reports or statements from
a third party. Moreover, the documents that were filed do not contain any indication
concerning the time of use.
Therefore, the Opposition Division considers that the opponent has not provided
sufficient indications concerning the time or extent of use of the earlier marks.
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 47(2) EUTMR and
Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).
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
Riccardo RAPONI Helen Louise MOSBACK Lucinda CARNEY
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
Decision on Opposition No B 2 529 132 page: 5 of 5
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.