OPPOSITION No B 2 614 603
Carolus C BVBA, Heuvelstraat 50, 3850 Nieuwerkerken (Limburg), Belgium (opponent), represented by Beelen Advocaten, Residentie Binnenhof Justus, Lipsiusstraat 24, 3000 Leuven, Belgium (professional representative)
a g a i n s t
Fashion Foods Limited, Redwood Valley Road, RD1, Richmond 7081, New Zealand (applicant), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative).
On 16/03/2017, the Opposition Division takes the following
1. Opposition No B 2 614 603 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 764 592 ‘ENGLISH ROSE’, namely all the goods in Class 31. The opposition is based on European Union trade mark registration No 8 505 711 ‘English rose’. The opponent invoked Article 8(1)(a) 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.
The request was submitted in due time and is admissible as the earlier trade mark was registered on 29/03/2010, that is, more than five years prior to the publication of the contested application (20/08/2015).
The contested application was published on 20/08/2015. 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 20/08/2010 to 19/08/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 31: Agricultural, horticultural and forestry products (neither prepared, nor processed), and grains, not included in other classes; live animals; fresh fruits and vegetables; seeds, 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.
The opponent did not submit any evidence of use of the mark; however, it claims that there were proper reasons for non-use.
Reasons for non-use
In accordance with Article 42(2) EUTMR, the opponent may either prove genuine use of the earlier European Union trade mark or prove that there are justifiable reasons for non-use. As an exception to the obligation of use, the concept of proper reasons for non-use is to be interpreted rather narrowly.
According to the judgment referred to by the opponent, judgment of 14/06/2007, C-246/05, Le Chef de Cuisine, EU:C:2007:340, the justifiable reasons for non-use must be obstacles having a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark.
In the present case, the opponent admits that the earlier mark has not been used in the public area, but claims that the reason why it could not have used the mark is the sudden and unexpected death of its manager who was engaged in the product development for the apple variety to be marketed under the opponent’s mark. While this is indeed a circumstance independent of the will of the opponent, it has no direct relationship with the mark and it does not make its use impossible or unreasonable. The opponent is not a natural person but a company. Whilst some decision-making processes and other managerial aspects of functioning of the company are undoubtedly affected by the death of the manager, there is no reason why the day-to-day operations should be incapacitated. This is even more the case when, such as in the present case, the late Mr Carolus was not the only manager. As it was put forward by the opponent, on 01/09/2014 another manager was named (company Tok 2 Me). Therefore, at the time of Mr Carolus’ death (12/10/2014), there was another manager in place. Moreover, as demonstrated by the extract from the Belgian Official Gazette submitted by the opponent, on 04/11/2014, shortly after Mr Carolus’ death, two additional managers were named. Although, admittedly, there may have been a transitional period when the new managers took over, the opponent company was clearly operational. In addition, such a transitional period should not influence the everyday activities of the company for longer than a few months, and had there been use of the mark before the sudden passing of Mr Carolus or even serious preparations for such use underway, there is no reason why such use could not have continued.
The Opposition Division notes that the length of time during which justified reasons existed may be significant. Reasons for non-use existing during only part of the relevant five-year-period may not always be considered justification for setting the proof-of-use requirement aside. In this context, the period of time during which these reasons were pertinent and the elapse of time since they no longer applied are of particular importance.
Consequently, even if the death of the manager was to be considered to be a proper reason of non-use for a certain period of time following this event, it does not explain why the mark had not been used in the four years preceding the described circumstance. There was nothing preventing the opponent from using the mark before the passing of Mr Carolus. The earlier mark was applied for on 24/08/2009 and registered on 29/03/2010. The sudden death of the manager of the opponent on 12/10/2014 cannot justify the absence of any use at all or of demonstrated preparation for use in the years between the registration of the mark and Mr Carolus’ death.
Considering all the above, the Opposition Division concludes that the unexpected death of one of the managers of the opponent cannot be considered to be a proper reason for non-use of the earlier mark and even it was to be considered a valid reason, it would only cover a relatively short time period within the entire five-year time frame. Consequently, the circumstances described by the opponent cannot justify the complete absence of use of the mark since its registration.
Since the opponent failed to prove use of the earlier mark and also to demonstrate that there were proper reasons for non-use, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.
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
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.