OPPOSITION No B 2 589 359

Suigen Pharma International AG, Lerchenstr. 65, 4059 Basel, Switzerland (opponent), represented by Abril Abogados, C/Amador de los Ríos, 1-1°, 28010 Madrid, Spain (professional representative)

a g a i n s t

Nutrisearch S.A., 2 Schaffmill, 6778 Grevenmacher, Luxembourg (applicant), represented by Ulrike Rudolph, In der Schanz 10, 69198 Schriesheim, Germany (professional representative).

On 06/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 589 359 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 903 117, namely against all the goods in Class 5 and some of the goods in Classes 29 and 30. The opposition is based on European Union trade mark registration No 5 590 526 for the word mark ‘GLUCOQUICK’ (earlier mark 1) and Spanish trade mark registration No 2 804 386 for the word mark ‘GLUCOQUICK’ (earlier mark 2). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must 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 5 590 526 (earlier mark 1) and Spanish trade mark registration No 2 804 386 (earlier mark 2).

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 09/07/2015. 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 (earlier mark 1) or in Spain (earlier mark 2) from 09/07/2010 to 08/07/2015 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Earlier mark 1, European Union trade mark No 5 590 526:

Class 5:        Veterinary preparations; sanitary preparations for medical purposes, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Earlier mark 2, Spanish trade mark No 2 804 386:

Class 5:        Pharmaceutical products; dietetic foodstuffs for medical use.

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 04/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 09/05/2016 to submit evidence of use of the earlier trade marks. On 05/05/2016, the Office extended the time limit until 09/07/2016. The opponent submitted evidence of use within the time limit.

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.

The evidence to be taken into account is the following:

• Exhibit 1: printouts of webpages depicting products bearing the trade mark ‘GLUCOQUICK’ and offering these products for sale. The printout from the website ‘medishop’ is dated 10/07/2016. The remaining printouts are undated.
• Exhibit 2: photographs of packaging bearing the trade mark ‘GLUCOQUICK’. One item of packaging D11442-40-01-07_R1_4/8/2008 is printed, while 04/2010 is printed on another. The remaining two photographs are undated.

Assessment of the evidence — factors

According to Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods. These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43).

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use. The material merely shows product packaging and demonstrates that goods bearing the mark ‘GLUCOQUICK’ were offered for sale at a certain point in time. However, no information is provided regarding the number of visitors to the webpages in question or the actual sales of the goods. The opponent did not submit any evidence, such as sale figures or invoices, that could prove commercial volume in relation to the use of the earlier marks. Furthermore, none of the documents is dated within the relevant period.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the 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 (judgment of 11/03/2003, C-40/01, ‘Ansul’ and judgment of 12/03/2003, T-174/01, ‘Silk Cocoon’).

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. As explained above, the opponent failed to prove genuine use of its earlier mark as registered.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) 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

Judit NÉMETH

André Gerd Günther BOSSE

Natascha GALPERIN

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.