Herbal Intelligence | Decision 2584525 – LABORATOIRE DE DERMOCOSMETIQUE ACTIVE DOCTEUR PIERRE RICAUD, Société par Actions Simplifiée v. Maharishi Ayurveda Products Europe B.V.

014000000 - 014999999, 014274179, 2017, 22, August-2017, Date, Decision Type, H-trademark, Herbal Intelligence, Involved Parties, L-company, LABORATOIRE DE DERMOCOSMETIQUE ACTIVE DOCTEUR PIERRE RICAUD, Société par Actions Simplifiée, M-company, Maharishi Ayurveda Products Europe B.V., OPPOSITION, Trademark, Trademark number

OPPOSITION No B 2 584 525

Laboratoire de dermocosmétique active Docteur Pierre Ricaud, Société par Actions Simplifiée, 104 Avenue de Président Kennedy, 75016 Paris, France (opponent), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

Map Europe B.V., Veldweg 33, 6075 NL Herkenbosch, The Netherlands (applicant), represented by Algemeen Octrooi- en Merkenbureau B.V., John F. Kennedylaan 2, 5612 AB Eindhoven, The Netherlands (professional representative).

On 22/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 584 525 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 14 274 179 for the figurative mark , namely all the goods in Class 3. The opposition is based on French trade mark registration No 3 223 058 for the word mark ‘INTELLIGENCE’. 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 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 mark on which the opposition is based.

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 23/06/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 23/06/2010 to 22/06/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Perfumery namely: perfume, eau de parfum, cologne, toilet water, scented body care products; essential oils; toiletry items, namely: shampoos, bathing salts, bath and shower gels, bath foam, soaps and toilet soaps, hair lotions; cosmetics, namely: anti-wrinkle creams; balms, emulsions, fluids, nonmedical vitalizing and toning lotions and creams, day cream, night cream, tinted cream, oils for facial care, facial massage products, spray lotions; nonmedical preparations for skin, body, face, eyes, lips, neck, bust, hands, legs and feet care; dentifrices.

According to Rule 22(3) EUTMIR, the evidence of use must 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 29/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 29/05/2016 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended by two months on the opponent’s request. On 28/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

  • Annex 1: on 05/07/2016 Ms A. Van Ruymbeke, director of controlling and operations, and Ms S. Delemer, director of marketing and communication,  declare that products bearing the signs ‘Intelligence Soleil’ and ‘Intelligence Minceur’ have been sold since 2010 in France, Germany and the United Kingdom. They provide annual sales volumes for a range of cosmetic products. Total yearly sales figures for France are EUR 310 725 (2010), EUR 442 271 (2011), EUR 348 141 (2012), EUR 316 084 (2013), EUR 288 029 (2014) and EUR 261 734 (2015).

  • Annex 2: several screenshots in English from the opponent’s website, dated 19/07/2016 (i.e. outside the relevant period), give information on the products (sun care and toning products) and their retail price in GBP. The earlier mark appears on photographs of the products and the accompanying explanations.

  • Annex 3: brochures (dating from the relevant period, for example 14/12/2010, 11/01/2011, 27/01/2012, 11/01/2012, 20/02/2012, 09/01/2013 etc.) and pricelists in GBP (dating from the relevant period, for example September 2010, May 2011, March 2012, April 2012 and May 2012 etc.) in English advertise sun care and toning products. The products advertised show the earlier mark.

  • Annex 4: undated samples of products and packaging showing the earlier mark in connection with sun care and toning products (indications, inter alia, in French). On one product and its packaging a use-by date of ‘S404 06 2017’ is shown.

Place and Time

 

When assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

As far as Annex 1 is concerned, while the declaration of director of controlling and operations and the director of marketing and communication is not a sworn statement or affidavit, 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.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration of two persons employed by the opponent are supported by the other items of evidence.

The earlier mark is registered in France. The director of controlling and operations and the director of marketing and communication stated that the earlier mark is used in France, Germany and the United Kingdom. They also filed yearly sales figures for each of the three territories.

However, no supporting documents were filed that show use of the earlier mark in France. In particular there is no evidence documenting that any sales took place under the earlier mark in the relevant territory France. In this context it has to be pointed out that the screenshots (annex 2), brochures and price lists (annex 3) in English are not appropriate means for showing genuine use in France, as these documents are clearly directed at consumers in the United Kingdom, since all the prices are in British pounds and not in Euro. Moreover, the screenshots (annex 2) were taken outside of the relevant period. As to the photographs of products and packaging bearing the earlier mark and additional text in French (annex 4), this evidence is either not dated or does not date from the relevant period and it does not constitute conclusive evidence of genuine use in France.

Furthermore, on 24/04/2017, in reply to the applicant’s argument that it is unclear to whom the documents in annex 3 were distributed, the opponent points out that the brochures and price list bear the abbreviation ‘GB’ and that they were in fact distributed in Great Britain. Thus, the only evidence that is dated within the relevant period and that could support the claims made in annex 1 clearly does not refer to use of the earlier mark in the relevant territory France.

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) 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

Konstantinos MITROU

Beatrix STELTER

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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