In-Cell-Art | Decision 0012055 – Trademarkers Legal Blog

CANCELLATION No 12 055 C (REVOCATION)

Incella GmbH, Hermann-von-Helmholtz-Platz 1, 76344 Eggenstein-Leopoldshafen, Germany (applicant), represented by Georg Johannes Hoppe, Beuckestr. 20, 14163 Berlin, Germany (professional representative)

a g a i n s t

Bruno Pitard, 4, rue Félix Eboué, 44400 Reze, France, (EUTM proprietor), represented by NONY, 11, rue Saint Georges, 75009 Paris, France (professional representative).

On 18/01/2017, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 4 056 826 are revoked as from 05/11/2015 for all the contested goods, namely:

Class 5: Pharmaceutical and veterinary preparations, pharmaceutical and veterinary preparations for gene therapy and cell therapy, pharmaceutical preparations being gene transfer agents, pharmaceutical preparations being non-viral vector carriers, pharmaceutical preparations being transport agents for active principles, pharmacy preparations and diagnostic preparations for pharmaceutical, biological and medical use, namely DNA sequences (parts), proteins, antibodies, sugars, polymers, genes, pharmaceutical preparations in the form of nanoparticles, pharmaceutical preparations for intramuscular and intracardiac injection, auto-assembled pharmaceutical preparations, pharmaceutical preparations for aerosols.

Class 9: Apparatus and instruments for physico-chemical analysis, scientific apparatus, in particular pipettes, test tubes, laser granulometers, zetameters, fluorimeters, spectrophotometers, electrophoresis, chromatographs, scales, pH meters, luminometers, evaporators, reactors, optical and electronic microscopes.

3. The European Union trade mark remains registered for all the uncontested services, namely:

Class 42: Chemical and biological analyses and laboratory research and analysis for medical purposes, industrial research services, chemical and biological research, research and development of new products for others, immuno-marking.

4. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 4 056 826 ‘In-Cell-Art’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely

The request is not directed against the registered services in Class 42.

The applicant invoked Article 51(1)(a) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the mark has not been put to genuine use for a continuous period of five years in relation to the contested goods.

The EUTM proprietor provides evidence to prove use of the mark (listed below) and argues that the mark was used in the course of trade as a trade mark, even for the goods, as is demonstrated in particular by the documents showing the mark on a box of pipettes and by the advertising leaflets. He emphasises that the Cancellation Division should not assess the economic success of the company or its business strategies but assess whether the mark was genuinely used. He refers to the previous opposition proceedings between the same parties No B 2 324 054 where the Opposition Division recognised that the extent of use must be assessed in the light of the nature of services in question, that is, research activities.

The applicant replies that the evidence does not show the mark as registered, that it does not show use of a trade mark but only that of a company name and that it is not clear from the documents in connection to what products the mark was supposedly used. It points out that the documents show products under different marks but not under the contested one.

The EUTM proprietor refutes the applicant’s arguments by claiming that the forms in which the mark was used do not alter its distinctive character and that the sign is used both as a company name and as a trade mark. Furthermore, he argues that the fact that the products also bear different names does not preclude the contested mark from being genuinely used as it is used as a ‘house mark’, as is common on the market. Finally, he reiterates its previous arguments about the specificities of the market and the need of the assessment of the extent of use in the light of this factor.

GROUNDS FOR THE DECISION

According to Article 51(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

Genuine use of a trade mark exists where the mark 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 requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C-40/01, Minimax, EU:C:2003:145, in particular § 35-37 and 43).

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’ (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 38).

According to Rule 40(5) EUTMIR in conjunction with Rule 22(3) EUTMIR, the indications and evidence for the furnishing of proof of use must consist of indications concerning the place, time, extent and nature of use of the contested trade mark for the goods and services for which it is registered.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non-use.

In the present case the EUTM was registered on 22/12/2005. The revocation request was filed on 05/11/2015. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 05/11/2010 to 04/11/2015 inclusive, for the following contested goods:

On 22/02/2016 the EUTM proprietor submitted the following evidence as proof of use.

Document 1: Extracts from the WAYBACK machine website, displaying historical publications from the website www.incellart.com. The extracts give information about projects undertaken by the company In-Cell-Art. The extracts are dated between 2010 and 2013.

Document 2: A picture of what seems to be two test tubes carrying the contested trade mark. On one of the tubes the expiration date in 2010 can be seen. The content of the tubes is unknown; however, they bear the inscription ‘DNA Transfection’. It is further unknown whether the tubes are intended to be sold or are solely intended for use inside the company.

Document 3: An advertising leaflet from 2012. The date of this document is supported by the purchase order for the said leaflet attached as Document 10. The leaflet describes the activities of the company In-Cell-Art, in particular ‘IN CELL ART focuses on the development of formulation technologies for the safe, targeted and efficient delivery of macromolecular drugs’ and ‘IN CELL ART develops and provides to the pharmaceutical and biotechnology companies and to academic research groups a comprehensive package of services based on its efficient and safe proprietary formulation of technologies.

Document 4: An advertisement, allegedly dated in 2012, for a new product named NANOTAXI. The leaflet explains that Incellart is a biopharmaceutical company specializing in the preclinical and pharmaceutical development of Nanotaxis.

Documents 5-9: In-Cell-Art bulletins dated between 2011 and 2012, in which investors and scientists are informed about the achievements of the company (e.g. ‘this collaboration strengthens the position of In-Cell-Art as a leading company of nanocarrier technologies for macromolecules’). The products referred to in these documents are identified by names such as ICANtibodies, ICAFectin, ICA614, whilst In-Cell-Art is referred to as the company that produces them.

Document 10: A purchase order for leaflets dated 10/05/2012.

Document 11: An advertising leaflet explaining the activities of the company In-Cell-Art and products such as Nanotaxis, ICAFectin and ICANtibodies.

Document 12: A season’s greeting card for 2013.

Document 13: An advertising leaflet for ‘RNA destination’ explaining the activities of the company In-Cell-Art. This document also contains a purchase order claimed to be for the leaflet dated 12/03/2013.

Document 14: An advertising leaflet for ‘ICAchem’ explaining the research activities of the company In-Cell-Art, for example ‘at In-Cell-Art, the chemistry team is well-trained to deliver fully synthetic and high-purity Nanotaxi…, In-Cell-Art has decided to create a chemistry platform for custom synthesis at the interface between chemistry and biology: ICAchem’.

Document 15: An In-Cell-Art bulletin dated 08/11/2013 announcing that In-Cell-Art had won the ‘Deloitte Technology Fast 50 West Award’.

Document 16: An advertising leaflet for ‘ICANtibodies’ explaining their functions.

Document 17: A news article from Actulabo dated 21/05/2014, stating that the company located in Nantes, France, In-Cell-Art, had signed a contract with ‘Virbac’ to use one of the company’s technologies (ICANtibodies) to ‘discover a monoclonal antibody’.

Document 18: An In-Cell-Art bulletin dated 06/12/2013 stating that it had won the ‘Trophées Territories Innovation Pays de la Loire’ award for the category ‘industry, agriculture, food and health’.

Document 19: An article from the paper Biotech finances dated 16/09/2013, in which Jean-François Balducchi states that In-Cell-Art has had an interesting expansion. Furthermore, this document states that the company In-Cell-Art has begun to collaborate with the company Stallergenes.

Document 20: An article from the paper Biotech finance dated 20/05/2013, stating that the company ‘In-Cell-Art has obtained for its candidate, a liver cancer vaccine, a proof of an interesting preclinical concept, which shows the potential of its nanovectors technology’.

Document 21: An article from the paper Biotech finance dated 05/12/2011, stating that the company In-Cell-Art had won a call for tender issued by the Defence Advanced Research Projects Agency (DARPA), a structure belonging to the US Department of Defence.

Document 22: An article from the paper BIOTECH.INFO dated 08/10/2008, stating that the company In-Cell-Art is working with vectors for macromolecular medicines. It also stated that the company was granting licences on its nanovectors and that it produced therapeutic proteins for gene therapy.

Document 23: An article from the paper Biotech Actualities from April 2008, stating that the company In-Cell-Art had hired a new head of the company and that the company intended to hire additional personnel and raise funds.

Document 24: An article from the paper Biotech Actualities from March 2008, stating that the company In-Cell-Art had signed an agreement with a Belgian company relating to the marketing of a new generation of transfection reactives.

Document 25: An article from the paper Biotech Actualities from November 2007, stating that the company In-Cell-Art had been involved in the development of synthesised lipids.

Document 26: An article allegedly from Chimie Pharma Hebdo from November 2007, stating that the company In-Cell-Art had a distinguished team and that it had won a competition held by the French Ministry of Research and that it had a global exclusive licence on four public patents.

Document 27: An undated article of unknown origin stating that the company In-Cell-Art develops and proposes services for the pharma industry, the biological industry and research centres. The document states that the company works with macromolecules.

Document 28: An article from the paper LYONSBIOPOLE from July 2007, stating that the company In-Cell-Art was a leading firm in the field of biological macromolecule formulation.

Document 29: An article from the paper INDUSTRIE PHARMA MAGAZINE, in which Bruno Pitard from In-Cell-Art describes some of the company’s activities and their challenges.

Document 30: An article from the paper BIOTECH.INFO dated 12/07/2006, stating that the company In-Cell-Art had managed to overcome the cellular barriers in complete safety.

Document 31: An undated article from the paper ‘Panorama des biotechnologies’ stating that the company In-Cell-Art offers solutions for the pharmaceutical development of active ingredients such as DNA, interferants ARN or proteins to its partners.

Document 32: An In-Cell-Art bulletin dated 04/02/2014, stating that the company In-Cell-Art had entered into an evaluation agreement with the ‘Institut Pasteur’ to validate the ‘ICANtibodies’.

Document 33: An In-Cell-Art bulletin dated 03/12/2014, stating that the company ‘In-Cell-Art announces execution of evaluation agreement with an Asia-Pacific listed pharmaceutical company’ to explore application of In-Cell-Art’s Nanotaxi® to a clinically validated therapeutic platform.

Document 34: An In-Cell-Art bulletin dated 06/12/2013, stating that the company In-Cell-Art had won the 2013 Territories Innovation Awards for its breakthroughs in fields such as gene therapy and nucleic acids-based vaccination.

Document 35: An In-Cell-Art bulletin dated 19/02/2014, stating that the company In-Cell-Art had been collaborating with a Luxembourg-based company.

Document 36: An In-Cell-Art bulletin dated 16/10/2014, stating that the company In-Cell-Art was participating in the composition of a Scientific Advisory Board.

Document 37: An In-Cell-Art bulletin dated 16/10/2014, stating that the company In-Cell-Art had entered into pilot research studies with a Japanese biopharmaceutical company to explore application of In-Cell-Art’s Nanotaxi®.

Document 38: An In-Cell-Art bulletin dated 17/04/2014, stating that the company In-Cell-Art had entered into a collaboration agreement with the company ‘Virbac Animal Health’ to undertake research on antibodies.

Documents 39 and 40: Photographs of test tubes in a box that bears the contested mark and the mark ‘ICANtibodies’. On some of the tubes, dates in 2012 and 2013 are visible.

Documents 41 and 42: The Office’s decisions (opposition No B 2 439 167 and cancellation No 8280 C).

Document 43: An advertising leaflet for ‘ICAVaxFectin’, mentioning also the activities of IN-CELL-ART.

Document 44: An In-Cell-Art bulletin dated 06/12/2012, announcing that the company In-Cell-Art has entered a Pilot Research Study with an oncology-focused company to explore application of In-Cell-Art’s Nanotaxi to a platform for development of vaccines.

Document 45: An In-Cell-Art bulletin dated 08/11/2013, announcing that the company In-Cell-Art won 2013 Deloitte Technology Fats 50 West Award.

Document 46: An In-Cell-Art bulletin dated 15/11/2011, announcing a common project of three companies.

Document 47: An In-Cell-Art bulletin dated 12/11/2012, announcing the In-Cell-Art’s nomination for the above mentioned Deloitte Award.

Documents 48 to 51: Invoices dated between 2009 and 2012 for services such as genetic immunization and preparation of antibodies, cellular transfection, gene inhibition, production of human and rat antibodies by mouse immunization, development of monoclonal antibodies by immunization, synthesis, optimization, cloning and purification of coding plasmid for a protein, visualisation through microscope, DNA sub-cloning etc., addressed at clients in France, Belgium, Germany, the USA and Taiwan. The several invoices referring to goods are for a DNA transfection reagent named ‘ICAFECTIN’. The words ‘In-Cell-Art’ are present in the invoices at the bottom as an identification of the entity issuing the invoice and at the top of the invoices in a figurative form as part of the slogan.

Document 52: Documents related to the project ICA12-163 (Production of polyclonal antibodies against FNCRN by co-immunization with FNCRN-TCE and microglobuline2 using ICANtibodies technologies in HC14 rats) dated in 2012 and 2013: a project proposal to be approved – the author of the proposed study is Benoit Barteau from In Cell Art and the proposed research of the company is described in detail in the project documentation; the invoice related to the research to be sponsored by a US based company; a photograph of the testing tubes with the serums to be used in the project.

Document 53: Documents related to the project ICA11-128 (Programme de Production par immunization genique d’anticorps monoclonaux diriges contre les proteins EGF1, EGF2 et EGF3) dated in 2011 and 2012: project description, invoices, study results and photographs of test tubes.

Document 54: An agreement to perform a scientific task between VIBRAC and In-Cell-Art for production of veterinary products dated in April 2015 in which VIBRAC commissions In-Cell-Art to perform DNA immunization and generation of mouse monoclonal antibodies. According to the agreement, VIBRAC has to deliver raw materials and products to In-Cell-Art and to provide remuneration for the task to In-Cell-Art.

Document 55: Agreement between MERIAL LIMITED and In-Cell-Art for scientific research and pharmaceutical testing services dated in April 2010.

Document 56: Result of the study on the injection of antibodies for animals dated in November 2011.

Documents 57 to 59: Leaflets presenting products of In-Cell-Art such as Nanotaxi, ICAntibodies, ICAFectin.

Assessment of genuine use

Article 51(1)(a) EUTMR and Rule 22(3) EUTMIR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered. In the present case, the contested EUTM is registered for goods and services in Classes 5, 9 and 42. However, the services registered in Class 42 are not contested by the applicant. The EUTM proprietor thus had to demonstrate that the mark was used for the goods registered in Classes 5 and 9 as listed above.

The documents refer mainly to services rendered by the company In-Cell-Art. The websites, bulletins and articles refer to services provided by the company or other announcements regarding the company operations. Some of the bulletins are dated well prior the start of the relevant period (in 2006, 2007 or 2008). The projects and agreements (Documents 52 to 56) demonstrate that the company In-Cell-Art provided services to third parties. The invoices also refer mainly to provision of services such as genetic immunization and preparation of antibodies, cellular transfection, gene inhibition, production of human and rat antibodies by mouse immunization, development of monoclonal antibodies by immunization, synthesis, optimization, cloning and purification of coding plasmid for a protein, visualisation through microscope, DNA subcloning etc. Although some of the invoices are in French, it is clear that their subject matter is the same as that of the invoices in English because the services are described as ‘immunisation genique…’, ‘transfection cellulaire…’, ‘inhibition d’expresion de gene…’, ‘synthese, optimisation, clonage, amplification et purification d’un plasmide’ etc. Even if the invoices are for production of something (antibodies, serums) it is clear that what is charged are the production services and not the sale of goods, for which it cannot be deduced from the invoices that any goods are labelled with the contested mark.

Several invoices refer to a product, namely to a DNA transfection reagent. Some of them are dated in 2009, that is to say, before the relevant period, but others originate from the relevant period. However, in the invoices themselves, all of these reagents are identified as ‘ICAFECTIN’, even followed by the ® symbol. The product named ‘ICAFECTIN’ is also displayed in the advertisement leaflets, along with other products called ‘nanotaxi’, ‘ICANtibodies’, etc. None of these products are however called ‘In-Cell-Art’. Even if ‘ICA’ may stand for ‘In-Cell-Art’, this is obviously a variation of the mark which alters its distinctive character. It can also not been deduced from the leaflets and the advertising material that ‘In-Cell-Art’ has been used as a house mark for those goods.

The difference between the trade marks used in direct connection with the products and the company name ‘In-Cell-Art’ scattered throughout the texts in the documents is enhanced by the fact that the abovementioned names of the products (Nanotaxi’, ‘ICANtibodies’, ICAFECTIN’ etc.) are always followed by the ® symbol or the TM symbol, whereas the name ‘In-Cell-Art’ is not. It is true, as the EUTM proprietor states, that there is no obligation for the EUTM proprietor to use those symbols together with the marks. Nevertheless, when the entity using the mark consistently makes such a distinction itself, it is an indication against the conclusion that the name ‘In-Cell-Art’ is used as a trade mark in relation to the goods at issue, as opposed to its use as a company name or its use in relation to the services.

The evidence also contains a few photographs of test tubes (Documents 2, 39 and 40), some of them bearing the sign ‘In-Cell-Art’ in a figurative form, either on the tubes themselves or on the box containing the tubes. However, it is not clear whether these tubes were sold or merely used by In-Cell-Art while conducting the research or testing as part of provision of the services. Indeed, the photograph included in Document 53, which shows the tubes used while performing the tasks as part of the project sponsored by another entity, looks very similar to the photographs in Documents 39 and 40. This appears to be an indication that the tubes on the other photographs were also used by In-Cell-Art during the provision of its services. Although In-Cell-Art may use products in order to render the services, it has not been proven by the evidence that any of these goods bearing the contested mark were sold to any entity or even that it was the EUTM proprietor’s or In-Cell-Art’s intention to sell any goods under the contested mark to any third parties.

Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47). In other words, it is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 40).

It cannot, therefore, be concluded from the evidence submitted that the contested mark has been used in relation to the contested goods. Any use that may have been demonstrated for the services is irrelevant for the present proceedings, as the registered services are not contested by the applicant.

The EUTM proprietor made reference to the opposition proceedings No B 2 324 054 of 14/09/2015 between the same parties and involving the here contested trade mark as one of the earlier rights, in which the Opposition Division found that the evidence was sufficient to prove use of the (there) earlier mark for some of the registered services. It has to be pointed out that this opposition decision indeed found that genuine use of the mark was shown for the services but that it was not proven in relation to the goods. Moreover, the decision was appealed and the Board of Appeal, in the decision of 12/12/2016, No R 2282/2015-2, confirmed this particular conclusion of the Opposition Division and found, based on essentially the same evidence as in the present proceedings, that while use of the mark was demonstrated for some services in Class 42, the evidence did not prove genuine use of the mark for any goods.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the contested goods. As a result, the application for revocation is wholly successful and the EUTM must be revoked for all the contested goods, namely:

The EUTM remains on the register for all the uncontested services.

According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, i.e. as of 05/11/2015.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, he must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

María Belén IBARRA DE DIEGO

Michaela SIMANDLOVA

Carmen SÁNCHEZ PALOMARES

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 Cancellation 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.

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