CANCELLATION No 12 469 C (INVALIDITY)
Body-Xtreme Nutrition GmbH, Wallweg 8, 36043 Fulda, Germany (applicant), represented by Lippert, Stachow & Partner, Krenkelstr. 3, 01309 Dresden, Germany (professional representative)
a g a i n s t
Spar International B.V., Rokin 101, 1012 KM Amsterdam, Netherlands (EUTM proprietor), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595 DA Den Haag, Netherlands (professional representative).
On 12/01/2017, the Cancellation Division takes the following
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 13 854 104 , namely against all the services in Class 44. The application is based on German trade mark registration No 302 012 047 099 for the word mark ‘Nutrition Zone’. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.
According to Article 53(1) EUTMR a European Union trade mark shall be declared invalid on application to the Office when, inter alia, there is an earlier trade mark as referred to in Article 8(2) EUTMR.
According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the applicant does not submit appropriate evidence.
According to Rule 37(b)(ii) EUTMIR in order for an application to be admissible it must contain particulars of the right or rights on which the application is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity. Pursuant to Rule 37(b)(iv) EUTMIR, an application for cancellation must also contain an indication of the facts, evidence and arguments presented in support of the cancellation grounds.
In the present case, the application for a declaration of invalidity is based on German trade mark registration No 302 012 047 099 ‘Nutrition Zone’ for the services in Classes 35 and 38 covered by the registration. The application was deemed to fulfil the admissibility requirements given that all required details of the earlier mark had been provided in either the application form or the documents attached thereto.
However, in the letter of 23/02/2016 by which the Office notified the applicant of the decision on admissibility, the applicant was explicitly informed that ‘the documents and/or translations that you may have submitted so far with a view to completing the admissibility of the application may not be sufficient for the substantiation of the application for invalidity (proof of the existence and validity of the earlier right/s) as a whole. This will be examined when a decision on the substance on the case is taken’.
Although in invalidity proceedings based on relative grounds there is no time limit for the substantiation of the earlier rights, and the proof of the existence, validity and scope of protection of all the earlier rights and the evidence proving the applicant’s entitlement to them have to be filed together with the application, this does not mean that there is no distinction between admissibility and substantiation requirements. Applying by analogy Rule 19(2)(a)(ii) EUTMIR, if the application for invalidity is based on a registered trade mark which is not a European Union trade mark, the applicant must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate or equivalent documents emanating from the administration by which the trade mark was registered.
In the present case, the evidence filed by the applicant consists of an extract from a database, in German, together with its translation into English.
The evidence mentioned above is not sufficient to substantiate the applicant’s earlier trade mark because the document submitted is of unknown origin. According to the Office’s Guidelines (Part C: Opposition, Section 1: Procedural matters, 4.2 Substantiation, 184.108.40.206. Extracts from official database, p.35), ‘extracts from databases are accepted only if their origin is an official database, that is to say, the official database of one of the national offices or WIPO, and if they are equivalent to a certificate of registration or last renewal. The unaltered electronic image of an online database extract reproduced on a separate sheet is also acceptable as long as it contains an official identification of the authority or database from which it originates’ (underline added).
In view of Article 76(1) EUTMR mentioned above, it was up to the applicant to submit evidence proving the existence, validity and scope of protection of the earlier right and its entitlement to it. Since it failed to do so, the application must be rejected as unfounded.
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 applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation 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 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.