OPPOSITION No B 2 583 873

Beaphar Import & Export GmbH, Tackenweide 52, 46446 Emmerich, Germany (opponent), represented by RGTH Patentanwälte PartGmbB, Neuer Wall 10, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Prof Pet Corporation B.V., De Gouw 37E, 1602 DN Enkhuizen, Netherlands (applicant), represented by Arlette Molenaar, Hoofdweg 50, 1058 BD Amsterdam, Netherlands (professional representative).

On 03/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 583 873 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 348 651, , namely against all the goods in Class 31. The opposition is based on European Union trade mark registration No 2 300 887 ‘PetSTAR’. 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 14/07/2015. 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 14/07/2010 to 13/07/2015 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:        Pet foods, tonics for pets, in class 31.

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. They are cumulative (05/10/2010, T-92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43); therefore, the opponent is obliged to prove use with reference to each of these requirements.

On 05/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/07/2016 to submit evidence of use of the earlier trade mark. This deadline was then extended in accordance with Rule 71 EUTMIR until 05/08/2016. On 04/08/2016, within the time limit, the opponent submitted evidence of use.

Therefore, the evidence to be taken into account is the following:

• Exhibit 1: nine pictures depicting several products, namely a hairball remedy treatment for cats, dog snacks, an insecticidal collar for dogs, a flea collar for cats, a flea and tick protection product for dogs, deworming pills for dogs, flea drops for cats, flea drops for dogs and drops for cats against fleas and ticks (the last three photographs are dated 21/06/2016 and the remaining photographs are undated).

• Exhibit 2: a sheet containing information regarding the veterinary medicinal product ‘Pet Star Cat Flea Collar’, dated November 2013.

• Exhibit 3A: three photographs of packaging, depicting a flea collar for cats.
• Exhibit 3B: a table with volume of sales of this product for 2010 to 2015.
• Exhibit 3C: 17 invoices and 11 packing lists for the abovementioned product (article No 12420), dated 2012-2015.

• Exhibit 4A: a picture of packaging of a hairball remedy treatment.
• Exhibit 4B: a table with volume of sales of this product for 2010 to 2011.
• Exhibit 4C: nine invoices and one delivery note for the abovementioned product (article No 15174), dated 2010 and 2011.

• Exhibit 5A: three photographs of packaging depicting a flea collar for dogs.
• Exhibit 5B: a table with volume of sales of this product from 2010 to 2015.
• Exhibit 5C: 16 invoices and 11 packing lists for the abovementioned product (article No 12421), dated 2012-2015.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The Opposition Division notes that only one product, that is, dog snacks, which is displayed in one of the photographs of Exhibit 1, refers to the goods on which the opposition is based, namely pet foods. However, this document comes from the interested party itself and, therefore, it is not sufficient to demonstrate the extent of use in the absence of any other evidence corroborating it, such as invoices, catalogues distributed in the market to end users, website traffic statistics, external market research, publicity for the services or turnover statements from external sources. Taking this into account and in the absence of other supporting documentation, it cannot be determined that the earlier mark has been commercially used during the relevant period in relation to pet foods.

The remaining evidence of use shows that the mark has been used for flea collars for cats and dogs (Exhibits 1, 2, 3 and 5) and for a hairball remedy product; obviously, these are different goods from those on which the opposition is based, namely pet foods, tonics for pets in class 31. Flea collars for cats and dogs are veterinary medicinal products, as explained in the information in Exhibit 2, and are, therefore, in a different class (i.e. Class 5) from the registered goods.

On the first page of Exhibit 4, packaging for the product ‘Pet Star Cat Treat’ is depicted. The following information is visible on the packaging: ‘cat treats’, ‘hairball remedy’, ‘traitement pour pelotes de poils’, ‘helps, prevent and eliminate hairballs’ and ‘50 tablets/comprimes’. On the back, the specifications describe the product as ‘the easy way to prevent and treat hairballs’ and state that ‘regular brushing and the use of Pet Star malt Bits Hairball Remedy will help alleviate hairball problems’. The product at issue is not merely a foodstuff used as nutriment for animals; therefore, it is should not be classified in Class 31. It is considered to bring health benefits and is intended for medical or veterinary purposes; therefore, it should be classified in Class 5. In the light of the above, it is obvious from the evidence submitted that the opponent has used the trade mark ‘PetStar’ for preparations for the treatment of hairballs in pets in Class 5, rather than for pet foods, tonics for pets in class 31.

Therefore, the evidence submitted by the opponent concerns use not for the goods for which the mark is registered and on which the opposition is based, but for other goods for which, in the present case, the earlier mark has no protection.

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).

As shown above, the requirements for proof of use are cumulative. As the evidence fails to demonstrate nature of use, there is no need to further examine the other factors (place, time, extent).

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) 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

Anna MAKOWSKA

Carlos MATEO PÉREZ

Richard BIANCHI

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.