OPPOSITION No B 2 535 022

Sh’Zen (Proprietary) Limited, 17 Ferndale Road, Ottery, Western Cape 7800, South Africa (opponent), represented by Nucleus IP Limited, 10 St. Bride Street, London EC4A 4AD, United Kingdom (professional representative)

a g a i n s t

Grupo Tejedor Perez Tp S.L., Paseo Isabel La Católica 25 – Bajo, 47003 Valladolid, Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).

On 19/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 535 022 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 and services of European Union trade mark application No 13 669 585. The opposition is based on European Union trade mark registration No 2 565 489 ‘SH’ZEN AESTHETICS’ (word mark) and non-registered trade mark ‘SH’ZEN’ (word mark) for Ireland and the United Kingdom. The opponent invoked Article 8(1)(b) and Article 8(4) EUTMR.

SH’ZEN AESTHETICS SH’ZEN
Earlier trade mark	Contested sign

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 European Union trade mark registration No 2 565 489 for the word mark ‘SH’ZEN AESTHETICS’.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application on 11/03/2015.

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 11/03/2010 to 10/03/2015 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: Cosmetics and cosmetic creams for the face, hands, feet and body; nail treatments; nail care products; foot care products; soaps and cleansing preparations; shampoo; bathing preparations; essential oils; lip care products; deodorants for personal care.

Class 5: Vitamin preparations; antiseptic creams.

Class 8: Manicure sets and manicure tools.

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 26/05/2016, in accordance with Rule 22(2) EUTMIR, the Office gave the opponent – after a request for extension of time – until 28/07/2016 to submit evidence of use of the earlier trade mark. On 26/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• A witness statement, dated 25/07/2016, by Glynis Richardson, director and shareholder of Sh’Zen (Proprietary) Ltd, setting out the company’s history and activities, supported by a list of evidence.

• Printouts of three undated pages from the website www.shzen.co.uk showing two products: ‘radium serum’ and ‘Spa Additive’.

• Some printouts of the Facebook page for Sh’Zen Ireland, which is available for friends only.

• A sales report for Sh’Zen Ireland by Deirdre Worth, who is a consultant operating under that name.

• Three printouts from online blogs, two of which are dated, one 16/07/2012 and one 06/09/2012.

• A copy of a 2013 enrolment form for Sh’Zen consultants.

• Some copies of documents showing special offers for consultants, dated May 2015.

• A copy of a document entitled ‘report and accounts’ by Sh’Zen UK Ltd, which indicates a profit of GBP 1 403 for the financial year 2013 and is dated 31/05/2013.

• A 2011 price list for products under ‘Sh’Zen for Hands’, ‘Sh’Zen for Feet’, ‘Sh’Zen for Body’.

• Four undated photographs showing ‘SH’ZEN’ during an exhibition.

• Fifteen copies of invoices from Sh’Zen (Proprietary) Ltd issued to Deirdre Worth, Ireland, dated between 11/07/2013 and 31/05/2014, amounting to approximately EUR 2 300 (ZAR 33 002.11).

The requirements for proof of use, that the place, time, extent and nature of use must be indicated, 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.

The Opposition Division will focus the present assessment on the extent of use.

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

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that the commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and the structure of the relevant market (30/04/2008, T-131/06, Sonia Rykiel, EU:T:2008:135, § 53).

As far as the witness statement is concerned, 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 are supported by the other items of evidence.

In the present case, however, there are no documents providing any information concerning the commercial volume, the duration, the territorial scope and the frequency of use of the goods in the relevant territory. Although the evidence includes, for example, 15 invoices made out by the opponent to its sole Irish consultant during a period of approximately one year within the relevant time period, the Opposition Division is not able to determine whether or not those goods were actually brought to the market. There are no invoices that show the actual sale of the goods. Moreover, it is not shown that the products mentioned in the invoices bear the earlier trade mark ‘SH’ZEN AESTETICS’. The majority of the documents submitted derive from the opponent or its Irish and UK consultants.

The smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opposing party to produce additional evidence to dispel possible doubts as to its genuineness (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 37).

The documents do not demonstrate if, when and to what extent goods bearing the earlier trade mark were distributed by the import companies within the relevant territory or whether they were in transit only. 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 (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

The submissions of the opponent, considered in their entirety, do not contain convincing evidence regarding other factors relevant for extent of use (such as extensive geographical scope of use or high frequency or long duration of use) that would offset the rather small amount of quantitative evidence. For example, the sales report by the opponent’s Irish consultant, Mrs Deirdre Worth, indicates that she merely ‘gave away’ an unspecified number of products. Furthermore, some sales figures are given in the same report for the period 2012-2015, but they are not supported by any invoices proving that actual sales took place. Moreover, it is not clear what the net turnover figures are, since the figures for ‘retail’ and ‘cost’ are listed together.

Regarding the proof of use in relation to the United Kingdom, the sole evidence is in the form of a copy of ‘report and accounts’ by Sh’Zen UK Ltd, which indicates a profit of GBP 1 403 for the financial year 2013 (with no indication of what the profit relates to); this is not considered sufficient. While use of the mark need not necessarily be quantitatively significant for it to be deemed genuine use, given the size of the market for cosmetics over a five-year period in the United Kingdom, this can hardly amount to genuine use. In addition, this report is not supported by invoices or any other material.

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

Taking all the above into account, 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.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-a-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature. In the present case, the opponent failed to submit any of such information.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Ioana MOISESCU

Cynthia DEN DEKKER

Plamen IVANOV

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.