CANCELLATION No C 24 644 (INVALIDITY)

 

Dermavita Company Ltd, Corniche Mazraa, General Street, Al Jichy Building (Lebanon Gulf Bank) – 4th Floor, Beirut, Lebanon (applicant), represented by Dimitar Todorov, Boulevard Hristo Botev Nє30, 1. Floor, App. 2, 1000 Sofia, Bulgaria and Sylvia Todorova, 3 "Hristo Botev" blvd., fl. 1, office 3, 1000 Sofia, Bulgaria (professional representatives)

 

a g a i n s t

 

Allergan Holdings France SAS, 12, Place de la Defense, 92400 Courbevoie, France  (EUTM proprietor), represented by Carpmaels & Ransford LLP, One Southampton Row, WC1B 5HA London, United Kingdom (professional representative).

 

On 27/03/2020, the Cancellation Division takes the following

 

 

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450. 

REASONS

The applicant filed a request for  a declaration of invalidity against European Union trade mark No 6 547 301 JUVÉDERM VOLUMA (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 5: Pharmaceutical preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin.

Class 10 Dermal implants, namely, visco-supplementation solutions for filling wrinkles.

The applicant invoked Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant:

The EUTM was filed on 31/12/2007 (no priority claimed) by Allergan Inc. from USA for goods in Classes 5 and 10. The mark was subsequently transferred to Allergan Holdings France SAS on 16/05/2017 which licensed the mark to Allergan France SAS on 30/05/2017 (license registered by EUIPO on 31/05/2017).

The applicant claims that the mark JUVEDERM was actually used in Lebanon since 1999 and that the persons involved in the creation of the mark founded its company in 2007. It further explains that on 18/04/2001, claiming a priority from 30/10/2000 (France), Laboratoires D’Estetique Appliquée (the EUTM proprietor’s predecessor) filed the EUTM No 2 196 822 JUVEDERM, for goods in Class 10 medical and surgical apparatus and instruments, dermal implants, biocompatible substances for medical purposes for reducing wrinkles, artificial skin for surgical purposes, prostheses. In 2018, replying in other proceedings before EUIPO, the proprietor stated that “in April 2007, the respondent (itself) became aware that the appellant (the applicant) has adopted a mark identical to its own otherwise unique mark JUVEDERM when the appellant sought to register it in the Lebanon”. The applicant claims that once the proprietor became aware of the applicant’s use of the mark in Lebanon for goods in Class 3 and of the registration of the same mark for goods in Class 5 in the same territory, it filed on 03/04/2007 for registration the EUTM No 5 807 169, JUVÉDERM, for goods in Class 5 pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles. Against this mark the applicant filed later on a revocation for non-use, case C 12 772.

The applicant claims that in 2007 Allergan Inc. has initiated a legal case claiming bad faith actions of Dermavita in registering the JUVEDERM mark in Lebanon. The Courts from Lebanon decided in 2015 that Dermavita did not act in bad faith as the use in Lebanon and Bulgaria of the mark JUVEDERM by Dermavita is prior to the use of the mark JUVEDERM by Allergan or its predecessors. Dermavita continued to register the JUVEDERM mark in more than 53 countries in Classes 3, 35 and 44 and, since 2015, it began licensing to companies from the EU its JUVEDERM brand.

On 31/12/2007 Allergan Inc. files the contested EUTM for Classes 5 and 10 goods being perfectly aware of the rights of Dermavita and their trade mark registration in Class 5 in Lebanon.

On 30/04/2015 the applicant filed the EUTM 14 016 737 JUVEDERM in Classes 3 and 35. The EUTM proprietor, despite being notified by the EUIPO, decides not to file opposition against the applicant’s mark. Instead, on 12/08/2015 Allergan Holdings France SAS filed in the same Class 3 (but also Classes 5 and 10) the EUTM 14 460 067 JUVEDÉRM.

The applicant considers that the contested mark was actually created to try to stop it from developing its brand. The behavior of Allergan in 2007 toward expanding its trade marks from Class 10 to Class 5 was repeated in 2015 when they expanded from Class 5 to Class 3.

After the applicant filed multiple cancellation actions against Allergan Inc, the company transferred the marks to Allergan Holdings France in order to dilute their direct connection with the case in Lebanon. The mere transfer of the marks for 1GBP is considered to be a bad faith strategy.

The applicant further claims that subsequent Juvederm applications for an identical name with the one used by it in Lebanon and Bulgaria since 1999 is also an infringement of its copyright over that name.

In the present proceedings, on 06/07/2018, the applicant filed, together with its observations, a list of thirteen items of evidence accompanied by short description of their content. The content of the respective evidence was also detailed in the applicant’s observations. However, out of these thirteen annexes, the applicant attached just annexes 1-3. Furthermore, although in its observations the EUTM proprietor pointed out this absence of evidence, and the Office notified the applicant that only the first three attachments were submitted, the applicant did not make available the remaining items.

At this point the Cancellation Division deems necessary to point out that this case forms part of a series of cases (out of which Cases 24 621, 24 642 and 24 644 involve parallel proceedings based on the same ground) between the same parties, represented by the same professional representatives. In all these cases the same list of evidence was filed by the applicant either on 05/07/2018 and 06/07/02018 or only on the 06/07/2018 like in the present case. However, case 24 621 is the only one in which all thirteen documents were filed by the applicant. A decision rejecting the invalidity request was issued on 26/03/2020 in that case.

Taking into account that the outcome of the present decision will not be affected by the following approach, the Cancellation Division decides to take into account all the thirteen annexes submitted by the applicant on 05/07/2018 and 06/07/2018 in case 24 621, this being the best scenario for the applicant. Furthermore, the Cancellation Division decides not to reopen the proceedings in the present case to request the applicant to complete the file with the missing exhibits 4-13 and emphasizes that the EUTM proprietor’s right to be heard will not be affected by such a measure, especially since it had knowledge of the respective evidence from case 24 621 and for reasons which will become evident further in the decision.

The evidence filed by the applicant on 05/07/2018 and 06/07/2018 in case 24 621:

1. Extract concerning the EUTM filed in the name of the EUTM proprietor Allergan Inc.;

2. (i)Trade mark assignment act dated 16/05/2017 by means of which the EUTM proprietor Allergan Inc. has assigned seven EUTMs (amongst them the contested EUTM) to Allergan Holdings France SAS for the amount of 1 GBP; (ii) the recordal application of the respective transfer at EUIPO; (iii) the notification from EUIPO regarding the transfer being registered on 24/05/2017;

3. Recordal application of a license agreement dated 30/05/2017 between the new EUTM proprietor Allergan Holdings France SAS with Allergan France SAS and the notification from EUIPO regarding its registration in the EUTM register, on 31/05/2017;

4. Two decisions of the Lebanese Courts of First Instance and Appeal respectively. The applicant claims that the courts established that the brand JUVEDERM has been used since 1999 by the partners of Dermavita, prior to Allergan. The decisions are translated into English;

5. and 6. Declarations of Houssam Adnan El-Tawil manager of Dermavita for the facts concerning its company submitted in national proceedings before the USPTO and the Canadian IP Office; in the first declaration he states that the applicant filed the EUTM 14 016 737 JUVEDERM on 30/04/2015 and despite being notified about it, the proprietor decided not to file opposition probably because of the Lebanese Court’s decisions. Instead the proprietor decided to file for the registration of the EUTM No 14 460 067 JUVÉDERM on 12/08/2015 in Class 3. He further declares that in July 2016 representatives of Allergan met with representatives of Dermavita, the latter proposing co-existence and asking Allergan to define for which products and for which territories they do not object use of the Dermavita’s trade mark. Instead, Allergan offered to buy the JUVEDERM trade mark of Dermavita the latter refusing the offer. Dermavita initiated several mediation proposals (in USA and Russia) having no reply from Allergan. Dermavita also accuses Allergan of maintaining many trade mark registrations only for the sake of stopping other businesses but never actually using the marks, reason why Dermavita filed numerous revocation actions following which some of Allergan’s trade marks were revoked. The second declaration gives information about the applicant and its trade marks and conflicts with the EUTM proprietor;

7. Application form dated 18/04/2001 of the first EUTM JUVEDERM which is now part of the JUVEDERM trade marks owned by Allergan Holdings France (after transfer from Allergan Inc.);

8. Statement submitted by the representatives of Allergan Holdings France before the EUIPO on 12/01/2018 in the appeal case R 2630/2017-4 (regarding the revocation case C 12 772 concerning the EUTM JUVEDERM);

9. Application form filed on 03/04/2007 for the proprietor’s EUTM 5 807 169 JUVEDERM for goods in Class 5; this EUTM was subject of the revocation case 12 772, revocation rejected by a decision of the Cancellation Division on 26/10/2017, upheld by the Board of Appeal and currently pending before the GC;

10. Extract from app.trademarknow.com regarding the registration in Lebanon on 14/03/2007 (date of registration) of the trade mark JUVEDERM for Class 5 goods in the name of Dermavita;

11. Application form of 12/08/2015 for EUTM JUVÉDERM in Classes 3, 5, and 10 in the name of Allergan Holdings France SAS and a list of countries where Juvederm marks are registered by Dermavita, all except one for Class 3 (the exception being the registration in Lebanon for Class 5 only), the majority also for Class 35 and some also for Class 41 and a map of the respective countries;

12. EUIPO’s communication of 27/07/2015 notifying Allergan Holdings France SAS of the filed application in the name of Dermavita in Class 3, that is prior to the subsequent application of Allergan in Class 3;

13. Trade mark registrations of the JUVEDERM trade mark of Dermavita in different countries amongst them being the certificate of registration for EUTM No 14 016 737 JUVEDERM (see points 5-6).

The case for the EUTM proprietor

The EUTM proprietor argues that the applicant’s case is fanciful, wholly unsubstantiated, and, in the context of the global dispute between the parties, purely vexatious. It pointed out the fact that the applicant did not file all the thirteen items of evidence as mentioned above so it commented on the first three annexes only.

The proprietor is, among other things, seeking pan-EU relief before the Paris High Court in relation to the applicant’s infringing activities under the sign JUVEDERM and this is yet another attempt by the cancellation applicant to disrupt the proprietor’s business and frustrate its legitimate actions against the cancellation applicant.

The proprietor, and other companies within the proprietor’s group of companies (together, “Allergan”), own more than 200 trade mark registrations and pending applications worldwide for marks consisting of, or containing, JUVÉDERM. The earliest of its marks was filed in October 2000 in France and these trade mark registrations/applications cover a combination of Nice Classes 3, 5, 10 and 44. Allergan’s Juvéderm is used in the EU since at least 2001. In June 2006, JUVÉDERM products were approved for sale in the United States. Allergan’s JUVÉDERM family of products is currently approved in 90 countries, including all major world markets. Global net revenues for the JUVÉDERM family of products exceeded USD 867 million in 2016. In 2017, they exceeded USD 1 billion for the first time (a 20% global growth).

The case from Lebanon concerned a different mark, in a different jurisdiction, and has absolutely no bearing on the present case in the EU. The proprietor did not bring this action based on bad faith but rather sought to cancel the applicant’s registration on the basis of the proprietor’s prior use in Lebanon. Ultimately the Lebanese court accepted evidence produced by the applicant at a late stage in the case which purportedly showed that the applicant, and not the proprietor, was the first to use the mark JUVEDERM in Lebanon. The Lebanese decision does not, contrary to the applicant’s contention, establish an accepted position or binding precedent that the applicant has any rights in the mark JUVEDERM outside of Lebanon.

The proprietor owns registrations of JUVÉDERM mark for goods in Class 5 that date back to 2001, i.e. 6 years before the applicant filed any application for JUVEDERM (in 2007 in Lebanon). It is also the owner of the JUVÉDERM family of trade marks (including the contested mark JUVÉDERM VOLUMA) that have been used since 2001 in connection with cosmetic dermal fillers.

In fact, in 2007, Allergan discovered that the applicant had applied to register an identical mark, JUVEDERM, in Lebanon and was furthermore offering JUVEDERM-branded injectable fillers allegedly manufactured in the EU (the primary market for Allergan’s JUVÉDERM products at the time), to doctors in France and Switzerland. Furthermore, the cancellation applicant had also applied to register, and started using, the mark SURGIDERM for a similar product range, SURGIDERM being another of Allergan’s dermal filler brands. Allergan sent, without success, a cease and desist letter insisting that the applicant immediately stops this infringing activity and withdraws its trade marks.

In 2015, the applicant embarked on a campaign of filing international trade mark applications for the mark JUVEDERM (i.e. the proprietor’s mark). Then, in January 2016 at the International Masters Course in Aesthetic Science (“IMCAS”) world congress in Paris the applicant offered to supply JUVEDERM branded professional cosmetic products to various EU countries confusing the Allergan’s customers.

Following this Allergan sued the applicant and several other defendants in the Paris High Court. Allergan is currently enforcing its JUVÉDERM trade marks against the applicant in over 200 trade mark oppositions and cancellation actions worldwide, as well as in several court cases. Allergan claims that it has a growing number of decisions in its favour, including decisions which expressly condemn the bad faith behaviour of the applicant.

The applicant did not prove that it is the senior user of the JUVEDERM mark, only sought to register its mark in 2007 and never confronted the proprietor’s use of the same mark. Given the global, longstanding and extensive nature of the proprietor’s business under the JUVÉDERM trade mark, it is improbable that the applicant would not be aware of or seek to challenge the proprietor’s use – unless it knew that it had no legitimate basis to do so.

The proprietor’s later registrations of JUVÉDERM trade marks (including the contested mark JUVÉDERM VOLUMA) were filed as natural extensions of a global business that has been carried out for nearly two decades. The suggestion that any of the proprietor’s trade marks were filed in anything other than good faith, as part of normal business practice, is fanciful and unfounded.

The applicant’s suggestion that an act of bad faith is also the fact that the proprietor failed to file an opposition against the applicant’s EUTM 14 016 737 makes no sense. The proprietor missed the deadline to oppose as a result of a technical error, and applied to cancel the registration shortly thereafter (on 04/04/2018). Furthermore, the applicant considers the transfer by Allergan Inc. of its JUVEDERM trade mark portfolio to the proprietor for the amount of £1 when other proceedings with the applicant were ongoing as acts of bad faith. However, the proprietor states that they are standard practice in intragroup transactions such as this one to use nominal consideration (e.g. £1), rather than a sum which reflects the true value of the asset being transferred, as the minimum required to make a contract legally binding. The assignment from Allergan Inc. to the proprietor (a holding company whose express purpose is to hold assets such as trade marks) is a commonplace practice in corporations that the applicant appears not to understand (or else intentionally misrepresents).

Last but not least the cancellation applicant provides no evidence whatsoever to substantiate the claim that it owns copyright in JUVEDERM.

The proprietor filed the following exhibits:

Evidence about the EUTM proprietor and its marks

1 Schedule of all the trade mark registrations or applications of the EUTM proprietor or its related companies;

2 An extract from, according to the proprietor, Allergan’s 2017 US Securities and Exchange Commission 10K showing the global revenues for the top products of the Company for 2016-2017:

12 and 13 Register extracts regarding: (i) the Brazilian trade mark No 829 213 066 JUVEDERM for goods in Class 5 (filed on 12/07/2001); (ii) international registration No 810 018 JUVEDERM designating, amongst others, Hungary, Poland, Czech Republic and Slovakia, for goods in Classes 5 (biocompatible substances for medical use intended for filling wrinkles) and 10 (filed in 2003); (iii)the oldest trade mark application of the EUTM proprietor filed on 30/10/2000 in France for the denomination JUVEDERM for goods in Class 10, this being also the priority for the EUTM No 2 196 822 JUVEDERM;

Articles

4 Next Finance and Les Echos articles: Allergan was granted Right of Reply (“Droit de Réponse”) to false statements published by Next Finance on 02/03/2017 and Les Echos on 03/03/2017. The articles misrepresented that Dima Corp SA (“Dima Corp”), one of the cancellation applicant’s licensees, acquired a license to exploit Allergan’s JUVEDERM brand for cosmetics. Next Finance and Les Echos published Allergan’s replies countering this on 19/04/2017 and 26/04/2017 respectively.

Court decisions

3 France Certified English translation of the order of the Paris High Court dated 12/01/2017: the applicant and one of its licensees undertook not to attend the 2017 IMCAS World Congress in Paris;

5 France English translation of the decision of 02/06/2017 issued by the Paris High Court which granted Allergan a preliminary injunction preventing the applicant and other defendants from using JUVEDERM in France on the basis that such use would infringe Allergan’s EU and French registrations of JUVEDERM and amount to unfair competition;

6 France On 13/07/2018, the Paris High Court further ordered the applicant, and other defendants, to pay Allergan liquidated damages and legal costs for failing to comply with the preliminary injunction;

7 USA Order of 21/07/2017 of the United States District Court for the Central District of California enjoining Dima Corp from using the JUVEDERM mark in the United States, including allowing U.S. downloads of a Juvederm app.

8 EU The EUIPO’s Board of Appeal’s decision of 19/12/2018 upholding the Cancellation Division’s Decision in case 12 772 ruling that Allergan’s EU trade mark JUVÉDERM has been genuinely used for all registered goods (Class 5), thereby dismissing the applicant’s non-use cancellation action in its entirety.

9 Turkey – on 27/06/2016, the Turkish Board of Appeal held Allergan’s opposition against the applicant’s Turkish Application No. 201521232 “juvederm” for goods in Class 3 to be well founded on the basis of likely confusion with Allergan’s prior rights in JUVEDERM and bad faith, and so rejected the cancellation applicant’s application in its entirety. No appeal was filed. An English translation of the decision is attached.

10 Russia – on 15/05/2017, the Russian IPO refused the Russian designation of the applicant’s IR 1266937 “JUVEDERM” in Classes 3, 35 and 44 in its entirety due to likely confusion with Allergan’s prior rights. The applicant’s petition to overturn the refusal was rejected by the Chamber of Patent Disputes, which ruled that Allergan’s JUVÉDERM mark is famous, and the applicant’s sign is confusingly similar. English translations of these decisions are attached.

11 Turkey – on 18/05/2018, the Turkish IPO rejected the applicant’s application 2016/101578 on grounds of confusing similarity and bad faith. The applicant appealed but the appeal was struck out by a decision of 18/08/2018. The Board of Appeal acknowledged the high degree of distinctiveness of Allergan’s mark, the risk of confusion and bad faith on the applicant’s part. No appeal was filed. A copy of the first instance decision, Board of Appeal decision and English translations are attached.

In the second round of observations:

The applicant insisted on the fact that it has precedence of use of the mark JUVEDERM in Bulgaria and Lebanon, that the proprietor or its predecessors had knowledge of the respective use by the applicant, that the proprietor recognised in its submissions that it knew that Dermavita has registered the trade mark JUVEDERM in Class 5 since 2007, firstly in Lebanon and that the decisions invoked by the proprietor are irrelevant. The applicant also stated that “the Board should also examine whether the registered proprietor had knowledge of existence of registered trademark JUVEDERM by DERMAVITA COMPANY Ltd in Lebanon for goods in Class 5 prior to filing his proper application for registration of EUTM JUVÉDERM VOLUMA for goods in Class 5.” The applicant filed a list of trade marks JUVEDERM registered in its name, the trade mark assignment filed previously as annex 2, decision of the United States District Court Central District of California dated 03/01/2018 and the cancellation decision issued by EUIPO in case 13 948 in the revocation action against the mark JUVEDERM 2 196 822 in which the respective mark was revoked for non-use for the goods in Class 10.

The proprietor reiterated its previous arguments regarding the lack of evidence to support the applicant’s claim that it is the senior user of the JUVEDERM mark or that it was the first one registering the mark JUVEDERM for goods in Classes 5 and 10. The proprietor filed as evidence the Judgment of the Tribunal de Grande Instance of Paris Civil Division of 21/02/2019 in case no 17/01904-DB3R-W-B7B-SVJK, a judgment concerning the trade mark revocation proceedings brought by the applicant against the proprietor’s French trade mark registration No. 3 061 345 JUVEDERM in Class 10.

The Court (in addressing the claim for costs and the counter claim made by the proprietor for abuse of process), held on pages 20 - 21 that:

“Whilst it is certain that the company DERMAVITA COMPANY PARSEGHIAN & PARTNERS could not be unaware that its claim for invalidity would fail, if only because it was unable to provide prima facie evidence of fraud that was the grounds for it to act, or its additional application for compensation for which it did not take care to provide any grounds in fact and in law”; and

“On the other hand, the company DERMAVITA COMPANY PARSEGHIAN & PARTNERS, by the multiplication of artificial and clearly unfounded applications and variations of its positions in various proceedings, unnecessarily complicated the case and extended the time for dealing with it, thus itself creating the costs that it wishes to have reimbursed” and

“Declares inadmissible the claims of invalidity and of unenforceability brought by the company DERMAVITA COMPANY PARSEGHIAN & PARTNERS relating to the transfer of 7 January 2010 and the declaration of renewal of the trademark “JUVEDERM” no. 3061345, to the transfer agreements of 9 November 2009, 7 July 2010 and 16 May 2017 and to the licence agreements of 18 May 2017;”

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(b) EUTMR 

General principles 

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark. 

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60). 

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37). 

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven. 

Findings of the Cancelation Division

The applicant bases its invalidity request on few points, the main being that it has precedence in use of the mark JUVEDERM in Lebanon and Bulgaria since 1999, as decided by the Lebanese Courts (exhibit 4).

As regards this claim, the Cancellation Division notes the following: the cases before the Lebanese Courts had as object the conflict between Allergan Inc. and Dermavita regarding which of these companies has precedence in use of the terms JUVEDERM (first case) or JUVIDERME (second case) and SURGIDERM, in Lebanon. The Cancellation Division notes some discrepancies between the respective apparently related judgments in the sense that the appeal case refers to a Decision of the Court dated 30/07/2013 whereas the judgment in the case before the Court of First Instance is dated 23/06/2011. Furthermore, the translation in English of both decisions mentions the mark JUVIDERME and not JUVEDERM, whereas the decisions in Lebanese mention in the appeal case the mark JUVIDERME and in the first instance the mark JUVEDERM. The Cancellation Division will nevertheless, refer to the respective court judgments as they were translated into English.

The Lebanese Court Of First Instance found that the predecessors of the applicant in the present proceedings signed a contract for the manufacturing of cosmetic products under the name of JUVIDERME and SURGIDERM with the Bulgarian company Business and Contracting Commerce on 15/10/1999 and that they began to distribute the products bearing these marks in 2000. The applicant’s company was established on 05/03/2007 and the “signatory of the company was the same person that signed the contract of 1999”. In the same decision the court found that the applicant in the present proceedings had registered the marks mentioned above on 14/03/2007 in Class 5, whereas the proprietor registered them on 26/05/2007 in Classes 5 and 10, marketing the products under JUVIDERME and SURGIDERM trade marks since 2001.

The Lebanese Court of Appeal decided that indeed the first invoice about JUVIDERME products was issued by the applicant’s predecessors on 22/11/1999 (translation of the Court’s decision, page 5, 2^nd paragraph) whereas the EUTM proprietor’s predecessors authorized a person for entering and marketing the JUVIDERME products in Lebanon on 15/03/2001 (same document page 4, 4^th paragraph), therefore, confirming the applicant’s “precedent in using the trade marks subject of the litigating as well as precedent in registering them before the competent authorities in Lebanon”. The same decision states that the applicant’s clients are not the same as the EUTM proprietor’s, as the goods produced by the latter are made for the medical physicians and specialists and they are not the same as the applicant’s clients. Furthermore, a regular consumer is not even aware of the kind of products the medical physicians or specialists use in their work place even if they have underwent a similar treatment.

The applicant contends that the courts in Lebanon decided that the evidence submitted by the applicant proves that it was the first using the marks JUVIDERME or JUVEDERM in Lebanon and Bulgaria (starting end of 1999). The precedence of use in Lebanon is clearly decided in both judgments; however, the Cancellation Division does not agree with the applicant’s interpretation that the Courts decided that it has precedence in using the marks also in Bulgaria (implicitly on the EU territory). The contract signed by the applicant’s predecessors with the Bulgarian company, the manufacturer of the goods, does not also mean that the goods were used on the Bulgarian territory and, upon inspection of the respective decisions, the Cancellation Division can’t find where the court pronounced a decision in this sense.

Be that as it may, the precedence in use of the respective signs in Lebanon (or even in Bulgaria) does not automatically mean that the EUTM proprietor filed the contested mark in bad faith.

It is clear that the applicant and the EUTM proprietor (and their predecessors) have a long-standing trade mark conflict. However, the first who protected the mark JUVEDERM by registration was the EUTM proprietor in 2000, when it applied for the registration of the French trade mark application which was subsequently used as a priority for the EUTM No 2 196 822 registered for goods in Class 10.

Admittedly, from the same Lebanese court decisions it emerges that the applicant was the first, in March 2007, that filed the mark JUVEDERM for registration in Lebanon for goods in Class 5, whereas the proprietor filed two months later, for the registration of the same mark for goods in Classes 5 and 10. However, the parties’ observations and the evidence taken into account show that, at the moment the applicant filed its first JUVEDERM mark in Lebanon for Class 5 goods in 2007, the EUTM proprietor was already the owner, for seven years, of a JUVEDERM registration at EU level (EUTM with priority date in 2000) and in France (2000) for Class 10 goods and for six years in Brazil (2001), this mark covering the same Class 5 goods. Moreover, the EUTM proprietor was the owner, since 2003, of the international registration No 810 018 JUVEDERM for goods in Class 5. Therefore, of the two, the EUTM proprietor is the one having prior registered rights for the term JUVEDERM for goods in Classes 5 and 10.

Indeed, on 03/04/2007, two weeks after the registration of the applicant’s trade mark in Lebanon, the EUTM proprietor applied for the registration of the mark JUVÉDERM at EU level (no 5 807 169) for goods in Class 5. The EUTM proprietor stated that it find out about the registration of the applicant’s Lebanese trade mark and did not oppose it because it missed the deadline but, subsequently, it filed for the cancellation of the respective mark which is a normal attitude to defend its rights. Furthermore, filing the EUTM No 5 807 169 for Class 5 goods on 03/04/2007 and afterwards the contested EUTM is again a way to protect its rights and business having in mind its prior JUVEDERM registrations for goods in Class 5 from Brazil and from the EU Member States designated in the international registration No 810 018 filed in 2003 (exhibits 12-13 from the EUTM proprietor’s evidence) and the prior registrations for goods in Class 10.

In the context of the prior trade mark registrations that the EUTM proprietor has in multiple jurisdictions it becomes completely irrelevant that on the filing date of the contested EUTM (31/12/2007) the EUTM proprietor was aware of the existence of the applicant’s Lebanese trade mark registration of 2007. Therefore, the applicant’s request that “the Board should also examine whether the registered proprietor had knowledge of existence of registered trade mark JUVEDERM by DERMAVITA COMPANY Ltd in Lebanon for goods in Class 5 prior to filing his proper application for registration of EUTM JUVÉDERM VOLUMA for goods in Class 5” becomes pointless.

On a side note, the applicant criticised the importance of the evidence submitted by the EUTM proprietor as being “issued by respectively competent bodies outside the territorial scope of protection” whereas, as seen above, it bases its case mainly on the decisions rendered by the Courts in Lebanon and on the fact that the respective courts decided that it showed a prior use of the mark JUVEDERM (or JUVIDERME) in that territory. Even if the applicant indeed had used its trade mark in Lebanon at that time prior to the EUTM proprietor, the applicant did not prove that the EUTM proprietor had or must have had knowledge of that use.

Furthermore, the applicant’s arguments that EUTM proprietor’s bad faith is shown also by its actions of filing, two months later, a Lebanese trade mark registration for the same JUVEDERM sign instead of opposing the applicant’s Lebanese trade mark cannot be accepted as proof of the bad faith of the proprietor in the present case. The proprietor explained that it did not oppose the Lebanese trade mark because it lost the deadline and that is why it filed for the cancellation of the applicant’s mark. In any event not filing an opposition against a trade mark application cannot constitute a proof of bad faith. Given the previous multiple registrations for trade marks containing the term JUVEDERM in the name of the EUTM proprietor, its application for registering the EUTM JUVÉDERM VOLUMA and other JUVÉDERM marks in Class 5 and 10 is simply a natural extension of its flagship brand, business or simply the creation and safeguarding of new sub-brands under its umbrella mark JUVÉDERM or JUVEDERM. Consequently, the applicant’s arguments are unfounded.

The same conclusion reached above applies for the applicant’s arguments that the EUTM proprietor shows bad faith by filing applications for the classes where the applicant has business interest since, as shown above, the proprietor tried to secure its trade marks and business in the same classes before the applicant did (at least for goods in Classes 5 and 10).

The applicant’s accusation of bad faith of the EUTM proprietor seems strange in the light of the declaration of the applicant’s director (exhibit 5) who states that representatives of both parties in conflict met in July 2016 and the applicant proposed co-existence and asked the EUTM proprietor to define for which products and for which territories they do not object use of the applicant’s trade mark. The applicant’s line of action at that time (almost nine years after the filing date of the EUTM) was, therefore, to seek for the coexistence with the proprietor instead of claiming its bad faith. From the same declaration it appears that the EUTM proprietor offered to buy the applicant’s Juvederm trade mark, the latter refusing the offer. The applicant further initiated several mediation proposals (in USA and Russia) having no reply from the EUTM proprietor. The Cancellation Division does not understand how this should prove that the EUTM proprietor acted in bad faith when filed for the EUTM in 2007. On the contrary, it is obvious that, if the applicant had considered that the proprietor's actions were in bad faith, it would have been able, immediately after the registration of EUTM in 2008, to file an action for invalidation on grounds of bad faith; yet, it decided to propose a coexistence and a mediation to the same proprietor, which it now accuses of having filed the disputed mark in bad faith.

The applicant also accuses the proprietor of maintaining many trade mark registrations only for the sake of stopping other businesses but never actually using the marks, reason why the applicant filed numerous revocation actions following which some of the proprietor’s trade marks were revoked. If the applicant’s intention by arguing this was to claim that the EUTM proprietor had a repetitive conduct by making repeated applications for the same mark with the intention of avoiding the consequences of revocation for non-use of its marks it did not prove such allegations. An EUTM proprietor is highly likely to register an ‘up-dated’ version of a prior registered trade mark, not because its sole objective is to prevent a third party from entering the market but, for example, to meet evolving market requirements. This is completely normal business practice and is especially common for figurative logos which have a long lifespan (13/12/2012, T 136/11, Pelikan, EU:T:2012:689, § 36). Furthermore, filing several variations of a trade mark is a normal practice. It follows the fairly common commercial logic of marketing one’s goods under a family of similar marks which express similar ideas. The purpose of this is often to make it easy for the relevant public to link similar marks to the same commercial origin while at the same time giving the proprietor the possibility of making variations of a mark in order to communicate different concepts. There are no indications that the JUVEDERM variations and sub-brands filed by the EUTM proprietor do not follow such a purpose, which does not in itself constitute illegitimate behaviour. Therefore, the repetitive nature in the present case does not suggest unacceptable commercial behaviour. Last but not least, if the applicant considers that the EUTM proprietor does not use its marks, it has the possibility to file revocation actions, which the applicant has already done. Consequently, the applicant’s arguments are unfounded.

The applicant’s argument that another proof of the proprietor’s bad faith is the transfer of the family of Juvederm marks on 1GBP on 16/05/2017 is also purely speculative. The Cancellation Division notes and agrees with the findings of the Tribunal de Grande Instance of Paris Civil Division of 21/02/2019 (last evidence submitted by the EUTM proprietor) in which the court considered inadmissible the applicant’s request for the invalidation of the transfer and states (emphasis added)

…the disputed transfers, that nothing demonstrates, irrespective in this regard of their date and their coexistence with the action on the merits, that they are not simply operations to secure the use of the trademarks by affiliated companies, concern other trademarks, involve transferors some of which are not in the case and, as for the licenses, have no impact on the success of a forfeiture action .

Last but not least, the Cancellation Division agrees with the EUTM proprietor that the applicant has not filed any evidence that it is the owner of a copyright regarding JUVEDERM and such claim is, therefore, rejected as unfounded.

In the light of the above, the Cancellation Division concludes that the application for invalidity should be rejected.

For the sake of completeness, the Cancellation Division mentions that this invalidity is rejected even though all the items of evidence that the applicant invoked in its application were taken into account despite them being submitted just in part, approach which, as stated above, is the best scenario for the applicant, not damaging the EUTM proprietor’s interests and a way to avoid unnecessary reopening of the proceedings.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(ii) 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

Oana-Alina STURZA

Ioana MOISESCU

Michaela SIMANDLOVA

 According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.