CANCELLATION No 30 403 C (INVALIDITY)

Peter Schuju, Robert-Bosch-Str. 8, 33178 Borchen, Germany (applicant), represented by Greenfield IP Stoll Schulte Rechtsanwälte Partnerschaftsgesellschaft mbB, Kehrwieder 8, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Krasnyj Octyabr Public Joint Stock Company, ul. Malaya Krasnoselskaya d. 7, str. 24, Moscow 107140, Russian Federation (EUTM proprietor), represented by Foral Patent Law Offices, Kaleju 14-7, 1050 Riga, Latvia (professional representative).

On 30/03/2020, 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 an application for a declaration of invalidity against all the goods of European Union trade mark No 11 780 021 , namely the following:

Class 30: Almond confectionery; boiled confectionery; cachou [confectionery], other than for pharmaceutical purposes; chocolate confectionery; chocolate confectionery containing pralines; chocolate confectionery having a praline favour; chocolate confectionery products; chocolate decorations for confectionery items; chocolate flavoured confectionery; chocolate for confectionery and bread; Christmas trees (confectionery for decorating -); clear gums [confectionery]; coated nuts [confectionery]; confectionery; confectionery bars; confectionery chocolate products; confectionery containing jelly; confectionery containing jam; confectionery having liquid spirit fillings; confectionery having liquid fruit fillings; confectionery having wine fillings; confectionery ices; confectionery in frozen form; confectionery in liquid form; confectionery in the form of tablets; confectionery items coated with chocolate; confectionery items formed from chocolate; confectionery made of sugar; confectionery (non-medicated-); confectionery products (non-medicated-); crystal sugar pieces [confectionery]; dairy confectionery; dragees [non-medicated confectionery]; flavoured fillings for confectionery; flavoured sugar confectionery; bread; pastries; ices; flour confectionery; fondants [confectionery]; frozen yoghurt [confectionery ices]; fruit drops [confectionery]; frozen yogurt [confectionery ices]; fruit jellies [confectionery]; ice confectionery; ice confectionery in the form of lollipops; ice cream confectionery; iced confectionery (non-medicated-); liquorice [confectionery]; liquorice flavoured confectionery; lollipops [confectionery]; lozenges [confectionery]; lozenges [non-medicated confectionery]; mallows [confectionery]; marshmallow confectionery; mint flavoured confectionery (non-medicated-); non-medicated chocolate confectionery; non-medicated confectionery containing milk; non-medicated confectionery in jelly form; non-medicated confectionery candy; non-medicated confectionery containing chocolate; non-medicated confectionery having a milk flavour; non-medicated confectionery having toffee fillings; non-medicated confectionery in the form of lozenges; non-medicated confectionery in the shape of eggs; non-medicated confectionery for use as part of a calorie controlled diet; non-medicated flour confectionery; non-medicated flour confectionery coated with chocolate; non-medicated flour confectionery coated with imitation chocolate; non-medicated flour confectionery containing with chocolate; non-medicated flour confectionery containing imitation chocolate; non-medicated mint confectionery; non-medicated sugar confectionery; nut confectionery; orange based confectionery; pastilles [confectionery]; pastry confectionery; peanut butter confectionery chips; peanut confectionery; peppermint for confectionery; peppermint pastilles [confectionery], other than for medicinal use; potato flour confectionery; prepared desserts [confectionery]; rock [confectionery]; sherbet [confectionery]; sherbets [confectionery]; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; snack bars containing dried fruits [confectionery]; snack bars containing grains [confectionery]; snack bars containing nuts [confectionery]; snack foods consisting principally of confectionery; stick liquorice [confectionery]; sweets (non-medicated-) in the nature of sugar confectionery; truffles [confectionery]; truffles (rum-) [confectionery]; wafers; pastries; caramels [candy]; sweetmeats [candy]; chocolate; pralines; pralines made of chocolate; chocolate wafers; chocolate caramel wafers; bean-jam filled wafers (monaka); rolled wafers [biscuits]; cocoa; marzipan; crackers; rusks; gingerbread; sandwiches; muesli; popcorn; tarts; halvah; chocolate beverages; coffee; tea; tea-based beverages; coffee-based beverages; honey; corn flakes; oat flakes; chips [cereal products].

The application is based on German trade mark registration No 30 407 208 ‘KOPOBKA’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there is a likelihood of confusion between the marks in conflict since the signs and the goods are identical or at least similar.

The EUTM proprietor required proof of use of the earlier mark. It argued that it is one of the oldest manufacturers of confectionery products in Russia and a member of the ‘Obhedinennye Konditery’ holding company, which is the largest confectionery holding in Eastern Europe. Both the proprietor and members of the Obhedinennye Konditery Krasnyj Octyabr, Public Joint Stock Company, under license from Krasnyj Octyabr, have been producing confectionery (including, candies, wafers, pies, biscuits, roll-cakes) under the contested mark, and selling its own ‘KOPOBKA’ branded goods in Germany, through a number of distributors, since at least 2009. The applicant is shareholder and CEO of Monolith Mitte GmbH, which is one of the distributors in Germany of the proprietor’s goods.

The proprietor has been using the trade mark ‘KOPOBKA’ in good faith since 1948, that is, before the application for registration of the earlier mark. Indeed, although the applicant had been aware of the use of the contested mark in Germany since its registration, he did not stop this use. Therefore, the applicant had acquiesced, for a period of five successive years to the use of the contested mark. In support of its observations, the EUTM proprietor filed evidence which, as will be seen, does not need to be listed or analysed.

The applicant sent evidence as proof of use of the earlier mark on which the application is based (listed and analysed below). He contested the evidence provided by the proprietor and claimed that it does not demonstrate his acquiescence to the use of the contested mark.

The proprietor claimed that the applicant failed to prove use of the earlier mark. It argued that Monolith Mitte GmbH distributes goods under the ‘KOPOBKA’ sign. The evidence confirms use of the contested sign, but not of the earlier German mark. All the goods shown in the applicant’s submission are those produced by the proprietor of the contested mark and distributed with its permission. Moreover, the sales figures provided by the applicant are not supported by any financial documents. It further argued that there was no dishonest intention in the application for registration of the contested mark. In support of its observations, the EUTM proprietor filed additional evidence which, as will be seen, does not need to be listed or analysed.

In reply, the applicant contested the documents provided by the proprietor and explained that it buys goods from the proprietor and then sells those goods using its own trade mark rights, without the supervision of the proprietor, since there is no agent relationship.

Finally, the proprietor stated that it has been active in Germany, selling the relevant goods through a number of distributors, since at least 2013. The use of the contested mark in Germany is confirmed by the decision of the Cancellation Division (14/08/2019, 17 402 C). Moreover, it reiterated that the evidence provided proves that the invalidity applicant was perfectly aware of, or should reasonably be presumed to be aware of, the continued use of the EUTM in Germany after 17/10/2013.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 30/11/2018 and the date of filing of the contested trade mark is 19/06/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Germany from 30/11/2013 to 29/11/2018 inclusive. Since the earlier mark was registered more than five years prior to the date of filing of the contested mark, use of the earlier mark also had to be shown for the period from 19/06/2008 to 18/06/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 30: Candy (non-medicated).

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 11/12/2018, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 16/02/2019 to submit evidence of use of the earlier trade mark. This deadline was extended until 27/04/2019.

Within the time limit, the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following.

1. An affidavit signed by Peter Schuju (Managing Director of Monolith Mitte GmbH) on 16/04/2019, stating that he has licensed other companies to use the earlier German trade mark for the distribution of the goods for which the trade mark is registered. The affidavit contains sales figures and quantities distributed for various ‘KOPOBKA’ products, namely those identified under Nr. 87 400 (candies), Nr. 87 507 (candies covered with cacao), Nr. 91 424 (candies with biscuits) and Nr. 91429 (biscuits) between January 2013 and December 2018.

2. 40 advertising leaflets, written in German, with handwritten dates added. Most of the leaflets refer to caramel-filled biscuits and only two leaflets, dated within the relevant period, show images of ‘KOPOBKA’ candies.

3. A label written in German.

Assessment of genuine use — factors

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Strategies, EU:T:2010:424, § 43). Therefore, the applicant is obliged to prove each of these requirements. Nevertheless, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31).

It should be remembered that genuine use implies real use of the mark on the market concerned, for the purpose of identifying goods or services. Genuine use is therefore to be regarded as excluding minimal use which obviates the conclusion that a mark is being put to real, effective use on a given market.

As far as the affidavit signed by the applicant is concerned, Article 10(6) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were 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 perceptions of a party involved in a 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. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that 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.

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

The condition relating to genuine use of the mark requires that the mark be used publicly and outwardly for the purpose of ensuring an outlet for the goods or services which it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39).

Furthermore, in the context of Article 10(3) EUTMDR, 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 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The documents submitted do not sufficiently indicate the extent of use, as they do not provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use of the earlier mark.

The information contained in the applicant’s affidavit is not supported by any trade documents or official sources to the extent that the turnover figures are not corroborated by other objective evidence such as invoices, royalty statements, receipts, balance sheets or other commercial documents showing, for instance, sales transactions.

Although it is true that under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (15/07/2015, T‑398/13 TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57-58; 08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298, § 42 et seq.). However, the applicant only submitted an undated label, (written in German and with no reference to the goods), and pictures of leaflets (dated by hand and which mostly refer to caramel-filled biscuits), only two of which include images of ‘KOPOBKA’ candies. The applicant did not submit further catalogues, brochures, price lists or lists of shops selling candies under the earlier mark and dated within the relevant periods.

Consequently, the documents listed above cannot prove that the applicant undertook effective and genuine business activities under the earlier mark on the market in relation to the relevant goods within the relevant period.

The Cancellation Division does not judge the commercial success of a business; however, it cannot make its assessment based on assumptions. In this regard, it must be held that genuine use of a trade mark cannot be proven 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 markets concerned (12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 47).

Taking into account the characteristics of the goods for which the mark is registered, the applicant should have been able to easily produce some evidence of commercial transactions. Although the applicant has a free choice as to the means of proving extent of use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to show the reality of the commercial use of the mark in the relevant territories, at least to an extent sufficient to dispel any possible belief that this use might be merely internal, sporadic or token. The materials listed above, on their own, cannot enable the Cancellation Division to determine genuine use of the trade mark in the relevant territory.

The Court 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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Considering all the above, the Cancellation Division concludes that the evidence is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period.

Therefore, the application for a declaration of invalidity must be rejected pursuant to Article 64(2) and (3) EUTMR.

Given that the application is not well founded under Article 64(2) and (3) EUTMR, there is no need to examine the proprietor’s claim of acquiescence.

The proprietor referred to a claim of bad faith made by the applicant in its submissions of 29/04/2019. However, in these submissions the applicant did not clearly claim that the application for registration of the contested mark was made in bad faith. In any case, for the sake of clarity, the Cancellation Division points out that it cannot allow a broadening of the scope of the cancellation request. Once the cancellation request is filed, the grounds on which it is based cannot be extended. Therefore, the claim of bad faith that the applicant may have made at a later stage of the proceedings cannot broaden the scope of the grounds on which the application was originally based. Consequently, these arguments are set aside.

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, he 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

Carmen SÁNCHEZ PALOMARES

Ana MUÑIZ RODRIGUEZ

María Belén IBARRA DE DIEGO

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.