CANCELLATION No 30 401 C (REVOCATION)

Body Attack Sports Nutrition GmbH Co. KG, Schnackenburgallee 217-223, 22525 Hamburg, Germany (applicant), represented by Glawe, Delfs, Moll, Rothenbaumchaussee 58, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Laboratorios Farmaceuticos Nutrition Center 1985 SLU, Marina 1, 21001 Huelva, Spain (EUTM proprietor), represented by Newpatent, Puerto, 34, 21001 Huelva, Spain (professional representative).

On 31/01/2020, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 
11 881 323 are revoked in their entirety as from 30/11/2018.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

On 30/11/2018, the applicant filed a request for revocation of European Union trade mark registration No 11 881 323 (‘the contested EUTM’), filed on 07/06/2013 and registered on 22/10/2013, for the figurative sign hereunder:

The request is directed against all the goods and services covered by the EUTM, namely:

Class 5: Sanitary preparations for medical purposes; plasters, materials for dressings; material for stopping teeth, dental wax.

Class 35: Commercial information and advice for consumers (consumer advice shop); procurement services for others (purchasing goods and services for other businesses); demonstration of goods; and direct mail advertising; distribution of samples; commercial administration of the licensing of the goods and services of others; import-export agencies; business management consultancy; presentation of goods on communication means of all kinds, for retail purposes; advertising; on-line advertising on a computer network; radio advertising; television advertising; presentation of goods on communication media, for retail purposes; sales promotion for third parties; administrative processing of purchase orders, business marketing, organisation of events for commercial and promotional purposes, franchising, relating to the providing of consultancy and assistance in business management, organisation and promotion, promotion of the goods and services of others by means of the arranging of sponsors to support their goods and services via a prize scheme, sporting competition and sporting activities, promotion of goods and services for others, marketing of goods, advertising relating to pharmaceutical preparations and in-vivo imaging goods, online promotion via a computer network and website.

Class 44: Medical assistance; services of stylists; beauty salons; plastic surgery; medical clinics; healthcare; teledoctor services; physiotherapy, telemedicine, guidance relating to social relief for medical complaints, paramedic services.

The applicant invoked Article 58(1)(a) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claims that the contested EUTM had not been put to genuine use during a continuous period of five year in connection with the goods and services for which it was registered.

After an initial extension of the time limit, the EUTM proprietor submits evidence of use of the contested EUTM, which will be listed and analysed in detail in the following section. In its submissions, the proprietor points out that the contested mark is used for the relevant goods in Class 5 and for commercial services in Class 35.

In its response, the applicant claims that the evidence provided fails to show genuine use of the contested sign for the goods and services at issue. The applicant analyses each pieces of evidence filed by the proprietor and states that they refer to nutritional supplements which are not in the scope of the contested registration.

The EUTM proprietor did not file any observations in reply.

On 05/09/2019, the Cancellation Division informed the parties that the adversarial part of the proceedings was closed and that a decision would be taken on the basis of the evidence before it.

GROUNDS FOR THE DECISION

According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

Genuine use of a trade mark exists where the mark 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 requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, in particular § 35-37, 43).

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non‑use.

In the present case, the EUTM was registered on 22/10/2013. The revocation request was filed on 30/11/2018. Therefore, the contested mark had been registered for more than five years at the date of the filing of the request. The proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 30/11/2013 to 29/11/2018 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 23/04/2019 the EUTM proprietor submitted the following evidence as proof of use:

Annex 1: Extracts providing general information on the proprietor and its main activities. No reference is made to the contested mark.

Annex 2: Extracts from the website www.superpremiumdiet.com featuring an image of a packaging of dietary supplements bearing the contested EUTM followed by a description of the goods.

Annexes 3 and 4: Extracts from the websites www.salutemshop.com and www.efarmaciabarbera.com providing dietary supplements under the EUTM on sale.

Annex 5: Copy of 27 invoices dated between 28/08/2014 and 21/12/2015 to clients in Spain for the sale of 385 packaging of products bearing the sign “LIPOCROM” generating a total amount of approx. Euro 5 000.

Annex 6: Extracts from the website “YouTube” featuring a video called “Lipocrom y Como Adquirir Este Increible Suplemento Lipocrom” uploaded on 24/04/2017 and counting 4085 views and four comments from users.

Assessment of genuine use

In accordance with Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence required in order to provide proof of use shall consist of indications concerning the place, time, extent and nature of use of the contested EUTM for the relevant goods and services.

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the contested mark is registered.

In the present case, the evidence provided by the proprietor includes extracts from websites (annexes 1, 2, 3, 4 and 6) and invoices (annex 5) showing that its company mainly operates in the nutritional industry and that the sign “LIPOCROM 100” is the name of a dietary supplement that acts as a fat burner.

However, as the applicant correctly states, dietary supplements do not fall within any of the categories of goods for which the EUTM is registered.

In this respect, it is noted that the contested registration covers inter alia ‘sanitary preparations for medical purposes’ in Class 5.

The contested goods ‘sanitary preparations for medical purposes’ are articles intended to sterilize or disinfect including, for instance, disinfectant soap, medicated soap, medicated shampoos and collyrium. On the other hand, ‘dietetic supplements’ are substances concerned with diet and nutrition, such as vitamin or mineral supplement pills. It follows that the purpose and nature of ‘dietary supplements’ do not coincide with those of ‘sanitary preparations’. Indeed, while consumers take such supplements to balance nutritional deficiencies or, in general, to enhance their well-being, ‘sanitary preparations’ are purchased for personal hygiene.

In light of the above, it cannot be considered that use of the sign for ‘dietary supplements’ fall within the category of ‘sanitary preparations for medical purposes’ for which the EUTM is registered in Class 5.

As regards the remaining goods and services in Classes 5, 35 and 44, it suffices to say that none of the evidence submitted by the EUTM proprietor relates to them. Furthermore, the proprietor’s observations do not offer any justifications for non-use with respect to these goods and services. Therefore, it must be concluded that the proprietor has failed to prove use in relation to these goods and services.

The factors time, place, extent and nature of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as nature of use, namely use of the sign for the registered goods and services, has not been established, it is not necessary to enter into the other requisites.

Finally, for the sake of completeness, although in its submissions the EUTM proprietor claims that the evidence shows use of the EUTM for commercial services in Class 35, the Cancellation Division would like to clarify that a service has to be provided to a third party in order to be considered a service according to the EUTMR. This means that not every action undertaken by a company in the course of its business qualifies as a ‘service’. In particular, the fact that the proprietor has carried out commercial activities by putting on sale products bearing the mark (annexes 3 and 4) does not imply that the contested EUTM has been used for the contested services in Class 35. In fact, from the content of the documentation on file, it cannot be assumed that the proprietor has provided any services to third parties related to commercial advice, retail, advertising and commercial administration and any other of the services at issue in Class 35.

Having regard to the findings made above, it must be held that, considered as a whole, the pieces of evidence adduced by the EUTM proprietor before the Cancellation Division, viewed as individual items and globally, are not sufficient to prove that the contested EUTM has been put to genuine use in European Union during the relevant period.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 30/11/2018.

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 EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Jessica LEWIS

Pierluigi M. VILLANI

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.