CANCELLATION No 23 481 C (INVALIDITY) 

 

Zakłady Tłuszczowe "Kruszwica" S.A., ul. Niepodległości 42, 88-150 Kruszwica, Poland (applicant), represented by Marek Rumak, ul. Emilii Plater 53, 00-113 Warszawa, Poland (professional representative)

 

a g a i n s t

 

All Market Singapore Pte. Ltd., 61 Science Park Road #02-03/04 The Galen Singapore Science Park 2, 117525 Singapore, Singapore  (EUTM proprietor), represented by Keltie Limited, Galway Technology Centre, Mervue Business Park, Galway, Ireland (professional representative).

On 15/07/2021, 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

 

On 18/06/2018, the applicant filed a request for a declaration of invalidity against European Union trade mark No 12 029 914 ‘VITA COCO’ (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the goods in Class 29. The application is based on Polish trade mark registration No  R 092 739 ‘Vita’. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argued that there exists a likelihood of confusion between the signs at issue, which are similar, whereas the goods they cover are identical.

 

The EUTM proprietor requested that the applicant submit proof of use of the earlier mark. It claimed that the marks are dissimilar and the goods are not identical. It considered that although the shared element ‘VITA’ appears at the beginning of the contested mark, the fact remains that the marks ‘VITA’ and ‘VITA COCO’ are different when the latter is compared in its whole with the earlier mark. The single word ‘VITA’ will be understood by the relevant part of the public as the Latin word for ‘life’ and is closely associated with the word ‘vital’. ‘VITA’ is a common word used by food manufacturers as parts of trade marks because it evokes a positive quality attributable to the goods and in particular that the goods may have a revitalizing or energising effect. The combination of ‘VITA’ with ‘COCO’ dilutes the meaning of ‘life/vitality’ because it does not make sense when followed by ‘COCO’. Finally, the applicant has not produced any evidence to demonstrate that the word ‘COCO’ is descriptive or non-distinctive in relation to ‘coconut oil’ in Poland.

The applicant submitted evidence to demonstrate use of the earlier mark and refuted the EUTM proprietor’s arguments. It maintained that the goods are identical and that it should be taken into account that the element ‘VITA’ is the most distinctive and dominant element of the contested sign.

Preliminary remark

On 22/07/2020 the EUTM proprietor requested a continuation of the proceedings in relation to the deadline of 26/06/2020 for submitting observations in reply to the application for a declaration of invalidity. It also requested that the applicant provide evidence of use of its earlier right. The request for continuation of proceedings was granted on 06/10/2020. Therefore, the EUTM proprietor’s request for proof of use was accepted as having been received in time.

 

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, namely Polish trade mark No R 092 739 ‘Vita’.

 

The request is admissible given that the earlier trade mark was registered on 06/11/1996 that is, more than five years prior to the date of the application for a declaration of invalidity (18/06/2018). 

 

The application for a declaration of invalidity was filed on 18/06/2018. The date of priority of the contested mark is 31/01/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Poland from 18/06/2013 to 17/06/2018 inclusive (first relevant period). Since the earlier mark was registered more than five years prior to the date of priority of the contested mark, use of the earlier mark had to be shown also for the period from 31/01/2008 to 30/01/2013 inclusive (second relevant period).

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely fats and edible vegetable oils in Class 29.

 

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 06/10/2020, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 11/12/2020 to submit evidence of use of the earlier trade mark. 

 

On 11/12/2020, within the time limit, the applicant submitted evidence of use.

 

The evidence to be taken into account is the following:

  

 6 invoices addressed to clients in Poland for coconut oil dated respectively 15/12/2016; 29/12/2016; 01/03/2017; 18/12/2017; 08/02/2018 and 30/03/2018.   

Furthermore, on 18/06/2018, along with the invalidity application, the applicant submitted an undated screenshot from its website.

Having examined the material listed above, the Cancellation Division finds that the evidence is insufficient to establish genuine use of the trade mark. Indeed, although there is evidence concerning the first period for which proof of use was to be submitted, the evidence concerning the second period, 31/01/2008 to 30/01/2013 inclusive, is non-existent. All the invoices submitted postdate this period by at least three years and 10 months and the screenshot submitted in 2018 is undated.

 

 

Conclusion

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).

An overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during both the relevant periods for the relevant goods (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43).

The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the applicant chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

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 two relevant periods.

 

Therefore, the application must be rejected pursuant to Article 64(2) and (3) EUTMR.

 

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

 

Frédérique SULPICE

Richard BIANCHI

Zuzanna STOJKOWICZ

 

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.