CANCELLATION No C 40 682 (revocation) 

 

Bomhard Intellectual Property, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (applicant), represented by Bomhard Ip, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

 

a g a i n s t

 

Thoroughbred Remedies Manufacturing Unlimited Company, Newbridge Industrial Estate, W12 ND30 Newbridge, County Kildare, Ireland (EUTM proprietor), represented by Anne Ryan & Co., 2 Crofton Terrace, A96 V6P7 Dun Laoghaire, Dublin, Ireland (professional representative).

On 08/04/2021, the Cancellation Division takes the following

 

 

DECISION

1. The application for revocation is rejected in its entirety.

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

 

REASONS

 

On 15/01/2020, the applicant filed a request for revocation of European Union trade mark No 12 591 301 ‘BIOTEX’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 5: Mineral food supplements and vitamin food supplements each not containing yeast nor parts of yeast and not containing beta-glucan for horses.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed a request for revocation on 15/01/2020, claiming that the EUTM proprietor had not put its EUTM to genuine use for a continuous period of five years in relation to the goods for which it was registered.

The EUTM proprietor submitted observations and evidence of use (listed below) on 30/04/2020. The EUTM proprietor argues that it had made genuine use of the mark in the territory of the European Union for the relevant goods during the relevant period. It claims that it manufactured and sold to distributors feed supplements for horses and that the elements -80 or -37 used in connection with the mark are descriptive elements referring to the concentration of biotin in the formula, for example 80mg per dose of products.

On 24/09/2020, the applicant argues that the material submitted by the EUTM proprietor is considered to fail to meet the Office’s requirements for proving genuine use of a trade mark. In brief, the applicant claims that the evidence submitted by the EUTM proprietor is of limited probative value. It is either undated or refers to other signs or is outside the relevant time frame. Even if it is accepted that some of the material shows some use for the goods at issues, it falls well below the established thresholds (in terms of time, nature, place and extent of use) for demonstrating genuine use. In particular, according to the applicant, some of the documents are immaterial as there do not bear the contested trade mark, or show no connection whatsoever to the manufacturer of the products.

Also, the applicant argues that the eight invoices submitted under Items 1 and 2 are being issued by TRM to the Hestevard division namely the UK distributor - Farm & Stable Supplies LLP and German distributor - Farm & Stable KG. In other words, the invoices have been issued within the same company group or distribution network owned or controlled by the EUTM proprietor.

Besides, the low volume sales shown for what is a mass consumption animal feed product does not show an attempt by the EUTM proprietor to maintain, grow or develop market share for a product sold under the contested mark.

Finally, the applicant contends that the EUTM proprietor used the contested mark as registered during the relevant time, in view of the fact that the contested mark ‘BIOTEX’ appear in combination with and preceded by the distinctive element “HESTEVARD”. According to the applicant the additional element will not be disregarded by the relevant public and it has an impact on the distinctive character of the contested mark ‘BIOTEX’.

In its last observations, the EUTM proprietor refutes the applicant’s assertions and reiterates that the evidence must be considered sufficient, not being required a high threshold in Cancellation proceedings and in view of the lack of de minimis rules.

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 and 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 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  03/12/2014. The revocation request was filed on  15/01/2020. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The  EUTM 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  15/01/2015 until 14/01/2020 inclusive, for the contested goods listed in the section ‘Reasons’ above.

 

On 30/04/2020 the EUTM proprietor submitted evidence as proof of use. 

  

The evidence to be taken into account is the following: 

 Attachment 1: Undated extract taken from the EUTM proprietor’s webpage in which it is described the proprietor’s activity in the field of the manufacture and distribution of nutritional feed supplements and healthcare products for horses.

 Attachment 2: Copy of the Irish Certificate of Registration for the business name TRM, registered by Thoroughbred Remedies Manufacturing Ltd on 07/03/2002.

 Attachment 3: Extract taken from the EUTM proprietor’s webpage containing information about the activity of the EUTM proprietor itself in the field of manufacture and marketing of feed supplements.

 Item 1: Five invoices addressed to a United Kingdom company dated in the period comprised between 17/11/2015 and 20/02/2019. Each invoice regards approximately several hundreds of units of goods. The goods are described as ‘HESTEVARD BIOTEX-37 1KG’ or ‘HESTEVARD BIOTEX-80 1KG’.

 Item 2: Three invoices addressed to a German distributor. The invoices are dated 03/06/2015, 22/03/2018 and 30/09/2019 and concern, inter alia, ‘HESTEVARD BIOTEX-37 1KG’.

 Item 3: Eight invoices issued by a German distributor to customers in Germany in the period comprised between the year 2014 and the year 2019. The goods are listed as, inter alia, ‘Hestevard Biotex-37 1kg’.

 Item 4: Five invoices issued by Vestaplas to customers located in the United Kingdom in the period comprised between the year 2016 and the year 2020. The goods are listed as, inter alia, ‘Hestevard Biotex-37 1kg’.

 Item 5: Extract taken form the Veterinary Trade Catalogue 2019/2020 of Vestaplas in which, inter alia, is contained a description of ‘BIOTEX-80’, described as an equine supplement with a Sulphur-enriched formula and containing a concentrated source of the Sulphur rich amino acid Methionine, Sulphur-rich nutrient MSM and a very high level of biotin.

 Item 6: Extract from the Irish market specific Veterinary Trade Catalogue 2019/2020 of Vestaplas containing the same description as in Item 5.

 Item 7: Print out taken from the webpage www.hestevard.com in which a description of Biotex-80 as a feed supplement for horse is provided. The detailed description of the products includes sections titled ‘Composition’, ‘Analytical Constituents’, ‘Additives’, ‘Trace Elements’. None of the aforementioned sections contains a reference whatsoever to yeast, parts of yeast or beta-glucan.

 Item 8: Pictures of a leaflet containing depiction of ‘Biotex-37’ and ‘Biotex-80’ products.

 Item 9: Photographs of products labelled ‘Biotex-37’ and ‘Biotex-80’ .

 Item 10: Image of a label of ‘Biotex-80’, ‘The Ultimate Equine Supplement for Hooves’ .

 Item 11: Master label specification sheets dated in the period comprised between 2012 and 2017 for ‘Biotex-37’ and ‘Biotex-80’.

 Item 12-13-14: Extract taken from the 2012-2018 Catalogue of Farm&Stable KG and from the 2014 and 2015 German language Catalogues of Hestevard containing a description of ‘BIOTEX-37’.

 Item 15: Product information leaflets from Hestevard regarding ‘Biotex-37’ and ‘Biotex-80’.

PRELIMINARY REMARKS 

  

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the EUTM is registered.

 

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Also, the applicant contests the evidence of use filed by the EUTM proprietor on the grounds that it does not originate from the EUTM proprietor itself but from one or more other companies, in particular distributors.

 

According to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.

 

The fact that the EUTM proprietor submitted evidence of use of its marks by a third party, as in the present case, the invoices of its distributors, implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

 

Consequently, since it can be presumed that the evidence filed by the EUTM proprietor is an implicit indication that the use was with its consent, the applicant’s claim is unfounded.

 

To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use by those other companies was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.

Also, the Cancellation Division deems worthwhile to keep in mind that the EUTM proprietor has submitted, inter alia, evidence relating to the United Kingdom with a view to demonstrating use of the contested mark. The evidence relates to a period prior to 01/01/2021.

On 01/02/2020, the United Kingdom withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the United Kingdom. Therefore, use in the United Kingdom prior to the end of the transition period constituted use ‘in the European Union’. Consequently, the evidence relating to the United Kingdom and to a period prior to 01/01/2021 is relevant with a view to maintaining rights in the European Union and will be taken into account.

ASSESSMENT OF GENUINE USE – FACTORS

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period, namely from 15/01/2015 to 14/01/2020 inclusive.

The vast majority of the invoices submitted and most of the remaining documents are dated within the relevant period. Therefore, the evidence sufficiently indicates the time of use.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

The documents submitted demonstrate that the place of use are Germany and the United Kingdom. The invoices show sales of products both in Germany and in the United Kingdom, since they are addressed to entities in those two countries. The documents are in English and, in the case of catalogues, also in German. Therefore, the evidence relates to the relevant territory.

Extent of use

Concerning the 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 (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

The Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

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. 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 submitted by the EUTM proprietor in order to prove genuine use of the contested EUTM relates to Germany and the United Kingdom. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not and use of an EUTM in a part of the relevant territory, such as that of a single Member State, and a fortiori two Member States, may be geographically sufficient (see, for example, 30/01/2015, T-278/13, now, EU:T:2015:57).

The material submitted, in particular the invoices, relates to years and dates within the relevant period and proves the frequency of use of the mark within that period. Use does not have to be made during a minimum period of time to qualify as ‘genuine’. In particular, use does not have to be continuous during the relevant period of five years. Moreover, the invoices submitted were issued to different customers and are, furthermore, non-consecutive. This permits the inference that the invoices have been submitted merely as examples of sales and do not represent the total amount of sales of goods under the contested mark realised by the EUTM proprietor during the relevant period. The amounts shown in the invoices provide sufficient information concerning the commercial volume of use.

It should be noted that, as already pointed out, the purpose of the provision requiring that the 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’.

Consequently, taking into account the evidence in its entirety and based on an overall assessment, the Cancellation Division considers that use of the trade mark took place to a sufficient extent.

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

The proof of use must establish a clear link between the use of the mark and the relevant goods or services. It is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T-105/13 TrinkFix, EU:T:2014:1070, § 28-38). A representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

In the present case, the EUTM was used as a trade mark. The evidence filed by the EUTM proprietor shows that the contested sign was displayed on the packaging of the products, in the name of the items included in the invoices and in catalogues clearly as a trade mark. Consequently, there is a sufficient link to prove that the goods concerned are provided under the contested mark.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

The registered EUTM is the word mark ‘BIOTEX’.

The evidence submitted shows use of the word ‘BIOTEX’ in all of the invoices (in the field containing the details of the goods) accompanied by other indications such as ‘-37’ or ‘-80’. The packaging labels and pictures of the products submitted also show the indication ‘BIOTEX’ as the first element indicating the goods at issue accompanied by one of the above indications.

Although the word ‘BIOTEX is used together with other elements, these elements do not materially affect the distinctive character of the sign. Indeed, it is not uncommon in the food supplements sector that some products come in different varieties, because of differences in the content, the forms, etc., which could be marked with additional symbols, letters, numbers, words or combinations thereof. Furthermore, the indications ‘BIOTEX-37’ or ‘BIOTEX-80’ clearly show that the contested sign ‘BIOTEX’ is the constant product indication for the particular product which is separated and independent from the other varying elements. It seems a very reasonable explanation the one submitted by the EUTM proprietor in its observations, i.e. that the number 37 and 80 refers to the concentration of biotin in the formula of the products. Consequently, these additional indications are not likely to be perceived as indications of the commercial origin of the goods at issue.

The applicant also claims that the mark has been used together with the element ‘HESTEVARD’. In this regards, it should be noted that the obligation to use a trade mark as registered does not require its proprietor to use the mark in isolation in the course of trade. Article 18(1) EUTMR does not preclude the possibility of the trade mark’s proprietor adding further (decorative or descriptive) elements, or even other marks such as its house mark on the packaging of the product, as long as the trade mark ‘as registered’ remains clearly recognizable and in an individual form.

In view of the above, the Cancellation Division considers that the use of the mark in the manner described above does not materially affect its distinctiveness and the evidence does show use of the sign as registered within the meaning of Article 18(1)(a) EUTMR.

Use in relation to the registered goods

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 European Union trade mark is registered.

The contested EUTM is registered for mineral food supplements and vitamin food supplements each not containing yeast nor parts of yeast and not containing beta-glucan for horses in Class 5.

The evidence shows that the mark has been used for mineral food supplements and vitamin food supplements for horses. It is clear from the information provided by the EUTM proprietor in, for instance, Item 7, in which a detailed list of the composition of the goods is contained, that none of the aforementioned goods contains yeast nor parts of yeast or beta-glucan.

Therefore, the EUTM proprietor has shown use for the goods for which the mark is registered.

Overall assessment

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 36).

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). As mentioned above, case-law establishes that the purpose of the provision requiring that the contested 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’. Consequently, it is not for the Cancellation Division to evaluate the commercial success of the EUTM proprietor’s activities, but rather to confirm if the evidence shows, to a sufficient extent, an open and authentic attempt to establish and expand a position in the marketplace.

It is clear from the evidence that the EUTM proprietor distributed goods bearing the contested mark in the relevant market. This gives the Cancellation Division sufficient information regarding the commercial activities of the proprietor in the relevant period. In any case, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market and the documents prove that use of the mark has been more than mere token use.

Therefore, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors time, place, extent and nature of use for the goods for which the mark is registered, namely:

Class 5: Mineral food supplements and vitamin food supplements each not containing yeast nor parts of yeast and not containing beta-glucan for horses.

Conclusion

It follows from the above that the EUTM proprietor has proven genuine use for all the contested goods. Consequently, the application for revocation must be rejected as unfounded.

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

 

Solveiga BIEZA

Andrea VALISA

Ioana MOISESCU

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.