CANCELLATION No 14792 C (INVALIDITY)

Seva-Seed spol. s.r.o., Mušlov 1702/608e, 692 01 Mikulov, Czech Republic (applicant), represented by Daněk & Partners, Vinohradská 17, 120 00 Prague 2, Czech Republic (professional representative)

a g a i n s t

Simon Seeds, s.r.o., Račianska 188, 83105, Slovakia, (EUTM proprietor), represented by Laws, s. r. o., Rajská 7, 81108 Bratislava, Slovakia (professional representative).

On 20/06/2019, 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 and services of European Union trade mark No 13 533 906 for the figurative trade mark , namely all the goods and services in Classes 31, 39 and 44. The application is based on three earlier rights protected in the Czech Republic: a non-registered word mark ‘SEVA’, a trade name ‘SEVA–SEED’ and a company name ‘SEVA-SEED spol. s.r.o.’. The applicant invoked Article 60(1)(c) EUTMR (Article 53 (1)(c) of Regulation 207/2009) in connection with Article 8(4) EUTMR (unchanged).

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that it is the owner of the three earlier rights on which the application for invalidity is based which have been used in the course of trade for seeds, plant seeds, distribution and storage of seeds as well as agricultural, horticultural and forestry products and grains in the Czech Republic. The applicant maintains to have been very successful in the Czech Republic in this area of business. The applicant explains that according to the Czech national legislation these earlier rights confer upon it the right to prohibit the use of the subsequent trade mark. The applicant submits proof of use of the said earlier rights and explains as to why slight modifications in the used form as compared to the rights claimed are acceptable.

In support of its observations, the applicant filed the following evidence:

• Around 30 invoices issued by the applicant in the years 2006- 2012. Most of them are issued to companies in Slovakia and one to company in Germany and 3 to companies in the Czech Republic. The invoices are for different seeds as can be seen from the comment on the invoices as well as the names of the products as compared with the packaging provided by the applicant. The company name appears in the upper right corner of each invoice. The word ‘SEVA’ alone is not featured.

• A considerable amount of photos of packaging for different seeds. The names of the plants are in different languages, including in some cases Latin, but not in English. However on each packaging there is a photo of the plant it concerns what enables identification. There is also a number as well as a name of the products which corresponds to the data featured in the invoices.

• A copy of certificate of incorporation of the company seva seed s.r.o.

• A copy of the Czech trade mark legislation with translation in English.

The EUTM proprietor makes remarks about the basis of the application and considers it to be somewhat vague since according to the EUTM proprietor the applicant relies on unregistered sign but later refers to a trade name. It further observes that there is no identity or similarity between the earlier rights and the contested sign, because in the evidence the sign is used as ‘SEVA-FLORA’ but not ‘SEVA’ alone. It is of the view that SEVA is not similar to SEVA-FLORA because the dominant feature of the sign SEVA-FLORA is the conjunction of these two words. The EUTM proprietor argues that the applicant itself brings confusion on the market because of the labelling of its products (with additions of the words ‘Flora’ or ‘Seeds’) and because it does not object to the fact that another entity in the Slovak Republic uses ‘SEVA’ in its trade name. It contests the proof of use and argues that the applicant did not acquire an exclusive right to the separate sign ‘SEVA’. The EUTM proprietor observes that there are also other entities at the local and global level that use the element ‘SEVA’ like SEVA foundation, SEVA kitchen etc.

In reply to the EUTM proprietor’s observations the applicant argues that both the word ‘SEED’ as well as ‘FLORA’ are descriptive of the goods in question so the dominant and distinctive element of the signs is the word ‘SEVA’. Seva has no meaning and is thus fanciful. The applicant maintains that there is likelihood of confusion and the EUTM should be cancelled.

In reply to the applicant’s observations the EUTM proprietor reiterated its previous argumentation and added that the observation about the descriptive nature of the words SEEDS and FLORA was only relevant in the area of biology but had no legal bearing for the current case. It strongly disagreed with the applicant’s observation that the dominant element in the sign was the element ‘SEVA’ and maintained that the dominant feature was the phrase seva-flora.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 60(1)(c) EUTMR IN CONNECTION WITH ARTICLE 8(4) EUTMR

According to Article 60(1)(c) EUTMR, an EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

In the present case, the cancelation applicant claimed to own a non-registered trade mark ‘SEVA’, a trade name ‘SEVA SEED’ and a company name ‘SEVA SEED s.r.o.’, each of them used in the territory of the Czech Republic.

The EUTM proprietor criticised the formulation of grounds of the application, and especially the earlier rights invoked, and considered the reference to these rights to be vague and unclear. Considering that in the application form the applicant clearly indicated the three earlier rights mentioned above, the Cancellation Division considers that they are the basis of the application regardless of how the applicant refers to them later in its observations. The Cancellation Division will proceed on this basis.

The substantive conditions for considering an earlier right referred to in Article 60(1) EUTMR in conjunction with Article 8 EUTMR as a relative ground for a declaration of invalidity are the same as in opposition proceedings:

• the opponent/applicant must be the proprietor of a non-registered trade mark or of another sign used in the course of trade or a person authorised under the applicable law to exercise such a right;

• use in the course of trade of more than mere local significance;

• acquisition prior to the EUTM application/EUTM under the applicable law governing that sign;

• right to prohibit the use of a subsequent trade mark under the applicable law governing that sign.

These conditions are cumulative. Therefore, where a sign does not satisfy one of the conditions, the application for a declaration of invalidity based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the signs in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the signs in question are of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing that a European Union trade mark is declared invalid. A right of invalidation of that kind must be reserved to signs with a real and actual presence on their relevant market.

To be capable of leading to the invalidation of a registered European Union trade mark, the sign relied on in the application must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance.

In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the event of an application for invalidity based on Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, the invalidity applicant must show the earlier sign’s use in the course of trade of more than local significance by the filing date of the contested EUTM (or the priority date if relevant). Moreover, the applicant also has to prove that the sign was used in the course of trade of more than local significance at another point in time, namely at the time of filing of the invalidity request (emphasis added). This condition stems from the wording of Article 60(1)(c) EUTMR, which states that an EUTM will be declared invalid ‘where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled’ (decisions of 05/10/2004, 606 C, and 03/08/2011, R 1822/2010-2, Baby Bambolina (fig.), § 15). Once proved, this requirement is considered still to be fulfilled at the time the decision on invalidity is taken unless there is evidence to the contrary (e.g. a company name is invoked but the company has ceased to exist).

In the present case, the contested trade mark was filed on 05/12/2014. Furthermore, the application for declaration of invalidity was submitted on 11/04/2017. Therefore, the applicant was required to prove that the signs on which the invalidity action is based were used in the course of trade of more than local significance in the Czech Republic by 05/12/2014 and also by 11/04/2017 in relation to: agricultural, horticultural and forestry products and grains not included in other classes, seeds, natural plants and flowers, animal feed, agricultural and horticultural products within this class, plant seeds, sprout, wrapping and packaging of goods, horticulture services, transportation, packaging, storage, especially seeds and agricultural and horticultural products, distribution of seeds, agricultural and horticultural products, storage of seeds, agricultural and horticultural products.

On 07/09/2017, 08/09/2017 and 11/09/2017 the applicant filed the evidence already listed above ‘in the section ‘SUMMARY OF THE PARTIES’ ARGUMENTS’ to prove use, which consisted of a body of invoices as well as photos of product packaging.

A sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T‑318/06 - T‑321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 159).

The applicant filed a large number of documents, especially invoices, but many of them are repeated so in fact there are not more than 30 invoices. They mostly are dated in the years 2006-2008, less then 10 were issued in the years 2010-2012. They are issued by the applicant. Most of them are directed to Seva Slovensko s.r.o in Bratislava, the Slovak Republic. Some are directed to other companies in the Slovak Republic. One is directed to a company in Germany. Only 3 invoices were issued to companies in the Czech Republic, which is the relevant territory, and they are all dated in 2007.

To prove use of the mere local significance the party relying of the rights under Article 8(4) needs to file evidence of use relating to the territory of protection. As the Court of Justice found:

‘It is in fact only in the territory in which the sign is protected, whether the whole or only part of it is concerned, that the applicable law confers on the sign exclusive rights which may enter into conflict with a Community trade mark.’ (29/03/2011, C 96/09 P, Bud, EU:C:2011:189, § 162).

Moreover, as mentioned above the use needs to be assessed separately for each of the territories where the protection is claimed, and as the Court of Justice stated ‘the significance of the sign could not be inferred from a cumulative assessment of the sign in two relevant territories’ (29/03/2011, C 96/09 P, Bud, EU:C:2011:189, § 163).

In this case there is only one relevant territory where the earlier rights claim protection; this is the territory of the Czech Republic. Although the applicant filed ample evidence, actually only three invoices were issued to Czech companies. The remaining invoices concern other territories, mostly the Slovak territory. The fact that the applicant is based in the Czech Republic is in itself not sufficient to establish that it used any of the signs claimed as the basis of the action in the Czech territory to the extent that it could be awarded protection on the basis of use. The registration of the company in the Czech Republic alone is not sufficient to prove use of more then mere local significance there since this is a merely administrative action and does not involve engagement in any commercial activity. The three invoices issued in 2007 are manifestly insufficient to prove that either. There are no other indications that the public within the Czech Republic was sufficiently exposed to the use of any of the signs so that they would gain sufficient awareness of any of them, contrary to what the applicant claims. The packaging of products alone is clearly insufficient for that purpose since it is not dated and alone does not indicate the territory of use or the extent of use. No further evidence has been filed, especially there are no catalogues or advertising which could indicate to the use of the signs in the relevant territory.

Additionally, the most recent piece of evidence is dated in 2012, which is 2 years before the filling date of the contested trade mark but 5 years before the filling date of the application for invalidity. The evidence regarding the Czech territory is all dated in 2007. There is not a single item of evidence on file covering the last almost three years before the date of filing of the invalidity request and showing that the earlier signs were in use by 11/04/2017 by the applicant.

The use requirement must be interpreted in the light of European Union law and must be distinguished from the requirements provided for under the applicable national laws which might set specific requirements as far as the intensity of the use is concerned.

As already stated above, an earlier non-registered mark, a trade name and a company relied on in an invalidity action must be used in the relevant territory at the time of filling of the contested trade mark and at the time of filing the application for a declaration of invalidity because for these types of earlier signs use constitutes the factual premise justifying the existence of the rights and their protection under Article 8(4) EUTMR. This applies regardless if under the national law there may be additional requirements for the existence of the rights, like for example the requirement of the registration of the company name.

Considering, all the above the Cancellation Division finds that the invalidity applicant failed to demonstrate by means of solid and objective evidence that its non-registered trade mark, trade name and company name have been used in the relevant territory to a more than mere local extent in connection to the claimed goods and services before the relevant dates, that is the date of filling of the contested sign and before the filling of the invalidity action.

The parties discussed heavily the issue whether the use of the sign with the addition of the element ‘flora’ or ‘seed’ could amount to a valid use of the signs claimed as the basis of the application, especially the non-registered trade mark ‘seva’. Nevertheless, the Cancellation Division will not enter into the analysis of those issues as irrelevant, considering that the applicant did not prove the use within the relevant territory and did not provide any evidence indicating use before the date of filling of the application for invalidity.

As one of the necessary requirements of Article 8(4) EUTMR in connection with Article 60(1)(c) EUTMR is not met, the application for invalidity 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

Liliya YORDANOVA

Ewelina SLIWINSKA

Gueorgui IVANOV

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.