CANCELLATION No 27 581 C (INVALIDITY)

Medi Confort, 1316 bd du Docteur Lionet, 49700 Doue la Fontaine, France (applicant), represented by Cabinet DA - Michel Artzimovitch, 47 rue Rémy Dumoncel, 75014 Paris, France (professional representative)

a g a i n s t

V. Parodi, Rua Gonçalo Mendes da Maia, No 1032 Guilhabreu, 4485‑259 Vila de Conde, Portugal (EUTM proprietor), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative).

On 20/07/2020, 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 some of the goods of European Union trade mark No 15 416 811 , namely against footwear in Class 25. The applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR on the basis of:

1. corporate name No 401 823 521 ‘MEDI CONFORT’ used in the course of trade in France for retail trade services of medical and orthopedic goods in specialist shops,

2. trade name ‘ESPACE SANTE MEDI-CONFORT’ used in the course of trade in France for retail trade services of medical and orthopedic goods in specialist shops,

3. domain name mediconfort.com.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that, according to French law, namely Article L.711‑4 of the French Intellectual Property Code, the registration of the contested EUTM could be prohibited since there is a likelihood of confusion with the earlier signs. The signs are identical or similar and the goods in conflict are identical or at least very similar.

In support of its observations, the applicant filed the following evidence (listed according to the applicant’s proposal):

1. Extract from the Commercial Court of Angers with information on the registration of the company ‘MEDI CONFORT’ on 07/09/1995.

2. Printout from the INPI website with information on French trade mark registration No 1 681 299 ‘MEDI-CONFORT’.

3. Extract from WHOIS with information on the registration of domain name mediconfort.com on 15/10/1999.

4. Copy of the registration certificate of the contested EUTM.

5. Extracts from the websites www.c-confort.com and www.monagentcommercial.fr that refer to the contested sign ‘ ’ and the proprietor’s group, all in French.

6. Extracts from the applicant’s website www.mediconfort.com, all in French, with images of shoes accompanied by prices and images of retail shops (three establishments in France).

7. Advertising leaflets of the Médi-Confort shops with images of orthopaedic products, shoes, dietary complements and hygienic products. They also refer to the website mediconfort.com and the three establishments in France (Doué-la-Fontaine, Saumur and Thouars). The documents are undated.

8. (Document missing).

9. Document of unknown origin containing Article L.711‑4 of the French Intellectual Code, in English.

The EUTM proprietor argued that in the application form only the trade name ‘MEDI-CONFORT’ was claimed as the basis of the application of invalidity. However, in the statement of grounds, the applicant indicated that the trade name was ‘ESPACE SANTE MEDI-CONFORT’. No other rights were invoked in the application form.

Moreover, the applicant did not make any reference to the conditions for acquiring a trade name right in France and did not provide the applicable law in the original language. The article of French law cited by the applicant established that a trade name could be used to oppose a new trade mark application if it was known throughout the national territory, which was not met in the present case.

Furthermore, the proprietor claimed that the evidence submitted by the applicant did not demonstrate the use in the course of trade of more than local significance of the trade name (or any other rights) on which the application was based. The evidence submitted by the applicant showed the use of a website under the name ‘MEDI-CONFORT’ that offered for sale medical products, such as products for assisting people with special needs for using the bathroom and special beds, chairs and shoes. Nonetheless, none of these goods were identified with the trade mark ‘MEDI-CONFORT’ but were branded with the trade marks of third parties. Moreover, none of the documents referred to the relevant point in time.

The proprietor considered that, since earlier mark No 1 681 299 ‘MEDI-CONFORT’ was not mentioned in either the application form or in the statements of grounds, it should therefore not be considered a basis of the application request. In the event that it was considered as a basis of the invalidity application, the EUTM proprietor requested proof of use of this trade mark.

Finally, the proprietor argued that there was no likelihood of confusion between the contested mark and the earlier rights since they produced a totally different impression due to the additional, different word and figurative elements. In addition, the goods and services protected by the signs in conflict were dissimilar, as the applicant provided services of a medical and orthopaedical nature, whereas the proprietor offered footwear without any special purpose or nature.

In reply, the applicant argued that there was no obligation to use the cancellation application form and all the earlier rights claimed in the statement of grounds should be taken into account as all of them were admissible according to the provisions of EUTMDR. It specified that the earlier rights that were the basis of the application were a) the corporate name No 401 823 521 ‘MEDI CONFORT’ used in the course of trade in France, b) the trade name ‘ESPACE SANTE MEDI-CONFORT’ used in the course of trade in France and c) the domain name mediconfort.com. It did not mention the earlier mark No 1 681 299 ‘MEDI-CONFORT’. Moreover, it provided the applicable French law in the original language and its translation into English, and explained the conditions of entitlement and applicability of the national law.

Moreover, the applicant submitted the same evidence already sent with its previous observations (listed above) and some additional evidence to prove the requirements of entitlement and use in the course of trade of more than mere local significance of the earlier rights on which the application is based, in particular the following (listed following the applicant’s proposal).

1. Extract from the Commercial Court of Angers with information on the registration of the company ‘MEDI CONFORT’ accompanied by a printout from www.infogreffe.com with information on the turnover of the company ‘MEDI-CONFORT’ for 2015-2018.

7.1. Advertising material from Médi-Confort with images of orthopaedic and assistance goods, as well as images of Médi-Confort establishments and vehicles with promotional images of Médi-Confort.

7.2. Promotional calendars for 2008 and 2011.

3. Three invoices issued by an advertising agency to the applicant and copy of a contract between the applicant and the advertising agency, dated 25/04/2019, 15/03/2019 and 10/05/2019, for promotional services (printing of material, mailing and client archive), in French. The list of addresses to which the documents were sent is included.

7. Various invoices issued by the applicant to clients in France, from November 2017, January 2018 and November and December 2019. The invoices show the sign on the upper left side.

13. (Documents missing).

Finally, the EUTM proprietor explained that although the invalidity applicant was not obliged to use the application form, the applicant did do so and failed to fulfil the legal requirements. The attempt to select only one ground in the invalidity form and develop further grounds in the statement of grounds is inadmissible, as it creates uncertainty for the proprietor and prevents it from submitting an accurate defence of its rights and interests.

Moreover, the documents filed by the applicant should not be considered, as they were not in the language of the proceedings or have not been translated. The proprietor insisted that the applicant failed to provide facts, evidence and arguments about the acquisition, continued existence and scope of protection of the prior right and a clear identification of the content of the national law. It also explained that the requirement in relation to the reference to the relevant legal provision of the applicable national law was not fulfilled, as the applicant did not make any reference to the number of the legal provision cited and the wording of the same consisted merely of a Word document, with no reference to the source.

Regarding the evidence of use in the course of trade of more than mere local significance submitted by the applicant, the proprietor pointed out that the invoices and printouts from the applicant’s website showed the sales of shoes under various trade marks, but not under the sign ‘MEDI-CONFORT’.

Finally, it reiterated its arguments regarding the lack of likelihood of confusion between the signs in conflict.

PRELIMINARY REMARKS

As stated in the ‘Summary of the parties’ arguments’ section above, in its reply of 13/12/2019 to the observations of the proprietor, the applicant clarified that the following rights are the basis of the application:

1. corporate name No 401 823 521 ‘MEDI-CONFORT’

2. trade name ‘ESPACE SANTE MEDI-CONFORT’

3. the domain name mediconfort.com.

Therefore, the registered trade mark No 1 681 299 ‘MEDI-CONFORT’ to which the applicant referred in its previous observations will not be considered as a basis of the application.

Regarding the proprietor’s arguments that the trade name ‘ESPACE SANTE MEDI-CONFORT’ and the domain name mediconfort.com are inadmissible since they are not included in the application form, according to Article 63(2) EUTM, it is not obligatory to use the forms provided by the Office as long as all the admissibility requirements are met. However, the use of the official forms is highly recommended.

In its observations of 13/12/2019, the applicant referred to the abovementioned earlier rights. It identified the kind and nature of each of the rights and the Member State where the rights were claimed to exist and submitted a representation of the signs. Therefore, all the abovementioned rights are admissible as the basis of the application for a declaration of invalidity.

For the sake of completeness, the Cancellation Division clarifies that the additional evidence sent by the applicant on 13/12/2019 is admissible to substantiate the earlier rights. According to Article 16(1) EUTMDR, the applicant will present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of the proceedings. According to Article 16(1)(b) EUTMDR in conjunction with Article 7(2) EUTMDR, within the period referred to above, the applicant must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the application. The latter applies as well regarding the evidence proving that the requirements of Article 8(4) EUTMR have been met, such as evidence showing that the sign is used in trade of more than mere local significance.

As the evidence submitted by the applicant on 13/12/2019 was filed before the closure of the adversarial part of the proceedings (12/05/2020), the evidence is considered to have been submitted on time.

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 will 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.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the priority date of the contested trade mark;

• pursuant to the law governing it, prior to the priority date of the contested trade mark, the applicant acquired rights to the sign on which the application for a declaration of invalidity is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those 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.

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 sign 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 sign in question is 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 precluding an earlier right that is not sufficiently definite – that is to say, important and significant in the course of trade – from preventing either the registration or the validity of a European Union trade mark.

Regarding 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). In addition, in invalidity proceedings, 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. 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) and the conditions set out in that paragraph are fulfilled’ (03/08/2011, R 1822/2010‑2, BABY BAMBOLINA (FIG. MARK), § 15).

In the present case, the contested trade mark was filed on 09/05/2016. Therefore, the applicant was required to prove that the sign on which the invalidity application is based was used in the course of trade of more than local significance in France prior to that date and, also, at the time of filing of the invalidity request on 17/09/2018.

When determining the significance of the use made of a trade sign under Article 8(4) EUTMR, one must consider the territory in which it is used, the length of time and economic dimension of the use, the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (24/03/2009, T‑318/06 - T‑321/06, General Optica, EU:T:2009:77).

The applicant submitted evidence on 17/09/2018 and 13/12/2019. The evidence has been listed above in the section ‘Summary of the parties’ arguments’.

Regarding the proprietor’s arguments that the applicant did not submit translations of the evidence of use and that therefore this evidence should not be taken into consideration, the applicant is not under any obligation to translate the evidence filed with a view to establishing use in the course of trade of the earlier sign(s), unless it is specifically requested to do so by the Office (Article 7(4) EUTMDR in conjunction with Article 24 EUTMIR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, and their self-explanatory character, the Cancellation Division considers that there is no need to request a translation. Moreover, the evidence does contain partial translations in the applicant’s observations that enable the evidence as a whole to be understood.

While the evidence suggests that some use of the signs has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR. The notion of ‘use in the course of trade’ in accordance with Article 8(4) EUTMR is not the same as ‘genuine use’ in accordance with Article 47(2) and (3) EUTMR (30/09/2010, T‑534/08, Granuflex, EU:T:2010:417, § 24-27). The aims and conditions connected with proof of genuine use of registered European Union or national trade marks are different from those relating to proof of use in the course of trade of the signs referred to in Article 8(4) EUTMR (09/07/2010, T‑430/08, Grain Millers, EU:T:2010:304, § 26; 29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 143). Therefore, use must be interpreted according to the particular type of right at issue.

The extract listed under 1 shows that the ‘MEDI CONFORT’ company was founded on 07/09/1995 and includes information regarding the activities for which the company is registered. The document is in French and has been partially translated by the applicant. Moreover, the extract from WHOIS (listed under 3) shows that the domain name mediconfort.com was registered on 15/10/1999. Under Article 8(4) EUTMR, the fact that the applicant may, in accordance with the law of the Member State governing the sign, have acquired exclusive rights plainly enforceable against subsequent trade marks on the basis of its registration only does not exempt it from the burden of proving that the sign in question has been used in the course of trade of more than local significance prior to the filing of the contested trade mark and at the time of filing of the invalidity request. Therefore, the documents mentioned above have no value in terms of proving the use of the earlier signs in accordance with the requirements of Article 8(4) EUTMR.

The printouts from the websites www.c-confort.com and www.monagentcommercial.fr only refer to the contested mark and, therefore, they are not relevant to proving the use of more than mere local significance of any of the earlier rights.

The printouts from the applicant’s website and the advertising material (listed under 6 and 7) provide only short, unspecific descriptions and images of some activities and goods offered to customers as well as pictures of the applicant’s establishments. No information at all is given regarding the economic significance of these activities or the date on which they took place since most of the evidence is undated or does not refer to the relevant period. The promotional calendars are from 2008 and 2011, long before the relevant dates, and the invoices issued by the advertising agency are all dated after the filing of the invalidity request.

The invoices issued by an advertising agency to the applicant for rendering promotional services (printing of material, mailing and client archive) with the list of addresses to which the documents were sent (15 645) show a certain recent investment in publicity. However, only three invoices were issued, all after the filing of the invalidity request, and, moreover, the investment shown is very limited (approximately EUR 30 000) as is the number of addresses (bearing in mind the size of the population of France). There is no further evidence that proves a longstanding investment in publicity before the filing of the contested mark and the application for a declaration of invalidity.

Furthermore, the examples of invoices and turnover figures for 2015-2018 included in the website www.infogreffe.com provide certain information about the intensity of use in France of the earlier signs. However, not all the invoices are dated prior to the filing of the invalidity request, and none are dated before the filing of the contested trade mark on 09/05/2016. The quantities shown in the invoices show a very limited commercial activity and, therefore, do not corroborate the turnover figures provided by the applicant. This information regarding the turnover is also insufficient since it is broadly a general reference to the activities carried out by the applicant and does not specify either the type of activity or the places concerned. In addition, the invoices do not show a prolonged use as all of them date from November 2017.

Moreover, the evidence provided by the applicant shows the existence of three establishments in France, namely in Doué-la-Fontaine, Saumur and Thouars. These are very small towns with a total of population of approximately 48 000 inhabitants. This shows that the geographical dimension of the signs is very insignificant.

The Court of Justice has clarified that the significance of a sign cannot be a function of the mere geographical extent of its protection. The sign must 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 (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 158-159). This is obviously not the case. The evidence submitted by the applicant is not enough to prove a relevant economic impact of the earlier signs.

In order to be capable of cancelling a validly registered European Union trade mark, the sign relied on in an invalidity action must actually be used in a sufficiently significant manner in the course of trade in terms of geographical significance and economic impact.

It cannot be inferred from the evidence submitted that the earlier signs have been used in such a manner.

Considering all the above, the Cancellation Division concludes that the evidence submitted by the applicant is insufficient to prove that the earlier signs were used in the course of trade of more than mere local significance in connection with the activities on which the invalidity application was based before the relevant date and in the relevant territory.

Given that at least one of the necessary requirements of Article 8(4) EUTMR is not met, the application must be rejected as unfounded.

As the application is rejected and the proprietor is the winning party, the Cancellation Division will not analyse the other arguments presented by the proprietor.

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

Maria Belén IBARRA DE DIEGO

Ana MUÑIZ RODRIGUEZ

Richard BIANCHI

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.