CANCELLATION No 26 042 C (INVALIDITY)

Rickley Dale Crain, 3803 North Bryan Road, Shawnee, Oklahoma, 74804, United States (of America) (applicant), represented by Trade Mark Direct, 4 The Mews, Bridge Road, Twickenham, London Richmond upon Thames TW1 1RF, United Kingdom (professional representative)

a g a i n s t

Arnan Joahill, 40 Clitheroe Avenue Harrow, London Harrow HA29UX, United Kingdom (EUTM proprietor).

On 16/10/2019, 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.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 17 884 924 for the word mark ‘Nose Tork’, in Classes 1 and 5. The application is based on the non-registered marks ‘NOSE TORK’, and used in the course of trade in the United Kingdom. The applicant invoked Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant refers to the legal concept of passing-off which protects unregistered trade marks or other signs used in the course of trade. He refers to the three elements to be proven in a passing-off action, also called the classical trinity, namely goodwill attached to the goods, misrepresentation and damage, and claims that those requirements are fulfilled in the present case. It submits evidence of use of the earlier marks, which is listed and analysed below, in support of the existence of goodwill and of a use of more than local significance according to the standard foreseen in Article 8(4) EUTMR. It puts forward that the misrepresentation stems from the fact that the contested mark is identical to the word element of the earlier marks and that the goods are identical or similar. It claims that the damage is that, if the contested mark were to remain registered, the applicant would no longer be able to use and control the use of the prior marks without the risk of an infringement action being brought against its company by the EUTM proprietor. It adds that this would damage the profitability and the goodwill attached to the business which it has worked to establish in the United Kingdom and Europe as it would no longer be able to market its goods under the prior marks.

The EUTM proprietor did not reply.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 60(1)(c) EUTM IN COMBINAISON WITH ARTICLE 8(4) EUTMR

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

According to Article 8(4) EUTMR, upon application 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, a European Union trade mark shall 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 filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the applicant acquired rights to the sign on which the application 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.

Therefore, the question whether the use of a non-registered sign is of more than mere local significance will be answered by applying a uniform European standard (18/04/2013, T-506/11 and T-507/11, Peek & Cloppenburg, EU:T:2013:197, § 19, 47-48).

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 — preventing registration or from invalidating a registered European Union trade mark. An earlier right of that kind must be reserved for signs with a real and actual presence on their relevant market.

To be capable of invalidating a registered trade mark, the sign relied on in invalidity proceedings 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.

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, 166), or the priority date if relevant. Furthermore, it should be taken into account that, 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 (decisions of 05/10/2004, 606 C, and 03/08/2011,
R 1822/2010-2, Baby Bambolina (fig.), § 15).

In the present case, the contested trade mark was filed on 08/04/2018, and enjoys a priority date of 05/11/2017 and the invalidity request was filed on 01/08/2018. Therefore, the applicant was required to prove that the sign on which the application is based was used in the course of trade of more than local significance in the United Kingdom before and up to those dates. The evidence must also show that the applicant’s sign has been used in the course of trade for smelling salts; ammonia inhalants, as claimed by the applicant.

On 25/09/2018, the applicant filed the following evidence:

• A witness statement dated 25/09/2018 signed by Mr Rickey Dale Crain, the applicant, to support the veracity of the documents submitted as supporting evidence, as listed below;

• Exhibit 1: a table printed from the internet address sellercentral-europe.amazon.com listing some transactions having taken place between 17/04/2017 and 23/04/2017 including one order payment dated 21/04/2017 concerning ‘Nose Tork – Smelling Salts’ for an amount of GBP 13.99.

• Exhibit 2: same type of table corresponding to the period 11/02/2018 to 19/02/2018 showing ten order payments for ‘Nose Tork – Smelling Salts’ dated 18/02/2018 and 19/02/2018, one for GBP 27.98 and nine for GBP 13.99 each (total GBP 153.89).

• Exhibit 3: five invoices for the sale of ‘Crain Nose Tork smelling salts’ to the attention of ‘The Aesthetic Warehouse’, with an address in the town of Dundee, United Kingdom. One is dated 29/03/2017, two are dated 22/04/2017 (with the same invoice number albeit for different amounts) and the last two are dated 14/06/2017 (indeed they seem to be duplicates as the invoice number and the amounts are the same). They refer to, in total, 647 bottles of CRAIN NOSE TORK SMELLING SALTS (for a total price of approximately GBP 2000).

• Exhibit 4: two screenshots from the online sale website strengthshop.co.uk, undated. The first one shows a pack of five Nose Tork smelling salts online at a price of GBP 29.99 (see screenshot below) and the second one shows an individual product at GBP 6.99.

• Exhibit 5: extract from the website amazon.com showing ‘Nose Tork Smelling Salts – Powerlifting’ on sale at a price indicated in USD. It includes reviews from customers dated 2015 to 2018. There is a mention that the goods can be delivered to the UK.

• Exhibit 6: extract from the website everydaypr.co.uk, undated, showing the product ‘Nose Tork Ammonia Smelling salts’ on sale at the price of GBP 4.99.

• Exhibit 7: screenshot from the website pullum-sports.co.uk, undated, showing the ‘Nose Tork smelling salts’ on sale at the price of GBP 6.95.

• Exhibits 8(1) to 8(4): cover page and one inside page of two copies of the magazine ‘Powerlifting US’ dated July 1993 and July 1994. The applicant claims that the magazine is distributed in the UK. There is a photograph of Mr Rickey Dale Crain on the cover pages and in both magazines, the ‘Nose Tork’ smelling salts are mentioned in a list of various products entitled ‘powerlifting paraphernalia’ (at the price of USD 5.99.)

• Exhibit 9: four invoices to the attention of Strength Shop UK with an address in the town of Motherwell, United Kingdom. They are dated 18/03/2011, 28/12/2011, 12/04/2012 and 29/11/2012. They reflect sales of, in total, approximately 2000 bottles of ‘Nose Tork’ smelling salts at a unit price of GBP 3 (total amount is approximately GBP 6000).

• Exhibits 10(1) to 10(3): extracts from the website www.crain.ws, undated showing ‘Nose Tork’ smelling salts for sale, with a price in USD and a list of distributors including the company Vegan Sports Ltd, in Edinburg, Scotland, UK.

• Exhibit 10(4): extract from Whois referring to the domain name CRAIN.WS created in 2005.

As previously mentioned, when assessing whether use of more than local significance is proven, account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say, of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of 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 to T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business or press cuttings showing the degree of recognition on the part of the public of the sign relied on, or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 43).

In the Cancellation Division’s view, the submitted evidence does not demonstrate in a satisfactory manner that the earlier marks ‘NOSE TORK’, and have been subject to use of more than local significance in the course of trade in the United Kingdom.

The evidence is far from showing use in a substantial part of the United Kingdom as the only documents which provide indications in this respect are the invoices addressed to two customers in the towns of Dundee and Motherwell in Scotland, which do not seem to have a particular economic significance in the relevant territory as they are small or medium towns respectively. By analogy, the Court considered a limited usage the deliveries in three towns at most in the French territory, namely Thiais, Lille and Strasbourg, of which at least the latter two are much bigger towns than Dundee and Motherwell (22/01/2013, T‑225/06 RENV, T‑255/06 RENV, T‑257/06 RENV & T‑309/06 RENV, ‘Bud, EU:T:2013:31). It is also noted that the customers in question are a retailer and a wholesaler and that there is no evidence of sales to end users in the United Kingdom. The specific nature of the goods at issue, namely smelling salts, albeit essentially intended for weight lifters, does not justify the limited geographical scope of the use.

From the economic point of view, the sale of approximately 2650 bottles of the product out of which 2000 five years before the priority date of the contested trade mark and the remaining 650 in 2017 (also considering that one invoice for 115 bottles seems to be a duplicate), that is with an interruption of five years, does not reveal use that is particularly intense, or continuous. On the contrary, this is rather sporadic use.

The applicant has not submitted documents which would indicate that it is known among users, competitors, suppliers in the United Kingdom or that it has carried out advertising for that purpose in that territory.

The lists of a few transactions in GBP as reflected in the Amazon website (Exhibits 1 and 2, corresponding to approx. 12 units of the product), the extract showing that the product is sold online (on Amazon’s website (with a price in USD) and on three websites with a ‘.co.uk’ country code top-level domain, all undated, the fact that the product was mentioned in 1993 and 1994 in a publication of which nothing indicates that it was distributed in the United Kingdom, or the Whois extract, do not provide any additional indication to assess the significance of the use in the relevant territory.

In view of the above, it must be considered that the condition of use in the course of trade of a sign of more than mere local significance in the relevant territory is not satisfied.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the application 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. In the present case the EUTM proprietor did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore it did not incur representation costs.

The Cancellation Division

Boyana NAYDENOVA

Catherine MEDINA

Julie, Marie-Charlotte HAMEL

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.