CANCELLATION No C 39 544 (invalidity) 

 

Milmil, SIA, Mežmalas iela 6, 2164 Alderi, Latvia (applicant), represented by Ilmārs Šatovs, Berģu iela 8-15, 1024 Riga, Latvia (professional representative)

 

a g a i n s t

 

Oü Aravon, Aardla tn 25b, 50110 Tartu, Estonia (EUTM proprietor), represented by Kaie Puur, World Trade Center Tallinn Ahtri 8, 10151 Tallinn, Estonia (professional representative).

On 18/03/2021, 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 09/11/2019, the applicant filed a request for a declaration of invalidity against European Union trade mark No 18 074 509 ‘PLACENT VITA’ (word mark) (the EUTM). The request is directed against all the goods in Classes 3 and 5 covered by the EUTM. The application is based on the non-registered trade mark and the trade name ‘PLACENTA VITAE’, both used in the course of trade in Latvia. The applicant invoked Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

In the statement of grounds accompanying the invalidity request, the applicant argues that it owns a non-registered trade mark and a trade name, ‘PLACENTA VITAE’, used in the course of trade in Latvia. According to the applicant, pursuant to the Latvian national laws, these two earlier rights as referred to in Article 8(4) EUTMR enable it to prohibit the use of the contested EUTM. In support of its claims, on 08/12/2019 and 09/12/2019 the applicant submitted several documents (Annexes 1 to 23) that will be listed in the course of the present decision.

 

On 27/02/2020 the EUTM proprietor requested an extension of the time limit by one month. On 02/03/2020, the Office granted an extension for observations until 28/03/2020. In its observations in reply of 27/03/2020, the EUTM proprietor firstly demands the applicant to provide additional information on how the relevant provisions according to the Latvian laws have been interpreted and implemented by national courts. The EUTM proprietor also claims that several pieces of evidence should be discarded because they are dated after 31/05/2019, i.e. after the EUTM proprietor had already filed for protection of the mark ‘PLACENT VITA’. The EUTM proprietor also notes that the evidence submitted only may show that the sign was first directed at consumers sometime in April/May 2018, i.e. it was used not more than one year prior to the filing date of the EUTM and that the invalidity applicant has provided no sales numbers nor information of its market position. The EUTM proprietor finally claims that Section 9(3) paragraph 4 of the Latvian Law on Trade Marks and Geographical Indications (LTM) is not applicable as the sign ‘PLACENTA VITAE‘ was not protected as a non-registered trade mark at the date of filing of the EUTM, i.e. 31/05/2019 as the length and amount of use of the sign were insufficient for there to be risk of consumer confusion, and the provision is not applicable since the mark has not been used honestly. According to the EUTM proprietor, the same is valid for the trade name on which the opposition is based.

On 05/06/2020 the applicant submits additional observations and evidence. However, on 18/06/2020 the Office informed the applicant that those documents were not to be taken into account as they were not received within the time limit in accordance with Article 17(2) EUTMDR. In the context of continuation of the proceedings, on 12/07/2020 the applicant submits additional observations and documents.

On 27/11/2020, the EUTM proprietor questions the fact that honesty and good faith towards the government and/or European Union institutions by registering the applicant’s cosmetic products does not mean that the applicant was acting honestly and in good faith towards the EUTM proprietor with regards to the latter’s intellectual property rights. Also, it reiterates the inadmissibility of evidence related to dates that are subsequent to the filing date of the EUTM and the applicability of the Latvian law, in particular as regards the existence of the earlier rights and the deficiencies of the evidence for the sake of the fulfillment of the requirements of the referenced provisions in the Latvian law.

NON-REGISTERED MARK OR OTHER SIGN USED IN THE COURSE OF TRADE ─ ARTICLE 60(1)(c) EUTMR IN CONNECTION WITH ARTICLE 8(4) EUTMR

 

The application is based on the non-registered trade mark and the trade name ‘PLACENTA VITAE’ purportedly used in the course of trade in Latvia in relation to haircare products, including serums, shampoos, conditioners, balsams, lotions.

According to Article 60(1)(c) EUTMR, a European Union trade mark will be declared invalid on application to the Office 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 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 60(1)(c) EUTMR in conjunction with 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;

 

 pursuant to the law governing it, prior to the filing or the priority date of the contested trade mark, the applicant must have acquired rights to the sign on which the invalidity action 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 must be fulfilled in respect of the contested trade mark.

 

In 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 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 derives 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.), § 15). The requirement of the ‘continued existence’ in the context of Article 8(4) EUTMR in invalidity proceedings is now explicitly set out in Article 16(1)(b) EUTMDR in conjunction with Article 7(2)(d) EUTMDR.

 

The above was confirmed by the General Court in its ruling in the Baby Bambolina case (23/10/2013, T‑581/11, Baby Bambolina, EU:T:2013:553). The Court held that the earlier right relied on in support of an opposition must still exist at the time when the notice of opposition is filed. By analogy, the earlier right relied on in support of an application for a declaration of invalidity must still exist at the time that the application is filed. This normally presupposes that the sign in question must still be in use at the time of the filing of the notice of opposition or of the application for a declaration of invalidity. Indeed, it is precisely the use of the sign in the course of trade which is the basis of the existence of the rights to that sign (23/10/2013, T‑581/11, Baby Bambolina, EU:T:2013:553, § 26 and 27).

 

The abovementioned conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the invalidity action based on a non‑registered trade mark or other sign used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

 

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. This requirement of Article 8(4) EUTMR is subject to EU legal standards and must be assessed accordingly, regardless of the fact that national legislation may not require actual use in the case of some specific earlier rights.

 

Furthermore, such use of the sign in question must have been of more than mere local significance. The rationale of this provision is to restrict the number of conflicts between signs by preventing an earlier sign which is not sufficiently important or significant from challenging either the registration or the validity of a European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence in their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local. This implies that where the territory in which that sign is protected may be regarded as other than local, the sign must be used in a substantial part of that territory. To ascertain whether that is indeed 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. 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 & T‑507/11, Peek & Cloppenburg, EU:T:2013:197, § 19, 47-48). This applies mutatis mutandis to invalidity proceedings.

 

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. This consideration means that 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. Secondly, account must also be taken 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 – T‑321/06, General Optica, EU:T:2009:77, § 36-37 and 30/09/2010, T‑534/08, Granuflex, EU:T:2010:417, § 19).

The contested trade mark was filed on 31/05/2019. Therefore, the applicant was required to prove that the signs on which the application is based were used in the course of trade of more than local significance in Latvia prior to that date. Furthermore, the invalidity request was filed on 09/11/2019. The evidence must also show that the applicant’s signs were still used at that time, and that they have been used in the course of trade for the goods claimed by the applicant, namely haircare products, including serums, shampoos, conditioners, balsams, lotions.

On 08/12/2019 and on 09/12/2019 the applicant filed the following evidence (for the sake of clarity, the Cancellation Division will use the same numbering as the applicant):

 Annex 1: EU mark`s proprietor`s cease and desist letter of 28/10/2019 concerning the sign ‘PLACENT VITA’ or a derivation thereof such as ‘PLACENTA VITAE’;

 Annex 2: Declaration of 05/11/2019 from the Italian company Parisienne Italia S.p.a. in which it is declared that the manufacturing of ‘PLACENTA VITAE’ hair fall prevention lotions for the Latvian company SIA MIL MIL was started in 2017, based on the order made on 13/12/2017;

 Annex 3: Declaration of 09/02/2019 manufacturing practices (GMP) certificate from the Italian association of producers of cosmetic products Cosmetica Italia concerning the brands ‘Mil Mil Placenta Vitae Vials’, ‘Mil Mil Placenta Vitae Shampoo’ and ‘Mil Mil Placenta Vitae Conditioner’;

 Annex 4: Printouts of 03/11/2019 from EU Cosmetic Product Notification Portal (CPNP) regarding registration of cosmetic products under the ‘PLACENTA VITAE’ name, the ‘1^st notification dates’ are 24/05/2018 and 08/01/2019;

 Annexes 5-11: Extracts taken from Latvian and Estonian magazines ‘40+’, ‘Veselība’, ‘Ko ārsti Tev nestāsta’, ‘Mida arstid sulle el raagi’, ‘Una’, containing advertising spaces for ‘PLACENTA VITAE’ products, such as hair lotions and haircare products. The sign is also reproduced on the packaging in this manner: .

 Annexes 12-16: Extracts taken from Latvian pharmacy networks’ advertising newspapers ‘BENU’, ‘Euroaptieka’, ‘Latvijas Aptieka’, ‘Mēness Aptieka’, ‘Apotheka’ and also online advertising materials between 30 August and 6 September 2018 on Facebook, containing advertising spaces for ‘PLACENTA VITAE’ products, such as hair lotions and haircare products. The sign is also reproduced on the packaging in this manner: .

 Annex 17: Printouts of online marketing and advertising materials, in particular on social networks, in which ‘PLACENTA VITAE’ products are displayed, dated for the years 2018 and 2019.

 Annex 18: Text of the Latvian Law on Trade Marks and Geographical Indications of Origin with translation in English language.

 Annex 19: Text of the Latvian Competition Law with translation in English language.

 Annex 20: Text of the Latvian Advertising Law with translation in English language. 

 Annex 21: Printouts of webpages such as Veravita.lv, 1a.lv, Ksenukai.lv, Apotheka.lv, Azeta.lv, Emenessaptieka.lv, Drogas.lv, Ebay.com, on which ‘PLACENTA VITAE’ goods are displayed for sale. Some of the prices of the items are express in Euros, some others in US Dollars. According to the applicant these documents are related to December 2019.

 Annex 22: Printouts taken from social networks’ pages in which the sign ‘PLACENTA VITAE’ is displayed in relation to hair care products. According to the applicant, these documents are dated in the period comprised between July 2019 and December 2019.

 Annex 23: Extracts taken from the journal „Mida arstid sulle el raagi” (translated as „What doctors don`t tell you”) of August 2019 and November 2019 published by a Latvian publisher, namely „Rīgas viļņi” and distributed in Estonia; from the journal „Aзбука здоровье” (translated from Russian as „The ABC of health”) of September/October 2019 that is distributed in the Baltic States – Latvia, Estonia, Lithuania; from the advertising newspaper of the BENU pharmacy network of December 2019.

On 12/07/2020 the applicant also filed additional evidence. The applicant indicated that the written observations and the evidence appended thereto were ‘Confidential’, thus expressing a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Cancellation Division does not consider these submissions confidential.

 Annex 24: Court judgment No. SKC-120/2018 of 27/03/2018 of the Senate.

 Annex 25: Decision of the Board of Appeals of the Latvian Patent Office in opposition case No. ApP/2006/WO 841 126-le (MONEY ACTION) of 09.01.2007.

 Annex 26: Decision of the Board of Appeals of the Latvian Patent Office in opposition case No. ApP/2014/M 65 283-Ie (RED SUN BUFFET) of 29.07.2014.

 Annex 27: Decision of the Board of Appeals of the Latvian Patent Office in opposition case No. ApP/2004/M 52 306-Ie (KABUKI) of October 2004.

 Annex 28: Printout from Wikipedia containing information about the population of the Latvian city of Liepāja.

 Annex 29: Excerpts from the Latvian Law on Trade Marks and Geographical Indications of Origin with translation.

 Annex 30: Invoice of Euroaptieka dated 18.10.2019 concerning ‘Advertising in the newspaper_PLACENTA VITAE_2018_10 for the amount of 181,50 EUR.

 Annex 31: Printout of a WhatsApp conversation in English and in Italian dated 29/05/2019.

 Annex 32: Printout of e-mail correspondence dated 17/03/2020.

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 or validity of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

The Court of Justice ruled that the ‘use of the sign in the course of trade’ within the meaning of Article 8(4) EUTMR refers to the use of the sign ‘in the course of a commercial activity with a view to economic advantage and not as a private matter’ (judgments of 12/11/2002, C-206/01, Arsenal, EU:C:2002:651, § 40; 25/01/2007, C- 48/05, Opel, EU:C:2007:55, § 18; 11/09/2007, C-17/06, Céline, EU:C:2007:497, § 17).

The criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated.

Consideration must be given, and the evidence must relate, to these elements: the intensity of use (sales made under the sign); the length of use; the spread of the goods (location of the customers) and the advertising under the sign and the media used for that advertising, including the distribution of the advertising.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and

arguments submitted by the parties and the relief sought.

As already mentioned, the applicant is required to prove, inter alia, that the signs on which the invalidity application is based were used in the course of trade of more than local significance in Latvia prior to the date of filing of the contested mark, i.e. prior to 31/05/2019. Having examined the abovementioned evidence in detail, the Cancellation Division notes that most of the evidence is either undated or dated after that relevant date. The evidence does not provide a convincing picture of use of the applicant’s signs at the time of the filing of the contested trade mark.

The pieces of evidence that refer to use before 31/05/2019 are scarce. Preliminarily, it must be noted that Annexes 18-20, Annexes 24-27 and Annex 29 are clearly aimed at proving the existence and scope of the national law, so that they have no utility for the sake of the present analysis, that is aimed at the proof of the use of the signs in the course of trade.

As it regards the majority of the other documents submitted by the applicant, it is also evident that, independently on their relation with the actual use of the signs, they are subsequent to the date of the challenged application. It is the case of Annex 1, Annex 2, Annex 4, Annexes 21-23 and Annex 32. This is also valid for the majority of the extracts from magazines and journals, as well as webpages that constitute the remaining pieces of evidence submitted by the applicant.

As it concerns these latter, the Cancellation Division does not entertain doubts about the nationwide coverage of the media in question. The extracts from magazine and journals show a certain, recent investment in publicity. However, as indicated above, a substantial part of the advertisement activity took place after the filing date of the EUTM.

As regards the references to the sign invoked on the webpages such as Veravita.lv, 1a.lv, Ksenukai.lv, Apotheka.lv, Azeta.lv, Emenessaptieka.lv, Drogas.lv, Ebay.com, on which ‘PLACENTA VITAE’ goods are displayed for sale, account must be taken of the fact that, as already pointed out, these documents are claimed by the applicant itself to related to the month of December 2019. Furthermore, some of the prices related to the goods displayed are in US Dollars, that is obviously not the currency normally used in Latvia.

The mere fact that some products appeared on websites of more than local accessibility does not in itself increase its relevance. Otherwise, the requirement to localise use, if any, to a given Member State under Article 8(4) EUTMR, or to determine whether or not it was merely local, would become obsolete the moment when printed or electronic media were made use of. Use does not become worldwide just because the internet is accessible worldwide (08/06/2007, R 846/2006-4, 800 FLOWERS, § 44, 67; 08/10/2009, R 239/2009-4, Cafe Carlyle, § 19, 24). Moreover, the mere fact that the website is available in a country does not mean that the use is indeed of more than mere local significance in that country.

When taking into account all the evidence which covers the period before the filing date, the Cancellation Division finds that it does not include any objective and independent data as to the actual extent of use of the signs.

Hence, the aforementioned evidence does not provide the Cancellation Division with sufficient objective information concerning the commercial volume, duration, geographic extent, frequency and intensity of use. This evidence considered in its entirety does not allow the Cancellation Division to conclude that the nature, the geographical and economical dimensions of the use of the signs before the filing date of the contested EUTM were sufficiently significant for the purposes of Article 8(4) EUTMR.

In particular, as regards the economic dimension of the sign’s significance, it must be assessed in view of the length of time for which it has fulfilled its function in the course of trade and the intensity 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 – T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

In this sense, not only the oldest pieces of evidence submitted by the applicant do not go back in time any further than a year before the filing date of the challenged EUTM, but there are no elements of evidence whatsoever that give directly or indirectly a substantial information about the economic significance of the use in Latvia of both the non-registered trade mark and the trade name ‘PLACENTA VITAE’.

The applicant claims that Latvian population estimate in 2018 is 1,919,968 inhabitants, which means that Latvian market is very small and can be easily reached by any advertising campaign. If this is to a certain extent true, it does not, however, discharge the applicant with the obligation of proving the economic significance of the use of the signs on which the application is based.

In its observations filed with the application on 09/11/2019 the applicant included a paragraph titled “Distribution and sales” in which numbers related to the volumes of products bearing ‘PLACENTA VITAE’ mark were given, between the years 2018 and 2019.

The applicant claims that […] the overall sales volume is almost 100`000 EUR in almost 1,5 years time which is a huge success for a new product and proves the demand and high level of recognition, distinctiveness and fame of the earlier mark PLACENTA VITAE in the Latvian market of haircare products […]. In this regards, it is clear that such a statement cannot be accepted without any additional document, even better if coming from independent sources, that corroborate it.

Therefore, taking into account the above, while the evidence suggests that some use of the signs has been made, for a period of time that in the best scenario does not seem to be particularly long, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR. The documents filed do not provide the Cancellation Division with sufficient information concerning the commercial volume, the duration, and the frequency of use, especially before the date of filing of the contested mark but also after that date and up to the date of filing of the invalidity request. The evidence, as a whole, does not allow the Cancellation Division to ascertain the extent of use, in other words, its economic significance. There is no information, neither from the cancellation applicant nor, for instance, from its licensees or franchisees as regards turnover or invoices or other documents indicating that the signs were used to the necessary extent. The applicant has not demonstrated that it had established a significant presence on the Latvian market with the non-registered trade mark and trade name invoked prior to the relevant date, i.e. when the application for the contested mark was filed.

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 local significance in connection with the goods on which the invalidity application was based before the relevant date and in the relevant territory.

Since one of the requirements of Article 8(4) EUTMR is not fulfilled, the application has to be rejected insofar as it is based on Article 60(1)(c) EUTMR in conjunction with Article 8(4) 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

 

Solveiga BIEZA

Andrea VALISA

Catherine MEDINA

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.