CANCELLATION No 25 801 C (REVOCATION)

Kiriaki Zartaloudi, 3, Koritsas Str., 122 43 Egaleo, Athens, Greece (applicant), represented by Kiortsis & Associates, 136. Solonos Str., 10677 Athens, Greece (professional representative)

a g a i n s t

Infinity Cosmetics, 41, boulevard des Belges, 44300 Nantes, France (EUTM proprietor), represented by Cabinet Langlais Avocats, 33 rue de Strasbourg, 44000 Nantes, France (professional representative).

On 22/10/2020, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 9 752 601 are revoked in their entirety as from 26/07/2018.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 752 601 ‘dermafill’ (word mark), (the EUTM). The request is directed against all the goods covered by the EUTM, which, after the decision 22/08/2019, 25 766 C partially rejected the EUTM of, are the following:

Class 5: Sanitary preparations for medical purposes; Dietetic substances adapted for medical use; Food for babies; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides; Bath preparations, medicated; Sanitary pads and towels and sanitary pants; Herbs for medicinal purposes; Herbal tea; Antiparasitic preparations; Sugar for medical purposes; Alloys of precious metals for dental purposes.

Class 10: Dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Stockings for varices; Feeding bottles; Feeding bottle teats; Clothing especially for operating rooms; Massage apparatus; Esthetic massage apparatus; Chairs for medical or dental purposes; Surgical drapes; Basins for sanitary or medical purposes; Furniture especially made for medical purposes, surgical cutlery, orthopaedic footwear; dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

The applicant argues that the EUTM was not put to genuine use in relation to any of the contested goods.

In reply to the evidence filed by the proprietor the applicant points out that the proprietor only claims to use the mark in relation to some of the goods but not all.

The case for the proprietor

The EUTM proprietor submits evidence to prove the use of the EUTM which will be listed in detail below in the following section of the present decision. The proprietor argues that it has put the EUTM to genuine use in relation to pharmaceutical preparations; pharmaceutical and dermatological preparations injected into or under the skin for wrinkle filling; dermatological preparations including hyaluronic acid for wrinkle filling, in Class 5 and syringes for the injection of dermatological products, in Class 10. It argues that the evidence provides sufficient indications of the time, place, extent and nature of use in relation to the above mentioned goods and therefore, the application for a declaration of revocation must be rejected in so far as it is directed against said goods.

In reply to the applicant’s arguments the proprietor argues that the applicant has acknowledged that genuine use was made of the EUTM for the goods pharmaceutical preparations; pharmaceutical and dermatological preparations injected into or under the skin for wrinkle filling; dermatological preparations including hyaluronic acid for wrinkle filling, in Class 5 and syringes for the injection of dermatological products, in Class 10. Therefore, the application for revocation must be rejected in relation to these goods.

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, 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 earlier 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 30/06/2011. The revocation request was filed on 26/07/2018. 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 26/07/2013 to 25/07/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 31/10/2018 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

 Annex 1: Internet extracts showing goods bearing the contested sign.

 Annex 2: Examples of packaging of the goods.

 Annex 3: Invoices from a web hosting company for the proprietor’s website from 2014-2018.

 Annex 4: Copies of certification CE labels obtained by the proprietor between 2011-2017.

 Annex 5: Proof of the participation of the proprietor in the IMCAS Congress in 2015 and 2016 which is directed at plastic surgeons, extract from the IMCAS website, invoice for the subscription to the congress, extracts from the program and photographs from the DERMAFILL Facebook page for 2016.

 Annex 6: Proof of the participation of the proprietor in the AMEC Congress from 2014-2017 related to esthetic medicine, an article about the congress, invoices for the subscription to the congress, extracts from the proprietor’s website mentioning its participation in the congress with photos and information about the event, extracts from its Facebook page and from PRIME magazine in 2016 mentioning the sign.

 Annex 7: Examples of DERMAFILL advertising and articles dated between 2015-2017.

 Annex 8: Invoices from suppliers for the advertisement of DERMAFILL products between 2015-2018 and for the design of packaging in 2018.

 Annex 9: 349 invoices addressed to the proprietor’s distributors for the sale of DERMAFILL products in Belgium, Bulgaria, Cyprus, the Czech Republic, Estonia, Germany, Greece, Ireland, Italy, Latvia, Lithuania, Poland, Romania, Spain and the United Kingdom between 2013-2018.

 Annex 10: Copies of exclusive distribution agreements signed since 2011 with distributors in the Czech Republic, Greece, Ireland, Hungary, Italy, the Netherlands, Romania, Slovakia, Spain and the United Kingdom.

Preliminary remarks

The proprietor requested that the Office join the present application for revocation with the additional application for revocation number 26 341 C as the applicant in the later application is the company of which the applicant in the present proceedings is the Director. The Office considered this petition and on 19/11/2018 advised the applicant that it intended to join the proceedings. However, in order to do so the Office requested the applicant to appoint a single representative for both files by 29/01/2019. The applicant did not do so, nor did it expressly state its wish to join the files. Therefore, the files are not joined and each case must be examined independently.

When the applicant was informed of the limitation of the goods of the EUTM due to the decision of 22/08/2019 in case 25 766 C, the applicant replied that it maintained the application for revocation against all of the remaining goods.

Assessment of genuine use – factors

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 the following goods:

Class 5: Sanitary preparations for medical purposes; Dietetic substances adapted for medical use; Food for babies; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides; Bath preparations, medicated; Sanitary pads and towels and sanitary pants; Herbs for medicinal purposes; Herbal tea; Antiparasitic preparations; Sugar for medical purposes; Alloys of precious metals for dental purposes.

Class 10: Dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Stockings for varices; Feeding bottles; Feeding bottle teats; Clothing especially for operating rooms; Massage apparatus; Esthetic massage apparatus; Chairs for medical or dental purposes; Surgical drapes; Basins for sanitary or medical purposes; Furniture especially made for medical purposes, surgical cutlery, orthopaedic footwear; dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials.

The proprietor only claims to have used the sign in relation to pharmaceutical preparations; pharmaceutical and dermatological preparations injected into or under the skin for wrinkle filling; dermatological preparations including hyaluronic acid for wrinkle filling, in Class 5 and syringes for the injection of dermatological products, in Class 10.

The proprietor claimed that the applicant has acknowledged the use of the contested mark for goods in Classes 5 and 10. However, even if the applicant’s arguments would be in the sense of the proprietor's interpretation, the Office has to make its own evaluation of the evidence of use submitted. This means that the probative value of the evidence submitted is evaluated independently of the observations submitted by the applicant in this respect. Assessment of the relevance, pertinence, conclusiveness and efficacy of evidence lies within the discretion and power of judgment of the Office, not the parties, and falls outside the adversarial principle which governs inter partes proceedings (decisions of 01/08/2007, R 201/2006-4, OCB, § 19; 14/11/2000, R 823/1999-3, SIDOL).

A possible declaration by the applicant concluding that use has been proven does not, therefore, have any effect on the Office’s findings. It is solely up to the Office to carry out the procedure and evaluate whether the evidence submitted by the proprietor is to be regarded as of sufficient probative value.

This is not contrary to Article 95(1) EUTMR, which stipulates that in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. However, although the Office is bound by the facts, evidence and arguments provided by the parties, it is not bound by the legal value that the parties may give thereto. Hence, the parties may agree as to which facts have been proved or not, but may not determine whether or not these facts are sufficient to establish genuine use (decisions of 01/08/2007, R 201/2006-4, OCB, § 19; 14/11/2000, R 823/1999-3, SIDOL, § 20; 13/03/2001, R 68/2000-2, NOVEX PHARMA).

The evidence shows that the mark has been used for different types of dermatological skin and lip care injectables. Although these goods were initially contained in the EUTM, due to the decision of the Cancellation Division of 22/08/2019, 25 766 C, all of these goods were invalidated and the EUTM is no longer protected for same. The proprietor only claims to have used the sign in relation to pharmaceutical preparations; pharmaceutical and dermatological preparations injected into or under the skin for wrinkle filling; dermatological preparations including hyaluronic acid for wrinkle filling, in Class 5 and syringes for the injection of dermatological products, in Class 10. However, none of these goods remain after the aforementioned decision. The EUTM still covers dental and veterinary apparatus and instruments in Class 10 which would cover syringes. However, in this respect, the evidence only shows that the proprietor is selling pre-loaded syringes containing dermatological products and not empty syringes. These goods fall within Class 5 and not Class 10 and therefore, any such use cannot prove any of the goods in Class 10. This has been confirmed the Board of Appeal decision of 18/07/2019, in cases R 1655/2018-4 and R 1723/2018-4. The Board concluded that the injectable dermal fillers for which genuine use of the earlier mark was proven were covered by the goods in Class 5 and not by those in Class 10 for which the contested mark was registered. It followed in that case that genuine use was proven for the goods in Class 5, but not for those in Class 10. Therefore, the proprietor has only shown use for goods for which the EUTM is no longer registered. The proprietor has failed to prove use for any of the remaining goods of the EUTM.

The goods for which the mark has been used do not fall within any of the categories for which the earlier mark is registered. Therefore, the EUTM proprietor has not shown use for the goods for which the mark is registered, but for others for which it has no protection.

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 a 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).

In the present case, the Cancellation Division considers that the EUTM proprietor has failed to provide sufficient indications of the nature of use in relation to the registered goods. The factors of use are cumulative and therefore the failure to prove one criteria leads to a conclusion that the proprietor has failed to show genuine use of the EUTM.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 26/07/2018.

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 EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Ioana MOISESCU

Nicole CLARKE

María Belén IBARRA DE DIEGO

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.