of the Fourth Board of Appeal
of 6 July 2015
In Case R 2689/2014-4
Royal Canin SAS
650, avenue de la Petite Camargue
CTM Proprietor / Appellant
represented by HOGAN LOVELLS, Avenida Maisonnave 22, E-03003 Alicante, Spain
Hill’s Pet Nutrition, Inc.
400 SW Eight Street
United States of America
Cancellation Applicant / Respondent
represented by DE GAULLE FLEURANCE & ASSOCIES, 9, rue Boissy d’Anglas, F-75008 Paris, France
APPEAL relating to Cancellation Proceedings No 8 558 C (Community trade mark No 11 808 516)
The Fourth Board of Appeal
composed of D. Schennen (Chairman and Rapporteur), C. Bartos (Member) and E. Fink (Member)
Registrar: H. Dijkema
gives the following
Summary of the facts
On application dated 13.5.2013, Community trade mark No 11 808 516 for the figurative mark in colour (gold, white, burgundy, brown, grey, black, blue)
was registered on 4.10.2013 in the name of Royal Canin, SAS for the goods:
Class 5 – Veterinary preparations, food supplements for animals for veterinary purposes, animal food supplements, nappies of paper or cellulose for animals, animal washes.
Class 31 – Animal foodstuffs, strengthening animal forage, beverages for pets, edible chews for animals, live animals.
On 22.10.2013, Hill’s Pet Nutrition, Inc. (the respondent) requested that the CTM be declared invalid in its entirety on the basis of the absolute grounds for declaration of invalidity, namely the grounds laid down in Article 7(1)(a) and (b) CTMR in conjunction with Article 52(1)(a) CTMR.
The respondent indicated in its declaration of invalidity form that the contested mark was not distinctive because (1) the CTM proprietor did not use the features of the mark in a consistent manner on its pet food products, but in a myriad of colours and different configurations and (2) the elements of the contested mark were not distinctive (either alone or in combination) as they were used on pet food packagings by many competitors.
In the reasoned statement accompanying the declaration of invalidity, the respondent discussed case-law relevant for Article 7(1)(b) CTMR and in particular showed representations of 24 different variations of pet food packagings from the CTM proprietor in order to show that the features present in the contested mark (the colours and the representation of a given animal) varied but the only common element was the word mark ‘ROYAL CANIN’. The respondent also listed 33 representations of pet food packagings from competitors. The respondent also insisted that the CTM proprietor had filed 4 other similar marks (2 of them subject of parallel proceedings R 2688/2014-4 and R 2690/2014-4 (cancellation cases No 8559 C and 8561 C) and explained as background of its cancellation request that it had received a cease and desist letter from the CTM proprietor regarding use of the colours ‘gold’ and ‘silver’, hence tried to monopolise decorative and non-distinctive packaging features. On the other hand, no arguments were made concerning the application of Article 7(1)(a) CTMR.
The appellant refuted the respondent’s arguments and evidence. It highlighted the individual elements of the mark and in particular pointed out to the existence of grey strokes, ‘guide lines’, around the pencil-line depiction of the Persian cat. It also stated that the cancellation applicant’s references to case-law of the Court were largely based on the supposition that the contested mark was a colour mark, whereas it was in fact a figurative mark in colour.
By its decision of 27.8.2014, the Cancellation Division upheld the request for declaration of invalidity, declared the CTM invalid in its entirety and ordered the CTM proprietor to bear the costs of the proceedings. It reasoned as follows:
With certainty the CTM was represented graphically, so the ground for declaration of invalidity under Article 7(1)(a) CTMR did not apply.
The first argument of the cancellation applicant that the mark was not used as registered but in a variety of different configurations was irrelevant.
Against the argument that the colour ‘gold’ was used by many other competitors it was observed that ‘gold’ was just one out of seven colours indicated in the mark, and the mark was not for a colour per se.
The Cancellation Division went on to analyse the individual elements of the mark on the basis of their description given in the CTM proprietor’s observations. It identified three elements, a kibble (a pellet made of pet food), a grey Persian kitten, and a silhouette of a cat showing the digestive system of the cat in blue, and found that each of them was non-distinctive.
The Cancellation Division concluded that once these three elements were found non-distinctive, the addition of a label and of different colours was not sufficient to endow the mark with distinctive character. Comparing the case with one of the ‘label’ cases mentioned in the Examination Guidelines, it reasoned that once the kitten and kibble elements were found non-distinctive, all what is left was a banner of burgundy and gold, hence a non-distinctive label.
For those reasons the CTM was registered in breach of Article 7(1)(b) CTMR.
On 22.10.2014, the CTM proprietor filed an appeal against the decision in its entirety followed by a statement of grounds on 22.12.2014. The CTM proprietor requested that the Board annul the contested decision and maintained that the mark has distinctive character within the meaning of Article 7(1)(b) CTMR.
The CTM proprietor in essence reiterated its first instance submission and added that the Cancellation Division had recognised that the mark was not for a colour per se but still applied the criteria related to those. It also added that the Cancellation Division seemingly described the various elements of the mark incorrectly. Moreover the CTM proprietor accused the Cancellation Division of having ignored some of its arguments and emphasized the need to protect CTMs against so-called look-alikes.
In reply to the statement of grounds of appeal, the respondent repeated its writ of 14.5.2014, expanded by further examples, and agreed that the Cancellation Division rightly interpreted and applied Article 7(1)(b) CTMR. In a nutshell, it maintained that it is not the packaging get-up of the CTM proprietor’s products, as registered here, which is distinctive, but its combination with the word element ‘ROYAL CANIN’, the latter being decisive for the consumer’s choice of the product.
Whilst it is true (as observed by the Cancellation Division on page 6 of the contested decision) that it is up to the cancellation applicant to demonstrate the existence of a ground for declaration of invalidity and that the cancellation applicant has the burden of proof to the extent that this would require recourse to evidence, but that the Office is entitled to rely ex officio on facts generally known, the Cancellation Division paid lip service to those principles.
A proper examination would have had to start with the pleadings brought forward in the cancellation request.
To begin with, the ground for declaration of invalidity under Article 7(1)(a) CTMR (in conjunction with Article 52(1)(a) CTMR) was invoked in the cancellation request, but the cancellation applicant failed to give a reasoned statement in respect of this ground for invalidity. The statements made under point 2.1 of the reasoned statement accompanying the cancellation request do not comprise such a reasoning regarding Article 7(1)(a) CTMR. This provision is merely quoted together with Article 7(1)(b) CTMR, and what follows are abstract statements and case-law quotations which concern only Article 7(1)(b) CTMR. Pursuant to Rule 37(b)(iv) CTMIR, the request for declaration of invalidity must contain a reasoned statement setting forth facts, evidence and arguments in support of the ground for invalidity. If different grounds for invalidity are invoked, this must be done for each ground separately. Otherwise the cancellation request remains admissible as a whole but the respective ground for invalidity is not substantiated and does not have to be examined. It is not for the Office to search for possible arguments which could speak in favour of declaring a mark invalid under such a provision.
This was recognised by the Cancellation Division on page 3, 3rd paragraph, of its decision. The Cancellation Division should have then abstained from examining this ground. Of course the Cancellation Division stated the obvious when pointing out that a graphic representation of the mark is there and that has not been challenged by the respondent.
The cancellation request was based on two lines of reasoning only. These concern the application of Article 7(1)(b) CTMR, according to which a Community trade mark shall not be registered, or shall, in accordance with Article 52(1)(a) CTMR, declared invalid, if it is devoid of any distinctive character. Had the Cancellation Division limited itself to rebutting those arguments, it would have reached a short decision. Instead, the focus was shifted to the arguments of the defendant.
The first argument brought forward in the cancellation request is that the CTM proprietor did not use the features of the mark in a consistent manner on its pet food products, but in a myriad of colours and different configurations. This argument has two limbs, one being that the CTM proprietor uses other variations of packagings (examples:)
and the other being that the CTM proprietor does not use the mark as registered but with the word elements ‘ROYAL CANIN’ (which according to the cancellation applicant would be the ‘real’ distinctive sign) plus a crown device plus the word ‘PERSIAN’ (which, however, would actually correspond to the race of the cat depicted), as follows:
Both facts, which were not denied by the CTM proprietor, are legally irrelevant. The CTM proprietor may use as many other marks as it pleases him. The CTM proprietor may also use without more different configurations of packagings for different products or product lines. The CTM proprietor is not even required to show use of the mark as registered (or of other marks) at all, unless in the framework of a request for revocation under Article 51(1)(a) CTMR. The CTM proprietor is also free to use the mark as registered together with other marks, or to register parts of elements of a product packaging as a separate mark (see 8.12.2005, T‑29/04, ‘Cristal Castellblanch’, EU:T:2005:438, § 35, 36 – as regards Article 15 CTMR). A trade mark is always an element of abstraction. Even a word mark is not used on a packaging totally without other elements. That the cancellation applicant’s argument is devoid of any logic becomes apparent when the argument is reversed: Also a word mark ‘ROYAL CANIN’ would be faced with the same reproach that the actual use would be like in the left-hand column above.
The sole legal test under Article 7(1)(b) CTMR is whether the mark as applied for or registered is distinctive, in the form in which it is registered, and it is legally inadmissible to suppose its use together with other elements or alongside other marks. The manner how the mark is actually used on the market becomes relevant only under Article 51(1) CTMR (use requirement, or – clearly not relevant for the present case – cases where the manner of use would render a sign generic or misleading).
The second argument brought forward in the cancellation request is that the elements of the contested mark were not distinctive (either alone or in combination) as they were used on pet food packagings by many competitors. To this end the cancellation applicant listed 33 packagings from competitors (examples:)