CANCELLATION No 14 791 C (INVALIDITY)
Ahold Delhaize Licensing Sàrl, Rue Jean-François Bartholoni 4-6, 1204 Geneva, Switzerland (applicant), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage Anna van Buerenplein 21A, 2595DA Den Haag, Netherlands (professional representative)
a g a i n s t
TdeltaS Limited, 30 Upper Street, OX9 3EZ Thame, United Kingdom (EUTM proprietor), represented by MW Trade Marks LTD., 31 Southampton Row, London WC1B 5HJ, United Kingdom (professional representative).
On 09/02/2021, the Cancellation Division takes the following
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 955 118 in Classes 3, 5, 29, 30, 32 and 33. The application is based on international trade mark registration No 1 074 902 designating the European Union ‘AH’. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.
SUBSTANTIATION OF THE EARLIER RIGHT
According to Article 53(1)(a) EUTMR (in the version in force at the time of the filing of the invalidity application, and at the moment of the commencement of the adversarial part of the proceedings now Article 60(1)(a) EUTMR), a European Union trade mark will be declared invalid on application to the Office when, inter alia, there is an earlier trade mark as referred to in Article 8(2) EUTMR.
Article 8(2) EUTMR sets out that earlier marks are those with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking into account, where appropriate, the priorities claimed in respect of those trade marks.
Article 82 EUTMDR expressly states that Article 16 EUTMDR does not apply to proceedings, the adversarial part of which has started before 01/10/2017. Therefore, Regulation (EC) No 2868/95 has to be applied to the present case.
Rule 37 Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for a declaration of invalidity and the commencement of the adversarial part of the proceedings, respectively), sets out that an application to the Office for a declaration of invalidity pursuant to Article 53(1) EUTMR (now Article 60(1) EUTMR) shall contain, inter alia, particulars of the right on which the application is based and if necessary particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity.
It follows from the foregoing that the onus is on the applicant to prove the existence, validity and scope of protection of the earlier mark claimed as the basis of the application for a declaration of invalidity as well as its entitlement to submit such an action.
According to Rule 37(b)(ii) Regulation (EC) No 2868/95 in order for an application for a declaration of invalidity to be admissible it must contain particulars of the right or rights on which the application is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity. Pursuant to Rule 37(b)(iv) Regulation (EC) No 2868/95, an application for cancellation must also contain an indication of the facts, evidence and arguments presented in support of the cancellation grounds.
Although in invalidity proceedings based on relative grounds there is no time limit for the substantiation of the earlier rights, this does not mean that there is no distinction between admissibility and substantiation requirements. Applying by analogy Rule 19(2)
(a)(ii) Regulation (EC) No 2868/95, if the application for invalidity is based on a registered trade mark which is not a European Union trade mark, the applicant must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate or equivalent documents emanating from the administration by which the trade mark was registered. Furthermore, it is recalled that that it is upon the applicant to remedy on its own motion any deficiencies as regards the substantiation of the earlier right claimed as basis of the application, before the closure of the adversarial part of the proceedings.
As stated by the applicant, in the present case the application is based on an international registration designating the European Union.
Together with its notice of invalidity of 30/03/2017, entered in the name of Ahold Licensing Sàrl, the applicant filed an extract from Romarin (the former official data base of the World Intellectual Property Organization ‘WIPO’). This extract states that the owner of the registration is the company Albert Heijn B.V., being the previous holder Ahold Licensing Sàrl, in which name the invalidity action was entered. The application for a declaration of invalidity was found admissible and notified to the EUTM proprietor on 24/05/2017, with a deadline to file observations on 29/08/2017.
On 17/10/2017 EUIPO, at the request of the applicant, recorded a change of name for the applicant of the invalidity action from Ahold Licensing Sàrl to Ahold Delhaize Licensing Sàrl.
At the request of both parties, due to ongoing negotiations the proceedings were then suspended until 25/04/2018, and the deadline for the proprietor to file observations set on 25/06/2018. This suspension was then extended twice, and the period for the proprietor to file observations was also extended accordingly, until 27/06/2019.
In its observations of 25/06/2019 the EUTM proprietor points out the disparity between the ownership of the international registration as attested by the extract from WIPO submitted by the applicant, and the name of the company in which the invalidity action was entered. The proprietor attaches a Witness Statement signed by its former representative with details regarding the transfer in the ownership of the earlier right. Attached to this Statement, and in relation to the earlier right, the EUTM proprietor filed the following documents:
Appendix A: WIPO online record of IR No 1 074 902 in the name of Albert Heijn B.V.
Appendix B: WIPO online Real-time status of IR No 1 074 902 with the recordal date of the change of ownership from Ahold Licensing Sàrl to Albert Heijn B.V., with a date of 13/10/2015.
Appendix C: EUIPO online record of IR No 1 074 902 in the name of Albert Heijn B.V.
Appendix D: correspondence from EUIPO online record of the earlier right confirming the total transfer to Albert Heijn B.V. with an effective date of registration of 13/10/2015.
These observations were forwarded to the applicant and a date until 02/09/2019 set for the reply. At the request of the applicant this due date was extended until 02/11/2019. Given that this day was Saturday, a day in which the Office is not opened for the reception of documents, the deadline was, effectively, 04/11/2019.
In its observations of 31/10/2019 the applicant states that the declaration of invalidity was filed in the name of Ahold Delhaize Licensing Sàrl and explains that Ahold Delhaize group consists of several companies, structured in an international company structure. Both Ahold Delhaize Licensing Sàrl and Albert Heijn B.V. are indirectly wholly owned by the Dutch mother company Koninklijke Ahold Delhaize N.V.
The applicant files Appendix 2, which is the List of subsidiaries, joint ventures and associates, included in the Ahold Delhaize Annual Report 2018 (p. 188/189). The applicant also encloses extracts from the Commercial Registries of the Dutch Chamber of Commerce and the Swiss Commercial Registries. The applicant refers to the fact that from the extracts from the Dutch Chamber of Commerce (Appendix 3), the only shareholder and director of Albert Heijn B.V. is Ahold Nederland B.V. The only shareholder of Ahold Nederland B.V. is Koninklijke Ahold Delhaize N.V. Also, from the extracts of the Swiss Commercial Registries, Ahold Delhaize Licensing Sàrl is partner of Ahold International Sàrl. Ahold International Sàrl is partner of Dutch mother company Koninklijke Ahold Delhaize N.V.
The applicant concludes stating that both, Ahold Delhaize Licensing Sàrl and Albert Heijn B.V., are daughter companies of Koninklijke Ahold Delhaize N.V. and should therefore be considered as the same party.
In its additional observations of 04/11/2019 the applicant argues that the moment of the admissibility decision is set at the initiation of the proceedings. Moreover, the decision is only open for appeal together with the decision on the substance of the proceedings. Thus, bearing in mind that the admissibility has been confirmed at the start of these proceedings, a decision on or reconsideration of the admissibility at this stage of the proceedings is not possible. It adds that, should there be any concerns about the admissibility of the proceedings, the party should be granted the opportunity to remedy the apparent deficiency, in accordance with article 15(4) and 12(1)(a) and (c) EUTMDR and/or or to respond to deficiency, should we be requested and/or invited to do so.
The proprietor replies on 09/03/2020 that Ahold Delhaize Licensing Sàrl and Albert Heijn B.V. are not the same party and the applicant has put forward a complicated explanation in an attempt to claim a tenuous link between the applicant for cancellation and the owner of the earlier mark; hence, the application should be dismissed.
Assessment of the arguments and evidence filed
As the applicant states, the Office deemed the application admissible; this was as a result of the notice containing all the relevant information, in particular the identification of the contested mark, the identification of the grounds and the identification of the earlier mark pursuant to the applicable provisions of Regulation (EC) No 2868/95 quoted above.
However, as already detailed above it is upon the applicant to prove, inter alia, its entitlement to file the invalidity application and to remedy on its own motion all deficiencies until the closure of the adversarial part of the proceedings, which the party failed to do. Consequently, there is no need to reopen the proceedings, nor to provide the applicant with the opportunity to submit observations concerning the admissibility of the application for a declaration of invalidity, as it requests. The fact remains that, even if the registered owner of the international registration and the applicant belong to the same group of companies, this has no bearing for the purposes of the present assessment. What ultimately needs to be proved is the applicant’s entitlement to the earlier mark, namely that it (co)-owns the earlier right or that it is a licensee of the IR’s holder. However, except for the documents described above, the applicant did not submit any other evidence concerning the substantiation of the IR (i.e. its entitlement to file the application), on or before the closure of the adversarial part of the proceedings.
Against this background, it must be concluded that the applicant failed to submit evidence proving its entitlement to file the application for a declaration of invalidity.
As such the application for a declaration of invalidity must be rejected as unfounded.
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 Rule 94(7)(d)(iv) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for a declaration of invalidity), 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
María Belén IBARRA
Carmen SÁNCHEZ PALOMARES
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.