CANCELLATION No 24 442 C (INVALIDITY)

Inner Mongolia Yili Industrial Group Co., Ltd., No. 1 Jinshan Road, Jinshan Development Zone, Hohhot, People’s Republic of China (applicant), represented by Gilbey Legal, 43, Boulevard Haussmann, 75009 Paris, France (professional representative)

a g a i n s t

Wen Li, 30 Lakeside Avenue, London SE28 8RU, United Kingdom (EUTM proprietor), represented by Trademark Eagle Limited, Unit 4, Valley Court Offices, Lower Road, Croydon, Hertfordshire SG8 0HF, United Kingdom (professional representative).

On 14/02/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 13 714 316 is declared invalid in its entirety.

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

REASONS

On 02/07/2018, the applicant filed an application for a declaration of invalidity against European Union trade mark No 13 714 316 (figurative mark) (the EUTM) filed on 05/02/2015 and registered on 16/02/2018. The request is directed against all the goods covered by the EUTM listed here below. The applicant invoked Article 59(1)(b) EUTMR.

Class 29 Milk; milk products; dairy products; milk beverages; cream; condensed milk; protein milk; milk ferments for culinary purposes; milk shakes; dried milk; curd; whey; yoghurt; dairy desserts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; preserved and dried meat, fish, poultry and game.

Class 30 Coffee, tea, cocoa and artificial coffee; confectionery; chocolate and cocoa based beverages; coffee-based beverages; tea-based beverages; frozen confectionery; chilled desserts; dried pasta; dried sauce in powdered form; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices.

Class 32 Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

SUMMARY OF THE PARTIES’ ARGUMENTS AND EVIDENCE

The applicant claims that the evidence attached to its observations and listed underneath clearly shows that its company is the No°1 milk and dairy products company in China and Asia and that its trade marks Yili and are among the most best known brands in China. As a result, they are necessarily known to Chinese residents and to Chinese persons who have lived in China or travel to China. It also claims that in 2009, Mr Wen Li was still of Chinese nationality, that he subsequently became a United Kingdom resident, before finally acquiring British nationality between 2010 and 2016. This, in turn, leads to a strong presumption that Mr Wen Li would be familiar with the leading Chinese brand for dairy products, in both China and throughout Asia. The applicant owns several marks amongst them being the following:

Kind of mark	No	Mark	Classes	Filed on
EUTM	14 666 697		29, 35, 42	13/10/2015
EUTM	17 045 691	Yili	5, 29, 30, 32	28/07/2017
EUTM	13 826 541		5, 29, 30, 32	13/03/2015
EUTM	17 798 919		5, 29, 30, 32	12/02/2018
IR designating EU	1 097 761		5, 29, 30, 32	06/06/2011

The four abovementioned EUTMs were opposed by Mr Li on the basis of the contested mark. The contested mark combines, within the same mark, the YILI trade mark used as its house mark in the Latin alphabet by Inner Mongolia YILI Industrial Group Co, Ltd , the Chinese character name used by this company as a house mark in stylized form and the Chinese character trade name of the company . Furthermore, the contested mark is registered for dairy products and other food and beverages, but it is not used for such goods. There is no commercial logic or trajectory underlying the EUTM registration.

The applicant submitted the following evidence:

1. Brief Introduction of Yili Group, being (a) the No 1 ranking dairy products enterprise in China and Asia, and ranked in the top 8 enterprises in that field on a global level in 2016; (b) sponsor of 2008 Beijing Olympic Games and participant in 2010 Shanghai World Expo and in 2015 Milan Expo. According to 2014 Rabobank Global Dairy Top 20, in 2013, “Yili” (as it is called the company), was ranked 10 out of 20 with an operating turnover of 5.7 billion Euro, and appears to have an operating turnover in 2015 of 8.2 billion Euros; in general the company is referred to as YILI and the logo of this company or the mark that appears on the products as such is . In some instances the mark appears also as in the following award achieved in 2007 for the best new dairy drink “Yili Dairy”:

2. Introduction to YILI providing more details on the company, its international activities and presence, its growth, brand penetration, objectives etc.;

3. Oceania Dairy’s Parent company Yili Group eye catching Annual report dated 28/04/2018 from www.odt.co.nz; it contains an article (indicated as sponsored content) from a New Zealand online publication highlighting the performance and international ambitions of Yili Group as set out in its 2017 annual report and referring to the selection of the company as the exclusive official dairy partner of the 2022 Winter Olympics and Paralympic games and the only food partner in both Beijing Summer Olympics (2008) and Winter Olympics (2022); it is also specified that the mark YILI was ranked No 8 in the world according to the Rabobank’s Global Dairy Rank ahead of any other Asian dairy Company;

4. Excerpts from several reports of BrandZ “Most valuable Chinese Brands” dated 2011 to 2018; BrandZ, a market study organization, lists the Chinese trade mark ,transliterated as Yili, as the 19^th most valuable Chinese brand in 2018, 18^th in 2016, 17^th in 2015, 15^th in 2014, 21^st in 2013 and 22^nd in 2012 and 23^rd in 2011 and as the 1^st in the food and dairy field from 2012 to 2018; the below printouts are extracted from the 2014, 2015 and 2018 reports: