OPPOSITION No B 2 568 122
Nutrinat AG, Waldeggstrasse 37, 3097 Bern (Liebefeld), Switzerland (opponent), represented by Cabinet Morelle & Bardou, Parc Technologique du Canal 9, avenue de l'Europe, 31520 Ramonville Saint Agne, France (professional representative)
a g a i n s t
Nutrifood, Actinova Bat C, 37 Francois Gernelle, ZAC Saint Martin, 84120 Pertuis, France (applicant), represented by Legabrand, 13, Rue Roux de Brignoles, 13006 Marseille, France (professional representative).
On 14/09/2017, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods and services
of European Union trade mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.
The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
The contested application was published on 27/05/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain and Portugal respectively from 27/05/2010 to 26/05/2015 inclusive.
Furthermore, the evidence must show use of the trade marks for the services on which the opposition is based, namely the following:
From Spanish trade mark registration No 2 889 085:
Class 44: Medical services; hygiene and beauty care for people; health services, in particular relating to nutrition, diet and weight control; beauty salons and aesthetics.
From Portuguese trade mark registration No 453 348:
Class 44: Medical, hygienic and beauty services for people; health care services, in particular relating to nutrition, diet and weight control; beauty and aesthetics services.
According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
The opponent filed evidence of use of the earlier trade marks on 20/05/2016. Furthermore, on 05/09/2016, and in accordance with Rule 22(2) EUTMIR, the Office officially gave the opponent until 10/11/2016 to submit evidence of use of the earlier trade marks. No further evidence was filed.
The evidence to be taken into account is the following:
Annex 1: Invoices in Spanish (although one from each year has the headings translated) and addressed to Spanish customers, dated from 05/2010 to 05/2015 and showing the sale of DIETISA products (amongst other trademarked goods). The invoices show the quantities of goods but the sale price is not shown. The items that appear with DIETISA are goods such as noni juice, biobebida soja ecologi, zumo de ciruela, gel de aloe vera, omegas 369, refort, salchichas de tofu, hamburguesas de quinoa, aciete pepita uva, etc.
Annex 2: Invoices in Portuguese (although one from each year has the headings translated) and addressed to Portuguese customers, dated from 06/2010 to 05/2015 and showing the sale of DIETISA products (amongst other trademarked goods). The invoices show the quantities of goods but the sale price is not shown. The items that appear with DIETISA are goods such as zumo de noni, colestcontrol, venovar capsulas, sirope de savia, refort, gel de aloe vera, aciete pepita uva, minerals – magnesium, abedul bio, omegas 369, arandano rojo bio, propolis bio spray, etc.
Annex 3: Catalogues from 2010 to 2015 showing the DIETISA products and the services offered under the mark DIETISA silueta sana.
In addition to this evidence, the opponent also filed, together with the notice of opposition, a one page extract from their website. This is also admissible for proving use as it was filed before the deadline and will be referred to in this document as Annex 4.
Annex 4: One page extract from the opponent’s website in Spanish with a partial translation in English.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
For the invoices, whilst a translation of the headings of the invoices was provided in the language of proceedings, the individual items listed in the invoices are not translated, remaining, principally, in Spanish (see for examples the listings above). Some of them, however, can be understood due to the similarity of the terms used, for example gel de aloe vera, omegas, tofu, capsulas, hamburguesas de quinoa, minerals – magnesium, propolis bio spray. Clearly these items refer to goods and not services. Indeed, the invoices filed only make reference to goods and do not make any mention of services being sold to customers, and it is undeniable that in the cover letter of the opponent the invoices are described as “showing the sale of DIETISA products”. This interpretation is further supported by the catalogues filed in Annex 3 and which show goods with names such as Refort, Colestcontrol and Venovar which also appear in the invoices. Therefore, even without a full translation, the Opposition Division is confident in stating that the evidence filed in Annexes 1 and 2 shows only the sale of goods and not services. Furthermore, and for the sake of completeness, none of the invoices show the earlier marks either in the figurative form in which they are registered or the verbal form DIETISA silueta sana.
Annex 3 consists of 6 Spanish language catalogues (one for each year from 2010 to 2015 inclusive) with each item consisting of 7 or 8 pages. There is a partial translation into English for each catalogue. No statements or evidence is included regarding the number or circulation of the catalogues.
The first page of each catalogue is entitled “Products catalogue and prices list” followed by the year. The mark shown in these titles pages is (2010 to 2012) and (2013 to 2015).
The catalogues have 5 or 6 pages showing goods under the mark DIETISA in the categories healthy food, nutritional supplements and natural cosmetics, although the prices have been redacted.
Finally, there is one page in each catalogue which provides the following description: “ ‘DIETISA SILUETA SANA’. A complete weight control system which keeps as a basis an healthy and balanced diet, with all the nutrients needed by the organism and which permits ourselves to reach and maintain an healthy silhouette. ‘SILUETA SANA’ is a new service of personal nutritional advising for your customers.” (Text taken from the translation provided by the opponent.) There is no indication of prices for these services. These pages feature the following marks: (2010), (2011 to 2014) and (2015).
From Annex 3, the Opposition Division can see that the majority of the evidence refers again to goods being sold under the mark DIETISA and, as none of the evidence is in Portuguese, only to the territory of Spain. Furthermore, it can be seen that the earlier marks only appear in relation to nutritional services in the catalogues for 2010 to 2014 (albeit with some changes in the later catalogues, although these do not alter the overall distinctive character of the marks), as the 2015 catalogue uses a mark which substantially differs from the marks as registered.
Annex 4 is undated and whilst a part is translated this refers to products not services. Furthermore, the marks as registered do not appear, and instead there is the sign in the top left hand corner and towards the middle of the page.
Therefore, in summary the evidence relating to the earlier marks and services as registered consists entirely of a single reference in five Spanish catalogues. However, there is no actual evidence of the selling or provision of the services to any customers. There are no invoices or delivery notes and, furthermore, no indication of a price for the services that would clearly show that the services are being offered for sale rather than being, for example, promotional services offered by the manufacturer to retailers to increase sales. There are no press articles, customer reviews or any information from any independent source regarding the offering any services under the marks in question.
In view of the above, and especially the scarcity of the evidence in relation to provision of services in relation to the earlier marks as registered, the Opposition Division considers that the evidence does not show use of the signs as registered within the meaning of Article 15(1).
Therefore, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territories during the relevant period of time, and consequently, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.