CANCELLATION No 29 581 C (INVALIDITY)

Bispol sp. z o.o., Głuchów 573, 37-100 Lańcut (Podkarpackie), Poland (applicant), represented by Kancelaria Prawno-Patentowa "Bellepatul, Płowiecka 24
37-700 Przemyśl, Poland (professional representative)

a g a i n s t

Hugworld International Distributions, S.L., Calle Ochandiano, 6 - 2ª Plta., 28023 Madrid, Spain (EUTM proprietor), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º Dcha., 28001 Madrid, Spain (professional representative).

On 14/10/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 15 804 503 , namely the following:

Class 3: Fragrances for perfuming and deodorising rooms.

Class 4: Perfumed candles.

Class 35: Retailing, wholesaling and sale via global computer networks of fragrances for perfuming and deodorising rooms and scented candles.

The application is based on Polish trade mark registration No 234 532 . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there is a risk of confusion for the relevant public between the marks in conflict since the signs are similar, as they share the same dominant verbal element ‘AURA’, and the goods are identical or at least similar. Furthermore, it argued that the earlier mark had been widely used and advertised in Poland and the European Union, and provided evidence in support of this claim (listed below).

The EUTM proprietor requested that the applicant submit proof of use of its earlier Polish trade mark registration. In reply, the applicant submitted evidence of use of its earlier mark (listed and analysed below).

In its observations in reply, the EUTM proprietor argued that since the marks are not identical, the prohibition laid down in Article 8(1)(a) EUTMR cannot be applied. Moreover, the contested goods and services in Classes 3 and 35 are different from the goods for which the earlier mark is registered and thus no likelihood of confusion exists between the marks in conflict.

The applicant replied refuting all the proprietor’s arguments. It pointed out that the goods in Classes 3 and 4 are similar since they are directed at the same public and are manufactured by the same producers. They serve the same purpose and are complementary to each other. It provides a list of candle manufacturers who also sell air fresheners (D13). The applicant refers to the arguments submitted by the proprietor in opposition proceedings No B 2 982 554 (D14) filed by Hugworld International Distributions, S.L. against the applicant’s EUTM application No 17 012 477 where, the proprietor and opponent in that case, argued that there was a likelihood of confusion between similar marks. It also provides additional evidence as proof of use of the earlier mark (listed below).

In its final observations, the EUTM proprietor clarifies that in opposition proceedings No B 2 982 554, the goods in conflict were not the same as those in the present proceedings. Finally, it reiterates its previous arguments in relation to Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 14/11/2018. The date of filing of the contested trade mark is 06/09/2016. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Poland from 14/11/2013 to 13/11/2018 inclusive (‘first relevant period’). Since the earlier mark was registered on 14/02/2011, more than five years prior to the date of filing of the contested mark, use of the earlier mark had to be shown also for the period from 06/09/2011 to 05/09/2016 inclusive (‘second relevant period’).

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 4: Candles.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 16/04/2019, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 26/06/2019 to submit evidence of use of the earlier trade mark.

On 18/06/2019, within the time limit, the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

D1-2: invoices addressed to clients located in different EU countries (Germany, Spain, Italy, Greece, Bulgaria, Croatia, Romania, Hungary, etc.), dated 2011 and 2012. The invoices are written in Polish and English. However, the description of goods is written in Polish and two of them in German and English.

D3: printout from Wayback machine dated 09/02/2010 showing the applicant’s website.

D4: an example of packaging, allegedly from 2009 (as handwritten), with the earlier sign for tea lights (4x maxi lilac).

D5-11: copy of catalogues from 2010/2011, 2013/2014, 2015, 2015/2016, 2016/2017, 2018/2019 and 2019. They are written in Polish and English and show images of scented candles (identified with codes). In most of the images of candles, the figurative sign ‘Aura fragrances candles’ is visible.

D12: declaration of CEO of Bispol Sp.z o.o., from 10/06/2019, presenting the company as a manufacturer of candles and grave candles. It states that ‘one of the main products of Bispol Sp. z o.o. are scented candles and tealights bearing the trade mark AURA FRAGANCES CANDLES’. The affidavit is written in Polish and accompanied by its translation into English.

Additionally, on 18/02/2020, after expiry of the time limit, the applicant submitted additional evidence, namely various invoices addressed to clients in Poland from 2010 (D15).

Even though, according to Article 19(2) EUTMDR, the applicant has to submit proof of use within a time limit set by the Office, Article 10(7) EUTMDR (applicable to cancellation proceeding by virtue of Article 19(2) EUTMDR) expressly invites the Office to exercise its discretionary power if relevant evidence was submitted in time and, after the expiry of the time limit, supplementary evidence was filed.

According to Article 10(7) EUTMDR, where, after the expiry of the time limit set by the Office, indications or evidence is filed that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of exercise of the discretion conferred on it by Article 95(2) EUTMR. When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.

Moreover, the Office is not required, when exercising its discretion under Article 95(2) EUTMR, to examine all the criteria referred to above. One of those criteria alone is sufficient to establish that it does not have to take into account the late evidence.

In this regard, the Cancellation Division considers that the applicant did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

However, the EUTM proprietor did not dispute the initial evidence submitted by the applicant, which could have justified the filing of the additional evidence in reply to the objection. Moreover, the late evidence was available before the time limit had expired and the applicant has failed to justify its late submission. Furthermore, for the sake of completeness, the Cancellation Division points out that the evidence provided is not dated or does not refer to any of the relevant periods.

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Cancellation Division therefore decides to only take into account the evidence submitted within the time limit.

Preliminary remark

As far as the affidavit is concerned, Article 10(6) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

General considerations

As mentioned above, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the trade mark for the relevant goods.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / stratégies, EU:T:2010:424, § 43). This means that the applicant is not only obliged to indicate, but also to prove, each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in the context of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31).

At this point, the Cancellation Division considers it appropriate to focus the assessment of the evidence on the criteria of extent of use. In its opinion, the evidence submitted by the applicant is insufficient to prove that this requirement has been met in relation to both periods.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The affidavit submitted does not provide any information as regards the commercial volume or frequency of use of the earlier mark, other than claiming that the applicant is one of the biggest manufacturers of candles in Poland. Likewise, the printout from Wayback machine showing the applicant’s website (D3) and the sample of packaging (D4) do not provide information as regards the extent of use of the earlier mark.

The invoices submitted show that a significant volume of goods had been sold to clients located in different countries in the European Union in 2011 and 2012, that is, within the second relevant period. The most recent invoice was dated 18/12/2012. However, none of them refer to the first relevant period (from 14/11/2013 to 13/11/2018 inclusive). Only five of the catalogues submitted by the applicant are dated between 14/11/2013 and 13/11/2018. They are written in Polish and English, which shows that the goods were offered for sale in Poland and abroad.

The Court has stated that under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (15/07/2015, T‑398/13, TVR ITALIA (fig.) / TVR, et al., EU:T:2015:503, § 57-58; 08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298, § 42 et seq.). However, this is not the case.

The catalogues show a broad spectrum of candles, identified with codes. The mark is affixed to a large number of goods. Furthermore, all of them include the applicant’s address, telephone, mobile or fax numbers, email addresses and website address. Nevertheless, there is no certainty on the distribution of the catalogues. It is not clear whether the catalogues were addressed to end consumers or distributors. Moreover, the catalogues do not include specific information concerning the prices of the goods or the way in which they were marketed. Neither do they show whether the goods can be found in points of sale located in Poland, within the European Union, or ordered online.

The Cancellation Division does not judge the commercial success of a business; however, it cannot make its assessment based on assumptions. In this regard, it must be held that genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the markets concerned (12/12/2002, T‑39/01, Hiwatt,

EU:T:2002:316, § 47).

The catalogues show that the earlier mark was used in the relevant periods at least in Poland. However, they do not provide information on the quantity of goods actually sold by the applicant under the earlier trade mark in the first relevant period or that they were effectively sold to end consumers in that period.

In an overall assessment, the remaining evidence does not provide information that enables the conclusion that the volume of sales and frequency of use of the earlier mark (in relation to the first relevant period) is significant enough not to be considered merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.

Conclusion

The Court has held that there is ‘genuine use’ of a mark where it 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 does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

An overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during both the relevant periods for the relevant goods (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43).

The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the applicant chose to restrict the evidence submitted (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).

Therefore, the Cancellation Division concludes that the evidence is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant periods.

It follows that the application must be rejected pursuant to Article 64(2) and (3) EUTMR.

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 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 Article 18(1)(c)(ii) EUTMIR, 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

Frédérique SULPICE

Ana MUÑIZ RODIGUEZ

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.