OPPOSITION No B 3 067 534

Er Piliç Entegre Tavukçuluk Üretim Pazarlama Ve Ticaret Limited Sirketi, Dogançi Mahallesi Mudurnu Yolu 7 km Mudurnu, null, Bolu, Turkey (opponent), represented by Esquivel & Martin Santos European Patent And Trade Mark Attorneys, Calle de Velázquez, 3 - piso 3, 28001, Madrid, Spain (professional representative)

a g a i n s t

Hasan Erdinc, Dr. Rein-Platz 1-3, 65479 Raunheim, Germany (applicant), represented by Goldcliff Stark, Wächtersbacher Straße 90, 60386 Frankfurt am Main, Germany (professional representative).

On 24/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 534 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 925 000 , namely against all the goods and services in Classes 29, 30 and 35. The opposition is based on international registration designating the European Union No 1 036 912 in Class 29. The opponent invoked Article 8(1)(a) and (b), and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 mark on which the opposition is based: international registration designating the European Union trade mark registration No 1 036 912 .

The date of filing of the contested application is 29/06/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 29/06/2013 to 28/06/2018 inclusive (the ‘Relevant Period’).

Earlier trade mark No 1 036 912 is an international registration designating the EU. Article 203 EUTMR provides that for the purposes of applying Article 47(2) EUTMR, the date of publication pursuant to Article 190(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark that is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 190(2) EUTMR for the earlier trade mark at issue is 18/03/2011. Therefore, the request for proof of use is admissible.

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

Class 29: Poultry, not live including chicken.

According to Article 10(3) EUTMDR, 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 or services in respect of which it is registered and on which the opposition is based.

On 11/06/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 16/08/2019 to submit evidence of use of the earlier trade mark, which was extended to 16/10/2019 by the Office on 08/08/2019 following a request for an extension of time by the opponent. On 14/10/2019, within the extended time limit, the opponent submitted evidence of use and reasons for non-use.

The evidence to be taken into account is the following:

 Annex 1: stated by the opponent in its cover letter of 16/10/2019 to be an authorisation letter for the import of poultry into the European Union granted in the name of the opponent, dated 30/10/2017;

 Annex 2: a copy of Council Directive 2009/158/EC of 30/11/2009 on animal health conditions governing intra-Community trade in, and imports from third countries of, poultry and hatching eggs;

 Annex 3: an extract (Article 12 thereof) of EU Regulation (EC) No 854/2004 of 29/04/2004 laying down specific rules for the organisation of official controls on products of animal origin intended for human consumption;

 Annex 4: a copy of an article from the publication Feednavigator.com, last updated on 28/01/2016 subtitled ‘Turkish poultry producers now have another year to prepare for a ban on animal by-products in feed as the implementation of new legislation is postponed until January 2017’;

 Annex 5: a report of the USDA Foreign Agricultural Service of the United States of America regarding poultry originating from Turkey;

 Annex 6: an affidavit issued by the Istanbul Chamber of Commerce dated 5/10/2018 stating that the opponent attended two trade fairs in the European Union (with a translation into English thereof). Annex 6 also includes two undated photographs described as being the opponent’s stand at the said trade fairs although nothing can be identified in either of the said photographs that would enable the Office to connect them with either of the said trade fairs.

 Annex 7: stated to be an undated catalogue (entitled ‘Erpilic Product Catalogue’) in Turkish/English of the opponent’s poultry goods which the opponent indicates was distributed at the said trade fairs;

Proper Reasons for non-use

Given that the opponent submits that it has proper reasons for non-use of its earlier mark spanning most of the Relevant Period, the Office considers it appropriate to first consider this issue.

Before turning to the issue in more detail, the Office considers it useful to set out a chronology of the relevant events, including as has been submitted by the opponent:

 The relevant period to demonstrate genuine use: 29/06/2013 – 28/06/2018;

 The date of application by the opponent for EU import authorisation: 24/04/2014;

 The dates of the two trade fairs which the opponent states it attended: 16-20 October 2016 (Paris), and 7-11 October 2017 (Cologne);

 A ban in Turkey on the use of animal byproducts in poultry feed: from January 2017.

 The period of the EU import ban on poultry products, as submitted by the opponent: from a date unspecified by the opponent to 30/10/2017;

 The date of grant to the opponent of EU import authorisation: 30/10/2017.

The opponent argues that it was unable to use its earlier mark in the European Union before 30/10/2017 on which date it was granted an import authorisation by the EU.

The Guidelines of the Office (Guidelines for Examination in the Office, Part C Opposition, Section 6 Proof of Use, Section 2.11.1) make it clear that import restrictions or other government requirements are two examples of proper reasons for non-use, which are explicitly mentioned in Article 19(1) of the TRIPS agreement.

In addition, the Guidelines provide that other government requirements can be a state monopoly, which impedes any kind of use, or a state prohibition of the sale of goods for reasons of health or national defence. Typical cases in this respect are regulatory procedures such as the authorisation of a food safety authority, which the owner has to obtain before offering the relevant goods and services on the market.

Consequently, irrespective of the existence of any ban on the import into the European Union of poultry products from Turkey, the inability of the opponent to use its earlier mark in the European Union pending receipt of import authorisation from the relevant EU authorities amounts to a proper reason for non-use of the earlier mark.

Before turning to the opponent’s submission that it has proper reasons for non-use based on a ban on EU imports of poultry from Turkey, the Office shall consider first the issue of whether the opponent has proven proper reasons for non-use in relation to the requirement for EU import authorisation.

In support of its submission, the opponent has provided what it describes as the import authorisation (Annex 1) stating that the application therefor was made on 24/04/2014.

The document at Annex 1 is entitled Country Section – Turkey Meat Products. There are a list of 9 entities therein, including the name of the opponent with ‘approval number 14-022’. The date of request for the opponent is stated to be 24/04/2014. Validity is stated to run from 30/10/2017.

However, there is no indication on its face from where the document at Annex 1 emanates or by which entity it is was issued, even though in its submissions of 14/10/2018 the opponent states that the authorisation was issued by EU authorities. There is nothing on the face of this document to establish that it was issued by the relevant EU authority.

On page 3 of its submissions of 14/10/2019, the opponent states that the said authorisation document was issued by the European Union authorities and that it is publicly available through provided web links. In that regard, it should be noted that a mere indication of a website does not constitute evidence. The onus of supplying evidence of use is on the opponent and not on the Office or the applicant. It is clear that the nature of a hyperlink to a website does not allow the content and data to which it is meant to refer to be copied and transmitted as a document. In addition, websites are easily updated, and most do not provide any archive of previously displayed material or display records that enable members of the public to establish precisely when any particular content was published. The authenticity and integrity of the information cited with only a hyperlink to a website cannot, therefore, be verified. Consequently, the links to websites cannot be taken into account.

Moreover, while the opponent has attached, at Annex 1, print outs of the contents of the above-mentioned web pages, in the view of the Opposition Division such print outs do not provide information that would enable the Office to verify the origin or status of the said authorisation document. Instead, such print outs seem to set out merely EU food safety information along with a list of third countries for which it appears approval to export a specific category of food of animal origin is required.

It follows that the Opposition Division considers that the evidence submitted by the opponent does not clearly or sufficiently establish that it was granted authorisation by the relevant European Union authorities to import poultry products from Turkey such that it can show proper reasons for non use of the earlier mark, at least prior to 30/10/2017. It follows that this argument of the opponent must be dismissed.

The Opposition Division turns then to the opponent’s argument that it has proper reasons for non use of its earlier mark given that it was subject to an EU import ban on poultry products.

The opponent submits that the list of countries provided for in Council Directive 2009/158/EC (Annex 2) is the document set out at Annex 1. The opponent submits that Article 12 EU Regulation (EC) 854/2004 constitutes the legal basis of the list reproduce at Annex 1 in the sense that appearing in that approved list is mandatory in order to sell products of animal origin in the EU.

The two page article at Annex 4 from Feednavigator.com dated 28/01/2016 refers to a delay by the Turkish government in introducing new restrictions on poultry feed which had been scheduled to commence on 01/01/2016, the purpose of which was to harmonise with EU law concerning animal by-products. The article does not refer to an EU import ban on Turkish poultry products.

The thirteen page report at Annex 5 (USDA report dated 29/08/2018) is subtitled ‘Turkish poultry sectors continues to grow in 2018’. The annexed document contains two sections highlighted by the opponent. The first of such highlighted extract states:

However, it is not clear whether the prohibition relates to Turkish law as distinct from any EU import ban.

The second highlighted extract thereof states:

This article appears to concern the use of animal by-products for poultry feeding which the article states was prohibited in Turkey from January 2017 as part of an EU harmonization process. Based on the contents of this article, it seems to the Opposition Division that the use or not of animal by-products was a voluntary decision of the opponent and that the said prohibition would not have applied to the opponent’s poultry products if it did not use animal by-products in feeding of its poultry products.

Not only does the above extract not state explicitly that there was an EU import ban from Turkey at the time of the said article but the statement that nine approved Turkish poultry establishments can ‘in theory’ export to the EU seems to contradict the opponent’s submission that there existed an EU import ban.

Whereas the opponent’s argument is that it was subject to an EU import ban up to 30/10/2017, at which time it argues it obtained EU authorisation, the contents of the USDA article, and, in particular, the above quoted extracts, imply that authorisation may have been a necessary, but not sufficient, step in order to import poultry into the EU from Turkey. However, it is not necessary for the Office to seek to reconcile any such apparent contradiction or inconsistency between the opponent’s arguments and the evidence it submitted in support of such arguments given that the opponent’s case is that it was precluded from importing into the EU only up to 30/10/2017, when it argues that it received EU authorisation. Accordingly, it is not necessary for the Office to determine whether the opponent was precluded from EU importation after 30/10/2017.

Based on the above evidence provided by the opponent, the Opposition Division is unable to conclude that there existed an EU import ban on poultry products from Turkey either during the Relevant Period or, indeed, at any time. There is no clear evidence to establish that the opponent was precluded by reason of an EU ban from importing poultry into the European Union before the submitted date of authorisation. Instead, it appears to the Opposition Division that any non-use of the earlier mark in the EU before 30/10/2017 was due to the lack of authorisation, which the opponent states it applied for in 24/04/2014.

Indeed, it seems the inability (or failure) of the opponent to import poultry into the European Union prior to 30/10/2017 was, at least in part, on account of the lack of authorisation before that date and not as a result of a formal EU import ban. Moreover, while there may have been a long delay between the seeking of such authorisation on 24/04/2014 and the submitted grant thereof on 30/10/2017, the timing of the seeking of authorisation was a voluntary act of the opponent.

Consequently, the Opposition Division concludes that the opponent has not proven the existence of an EU import ban, until 30/10/2017, on the importation of poultry products from Turkey into the European Union. Moreover, the evidence provided by the opponent suggests that any import ban that may have existed was due, at least in part, to the use of animal by-products in poultry feed the use of which would appear to the Office to have been a voluntary decision by the opponent and not an absolute ban on the import from Turkey of poultry products.

Therefore, the submission of the opponent that it had proper reasons for non-use on the basis of a ban on EU imports of poultry products, running from the commencement of the Relevant Period up to 30/10/2017, must be dismissed by the Office.

Evidence of genuine use

According to Article 10(3) EUTMDR, 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 or services in respect of which it is registered and on which the opposition is based.

These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI / Strategies, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate, but also to prove each of these requirements.

The only evidence of genuine use of the earlier mark provided by the opponent is the affidavit issued by the Istanbul Chamber of Commerce stating that the opponent attended two trade fairs in the European Union (Annex 6), the two undated photographs of the opponent’s stand at the said trade fairs (Annex 6), and the product catalogue of the opponent’s poultry goods which the opponent indicates was distributed at the said trade fairs (Annex 7).

The Court of Justice 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).

In any proof of use case, the opponent is in the best position to provide sufficient and objective evidence of genuine use of its mark. In that regard, the opponent could have provided copies of, for example, accounting documents, such as invoices or annual financial reports showing the volume of sale generated by the use of the earlier mark or articles, press clippings or other advertising documents dated within the relevant period.

On the basis of the above evidence provided by the opponent (attendance at two trade fairs, two photographs of its trade fair stand, and the product catalogue bearing the earlier mark), the Opposition Division is satisfied that the opponent has failed to prove, to the requisite legal standard, inter alia, the extent of the use of the earlier mark in relation to the goods in Class 29 for which it is registered and on which the opposition is based. Moreover, both the said photographs and product catalogue are undated so that the Office is unable to clarify that they refer to the Relevant Period or that they relate to the two said trade fairs.

In its arguments of 14/10/2019 the opponent refers to, or characterises, its use (i.e. attendance at the two trade fairs) as ’preparatory acts prior to use’ of the earlier mark.

In the judgment of the CJEU in Minimax (11/03/2003, C-40/01, EU:C:2003:145, § 36 & 37), the Court stated that genuine use must be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark. Such use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin.

The Court went on to state that use of the mark must therefore relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns.

The evidence submitted by the opponent does not indicate that any poultry products were marketed by it in the European Union under the earlier mark at any time, including at any time during the Relevant Period.

Moreover, the evidence does not indicate that such products were about to be marketed by the opponent in the European Union. In that regard, mere attendance at two trade fairs at which the opponent states a product catalogue was distributed (which the Opposition Division cannot verify given, inter alia, that the catalogue is undated) cannot be considered to amount to preparations under way to secure customers in the European Union such as to satisfy the requirement of genuine use. In its submissions of 14/10/2019, the opponent refers to its attendance at the two trade fairs as ‘advertisement activities’. Although trade fair attendance is a promotional activity of an undertaking, it cannot of itself be considered to be sufficient to justify a finding that the opponent’s goods were about to be marketed. By referring, by way of example, to advertising campaigns, the Court in Minimax clearly envisaged substantial commercial activity as a prelude to marketing in the territory. The evidence submitted by the opponent is clearly insufficient to justify such a finding. Moreover, as stated above, there is nothing identifiable in either photograph to connect it to a trade fair held in Paris or Cologne.

In view of all the above and an overall assessment of the evidence submitted, the opponent cannot be considered to have proven, to the requisite legal standard, inter alia, the extent of the use of the earlier mark in relation to the goods in Class 29 for which it is registered and on which the opposition is based.

For the sake of completeness, the Opposition Division considers that even if it had been satisfied that the opponent had demonstrated proper reasons for non-use up to 30/10/2017 (i.e. the date on which the opponent states it obtained EU authorisation to import poultry products from Turkey), the evidence submitted by it would be clearly insufficient also to prove genuine use of the earlier mark for the remaining period of time up to the end of the Relevant Period (i.e. the period of almost eight months between 30/10/2017 and 28/06/2018).

Even allowing for the opponent’s argument that it did not obtain an approval authorisation to import its poultry goods into the European Union until 30/10/2017, that still leaves a period of almost eight months (until the end of the Relevant Period on 28/06/2018) during which to demonstrate genuine use of its earlier mark. Moreover, the Opposition Division notes that the goods in question are poultry in Class 29 being inexpensive everyday consumer food products which could potentially have been sold in any retail outlets such as food stores or supermarkets across the European Union, as distinct from expensive or specialised products for which a considerable period of time might be required in order to commence commercial sales in the EU and to establish a market.

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR. Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Martina GALLE

Kieran HENEGHAN

Begoña URIARTE VALIENTE

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.