ARCHIMEDlife | Decision 2662289

Date Published: Sep 28, 2017

OPPOSITION No B 2 662 289

SC Med Life SA, Calea Grivitei Nr. 365, Bucuresti, Romania (opponent), represented by Anișoara Fuciu, Cabinet Ani Fuciu SRL, Snagov, Bl. P53, Sc.A, Parter, Ap. 1, Ilfov, Romania (professional representative)

a g a i n s t

Archimed Life Science GmbH, Leberstrasse 20, 1110 Wien, Austria (applicant), represented by Arno Likar, Pestalozzistr. 1/II/12, 8010 Graz, Austria (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 662 289 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 551 329 for the figurative mark, namely against all the goods and services in Classes 5, 10 and 44. The opposition is based on Romanian trade mark registration No 61 229 for the figurative mark , in relation to which the opponent invoked both Articles 8(1)(b) and 8(5) EUTMR, and on European Union trade mark registration No 5 814 736 for the figurative mark in relation to which the opponent only invoked Article 8(1)(b) EUTMR.

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 03/12/2015. The opponent was, therefore, required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Romania from 03/12/2010 to 02/12/2015 inclusive.

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

EU trade mark registration No 5 814 736:

Class 36:        Real estate affairs.

Class 44:        Beauty care for human beings or animals; agriculture, horticulture and forestry services.

Romanian trade mark registration No 61 229:

Class 44:        Medical 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.

On 12/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/11/2016 to submit evidence of use of the earlier trade marks. On 11/11/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• A two-page document, which, according to the opponent, as handwritten on top, is a presentation catalogue of the services of ‘MEDLIFE’. The document is undated, nor does any source appear from which the document has been extracted. It mentions that ‘MedLife’ is the largest private medical operator in Romania since 1996. It is renowned for the most complex portfolio of medical services: clinical and laboratory testing services, medical imaging, reproductive medicine, hospital admission and surgical interventions. The chain of clinics, medical laboratories and (maternity) hospitals are located in several cities in Romania, but mainly in Romania’s capital, Bucharest;

• An extract from a calendar showing January 2013 and January 2014 and mentioning the mark ;

• A two-page document, which, according to the opponent, as handwritten on top, concerns the awards obtained by the opponent for services provided under the mark ‘MEDLIFE’. The document is undated, nor does any source appear from which the document has been extracted. It mentions that it is the most trusted medical services provider and that the quality of the services is acknowledged by ‘Trusted Brands Studies’ (2010-2014). MedLife has been chosen the 5th consecutive time the most trusted brand in the category ‘Private Clinic’ in Romania, according to ‘Trusted Brand’ conducted by Reader’s Digest magazine; in 2013 ‘MedLife’ has been nominated for the 2nd consecutive year as ‘Superbrands’ in the category ‘Private Clinic’, according to the evaluation criteria of trust, quality and market, Superbrand is an international programme with a long tradition on a global level which acknowledges the credit of exceptional brands; according to ‘IMAS Sampling’ (2009-2013), the market surveys carried out on the national level place ‘MedLife’ as the most popular brand for all the categories: private hospital, medical clinic-centre, medical laboratory;

• A two-page document, which, according to the opponent, as handwritten on top, concerns certifications regarding ‘MEDLIFE’ quality services. The document is undated, nor does any source appear from which the document has been extracted. It mentions that ‘MedLife’ is the medical institution that dedicates all its resources to ensure professional medical services at the highest standards, it has permanently developed in an attempt to be able to satisfy the most strict and complex requests in the medical field, and as a guarantee of the quality of the services, it has gained the international certification –ISO 9001, the standard being applicable ever since 2004. Furthermore, it has also gained the international certification ISO 15189 confirming and acknowledging laboratories’ expertise, as well as the quality of the results offered to patients;

• A four-page document, which, according to the opponent, as handwritten on top, concerns photos of ‘MEDLIFE’ clinics in different Romanian towns. Only on some pictures the mark ‘MedLife’ is visible. The document is undated, nor does any source appear from which the document has been extracted;

• Some articles in Romanian from the Internet, which were published, according to the opponent, in the media between 2011 and 2016, mentioning ‘MedLife’. However, the majority of these articles appear in the Bulletin of March 2016 and one is dated 04/08/2016. These articles fall outside of the deadline, which finished already on 02/12/2015.

Having examined the material listed above, the Opposition Division finds that the evidence is insufficient to establish genuine use of the trade marks.

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 and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

First of all, Article 78(1)(f) EUTMR lists some means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been 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 perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. This does not mean, however, that such statements do not have any probative value at all. The final outcome depends, however, on the overall assessment of the evidence in the particular case; this is because, in general, further material is necessary for establishing evidence of use, since such statements have to be considered as having less probative value in comparison to physical evidence (labels, packaging…) or to evidence originating from independent sources. Considering what has been stated before, it is necessary to assess all the material to see whether or not the contents of the opponent, such as the mentioning that awards were given to the opponent and that the company is very well-known in Romania, are supported by more objective pieces of evidence. However, when examining the evidence, such as the documents concerning the ‘certifications’, the Opposition Division points out that the opponent could have filed copies of these certifications attested by an independent source or the awards granted to the opponent, or at least show some objective evidence regarding the source from which the documents come from.

Secondly, the Opposition Division points out that the evidence referring to the use is mainly undated and two dated articles fall outside the relevant timeframe. All this evidence should be disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time. However, in the present case, the evidence is undated or is dated outside of the relevant period and does not contain any link to the period in which the marks should have been proven use.

Finally, all these items are not only undated or dated outside of the period, but, in addition, the Opposition Division finds it impossible to deduce from the material submitted to what extent the opponent has tried to acquire a commercial position in the relevant market with the trade marks at issue. Although the opponent is not obliged to reveal the total volume of sales or turnover figures, it must show at least some evidence about the commercial volume of use which is one of the above mentioned factors relevant for evaluating the extent of use.

As to this extent of use, the opponent did not file any accounting documents or any documents showing the turnover of the marks or at least that a certain amount of ‘sales’ during the relevant period, in the form of for example invoices, turnover and sales figures or some accounting documents, such as business accounts or annual reports relating to the relevant services, were provided using the marks. Taking into account the characteristics of the services for which the marks are registered, the opponent should have easily been able to produce evidence of the services provided. While it is true that the proprietor has a free choice as to the means of proving extent of use, it nonetheless has to show the reality of the commercial use of the marks at least to dispel any possible doubt that this use might be merely internal, sporadic or token.

In the present case, the evidence taken as a whole does not provide sufficient indications to allow the Opposition Division, without resorting to probabilities or suppositions, to conclude whether the services were offered on the market or to what extent these services have been offered. Taken the evidence entirely, it cannot prove the time of use, neither the extent of any distribution or the number of ‘sales’ for the services protected by the marks. The mere existence of a website, according to the opponent, from which the extracts have been taken, could, at most, make it probable or credible that some services were offered or at least that a company named ‘MEDLIFE’ exists, but cannot prove this without any evidence regarding the extent of use of these services.

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.

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR with respect to earlier European Union trade mark registration No 5 814 736 and the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR with respect to earlier Romanian trade mark registration No 61 229.

COSTS

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

Saida CRABBE

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

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.