Vitafiber | Decision 2582875 - BioNeutra North America Inc. v. Kevin Libawski

Date Published: Oct 1, 2017

OPPOSITION No B 2 582 875

BioNeutra North America Inc., 9419B - 20 Avenue NW, Edmonton Alberta T6N 1E5, Canada (opponent), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative)

a g a i n s t

Kevin Libawski, Berliner Straße 18, 27751 Delmenhorst, Germany (applicant), represented by Diekmann Rechtsanwälte, Feldbrunnenstraße 57, 20148 Hamburg, Germany (professional representative).

On 04/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 582 875 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 14 280 812 for the word mark ‘Vitafiber’, namely against the goods and services in Classes 5, 30 and 41. The opposition is based on the non-registered trade mark ‘VITAFIBER’, the non-registered trade mark , the trade name ‘VITAFIBER’ and the trade name , all used in the course of trade in Estonia, the Netherlands, the Czech Republic, Denmark, the United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland, as well as on a part of a domain name ‘VITAFIBER’, used in the course of trade in Estonia, the Netherlands, Czech Republic, the European Union, Denmark, the United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland. The opponent invoked Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

In its observations the opponent refers only to its earlier rights used in the course of trade in the United Kingdom. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s non-registered trade marks ‘VITAFIBER’ and, used in the course of trade in the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 22/06/2015. However, the contested trade mark has a priority date of 13/05/2015. Therefore, the opponent was required to prove that the signs on which the opposition is based were used in the course of trade of more than local significance in the United Kingdom, prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for dietary supplements; dietary supplements for humans; fibre supplements; fibre supplements for use as a food ingredient; sweeteners; natural fibre; natural dietary fibre; dietary fibre; fibre sweetener; prebiotic fibre sweetener; retail sales and all other sales of the foregoing.

On 19/04/2016 the opponent submitted evidence of use in the course of trade. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• A Witness Statement dated 18/04/2016, signed by Mr Jianhua Zhu, President and CEO of BioNeutra North America Inc. (the opponent), containing information about the opponent’s activities and making reference to the 7 exhibits listed below. According to the Witness Statement, sales of products marketed as ‘VitaFiber’ by the opponent in the European Union began in December 2013 and have continued to the present time. The sales have been realised primarily through an online e-commerce store, Shopify. Although concrete data cannot be disclosed due to the opponent’s request for keeping such data confidential, it has to be noted that the Witness Statement makes references to a relatively small amount of sales made in the United Kingdom in the period between 18/02/2014 and 23/05/2014.

• Exhibit JZ1: Extracts from the opponent’s website http://bioneutra.ca, dated 18/04/2016 (i.e. after the relevant date) and showing the sign  in connection to a sweet natural fibre providing low calorie and soluble prebiotic fibre for human digestive health. It is explained that the product is available in syrup or powder form.

• Exhibit JZ2: An extract from the free online encyclopaedia Wikipedia, dated 18/04/2016 (i.e. after the relevant date), containing general information about the company BioNeutra, established in 2003 and based in Canada (i.e. outside the relevant territories).

• Exhibit JZ3: Extracts from the digital internet archive service Wayback machine, showing the opponent’s website http://vitafiber.myshopify.com, as it was on 24/01/2014, 06/05/2014, 17/04/2015, 29/04/2015 and 09/05/2015. These printouts refer to a sweetener in syrup and powder form, offered for sale under the sign . The prices of the goods are indicated in dollars (i.e. $).

• Exhibit JZ4: A set of 40 purchase orders, dated between 18/02/2014 and 23/05/2014, accompanied by a corresponding invoice (for seven of the orders), a packing list or a shipment receipt. The documents are issued by the opponent to clients with addresses in the United Kingdom and refer to goods indicated as ‘VitaFiber – Syrup’ or ‘VitaFiber Powder’, where the verbal element ‘VitaFiber’ is followed by the indication for a trade mark, ‘TM’, in superscript. The prices in the documents are in Canadian dollars (CAD) and even though the exact amounts cannot be mentioned due to a request by the opponent, it should be noted that the sales are very few. Many of the documents have consecutive numbers and are issued on the same or consecutive dates (e.g. 19 of the orders are dated between 01/05/2014 – 06/05/2014).

• Exhibit JZ5: 11 shipment receipts, dated between 10/07/2014 and 17/12/2014, issued to the opponent for the delivery of goods of the opponent from Edmonton, Canada, to customers with addresses in different cities and towns in the United Kingdom. The opponent has indicated in its observations that these documents refer to the shipment of promotional samples of the goods, indicated in the receipts, namely ‘VitaFiber Powder’ and ‘VitaFiber Syrup’. The declared values of the shipped goods are very low.

• Exhibit JZ6: A sheet showing samples of product labels with the signs  and the indication ‘Product of BioNeutra North America Inc.’ and an address in Canada.

• Exhibit JZ7: An extract from the video-sharing website YouTube at http://www.youtube.com, showing a video published by The Diet Kitchen on 03/05/2014 and titled ‘How to make quest style protein bars recipe’, in which a jar with the indication  appears in a video frame. The exhibit also shows an extract from the same website with information about the uploader of the video The Diet Kitchen, as well as extracts from the website http://thedk.co.uk of The Diet Kitchen and of its Facebook page, from which it becomes clear that The Diet Kitchen is run by a chef, Simon Roshdy, providing food and custom diet plans for clients.

While the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory (judgment of 29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 158-159).

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgments of 24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

Therefore, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to these elements:

1. the intensity of use (sales made under the sign);
2. the length of use;
3. the spread of the goods (location of the customers);
4. the advertising under the sign and the media used for that advertising, including the distribution of the advertising.

Moreover, it must be clear from the evidence that the use continues on the date of the filing of the opposition. In this context, Rule 19(2)(d) EUTMIR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent shall provide evidence of its acquisition, continued existence and scope of protection of that right.

In the present case, the opponent has demonstrated that some use of the signs has been made in the United Kingdom, where it has shipped goods with the trade mark ‘VitaFiber’ to customers in different cities and towns. The overall size of the market of the United Kingdom is fairly big and the goods marketed by the opponent (natural sweeteners, as demonstrated by the evidence submitted) are relatively cheap articles intended for the general public. The intensity and length of use demonstrated by the opponent are very limited with regard to the relevant market and goods.

The sale activities of the opponent are not consistent over time to the extent that for certain periods no sales at all appear to have taken place and that for others the sales revenue are very low. The sales of goods are concentrated within a few months in 2014 and show sporadic shipments of rather small quantities of the goods concerned to the relevant territory. Therefore, the sales orders and shipment receipts show that the opponent was not able to maintain an intensity of use of the signs over a continuous period of time. It is unlikely in this case that the public was able to memorise the marks as indications of origin.

Moreover, the evidence does not show use on the date of the filing of the opposition, neither on the priority date of the contested trade mark. Since for earlier non-registered signs relied on in opposition proceedings use constitutes the factual premise justifying the existence of the right, the same factual premise must still exist, and be proven, on the date of filing of the opposition. The evidence does not provide a convincing picture of use of the opponent’s signs at the priority date of the contested trade mark either.

The opponent did not submit any evidence relating to the advertising and promotion of the marks invested in the United Kingdom, or other material showing that the signs in question had established themselves in the marketplace to such an extent as to justify the acquisition of exclusive rights in non-registered trade marks. The website extracts give information about the opponent’s activities – a Canadian company offering goods for sale over the internet. Furthermore, the prices of the goods are not indicated in a European currency but in Canadian dollars. These materials do not prove that the online shop offering the opponent’s goods for sale has been visited by customers in the relevant territory and, if so, to what extent.

Therefore, considering all the above, the evidence submitted is not sufficient to corroborate the assertion of the opponent that it sells goods under the signs ‘‘VITAFIBER’ and in the United Kingdom in the context of commercial activity with a view to an economic advantage. The sales demonstrated by the opponent cannot be deemed sufficient to prove the use of the marks as important and significant business identifiers used by the opponent. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market.

The opponent has also based its opposition on the following earlier rights used in the course of trade for dietary supplements; dietary supplements for humans; fibre supplements; fibre supplements for use as a food ingredient; sweeteners; natural fibre; natural dietary fibre; dietary fibre; fibre sweetener; prebiotic fibre sweetener; retail sales and all other sales of the foregoing:

• non-registered trade marks ‘VITAFIBER’ and, used in the course of trade in Estonia, Netherlands, the Czech Republic, Denmark, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland;

• the trade names ‘VITAFIBER’ and , used in the course of trade in Estonia, Netherlands, the Czech Republic, Denmark, the United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland;

• the domain name ‘VITAFIBER’, used in the course of trade in Estonia, the Netherlands, Czech Republic, the European Union, Denmark, the United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland.

The evidence of use for these earlier rights is the same as that listed above in relation to the opponent’s non-registered trade marks ‘VITAFIBER’ and, used in the course of trade in the United Kingdom.

A trade name is the name used to identify a business, as distinguished from a trade mark which identifies goods or services as produced or marketed by a particular undertaking. A domain name is a combination of typographical characters corresponding to one or several numeric IP addresses that are used to identify a particular web page or set of web pages on the internet. As such, a domain name functions as an ‘address’ used to refer to a specific location on the internet (euipo.europa.eu) or an email address (@euipo.europa.eu). As seen above, the documents submitted refer to use of a trade mark for particular goods and not to use of a trade name or a domain name.

As regards the non-registered trade marks used in the territories mentioned above other than the United Kingdom, none of the documents submitted refer to use of the earlier signs in any of these territories claimed by the opponent.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier signs were used in the course of trade of more than local significance in connection with the goods on which the opposition was based before the relevant date and in the relevant territories.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

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

Adriana VAN ROODEN

Boyana NAYDENOVA

Martina GALLE

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.