Insight not in evidence

22nd Jul 2019

The Court didn’t find Nirvana’s arguments enlightening, says Clare Liang. 000017165 C, NIRVANA (Cancellation), EUIPO, 3rd April 2019.

Insight not in evidence

000017165 C, NIRVANA (Cancellation), EUIPO, 3rd April 2019

This case concerns an application for invalidity filed by Advanced Nutrients Ltd (the Applicant) against EU trade mark (EUTM) No 15412281 NIRVANA registered in classes 1, 11 and 21 in the name of Garden Care Bidco Ltd (Garden Care). The goods covered included a range of growing media, plant food, gardening appliance systems and containers. The decision highlights the importance of ensuring claims are substantiated and that the probative value of evidence and its credibility will be taken into account by the EUIPO. 

The Applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) and sought to rely upon its earlier unregistered Danish trade mark NIRVANA, which was purported to have been used in relation to plant nutrients in class 1. 

The Applicant also made a rather unusual request to the EUIPO that if the application for invalidity failed, a limitation would be applied to the specification in class 1 to exclude plant nutrients. 

The evidence submitted by the Applicant in support of the application for invalidation included: 

Extracts from the Danish Trade Marks Act and a Danish Law textbook, and a decision of the Danish Supreme Court; 
A picture of the Applicant’s product marketed under the mark NIRVANA;  
An excerpt from an undated catalogue showing a product bearing the mark NIRVANA; and 
Invoices issued by Balkan Plant Sciences Ltd. (a subsidiary company incorporated in Bulgaria) to various recipients in Denmark and to various recipients in EU Member States. 

The evidence was heavily criticised by Garden Care and the credibility of the evidence showing use of the mark was called into question. The mark did not appear on every invoice and did not always seem to fit the layout. The EUIPO commented that the discrepancies cast some doubt over the probative value of the documents. 

In reply, the Applicant explained that Balkan Plant Sciences Ltd. is a distributor and a wholly owned subsidiary of it. However, no evidence was provided to support this statement and the Applicant did not address or give any explanation as to the discrepancies identified. 

The Cancellation Division considered that the invoices issued by Balkan Plant Sciences Ltd. were insufficient to show that the earlier unregistered mark had been used by the Applicant in the course of trade and that any such use was of more than mere local significance because there was no link established from the invoices to the Applicant.  Furthermore, the EUIPO was not able to conclude from the evidence submitted whether, under Danish law, use by Balkan Plant Sciences Ltd. meant that the Applicant became the proprietor of the unregistered mark. 

Failure to establish proprietorship of the mark meant that the application for invalidity failed and costs were awarded to Garden Care. The EUIPO also found the Applicant’s request to limit the specification to be inadmissible as there is no legal ground that allows the EUIPO to limit ex officio the specification upon request.

Key points

  • In EUIPO proceedings, ensure that earlier rights are substantiated, especially when relying on unregistered rights and provisions of local laws in individual EU Member States
  • There is no legal basis for the EUIPO to ex officio limit the specification of a registration 
  • Ensure that the applicant for invalidity is the true proprietor of any earlier rights relied upon 

Clare Liang is a Chartered Trade Mark Attorney at HGF Limited