# C_2004300EN.01002901.xml

| 4.12.2004 | EN | Official Journal of the European Union | C 300/29 |
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4.12.2004

EN

Official Journal of the European Union

C 300/29

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Appeal brought on 29 September 2004 by The Sunrider Corporation against the judgment delivered on 8 July 2004 by the Second Chamber of the Court of First Instance of the European Communities in case T-203/02 (1) between The Sunrider Corporation and Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), the other party to the proceedings before the Board of Appeal of OHIM being Juan Espadafor Caba

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(Case C-416/04 P)

(2004/C 300/55)

An appeal against the judgment delivered on 8 July 2004 by the Second Chamber of the Court of First Instance of the European Communities in case T-203/02 between The Sunrider Corporation and Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), the other party to the proceedings before the Board of Appeal of OHIM being Juan Espadafor Caba, was brought before the Court of Justice of the European Communities on 29 September 2004 by The Sunrider Corporation, established in Torrance, California (United States), represented by A. Kockläuner, lawyer.

The Appellant claims that the Court should:

| 1. | set aside in whole the decision of the Court of First Instance dated 8 July 2004 in case T-203/02 (‘the contested decision’); |
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1.

set aside in whole the decision of the Court of First Instance dated 8 July 2004 in case T-203/02 (‘the contested decision’);

| 2. | order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) to pay the costs of the proceedings before the Court of Justice; |
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2.

order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) to pay the costs of the proceedings before the Court of Justice;

| 3. | annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market dated 8 April 2002 in case R 1046/2000-1; |
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3.

annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market dated 8 April 2002 in case R 1046/2000-1;

| 4. | order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) to pay the costs of the proceedings before the Court of First Instance and OHIM. |
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4.

order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) to pay the costs of the proceedings before the Court of First Instance and OHIM.

Pleas in law and main arguments:

The Appellant submits that the judgment of the Court of First Instance should be annulled on the following grounds:

Infringement of Article 43 Sections 2, 3 CTMR in Conjunction with Article 15 Section 3 CTMR (Unwarranted Use)

Infringement of Article 43 Sections 2, 3 CTMR in Conjunction with Article 15 Section 3 CTMR (Unwarranted Use)

The Court of First Instance misinterpreted Article 43 Sections 2, 3 CTMR in conjunction with Article 15 Section 3 CTMR inasmuch as it wrongly took into account the use of the trademark made by a third party.

In this respect, the Court of First Instance misinterpreted the apportionment of the burden of proof given in Article 15 Sections 1, 3 CTMR. Further, the Court of First Instance took into account non conclusive (implicit) statements and evidence produced by the opponent. Moreover, the Court of First Instance relied on presumptions instead of solid evidence. Finally, the Court of First Instance would have had to examine whether or not, in the light of all the relevant matters of fact and in law, a new decision with the same operative part as the decision under appeal could lawfully be adopted at the time of the decision of the Court of First Instance.

Infringement of Article 43 Section 2 CTMR: Non-Satisfactory Proof of Opposing Trademark

Infringement of Article 43 Section 2 CTMR: Non-Satisfactory Proof of Opposing Trademark

Further, the Court of First Instance infringed Article 43 Section 2 CTMR inasmuch as it misinterpreted the notion of genuine use within the meaning of Article 43 Section 2 CTMR.

In particular, the Court of First Instance did not consider reasonably that:

| — | the opponent submitted only three invoices for the year 1996, representing a total value of no more than 3,476.00 EUR; |
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the opponent submitted only three invoices for the year 1996, representing a total value of no more than 3,476.00 EUR;

| — | the opponent submitted for 1997 only two invoices, representing a total value of no more than 1,306.00 EUR; |
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the opponent submitted for 1997 only two invoices, representing a total value of no more than 1,306.00 EUR;

| — | the goods at issue were low-cost goods and thus, goods of mass production and mass consumption; |
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the goods at issue were low-cost goods and thus, goods of mass production and mass consumption;

| — | these goods were relatively easy to sell; |
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these goods were relatively easy to sell;

| — | the goods at issue were sold at best to one single customer; |
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the goods at issue were sold at best to one single customer;

and that therefore the opposing Trademark ES 372 221‘VITAFRUT’ had not been put to genuine use within the meaning of Article 43 Section 2, 3 CTMR, because its use was sporadic, occasional, minimal and not present in a substantial part of the territory where it was protected.

Infringement of Article 8 Section 1 Subsection b) CTMR

Infringement of Article 8 Section 1 Subsection b) CTMR

Further, the trademarks to be compared are not confusingly similar with regard to the goods ‘herbal and vitamin beverages’ for which the applied for Trademark No. 156 422‘VITAFRUIT’ seeks protection. In particular, the goods ‘herbal and vitamin beverages’ on the one hand and ‘fruit juice concentrate’ on the other hand are only remotely similar because they possess only few points of contact.

This is based on the fact that the goods to be compared differ with regard to their product qualities, their raw materials, and the circumstances of their production, namely the machinery, the know-how and the production facilities which are necessary for the manufacturing of the goods in question. Further, the goods to be compared differ in respect of the way in which they are used, their functional qualities and the way in which they are distributed. Therefore, the possible common characteristics of the goods in question are outweighed by their differences.

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(1)  OJ C 233, 28.09.2002, p. 26.

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