Light In The Dark For Troubled GNC As It Wins Trademark Dispute
Executive Summary
GNC has won a long running dispute over the use of its "GNC Live Well" trademark in Europe after a challenge by Lithuanian pharmacy retailer Euroapotheca was rejected by the European General Court.
Troubled US-based nutrition, health and wellness product manufacturer and retailer GNC has some good news to distract from its financial troubles with the European General Court ruling in its favor in a long running trademark dispute.
GNC – which recently filed for Chapter 11 bankruptcy – can continue to use its trademark “GNC Live Well” for dietary supplements sold in the European Union after the European General Court dismissed a legal action brought by Lithuanian pharmacy retailer and wholesaler Euroapotheca.
In a legal battle which dates back to 2016, Euroapotheca had petitioned the European Union Intellectual Property Office (EUIPO) to revoke GNC’s registered mark “GNC Live Well” on the grounds it had not been put to genuine use in the EU within a continuous period of five years in connection with all the goods and services in respect of which it was registered.
EUIPO’s Cancellation Division found partly in Europotheca’s favor and revoked the trade mark for certain services but GNC was permitted to retain the mark for “Dietetic substances adapted for medical use; including dietary food supplements.”
An appeal by Euroapotheca against the Cancellation Division’s decision was dismissed in July 2019 with EUIPO’s Board of Appeal judging that GNC had proved genuine use of the registered mark – for dietary supplements – during the period from 23 August 2011 to 22 August 2016.
Annulment Sought
In the most recent case, Euroapotheca appealed to the European General Court, a constituent court of the Court of Justice of the EU, asking it to annul the decision of the EUIPO appeal board and to order EUIPO to pay the costs.
Listed as an intervenor in the case, GNC asked the Court to dismiss the application; reject the cancellation in respect of all the goods to which the action related; and to order Euroapotheca to pay the costs.
The Court noted Euroapotheca relied on a single plea in law, that the reasoning of the contested decision was deficient, and that the EUIPO Board of Appeal incorrectly assessed the evidence provided by GNC regarding the use of the registered mark.
On the reasoning of the decision, Euroapotheca argued that the Board of Appeal did not state which evidence enabled it to confirm the findings of the EUIPO Cancellation Division.
Noting that the Cancellation Division had analysed all the evidence provided by GNC, the Court said the Board of Appeal had clearly listed that evidence in its judgement, referring to the evidence which bears out the place and duration of use of the registered mark, the nature and scope of such use, and use of the registered mark in relation to the contested goods.
“There is no indication that the applicant was not in a position to understand the reasoning of the contested decision and to challenge it before the General Court. Therefore, the first part of the applicant’s single plea cannot succeed,” the Court stated.
Disputes Over Evidence
Regarding the second part of the plea – that the EUIPO Board of Appeal incorrectly assessed the evidence provided by GNC – Euroapotheca claimed that only a small amount of the evidence provided by GNC related to use of the registered mark, without any specific indication of the goods in respect of which that mark was used. Furthermore, some of this evidence had not been translated into English and should have been ruled inadmissible, the retailer argued.
The Court rejected the first argument, pointing to invoices and advertising material, in a number of European languages, plus an affidavit signed by the Vice-President of General Nutrition Centers, Inc., setting out annual global revenue achieved between 2008 and 2016 relating to the registered mark and a table showing the revenue generated by European sales between 2008 and 2013.
“It is clear that the documents relating to online and retail sales concern the contested goods,” the Court noted. “Indeed, the online shops clearly offer a variety of food and dietary supplements, which also appear in the brochures and are listed in the invoices.”
The Court said the evidence provided by GNC was sufficient to prove genuine use of the registered mark for the contested goods.
Language Claims Rejected
Addressing the Euroapotheca’s issue with the language of the evidence, the Court said this argument could not succeed.
“It is clear from a number of the applicant’s claims that it had understood the content of the evidence, even when submitted in another language, for example, when it argued that certain documents relating to the online shops, either in Spanish or in Bulgarian, did not concern use of the registered mark for the contested goods,” the Court insisted.
“Nor can the view be taken that the lack of a translation of some of the items of evidence in question affected the exercise of the applicant’s rights of defense, since it was in a position to challenge the documents in question before the Court.”
As a result, the Court rejected Euroapotheca’s single plea and dismissed the appeal in its entirety.
It ordered Euroapotheca to pay EUIPO’s and GNC’s costs for the appeal, but rejected GNC’s request that Euroapotheca should pay its costs for the original case before EUIPO’s Cancellation Division.