al.to | Decision 2556754 - CAISSE GENERALE DE RETRAITE DES CADRES (CGRCR) v. X-KOM Michał Świerczewski
Date Published: Sep 28, 2017
OPPOSITION No B 2 556 754
Caisse Générale de Retraite des Cadres (CGRCR), 18, avenue Léon Gaumont, 75020 Paris, France (opponent), represented by Strato-IP, 18, rue Soleillet, 75020 Paris, France (professional representative)
a g a i n s t
X-KOM Michał Świerczewski, ul. Pocztowa 20, 42-270 Klomnice, Poland (applicant), represented by Anna Korbela, ul. Kilińskiego 30 lok.2, 42-202 Częstochowa, Poland (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 556 754 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 13 551 478 , namely against all the services in Classes 35 and 36. The opposition is based on French trade mark registration No 3 102 040 ‘ALTEA’. The opponent 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 earlier French trade mark No 3 102 040 ‘ALTEA’ on which the opposition is based.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 30/04/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 30/04/2010 to 29/04/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:
Class 35: Advertising, business, administrative and accounting affairs, management assistance to commercial companies on matters related to business, administration, accounting and finance, consultancy on business, administrative, accounting and financial management; advise on business, administrative, accounting and financial organization and management; commercial information agencies; consultancy on staff matters.
Class 36: Insurance; consultancy on insurance matters; information on insurance matters; provident funds; provident funds contracts; insurance brokerage; life-insurance; third party liability, fire, household, automobile, unemployment, navigation, hunting, accident, general risk insurances; home aid services insurance; insurance for legal support and protection expenses; insurance on loans; complementary insurance; insurance underwriting services; management of retirement pensions and provident funds; employee, complementary insurance savings; monetary affairs; financial affairs; financial analysis; financial evaluations (insurance, bank, real property); financial information; financing services; financial and stock exchange investments; real estate affairs; real estate sureties and loans; social loans; consumer loans; traveller cheque issuance.
Class 38: Telecommunications; communications by computer terminals; radio broadcasting; broadcasting of television programs; radio broadcasting; television broadcasting; telephone and mobile services; transmission of despatches; electronic mail; computer aided transmission of messages and images; transmission of financial information via facsimile, telematics, satellite and by world telecommunications network.
Classe 42: Hosting of sites (Internet).
Classe 45: Legal support (guardianship); guards; legal and tax consultancy and services; legal support services; professional consultancy and plan drafting not related to business.
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.
These requirements for proof of use are cumulative (05/10/2010, T-92/09, Strategi, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements.
On 10/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 22/07/2016 to submit evidence of use of the earlier trade mark. This time limit was extended until 22/09/2016.
On 22/09/2016, within the time limit, the opponent submitted evidence of use.
The evidence is the following:
- Two standard official letters sent to managers of newly incorporated companies regarding the different administrative procedures to follow to join the private pension scheme system. They are dated April 2011 and March 2012. The sign ‘altea’ appears in the header of each letter.
- Leaflet intended for members of the ‘ALTEA’ pension fund explaining the conditions and the time limits to obtain a scholarship for the academic year 2013-2014.
- Newsletters entitled ‘flash info retirement’, intended for companies which are members of the ‘Abelio’ and ‘Altea’ systems, dated March 2011, December 2011, March 2012 and December 2012. These documents contain news related to pensions and they provide information to companies in relation to strategies and actions related to various retirement procedures.
- Information letters for contributors, dated 2011 and 2012. They contain news in the field of pensions and provide information on the services offered by the ‘Altea’ pension fund.
- Extract from the internet website www.aprionis.fr dated 13/01/2011 and Newsletters entitled ‘Connexion’ dated 2011 and 2012. They are intended for pensioners, members of the ‘Altea’ pension fund. They provide up-to-date information concerning retirement and private pensions.
- Extracts from Horizons magazine, dated October 2011, 2012 and 2014. This information magazine is intended for pensioners of the ‘Abelio’ and ‘Altea’ systems. The last page of the magazine dated October 2014 mentions that 168 202 pensioners receive a pension from ‘Altea’.
The applicant argues that the opponent did not submit a complete translation of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). It is left to the discretion of the Office whether the opponent has to submit a translation of the evidence of use into the language of the proceedings. In exercising its discretion, the Office balances the interests of both parties. It has to be borne in mind that it might be extremely costly and burdensome for the opponent to translate the evidence of use submitted into the language of the proceedings. In the present case, the opponent has translated the relevant parts of the evidence. Therefore, the Opposition Division considers that there is no need to request a translation. In any case, a complete translation of the evidence would not change the outcome of the decision for reasons that will become apparent below.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
Genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).
In the present case, the documents show that ‘Altea’ private pension fund provides services in relation to private pensions. However, the evidence, which merely consists in magazines, brochures, newsletters intended for members (pensioners) of the ‘Altea’ pension fund, does not give any indication on the extent of the commercial activities of the opponent under the earlier trade mark. The Opposition Division was not provided with any sales figures for the relevant services, any indication of the commercial volume of sales or turnover figures, or any documents concerning the frequency of use. In addition, the opponent did not provide any indication on the number of copies sent of the magazines, brochures and newsletters (their circulation area and numbers).
Even though the magazine Humanis dated October 2014 mentions that 168 202 pensioners receive a pension from the ‘Altea’ system, this figure is not corroborated by any other document. The opponent could have filed invoices, balance sheets and other commercial documents such as evidence of membership which could support the figure given.
From the evidence submitted, it cannot be deduced that the opponent has seriously tried to acquire a commercial position in the relevant market. The Opposition Division has no solid or objective indications relating to the extent of use. Therefore, taken in its entirety, the evidence filed does not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier mark.
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).
The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.
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
Catherine MEDINA | Frédérique SULPICE | Begoña URIARTE VALIENTE |
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.