ESKI | Decision 2610379 - Francisco Matas Sánchez v. Rexel UK Limited

Date Published: Oct 1, 2017

OPPOSITION No B 2 610 379

Francisco Matas Sánchez, Gaspar de Montellano, 11, 14800 Priego de Córdoba, Spain (opponent), represented by M & L Sociedad de Patentes y Marcas SC, Galeria de Vallehermoso, 4, 1º, 28003 Madrid, Spain (professional representative)

a g a i n s t

Rexel UK Limited, 5th Floor, Maple House, Mutton Lane, Potters Bar,   EN6 5BS, United Kingdom (applicant), represented by Ab Initio, 5 rue Daunou, 75002 Paris, France (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 610 379 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 061 501 for the word mark ‘ESKI’, namely against all the goods in Class 25. The opposition is based on Spanish trade mark registration No 

1 657 213 for the word mark ‘EKI’. 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 trade mark on which the opposition is based, namely Spanish trade mark No 1 657 213 for the word mark ‘EKI’.

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 25/09/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 25/09/2010 to 24/09/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 25: Underwear and clothing for men, women and children, including boots, shoes and slippers.

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.

On 17/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 22/05/2016 to submit evidence of use of the earlier trade mark. This time limit was finally extended by the Office until 22/07/2016. On 22/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, the following:

• 38 invoices from the opponent’s address to different persons or companies in Spain. They are dated between 12/03/2010 and 05/11/2015. The invoices indicate sales of fairly high numbers, together with product codes, claimed to be various pieces clothing for a value between EUR 140,11 and EUR 3855,16. Although the invoices hint that sales have been made, it is not possible to know which mark was the subject of these sales as the invoices do not show the earlier trade mark either in the itemisation or in the header of the invoices themselves.  
• A product catalogue covering the year 2009-2010 showing the sign EKI on the first page. It should be noted that the product codes indicated in the invoices do not appear in this catalogue. Nor are there any photographs of clothing bearing the ‘EKI’ trade mark.
• Two undated pictures of tags not attached to any product showing the sign EKI.
• Two undated images depicting the front and lateral side of packaging showing the sign EKI.

Before proceeding it is important to note that when evaluating the evidence submitted, the Opposition Division has to make an overall assessment and all the circumstances of the specific case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with other documentation and information.

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.

The catalogue and the pictures of the tags and packaging filed by the opponent provide the Opposition Division with some evidence of the use of the earlier mark, albeit minimal. However, it is not possible to determine the extent of the use. Indeed, the documents submitted do not provide any information on the commercial volume or quantity of goods actually sold. Likewise, the invoices filed by the opponent do not give further details on the extent of the use of the earlier mark since ’EKI’ does not appear anywhere in the documents and there is no way to link the reference codes in the invoices to the earlier mark. As stated above, the catalogue does not assist in this regard. Even considering the holistic approach mentioned above, it is not possible to make the necessary connections between the evidence; the Opposition Division cannot merely assume that the invoices and the sales shown therein relate to the trade mark. Article 42 EUTMR requires proof of genuine use of the earlier mark. Genuine use of a trade mark cannot be proved 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 (judgment of 18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications to determine the extent of the use of the earlier mark.

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. Consequently, it is not necessary to enter into the applicant’s outstanding arguments concerning the question of admissibility.

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

Saida CRABBE

Lucinda CARNEY

Vanessa PAGE

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.