LOLAMOLA | Decision 2642224
Date Published: Sep 24, 2017
OPPOSITION No B 2 642 224
Global Wine Partners S.L., Avda. Diagonal 566 2º, 08021 Barcelona, Spain (opponent), represented by Bermejo & Jacobsen Patentes-Marcas S.L., Av. Cerro del Aguila, 2, Portal 3, Planta 2, Puerta 5, 28702 San Sebastian de los Reyes (Madrid), Spain (professional representative).
A g a i n s t
Barcelona Brands, Carrer del Rossinyol 26, 08818 Olivella, Spain (applicant), represented by Novagraaf Belgium S.A./N.V., Chaussée de la Hulpe 187,1170, Brussel, Belgium (professional representative).
On 25/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 642 224 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 884 415, namely all the goods in Class 33. The opposition is based on Spanish trade mark registration No 2 923 486. The opponent invoked Article 8(1)(a) and (b) EUTMR.
DOÑA LOLA | LOLAMOLA |
Earlier trade mark | Contested sign |
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 2 923 486.
The request for proof of use was submitted in due time and is admissible as the earlier trade mark was registered for more than five years prior to the publication of the contested application.
The contested application was published on 10/12/2015. 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 10/12/2010 to 09/12/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 33: Alcoholic beverage (except beers).
According to Rule 22(3) EUTMIR, the evidence of use shall 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 30/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/12/2016 to submit evidence of use of the earlier trade mark. This time limit was further extended until 05/02/2017, and on 31/01/2017, within the time limit, the opponent submitted evidence of use.
The evidence filed is the following:
- Invoices: a total of 5 invoices are dated on 08/06/2010, 05/07/2010, 06/10/2010 (3 invoices with consecutive numbers dated on the latter date), whereas a purchase order and a corresponding pro forma invoice (having the same order number) are dated on 04/05/2016.
In accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. 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. However, the sufficiency of the indication and proof as regards the place, time, extent and nature of use has to be considered in view of the evidence submitted in its entirety. At this point, the Opposition Division considers it appropriate to focus the assessment of the evidence on the criteria of time; in its opinion, the evidence submitted by the opponent is insufficient to prove that the requirement of time has been met in the present case.
As regards the time of use, the evidence must show genuine use of the earlier mark within the relevant period (i.e. 10/12/2010 to 09/12/2015 inclusive).
Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).
In the present case, none of the documents are dated within the relevant period; they merely show some use in the months before and after the relevant period. Although the evidence shows some commercial activity outside the relevant period, the evidence is not supported by any additional evidence dated within the relevant period, which could corroborate that the attached invoices contain conclusive indirect proof that the earlier mark must have been put into use also within the relevant time period.
Bearing this in mind, the evidence of use filed by the opponent does not contain any indication concerning the time of use.
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).
As stated above, the factors of time, place, extent and nature of use are cumulative, and the evidence must provide sufficient indications of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient to reject the opposition and, as time of use has not been established, it is not necessary to assess the other criteria.
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
Boyana NAYDENOVA | Christian RUUD | Alexandra APOSTOLAKIS |
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.