VENISAGE | Decision 2637877 - Basler Haar-Kosmetik GmbH & Co. KG v. DELFINA SRL
Date Published: Sep 28, 2017
OPPOSITION No B 2 637 877
Basler Haar-Kosmetik Gmbh & Co. KG, Gansäcker 20, 74317 Bietigheim-Bissingen, Germany (opponent), represented by Unit4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)
a g a i n s t
Delfina SRL, Corso Vittorio Emanuele II 308, 00186 Roma, Italy (applicant), represented by Piergiovanni Cervato, Via Bronzetti 46, 35138 Padova, Italy (professional representative).
On 03/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 637 877 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 14 936 645, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 322 586. The opponent invoked Article 8(1)(b) EUTMR.
VENISAGE | |
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.
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 23/12/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 23/12/2010 to 22/12/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 3: Soaps, perfumery, essential oils, cosmetics, hair care preparations; shampoo, hair lotions, hair colorants, permanent wave preparations.
Class 21: Combs, sponges, brushes (except paint brushes) and cases, bags, and trunks for these goods.
Class 25: Clothing, including caps and capes for hairdressers, footwear, headgear.
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 06/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/12/2016 to submit evidence of use of the earlier trade mark. On 26/10/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
- Attachment 1: Affidavit signed by the director of the opponent’s company Basler Haar-Kosmetik GmbH & Co. KG, Dr. Michael Allert, on 24/10/2016, where it is declared that the trademark ‘Vernissage’ was used in the years 2011-2015 in Germany and in the European Union, in particular, for perfumery, haircare and hairstyling products. According to this document, the minimum turnovers went from several thousands to few hundreds euros in each year.
- Attachment 2: A set of 16 non-consecutive invoices dated between 21/02/2011 and 12/01/2015, most of them issued by Basler Haar-Kosmetik GmbH & Co. KG (the opponent) with an address in Germany to different clients with addresses in Germany. Some of the invoices do not show by whom they were issued (invoices from 21/02/2011, 14/04/2011, 06/05/2011). The invoices refer to sales of items indicated as ‘Vernissage Eau de Parfum’, ‘Vernissage Eau de Toilette Spray’, ‘Vernissage Deodorant’, ‘Vernissage Frisurenspray’. The sales of goods marketed under the sign ‘Vernissage’ amount from 0 euros to maximum 169.50 euros per invoice.
- Attachment 3: Copy of a promotional catalogue in German language issued by the opponent in the year 2011, where reference is made to ‘Vernissage Eau de Parfum’, ‘Vernissage Eau de Toilette’, ‘Vernissage Deodorant’, ‘Vernissage Duft-Shampoo’ and ‘Vernissage Frisurenspray’. It is apparent that they refer to the same goods which appear in the invoices (with the exception of the ‘Vernissage Duft-Shampoo’ for which no invoices were submitted).
- Attachment 4: Copy of the promotional catalogue in German language issued by the opponent in the year 2012, with the reference to the same products as in the Attachment 3.
- Attachment 5: Copy of the promotional catalogue in German language issued by the opponent in the year 2013, with the reference to the ‘Vernissage Eau de Parfum’.
- Attachment 6: Printouts from the shopping portal website www.yallaa.de in German made on 25/10/2016 and showing the opponent’s ‘Vernissage Eau de Parfum’ and ‘Vernissage Frisurenspray’ products.
As far as the affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.
The documents submitted demonstrate that the place of use is Germany. The invoices are in German and some of them prove that they were issued directly by the opponent (a German company) to different entities with addresses in Germany. Consequently, the evidence submitted suffices to establish that the sign was present in the market in the relevant territory, namely the European Union.
Most of the evidence, including all the invoices and copies of catalogues (Attachments 2, 3, 4, 5), are dated within the relevant period. However, the website printouts (Attachment 6) do not contain any information about the period in which the opponent’s products were offered by the e-shop on its website. The only time information refers to the date on which the printouts were made, which is 25/10/2016. Therefore, this evidence is out of the relevant period and cannot be further considered.
The evidence shows that the mark has been used as registered for some of the goods for which the mark is registered, such as perfumery, cosmetics, haircare and hairstyling products.
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.
In the present case, the documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
The claims regarding the annual turnovers achieved from 2011 to 2015 under the earlier mark in Germany made in the affidavit (Attachment 1) have not been sufficiently supported with further evidence. More evidence is necessary to establish use, such as evidence originating from independent sources or common commercial or corporate documents previously prepared by the opponent with another purpose than being submitted during the present opposition proceedings.
The only documents that refer to the extent of use and could support the sales volume indicated in Attachment 1 are the 16 invoices provided by opponent (Attachment 2), supported by the copies of catalogues in the years 2011, 2012 and 2013.
More particularly, regarding the perfumery goods in Class 3, the opponent provided 9 invoices referring to ‘Vernissage Eau de Parfum’ and ‘Vernissage Eau de Toilette’ products for a total amount of 396.99 euros (26 products sold). These invoices are dated between 14/04/2011 to 12/01/2015.
Further to the cosmetic products in Class 3, the opponent provided 4 invoices referring to ‘Vernissage Deodorant’ for a total amount of 10.85 euros (5 products sold). The invoices are dated between 21/02/2011 to 03/03/2014.
As regards haircare and hairstyling products in Class 3, the opponent provided 2 invoices referring to ‘Vernissage Frisurenspray’. The total amount of sales of these products in the invoices is 14.75 euros (5 products sold). Regarding the ‘Vernissage Duft-Shampoo’, the opponent failed to submit any sufficient evidence since the printouts from e-shop website are out of the relevant period and they cannot be considered, as it was mentioned above.
These documents 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. While it is true that the proprietor has a free choice of the means of proving extent of use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to show the reality of the commercial use of the mark, at least to dispel any possible doubt that this use might be merely internal, sporadic or token. Taking into account the characteristics of the goods for which the mark is registered and the high commercial volume claimed for the German and European Union market in Attachment 1, the opponent should have easily been able to produce more evidence of commercial transactions during the relevant period and in the relevant territory (i.e. the European Union). The Opposition Division does not judge the commercial success of a business; however, it cannot make its assessment based on assumptions. 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 (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).
In view of the above, 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) 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 | Begoña | Adriana Pieternella VAN ROODEN |
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.