VISCOMED | Decision 2602905 - Damedis - Serviço Comercial de Produtos Médicos, Lda. v. ISBIR SÜNGER SANAYI ANONIM SIRKETI

Date Published: Oct 1, 2017

OPPOSITION No B 2 602 905

Damedis – Serviço Comercial de Produtos Médicos, Lda., Rua Parque Anjos, No. 4, 1st floor, left side, 1495-100 Algés, Portugal (opponent), represented by Teresa Cruz Diniz, Centro Empresarial Sintra-Estoril VI, Edifício T1, Estrada de Albarraque, Linhó, 2710-297 Sintra, Portugal (professional representative)

a g a i n s t

Isbir Sünger Sanayi Anonim Sirketi, Istanbul Yolu 17. Km, Etimesgut-Ankara, Turkey (applicant), represented by Silex IP, Calle Velázquez 109 2º D, 28006 Madrid, Spain (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 602 905 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 and services of European Union trade mark application No 14 306 831, namely against all of the goods in Classes 10 and 24. The opposition is based on Portuguese trade mark registration No 464 365. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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 shall 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 shall be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, Portuguese trade mark registration No 464 365.

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 24/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Portugal from 24/08/2010 to 23/08/2015 inclusive.

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

Class 10:        Pressure relieving mattresses.

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 30/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/09/2016 to submit evidence of use of the earlier trade mark. On 09/09/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Items 1 and 2: two undated documents with the opponent’s name and address and showing two labels featuring the earlier mark as follows:  and . The opponent claims that the labels are used on the cover of, and inserted into, the pressure relieving mattresses that it has manufactured and distributed under the earlier mark since 2001.

• Item 3: an undated and unsigned sample of a CE declaration of conformity in Portuguese. According to the opponent, this declaration is issued by the opponent in its capacity as a manufacturer of ‘Viscomed’ pressure relieving mattresses to comply with the terms in the applicable EU and Portuguese legislation on the manufacture and distribution of medical devices.

Assessment of the evidence – factors

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 requirements for proof of use as set out in Rule 22(3) EUTMIR 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 to the place, time, extent and nature of use has to be determined by considering the entirety of the evidence submitted.

As regards the time of use, the evidence must show genuine use of the earlier mark within the relevant period (i.e. 24/08/2010 to 23/08/2015 inclusive).

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.

As regards Items 1 and 2, the documents submitted merely show a ‘Viscomed’ logo together with an example of the design of a label printed on a sheet of paper; they do not contain any evidence of the actual use of the earlier mark, in the cover of or inserted in pressure relieving mattresses as claimed by the opponent. Moreover, the documents are not dated.

As regards Item 3, the opponent claims that the declaration is dated August 2015 and that it serves to give information that the ‘Viscomed’ pressure relieving mattress is a Class 1 medical device that complies with the applicable EU and local legislation. Although the footer of the declaration features the date August 2015 suggesting the sample declaration was obtained on this date, the fact remains that it does not provide any information about the actual use of the earlier mark for the goods on which the opposition is based.

For the reasons outlined above, the documents submitted do not demonstrate any public and outward use of the earlier mark in connection with the goods for which it is registered.

Conclusion

Genuine use requires actual presence of the goods or services on the market to the customers so that the mark can exercise its essential function, which is to identify the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent purchase (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 37).

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 36).

Consequently, the Opposition Division concludes that the evidence furnished by the opponent is clearly insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

The methods and means of proving genuine use of a mark are unlimited. The above finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the opponent chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

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 and, as time and extent have not been established, it is not necessary to assess the other criteria.

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

Sam GYLLING

Anunciata SEVA MICO

Oana-Alina STURZA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.