OPPOSITION No B 2 604 372

The Eat Out Group, S.L., Parque Empresarial Can Sant Joan c/Alcalde Barnils, 64-68 Edif.B, 08190 Sant Cugat del Vallès, Spain (opponent), represented by Garreta i Associats Agència de la Propietat Industrial, S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative)

a g a i n s t

Fresssco T.N., Via del Sole, 2, 06122 Perugia, Italy (applicant), represented by Lexico SRL, Via Cacciatori delle Alpi 28, 06121 Perugia, Italy (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 604 372 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 services of European Union trade mark application No 14 245 997, namely against all the services in Classes 35 and 43, for the figurative mark . The opposition is based on European Union trade mark registrations No 476 796 and No 5 908 934 for the figurative marks  and, respectively. The opponent invoked Article 8(1)(a) and (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 marks on which the opposition is based, namely European Union trade marks No 476 796 and No 5 908 934.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 05/08/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 05/08/2010 to 04/08/2015 inclusive.

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

European Union trade mark registration No 476 796

Class 42:        restaurants; self-service restaurants; snack-bars.

European Union trade mark registration No 5 908 934

Class 35:        Advertising; business management; business administration; office functions.

Class 43:        Restaurant services (food); temporary accommodation.

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 04/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 09/06/2016 to submit evidence of use of the earlier trade marks. This period was subsequently extended until 09/08/2016 at the request of the opponent. On 29/07/2016, 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:

• materials containing information about promotional events, in particular raffles, organised by the opponent’s company FrescCo in 2014, under the name ‘Sweepstake FrescCo Barça – Madrid’, and 2015, under the name ‘Pool FrescCo Oscar Award 2015’; translations from Spanish into English have also been submitted by the opponent;
• an extract from the official website of the opponent, www.frescco.com, containing information about the services that the opponent provides under the mark ‘Frescco’/, namely restaurant services;
• copies of statements signed by parties economically linked with the opponent, dated 2008, 2013 and 2014, that confirm the general terms and conditions of the raffles referred to above; all the documents, available in Spanish, are accompanied by the relevant translations into English;
• an extract from the online source ‘Quedamus Networking & Events’ with information about a sport event organised in December 2015 by, inter alia, the opponent’s company FrescCo, as listed in the announcement;
• a sample of a coupon for the opponent’s restaurants bearing the mark  and valid until 15/12/2014.

Analysis of proof of use

It is evident from the documents listed above that most of the evidence is dated within the relevant period (except for the statement dated 2008). Furthermore, the documents show that the place of use is the territory of Spain. This can be inferred from the language of the documents (Spanish) and some addresses in Spanish cities where the opponent’s restaurants are situated; in particular, the evidence mostly relates to Barcelona and Madrid. However, as stated above, the time and territorial scope of the use are only some of the factors to be assessed in the determination of whether the use is genuine or not. The opponent also has to show the use of the relevant earlier rights as registered and demonstrate an extent of use that would suffice to prove its intention to acquire a commercial position in the relevant market.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Furthermore, ‘The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services … The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered “in relation to goods or services” within the meaning of Article 5(1) of the directive’, i.e. it cannot be considered to be used as a trade mark (11/09/2007, C-17/06, Céline, EU:C:2007:497, and 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156).

In the present case, the evidence shows use of the signs as a company name and also as the name of the opponent’s chain of restaurants.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the figurative marks of the opponent do not appear as registered in any of the materials submitted. Instead, the evidence shows use of the word mark ‘FrescCo’, as well as the following variations of figurative trade marks: ,  and . Nevertheless, even if the Opposition Division considers that the marks  and  are slight variations of the marks  and , differing in only non-distinctive or weak elements for a part of the public (‘Smart Food!’, ‘SALAD & GRILL’, etc.), and, consequently, the differences do not alter the distinctiveness of the marks as registered, this will still not suffice to prove genuine use of the earlier rights.

Firstly, as seen above, these depictions either appear in single self-produced documents, for instance a voucher, with no other supportive evidence in the submissions of the opponent, or are featured in confidential documents (for internal use) that are not accessible to the relevant public in the present case, namely the public at large.

Furthermore, 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 principle, all the circumstances of the specific case have to be taken into account in conjunction with each other to determine whether or not the mark in question has been genuinely used. In relation to that, the principle of interdependence has to be applied whereby weak evidence with regard to one relevant factor (e.g. a convincing demonstration of nature of use) might be compensated by solid evidence with regard to another factor (e.g. illustrative figures and evidence of continuous use over a long period).

However, taking into account the documents filed by the opponent, namely the statements and internet extracts listed above, as a whole, the Opposition Division considers that they do not provide sufficient information concerning the commercial volume, territorial scope, duration and frequency of use of the relevant earlier rights. It is true that use of the mark need not be quantitatively significant for it to be deemed genuine. However, in the evidence listed above, the opponent’s restaurants are briefly referred to with regard to promotional activities, but with no reference to the commercial volume of use in relation to the relevant services, for instance commercial, sales or turnover figures, that could demonstrate the extent and frequency of use. Therefore, the Opposition Division considers that the opponent has failed to provide sufficient indications concerning the extent of the use of the earlier marks.

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 marks were genuinely used in the relevant territory during the relevant period of time, in particular because the opponent has failed to prove the extent of use of its earlier rights.

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

Volker MENSING

Patricia LOPEZ FERNANDEZ DE CORRES

Liliya  YORDANOVA

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.