OPPOSITION No B 2 603 648

Frenos Coruña, S.L., La Ermita, 17, 15008 A Coruña, Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Bloks.AG, c/o Concordanz Anstalt, Feldkircher Str. 15, 9494 Schaan, Liechtenstein (applicant), represented by Maiwald Patentanwalts GmbH, Elisenhof Elisenstr. 3, 80335 München, Germany (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 603 648 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 14 349 427, namely against all the goods in Classes 7, 9 and 12. The opposition is based on Spanish trade mark registration No 1 939 001. The opponent invoked Article 8(1)(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 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 1 939 001.

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 03/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 03/08/2010 to 02/08/2015 inclusive.

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

Class 12:        Car engines and parts for them and especially brakes and brake lining for motor vehicles.

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 20/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 25/08/2016 to submit evidence of use of the earlier trade mark. On 09/08/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Document 1: an undated internet printout including a picture of the front part of the opponent’s shop in Pontevedra showing the earlier mark on one of the windows of the building as follows:

• Document 2: copies of three invoices partly translated into English, issued in September 2013 and June 2014 respectively by companies located in A Coruna, Spain and addressed to the opponent in relation to the sale of ‘Caja FC BLOCKS 480X450X310’ and ‘Caja FC BLOCKS 410X380X250’ (1.140 and 1.000 items respectively) and ‘Placas aluminio serigrafiadas a 2 tintas, medidas: 43 X 30 MM, FCBLOCKS’ (300 items).

• Document 3: two undated pictures showing an engine and its packaging with ‘fcblocks’ featured as follows:

 

• Document 4: an undated one-page calendar featuring a prominent logo for ‘frenoscoruña’ at the top left side and smaller logos of a number of different brands underneath, including the following logo for ‘fcblocks’:

• Document 5: extracts from an undated catalogue called ‘Catalogo Caliper de Freno V.I.’ including the front and back pages. The extracts include the text ‘Distribuido por Frenos Coruña S.L. con certificado nº ER-1872/2006’, the opponent’s address and feature the following logo:

Furthermore, one of the pages is the catalogue’s index with a list of well-known vehicle manufacturers, such as Mercedes Benz, Iveco, Scania and Volvo. The partial translations of the evidence also indicate that the opponent has been active in the reconditioning and reconstruction of brake callipers.

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.

Moreover, 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.

With the exception of the pictures contained in Document 3, all other documents are in Spanish and most of them also feature addresses in Spain. Therefore, the documents submitted refer to the relevant territory.

However, with the exception of the invoices, all documents submitted are undated. Although the invoices are dated within the relevant time period and include ‘FCBLOCKS’ in their description, they relate to goods purchased by the opponent itself. Therefore, the invoices do not show any sales by the opponent of any of the goods on which the opposition is based.

In addition, the undated pictures submitted in Document 3 of a cardboard box and an engine featuring an ‘fcblocks’ logo do not demonstrate that any such goods were actually sold by the opponent, in particular as this is not supported by the invoices submitted.

As regards the undated picture of one of the opponent’s establishments featuring an ‘fcblocks’ branded sticker on one of the windows (Document 1) and the undated one-page calendar (Document 4), they do not tell anything about any particular goods for which the earlier mark may have been used or the relevant time of use and potential extent of the same. Moreover, the one-page calendar does not, in itself, even show that it was actually used publicly and outwardly.

The pages provided from a catalogue and the partial translations thereof (Document 5) suggest that the opponent has provided repair and reconstruction services of other manufacturers’ brake callipers under the ‘fcblocks’ logo but do not necessarily show that the opponent has used the ‘fcblocks’ logo in connection with these goods (as opposed to the services of repairing or reconstructing them). However, regardless of whether or not such use could be considered to constitute use in connection with these goods within the meaning of Article 15(1) EUTMR, all pages submitted are undated and the invoices do not relate to the sales of any such goods or reconstruction services provided in relation to the same. All other documents are undated and, for the reasons outlined above, there is no other evidence to support any potential use of the earlier mark for any of the goods on which the opposition is based within the relevant time period.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the time and extent of the use of the earlier mark in connection with the goods on which the opposition is based.

The opponent cites some case-law concerning the requirements for proof of use and puts forward that there is no de minimis rule for the quantitative threshold to determine whether use is genuine or not. With this in mind, the opponent concludes that the earlier mark has been used in accordance with the case-law cited and claims that the evidence submitted shows the nature of use (use as a mark in the course of trade), place of use (Spain), time of use (21/03/2008 to 21/03/2013) and extent of use (that the opponent has seriously tried to acquire a commercial position in the relevant market). In this respect, as also confirmed by the case-law cited by the opponent, there is genuine use of a trade mark where the mark is used in order to create or preserve an outlet for the goods for which it is registered; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Therefore, although it is true that there is no de minimis rule for the quantitative threshold of use, the question whether use is sufficient to preserve or create a market share for the relevant goods depends on several factors and must be assessed on a case-by-case basis. Contrary to the opponent’s conclusion that use of the earlier mark has been extensively proven, for the reasons already outlined above, the evidence submitted does not demonstrate that the earlier mark has been used in order to create or preserve an outlet in the market for the goods for which it is registered within the relevant time period.

Conclusion

In view of all 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 connection with any of the goods on which the opposition is based 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

Milda CERNIAUSKAITE

Sam GYLLING

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