OPPOSITION No B 2 477 795

Solo Company ApS, Trehøjevej 35, 7200 Grindsted, Denmark (opponent), represented by Andersen Partners, Jernbanegade 31, 6000 Kolding, Denmark (professional representative)

a g a i n s t

AL-KO Geräte GmbH, Ichenhauser Str. 14, 89359 Kötz, Germany (applicant), represented by Dr. Binder & Binder GbR, Neue Bahnhofstraße 16, 89335 Ichenhausen, Germany (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 477 795 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 13 364 451, namely against all the goods in Class 25. The opposition is based on Danish trade mark registration No 199 103 025. The opponent invoked Article 8(1)(a) and (b), 8(5) EUTMR.

PRELIMINARY REMARK

Initially, the goods covered by the contested mark in Class 25 were as follows:

Clothing, in particular outer clothing for activities relating to forestry, agriculture and horticulture.

This is also the exact wording used by the opponent to identify the contested goods in the notice of opposition. After a limitation by the applicant, the goods in this class now read as follows:

Clothing, namely outerclothing for forestry, agricultural and horticultural activities, not of paper, and shoes for forestry, agricultural and horticultural activities.

Although the opposition is directed against only some of the goods, the fact that the opponent initially contested all the goods in Class 25.

SOLO	SOLO
Earlier trade mark	Contested sign

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Danish trade mark No 199 103 025, for which the opponent claimed repute in Denmark.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Denmark.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 10/10/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Denmark prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 25: clothing.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 26/05/2015 the opponent was given two months, commencing after the end of the cooling-off period, to substantiate its opposition. This time limit expired on 30/09/2015.

On 22/09/2015, the opponent submitted the following evidence:

• Appendix 1: a transcript from the Danish Trademark Database, showing that the trade mark ‘SOLO’ is registered for goods in Class 25 on behalf of the opponent;
• Appendix 2: a screenshot from the Whois database, indicating that ‘www.solo.dk’ is registered on behalf of the opponent;
• Appendices 3 and 4: screenshots from the opponent’s website, including two maps.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark has acquired a reputation, since the transcripts from the Danish Trademark Database and the screenshot from the Whois database are only related to ownership of the ‘SOLO’ trade mark and ‘www.solo.dk’ in Denmark. In addition, the screenshots from the opponent’s website merely show the locations of the opponent’s shops on a map of Denmark. None of the submitted documents include information about the commercialisation of goods for which the earlier mark is registered or the reputation gained from this commercialisation.

Consequently the evidence provides little or no information on the extent of use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. The evidence relates to the opponent; it does not show that the trade mark has a reputation for the relevant goods. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

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.

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 01/12/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Denmark from 01/12/2009 to 30/11/2014 inclusive.

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

Class 25:        The registration includes all goods or services in this class (cf. 5th edition of Nice-classification), in particular clothing.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 01/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 06/02/2016 to submit evidence of use of the earlier trade mark. On 05/02/2016, within the time limit, the opponent submitted evidence of use.

The evidence submitted by the opponent is the following:

• Appendices 1 and 2: two pages of images featuring a model, with the sign ‘SOLO Fashion, Fall 2011’ appearing next to the model.
• Appendix 3: an undated screenshot from what the opponent claims is its Facebook page, dated 2013 and displaying the signs ‘SOLO Concept’, ‘SOLOMAGAZINE’ and a timeline. The website address and owner are not given.
• Appendix 4: an image of what the opponent claims is the cover of a ‘SOLO Concept’ clothing catalogue, dated autumn 2015. The images depict models wearing various types of clothing, but the opponent’s mark is not visible.
• Appendix 5: an extract from the Whois database, dated 04/02/2016, in Danish.
• Appendix 6: a screenshot from the Wayback Machine internet archive, dated 04/02/2016, showing the frequency of use of the opponent’s website, without giving any clear figures or other data could indicate the significance of the information provided. Appendices 7 and 8: two screenshots from the Wayback Machine depicting the sign ‘SOLO’ allegedly appearing on a page from the opponent’s website. Contrary to the opponent’s argument, specific dates are not visible in this document.
• Appendix 9: a screenshot the opponent’s website, dated 04/02/2016, showing the signs ‘SOLO Concept’ and ‘SOLO’.

Assessment of the evidence – factors

According to Rule 22(3) EUTMIR, the indications and evidence required 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. 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 of the place, time, extent and nature of use has to be determined by considering the entirety of the evidence submitted. The Opposition Division finds it appropriate to begin the present assessment with the criteria of extent of use.

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.

The documents filed by the opponent, as described in detail above, contain mostly information about the opponent’s company and its trade mark.

These documents consist merely of a few internet extracts, a product catalogue and information from the Whois database and the Wayback Machine archive demonstrating the registration and (not very clearly) the frequency of use of the opponent’s web page, respectively. They do not provide the Opposition Division with sufficient information concerning the commercial volume, territorial scope, duration and frequency of use of the earlier mark in respect of all the goods for which the earlier mark is registered.

The images submitted from the alleged catalogues are materials that were mainly produced by the opponent, and the material including information from or about the opponent’s website or social media pages provide limited information concerning the marketing use of the earlier mark. This evidence does not show that the earlier mark has been protected in the relevant territory or used publicly.

Although the use of the trade mark does not need to be quantitatively significant for it to be deemed genuine, in the absence of any evidence, such as invoices or sales figures, concerning the trade mark in question, the documents submitted do not provide the Opposition Division with sufficient information demonstrating the commercialisation of relevant goods bearing the trade mark ‘SOLO’. There is no information about the number of catalogues or the extent to which they were distributed. Although several images depicting items of clothing appear on the website, there are no statistics given about the numbers or origins of visitors to this website or the sales outcomes that resulted. In the present case, no invoices have been submitted to show the sale of the relevant goods under the two earlier marks on which the opposition is based. No press articles have been submitted. There is no evidence placing the earlier marks in a relevant market situation in relation to the goods for which the mark is registered. There is no evidence, particularly photographs, indicating the presence of the marks at trade shows or third party retail or wholesale establishments.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the earlier mark.

Conclusion

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).

In addition, 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 (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47). In other words, it is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 40).

As stated above, the factors of time, place, extent and nature of use are cumulative. This means that the evidence must provide sufficient indication of all these factors to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as extent of use has not been established, it is not necessary to assess the other requirements on use.

Taking all the above into account, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that earlier Danish trade mark No 199 103 025 was genuinely used in the relevant territory during the relevant period for all the relevant goods. Such evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant services (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43).

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

Erkki MÜNTER

Bekir GÜVEN

Natascha GALPERIN

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.