OPPOSITION No B 2 262 569

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Anna Sophie Steinmeister, Metro-Str. 1, 40235 Dusseldorf, Germany (employee representative)

a g a i n s t

Dermogen Farma S.A., C/ Aragoneses Nº 15, 28108 Alcobendas, Spain (applicant), represented by RyO Rodriguez Oca S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative).

On 06/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 262 569 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 and services of European Union trade mark application No 11 889 731, namely goods in Classes 3 and 5, and services in Class 35. The opposition is based on German trade mark registrations No 2 019 406 and No 30 557 561. The opponent invoked Article 8(1)(b) EUTMR.

No 2 019 406	No 30 557 561	TIP GUMY
Earlier trade marks		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 marks on which the opposition is based, namely German trade mark registrations No 2 019 406 and No 30 557 561.

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 31/07/2013. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Germany from 31/07/2008 to 30/07/2013 inclusive.

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

Class 3:	Cleaning, polishing, scouring and abrasive preparations; soaps; cleaning agents for office machines and office furniture, cleaning agents for automatic typewriters; care abrasives (underbody protection agents) for motor vehicles; cleaning and care products for furniture.
Class 5:	Filled first aid boxes, pads with dressing materials; disinfectants, preparations for destroying vermin; fungicides, herbicides.

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 12/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/06/2016 to submit evidence of use of the earlier trade marks. On 08/06/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Promotional brochures: Annexes 1 to 15 consist of supermarket promotional brochures or leaflets in German, dated 2011, 2012 or 2013, showing various products (detergents, soap, cleaners, etc.) bearing the trade mark ‘TIP’.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated, namely advertisements, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

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.

However, even in an overall assessment of the evidence, the documents filed, namely Annexes 1 to 15, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Although the opponent is not obliged to reveal the total volume of sales or turnover figures, it must at least provide some evidence regarding the commercial volume of use, which is one of the abovementioned factors relevant for evaluating the extent of use. In its observations, the opponent indicates a minimum sales volume, which does not come from an official or independent source. This evidence consists exclusively of a table with figures that are not supported by any documents that could prove the turnover figures related to use of the marks or that a certain amount of sales were made during the relevant period; such evidence could be in the form of, for example, invoices or accounting documents, such as business accounts or annual reports, relating to the relevant goods sold under the marks. Taking into account the characteristics of the goods for which the marks are registered, the opponent should have easily been able to produce more evidence of commercial transactions. While it is true that the proprietor has a free choice as to 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 marks, at least sufficiently to demonstrate that this use is not merely internal, sporadic or token.

The evidence submitted by the opponent consists exclusively of advertisements (Annexes 1 to 15) and the Opposition Division finds it impossible to deduce from the material submitted that the opponent has seriously tried to acquire a commercial position in the relevant market for the trade marks at issue.

In the present case, the evidence, taken as a whole, does not provide sufficient indications to allow the Opposition Division, without resorting to probabilities or suppositions, to conclude whether or not there were any actual sales of the goods in question on the market or to what extent those goods have been distributed. Taken as a whole, the advertisements cannot prove the extent of distribution or the volume of sales of the relevant goods under the opponent’s marks. The mere existence of promotional brochures could, at most, make it probable or credible that the goods advertised under the earlier marks were sold or, at least, offered for sale, but it cannot prove the extent of this use. Furthermore, the opponent did not submit any information or details concerning the distribution of these promotional brochures, so it is impossible to know the extent to which the public was exposed to them.

In addition, no dated price lists, samples of products or packaging, delivery receipts, etc., were submitted in relation to the relevant goods. No turnover figures were submitted, other than the figures mentioned above, which, as explained, are not conclusive.

The opponent has not given any reason for the absence of such information or offered any explanations in this regard.

In the light of all the foregoing, the Opposition Division considers that the opponent has not provided 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 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) 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

Ana MUÑIZ RODRIGUEZ

Fabián GARCIA QUINTO

Zuzanna STOJKOWICZ

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.