OPPOSITION DIVISION
OPPOSITION No B 2 748 427
Sport Video, S.A., Calle San Salvador, 7, 08950 Esplugues de Llobregat
(Barcelona), Spain (opponent), represented by Barroso Hernández, Calvet 5, 2º 2ª,
08021 Barcelona, Spain (professional representative)
a g a i n s t
PL-Secur Vermietungs- und Handelsgesellschaft mbH, Wehlistraße 29, 1200
Wien, Austria (applicant), represented by Rohregger Scheibner Bachmann
Rechtsanwälte GmbH, Rotenturmstr. 17/2.OG, 1010 Vienna, Austria (professional
representative).
On 12/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 748 427 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services in Classes 9, 37
and 45 of European Union trade mark application No 14 751 432 .
The opposition is based on European Union trade mark registration No 2 651 859
‘ZEUS’ and Spanish trade mark registration No 1 329 133 ‘ZEUS’. The opponent
invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 748 427 page: 2 of 6
PROOF OF USE
In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the
opponent must furnish proof that, during the five-year period preceding the date of
filing or, where applicable, the date of priority 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 mark registration
No 2 651 859 ‘ZEUS’ and Spanish trade mark registration No 1 329 133 ‘ZEUS’.
The date of filing of the contested application is 02/11/2015. 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 and Spain from 02/11/2010 to
01/11/2015 inclusive.
The request was submitted in due time and is admissible given that the earlier trade
marks were registered more than five years prior to the relevant date mentioned
above.
Furthermore, the evidence must show use of the trade marks for the goods on which
the opposition is based, namely the following:
European Union trade mark registration No 2 651 859:
Class 9: Photographic and optical apparatus and instruments.
Spanish trade mark registration No 1 329 133:
Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic,
optical, weighing, measuring, signaling, control, assistance (Life-saving)
and teaching apparatus and instruments; Recording, transmission, sound
and image reproduction apparatus; Magnetic data carriers, recording
discs; data processing equipment; telescopes, binoculars, microscopes
and magnifying glasses.
According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), 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 or services in
respect of which it is registered and on which the opposition is based.
On 25/05/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2)
EUTMIR, in force before 01/10/2017), the Office gave the opponent until 30/07/2017
to submit evidence of use of the earlier trade marks. On 25/07/2017, within the time
limit, the opponent submitted evidence of use.
Decision on Opposition No B 2 748 427 page: 3 of 6
The evidence to be taken into account is the following:
DOCUMENT Nº 2: Main price list catalogue of the company Sport-Video, S.A. dated
March 1987 for goods bearing the sign ZEUS ( ), showing the
prices (in Spanish pesetas) of goods such as: terrestrial and astronomical
telescopes, binoculars, fast-focus and high quality binoculars and microscopes.
DOCUMENT Nº 3: Sport Video’s main price list dated February 2015, which includes
goods bearing among others, the trade mark ZEUS ( ), in relation
to: Binoculars, Astronomical and Terrestrial Telescopes, Accessories (Eyepieces,
washers, inverting lenses, camera adapters), Microscopes, riflescopes, Compasses,
lithium batteries, chargers lithium batteries, Single Use Cameras, battery chargers,
rechargeable batteries, Alkaline Batteries, Digital cameras, Compact cameras, digital
photo frames, DVD, speakers.
DOCUMENT Nº 4: Invoices of the year 2010 issued by the companies ‘casa Julia’,
‘Foto Samar, S.A’, ‘NIVELL 10’ and ‘Foto Artus’ to Sport Video, S.A. for shared
advertisements publishing space in press, namely the ‘Diario de Mallorca’ (EUR
1200.00, EUR 1481.60); for advertisement flyers showing the goods bearing the
mark ZEUS as outlined in the description of the previous document (EUR 191,89,
EUR 353,41 and EUR 211.00); Collaboration in exhibition (EUR 650.00) and for
advertisements publishing (EUR 350.00). Document Nº 4 contains also other
invoices between different companies, not issued by or to the opponent.
DOCUMENTS Nº 5-11: Invoices of the years 2011-2016 issued by the same
companies as in the previous document and other companies such as ‘multiopticas’,
‘Foto Roma, S.L.’ to ‘Sport Video, S.A’ for advertising purposes and ‘help with
advertising’. The amounts in the invoices are comparable to the ones outlined in the
description of the previous document, namely few hundreds of Euro.
DOCUMENT Nº 12: Winter catalogue 1991/1992 of the store Salvador Serra in
Barcelona, including advertisements of binoculars and telescopes bearing the sign or
referred to as ZEUS.
DOCUMENT Nº 13: Catalogue SPORT VIDEO PROFESSIONAL that shows
advertisements of various goods such as binoculars, microscopes, Astronomical and
terrestrial telescopes, Chargers and batteries, Specific chargers, Lithium batteries
and batteries for cameras of the trademark ZEUS. The document is undated.
DOCUMENT Nº 14: Instructions manual as to how to observe space objects with
astronomical telescopes under trade mark ZEUS. The document is undated.
DOCUMENT Nº 15: Diverse catalogues of trade mark ZEUS, showing goods in class
9 such as: binoculars, magnifiers, microscopes, approach filters, ultraviolet filters and
polarizers, DVD players, astronomical and terrestrial telescopes. The catalogues are
undated.
Decision on Opposition No B 2 748 427 page: 4 of 6
DOCUMENT Nº 16: Photograph of the stand of SPORT-VIDEO, S.A at the Feria
Sonimag of March 1989 (date indicated by the opponent) displaying the trade marks
‘ZEUS’, ‘ELMO’ and ‘TOKURA’.
DOCUMENT Nº 17: Advertising calendars of years 2010, 2011, 2014, 2015, 2016
and 2017, describing and showing products bearing the sign ‘ZEUS’.
DOCUMENT Nº 18: Posters of the Memorial Internacional de Marcha atlética Guerau
García, of the years 1996, 1997, 2005 and 1998, confirming that ZEUS has been one
of the sponsor brands.
DOCUMENT Nº 19: Pamphlet of the Memorial Guerau García, of the years 1999,
1998 and 1997, evidencing that ZEUS has been one of the sponsor brands.
DOCUMENT Nº 20: Extract of the home page of SPORT VIDEO, S.A., available at
http://www.spovi.es/. According to the opponent this web site was created in 2005,
and in 2013 went ‘under a deep actualization’, offering a wide catalogue of products
to which the trade mark ZEUS is affixed. The screenshot was taken on 05/07/2017.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the
request for proof of use), 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 or
services in respect of which it is registered and on which the opposition is based.
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.
Assessment of the evidence with regard to the relevant period
As already established above the opponent was required to prove that the trade
marks on which the opposition is based were put to genuine use in the European
Union and Spain from 02/11/2010 to 01/11/2015 inclusive.
A significant part of the submitted documents originate from periods which are by far
before (Documents Nos. 2, 12, 16, 18 and 19) or after the relevant period (Document
No 20). Another part of the documents (Documents 13, 14 and 15) are undated.
Judging by the state of art of the goods and the design of the products including the
design of the catalogues and the typescripts used, they all seem to refer rather to a
period much before the relevant period than to the relevant period for proving use of
the earlier trade marks.
Evidence referring to use made outside the relevant timeframe is disregarded unless
it contains conclusive indirect proof that the mark must have been put to genuine use
during the relevant period of time as well. Events subsequent to the relevant time
period may make it possible to confirm or better assess the extent to which the
earlier mark was used during the relevant time period and the real intentions of the
EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer,
EU:C:2004:50).
In the present case, the evidence referring to use outside the relevant period cannot
be considered as confirming use of the opponent’s mark within the relevant period.
This is because it relates to periods/moments in time which are much before and
after the relevant period.
Decision on Opposition No B 2 748 427 page: 5 of 6
All in all, the evidence dated within the relevant period is scarce. It consists of a price
list (Document No 3), invoices issued to the opponent for publishing advertising
materials (Documents Nos 4-11) and the advertising calendars (Document No 17).
Extent of use
A yearly advertisement calendar, the price list and few advertisements published in
unknown or in local media (‘Diario de Mallorca’ magazine) cannot be regarded as
direct indications of the extent of use of the earlier mark. Moreover, the scale of
advertising proven by the opponent is very low both in terms of coverage and
investment. The opponent did not present a single invoice for an actual sale of a
good bearing the earlier trade mark(s).
The entire set of evidence does not contain any direct reference to actual sales
and/or turnover figures. In the absence of a single invoice, annual audit or financial
reports or at least an affidavit, it is impossible for the Opposition Division to draw a
conclusion regarding the extent of use of the earlier marks in terms of commercial
volume, duration and frequency. It is particularly difficult to opine on the latter two
aspects bearing in mind what has been stated above in relation to the lack of solid
evidence relating to the relevant period.
Therefore, the Opposition Division considers that the opponent has not provided
sufficient indications concerning the extent of use of the earlier mark.
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).
Article 47 EUTMR requires proof of genuine use of the earlier mark. 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 (18/01/2011, T-382/08, Vogue, EU:T:2011:9, §
22).
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.
Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR
and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).
Decision on Opposition No B 2 748 427 page: 6 of 6
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Judit NÉMETH Plamen IVANOV André Gerd Günther
BOSSE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.