OPPOSITION No B 2 673 468

Magda Rose GmbH & Co KG, Modecenterstraße 22 A4, 1030 Wien, Austria (opponent), represented by Rainer Kornfeld, Habsburgergasse 3/20, 1010 Wien, Austria (professional representative)

a g a i n s t

Iviton s.r.o., Jurkovičova 18, 08001 Prešov, Slovakia (applicant), represented by Signum, Patentová A Známková Kancelária, Hraničná 20, 040 17 Košice, Slovakia (professional representative).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 673 468 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 15 109 614, namely against some of the goods in Class 25. The opposition is based on international trade mark registration No 980 824  (figurative), designating the European Union and Austrian trade mark registration No 127 107 (figurative). The opponent invoked Article 8(1)(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.

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 10/03/016. The opponent was therefore required to prove that international trade mark registration No 980 824 and the Austrian trade mark registration No 127 107 were put to genuine use in the European Union and in Austria, respectively, from 10/03/2011 to 09/03/2016 inclusive.

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

International trade mark registration No 980 824:

Class 25:        Clothing for women and knitted goods (clothing); scarves; collar protectors; headgear for wear; belts; shoes; boots; socks; stockings; tights.

Austrian trade mark registration No 127 107:

Class 25:        Ladies clothing and knitwear (clothing).

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 09/01/2017, according to Rule 22(2) EUTMIR, the Office gave the opponent until 14/03/2017 to submit evidence of use of the earlier trade marks. On 14/03/2017, within the time limit, the opponent submitted evidence of use.

The evidence submitted by the opponent consists of:

1. several print-outs of the website www.jones-fashion.com, on which different items among others of clothing and footwear, are offered online;
2. print-outs of a page on the website www.jones-fashion.com, with information on addresses of Jones stores in Austria;
3. a print-out showing the first page of Google search results on hits of ‘jones’, where most of the shown hits direct at different sections of the website www.jones-fashion.com;
4. excerpts from two catalogues of Emporio Madonna – one of the 2015 Autumn and Winter Collection and another one – of the 2016 Spring and Summer Collection, showing a presentation of ‘Jones’ brand and a few items of clothing, presumably belonging to this brand;
5. the first page of the August 2014 issue of Harper’s Bazar Magazine and one page of presumably the same magazine, showing a set of women’s clothing and the brand ‘Jones’; and
6. two documents in German, said by the opponent to be ‘the abbreviated annual returns’ for 2014 and 2015 of the opponent, as filed with the Commercial Register.  

In order to determine if genuine use of a trade mark is proven, the Opposition Division has to make an overall assessment and take into account all the circumstances of the specific case. All the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with other documentation and information. However, even in undertaking such a global assessment of the evidence submitted by the opponent, it is clear that there is no evidence of genuine use of the earlier trade mark.

The print-outs listed in item ‘i’ above, are made on 08/03/2017 and 14/03/2017. Accordingly, they prove that on the respective dates in 2017 ‘Jones’ clothing and footwear were offered for sale on the website www.jones-fashion.com. Nothing in these print-outs indicates whether the website actually existed in the relevant period (i.e. from 10/03/2011 to 09/03/2016 inclusive) and if so, what kind of contents were available on it.  

It is true, that in the assessment of the genuine use during the relevant period, account can be taken, where appropriate, of any circumstances subsequent to it. Such circumstances may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (10/09/2008, T-325/06,CAPIO, ECLI:EU:T:2008:338, § 38 and the case-law cited). However, such evidence could be relevant only to reconfirm or assist in a better assessment of evidence showing use in the relevant period. In the case at hand, as further explained below, there is no evidence that shows or contains any indications on use of the trade marks in the relevant period in the relevant territories. Accordingly, the evidence listed in items ‘i’ above, being dated outside of the relevant period, taken alone or together with the remaining evidence, does not contain any indications of genuine use within the meaning of Article 42(2) EUTMR.  

The print-outs in item ‘ii’ above are dated 08/03/2017 and show a list of physical stores with addresses in Vienna, Asutria. In addition to the fact that the information is dated outside of the relevant period, it is to be noted that the existence of ‘Jones’ branded shops can shows use for retail services rather than the goods in question.  

The evidence under item ‘iii’ above does not show any use of the trade marks, either. These are online hits of ‘jones’ as available on 14/03/2017, i.e. outside of the relevant period. Accordingly, the above reasoning on evidence pertaining to a period outside of the relevant period is fully applicable. Moreover, the print-out only shows that the term ‘Jones’ is present on the internet, without showing any use as a trade mark of that term.

Further, one of the pieces of evidence under item ‘iv’ above, namely the catalogue of 2015, falls under the relevant period, while the other one is outside of it. However, they do not show use in any of the relevant territories, which is another criterion to be cumulatively met. The information in them appears in English and in another language, written in Chinese or another type of Asian characters, and further the address given below the name of Emporio Madonna, which catalogues seem to be the presented ones, is an address in Taiwan. Accordingly, it can be reasonably concluded that the catalogues were designated for the Taiwanese market, and not the Austrian or European Union market. Even if the latter was the case, what seems quite unlikely, nothing in the submitted pages or the remaining evidence shows that the catalogues have been used in any of the relevant markets. Accordingly, none of the submitted catalogue pages shows use of the earlier trade marks in the relevant period in any of the relevant markets.

The evidence under item ‘v’ above, even though dated within the relevant period, does not show use in the relevant territories, either. In particular, the first page of the magazine, even though containing a few Latin characters, mainly contains Chinese or another type of Asian characters. Based on this it could be reasonably concluded that the magazine is aimed at the Asian market and not Austria or the European Union as a whole. Nothing from the information available in this piece of evidence even infers that the magazine was designated for the relevant territories.

As regards the evidence in item ‘vi’ above, these are presumably parts of the annual financial statements of the opponent for the years 2014 and 2015, i.e. for part of the relevant period. This evidence is in German, i.e. a language different from the language of the proceedings. In accordance with Rule 22(6) EUTMIR, the Office may require the opposing party to submit a translation of that evidence in the language of the proceedings, within a period specified by the Office. In the case at hand, it is considered that such translations are not necessary, for the following reasons: upon a review of the evidence, the Opposition Division has not identified any use or reference in these documents to the earlier marks of the opponent or even simply to the word part of the marks ‘Jones’. Even though these are documents which are not in English language, such use or reference, if any, would have been clearly identifiable upon a review on the face of the documents. Moreover, based on the generally established standards on the content and information included in annual financial statements of companies, such information is aggregated and does not contain a break-down of the separate items per brand or similar. The review of the submitted documents shows that they contain only figures per dedicated items.

Moreover, even the source of these documents is not clear, from the statements of the opponent and the look of the documents themselves, they seem to derive from the opponent itself. Even though such evidence is not to be dismissed automatically, its probative value can only be determined by supporting documents which confirm or support the figures. In this case there is a complete absence of such additional indications.

As seen above, none of the remaining evidence pertains to the relevant period and/or any of the relevant territories. If there were other pieces of evidence considered as relevant to prove use of the earlier marks, translation of these documents might have been used to further reinforce or strengthen facts or indications, contained in such other documents. This however is not the case.

Since the submitted (parts of) annual financial statements do not contain any information or evidence on whether and if yes, how and where the marks in question have been used, even though they fall within the relevant period, they are not capable of proving genuine use in the relevant territories, taken alone or together with the remaining evidence.  

The opponent could have provided evidence on transactions made, even if transactions are purely made on the internet there are tangible means by which to provide such information. Further, if it is the case that the stores listed in the print-outs submitted by the opponent existed during the whole or part of the relevant period, these stores should be able to demonstrate certain volumes of sales and information in this respect could have been submitted to indicate or even prove genuine use of the earlier right. Information on advertising but in the relevant territories, such as in magazines, online media, etc., if any, could have also been used to support that the earlier mark has been genuinely used. Certainly, there are other types of evidence, which either alone or together with other pieces of evidence could be relevant when proving genuine use of a mark, among others brand awareness surveys, documents showing incurred expenses for brand advertisement, written statements, etc.

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 General Court has further specified that 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 (02/02/2016, T-171/13 MOTOBI B PESARO, ECLI:EU:T:2016:54, § 75 and the case-law cited therein).

In view of the above findings, the evidence taken as a whole are not sufficient to conclude that any of the trade marks has been genuinely used in the relevant territories within the relevant period.

Accordingly, 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 territories 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

Vanessa PAGE

Teodora TSENOVA-PETROVA

Vita VRONECKAITE

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.