+x | Decision 2542358 – Donat Brandt v. MGLM Holding B.V.

013000000 - 013999999, 013755558, 18, 2017, B-company, Brandt, Donat, Date, Decision Type, Involved Parties, M-company, MGLM Holding B.V., OPPOSITION, R-company, Riße, Klaus, September-2017, Trademark, Trademark number, x, X-trademark

OPPOSITION No B 2 542 358

Plus X Award Brandt + Riße UG (haftungsbeschränkt) & Co. KG,
Montanusstraße 62, 41515 Grevenbroich, Germany (opponent), represented by Sprenger Rechtsanwaltskanzlei – Dominik Sprenger -, Kurfürstenwall 19,
45657 Recklinghausen, Germany (professional representative)

a g a i n s t

MGLM Holding B.V., Van der Veerelaan 16, 1181RB Amstelveen, Netherlands (applicant), represented by Law Fathers Services B.V., Keizersgracht 620, 1017ER Amsterdam, Netherlands (professional representative).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 542 358 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 (in Classes 9, 25 and 41) of European Union trade mark application No 13 755 558 (figurative mark:
“http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=116790296&key=5aeba7100a8408034f25445aed86f2b2”). The opposition is based on European Union trade mark registration No 4 150 272 (figurative mark: “http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=38687089&key=5aeba7100a8408034f25445aed86f2b2”). The opponent invoked Article 8(1)(b) and 8(5) 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 mark on which the opposition is based, namely European Union trade mark No 4 150 272.

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 (04/07/2006).

The contested application was published on 23/03/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 23/03/2010 to 22/03/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely for the following goods and services in Classes 16, 35, 41 and 42:

Class 16: Paper, cardboard and goods made from these materials (included in class 16); printed matter; in particular test magazines, books, newspapers, brochures and consumer information; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (included in class 16); printers' type; printing blocks.

Class 35: Advertising, marketing, public relations; public relations; planning, organisation, arranging and conducting of trade fairs, congresses, conferences, exhibitions, presentations, competitions, award ceremonies and award programmes for commercial and advertising purposes; collating of data in databases; systematic ordering of data in computer databases; advertising; organisational business consultancy; entrepreneur and consumer consultancy with regard to the value and quality of goods and services.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; planning, organisation, arranging and conducting of trade fairs, congresses, conferences, exhibitions, presentations, competitions, award ceremonies and award programmes for cultural, instructional or entertainment purposes, events and conducting of seminars; publication of test magazines, newspapers, books and brochures; publication of product tests and service trials.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis, design and research; design and development of computer hardware and software; drawing up quality standards and conducting quality control for goods and services; arranging and evaluation of product tests and service trials; conducting quality tests; creating software for databases; research, research in databases, including on the Internet; technical consultancy.

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 18/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 18/10/2016 to submit evidence of use of the earlier trade mark. This time limit was extended until 18/12/2016 (see the Office´s letter of 14/10/2016). On 15/12/2016 and 19/12/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following (Item 1 cannot be taken into account, since copies of the evidence as required by Rule 79a EUTMIR were not submitted (see the Office’s letter of 10/01/2017)):

  • Two pages, the homepage and the imprint page, from the website plusxaward.de, dated 15/12/2016 (Item 2).
  • Affidavit by Mr Donat Brandt, managing director of the opponent, dated 19/12/2016, indicating the annual turnover for 2010 to 2015 generated by the Plus X Award (Item 3).
  • Information on products given the Plus X Award during 2014-2016 (Item 4).
  • List of winners of the Plus X Award (Item 5).
  • Invoices dated during 2010-2015 for participation in the Plus X Award competition (Item 6a-f).
  • Photos of the annual Plus X Award ceremonies, 2010-2015 (Item 7a-f).

As far as the affidavit (Item 3) is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Taking into account the above documents, it has to be considered that Items 2, 4, 5 and 7 do not prove a sufficient extent of use of the earlier trade mark. Therefore, they are not very meaningful. In none of the invoices (Item 6) is the earlier trade mark depicted. Therefore, the invoices cannot prove the use of the earlier trade mark. Documents that could prove use of the mark, such as advertisements or extracts from tax accounts and/or commercial balance sheets, have not been submitted. Other relevant documents, such as declarations by professional associations, evidence of market share and surveys, are also absent from the evidence. Furthermore, the documents listed above have no relationship to the relevant goods and services, which is an essential element for proving the use of the earlier trade mark. The documents submitted are, at best, suitable for use as supplementary material to other evidence.

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) 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

Swetlana BRAUN

Peter QUAY

Claudia MARTINI

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.

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