MOCLOR | Decision 2559220 – Brillux GmbH & Co. KG v. PINTURAS MONTO, S.A.

013000000 - 013999999, 013759436, 2017, 22, B-company, Brillux GmbH & Co. KG, Date, Decision Type, Involved Parties, M-trademark, MOCLOR, OPPOSITION, P-company, PINTURAS MONTO, S.A., September-2017, Trademark, Trademark number

OPPOSITION No B 2 559 220

Brillux GmbH & Co. KG, Weseler Str. 401, 48163 Münster, Germany (opponent), represented by Cohausz & Florack Patent- Und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, (professional representative)

a g a i n s t

Pinturas Monto S.A., Carretera de la Base Militar s/n 46169 Marines (Valencia), Spain (applicant), represented by Demarks&Law, Cirilo Amorós 57, 46004 Valencia, Spain (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 559 220 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 13 759 436. The opposition is based on European Union trade mark registration No 5 188 041. The opponent invoked Article 8(1)(b)EUTMR.

MyColour

MOCLOR

Earlier trade mark

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 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 registration No 5 188 041.

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 29/04/2015. 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 29/04/2010 to 28/04/2015 inclusive.

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

Class 2:        Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; primers being paints; wood preservatives; colorants; mordants, in particular wood mordants; thinners for all the aforesaid goods; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; mastics for smoothing and repairing rough sub-surfaces; glass cement, coating preparations of plastic being a paste or liquid for surfaces of wood and metal for the protection against damp; wallpaper removing preparations; spreadable mackle in the form of paint preparations; turpentine and other organic solvents being paint thinners.

Class 3:        Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations for painting and plastering; paintstripper.

Class 19:        Building materials (non-metallic), included in class 19; façade mortar; coatings (building materials); plaster for facing; smooth plaster; ready mix mortars; plaster filling agents; building lime; screed; fillers and primers (included in class 19) for building; asphalt, pitch and bitumen.

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 25/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/09/2016 to submit evidence of use of the earlier trade mark. That time limit was extended until 30/11/2016 on 03/10/2016. On 30/11/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

  • Annex 1: background information on the mark, which is not shown, dated 05/07/2016 (outside the relevant period). There is no reference to the relevant territory.

  • Annex 2: a picture of the company’s stand during a fair in 2005, which is outside the relevant period. The picture does not display the mark, nor has the opponent made clear where the fair took place.

  • Annex 3: pictures of packaging of paint bearing the earlier mark. Two of the three pictures are dated outside the relevant period (2005 and 2008).

  • Annex 4: three pictures of paint containers displayed on shelves. The pictures are dated outside the relevant period (2005 and 2008). It is not possible from the evidence to infer where the palettes were displayed or distributed.

  • Annex 5: three pictures showing palettes and displays of products in stores located, according to the opponent, in Germany. The pictures are dated outside the relevant period, namely between February and June 2016.

  • Annex 6: extracts of catalogues in 2005 (outside the relevant period), 2012, 2013, 2014 and 2015. The evidence does not contain any indication of the territory or extent of distribution of the catalogues.

  • Annex 7: a printout, dated 01/07/2016 (outside the relevant period), of a web page displaying paint containers bearing 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).

In accordance with 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 and services.

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. 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.

At this point, the Opposition Division considers it appropriate to begin the assessment of the evidence with the criterion of time of use.

If the applicant so requests, in accordance with Article 42(2) EUTMR, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested mark, the earlier trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered.

The Opposition Division observes that, as was explained above, the great majority of the evidence submitted did not refer to the relevant period (i.e. from 29/04/2010 to 28/04/2015 inclusive), that is, the entirety of the documentation except one of the pictures of packaging (Annex 4) and some extracts of catalogues in which the mark appears (Annex 6).

In any case, the evidence, even when assessed as a whole, is not sufficient to demonstrate the extent of use of the mark.

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 Opposition Division finds it impossible to deduce from the material submitted that the opponent has seriously tried to use the trade mark at issue in the relevant market.

Although the opponent is not obliged to reveal the total volume of sales or turnover figures, it must provide at least some evidence of the commercial volume of use, which is one of the abovementioned factors relevant for evaluating the extent of use. The opponent did not submit any accounting documents or any documents showing the turnover related to the goods bearing the mark, and it did not demonstrate that a certain amount of sales occurred during the relevant period by submitting, for example, invoices, turnover and sales figures or some accounting documents, such as business accounts or annual reports, relating to the relevant goods bearing the mark. Taking into account the characteristics of the goods for which the mark is 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 mark, at least to dispel any possible doubt that this use might be merely internal, sporadic or token. 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 the goods were distributed. Taking the documents as a whole, they cannot prove the extent of any distribution or the volume of sales for the goods protected by the mark.

The mere existence of catalogues and the one picture of packaging displaying the earlier mark, at most, make it probable or credible that the goods displayed under the earlier mark (with reference to paints only) were sold or, at least, offered for sale, but this cannot be proved without any evidence regarding the extent of use of these goods. For instance, there is no indication of the scope of distribution of the catalogues and the evidence is of a circumstantial nature. Indirect evidence cannot typically be conclusive in an assessment of the extent of use of a trade mark, and it should be assessed together with the remaining documentation, except in certain circumstances. In the present case, the remaining evidence is outside the relevant period and, in any case, not convincing according to the criteria set out by the law and the case-law on the evaluation of the extent of use mentioned above.

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

Consequently, 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

Francesca CANGERI SERRANO

Orsola LAMBERTI

Michele M.

BENEDETTI-ALOISI

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.

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