OPPOSITION No B 2 597 147

Scoop & Spoon GmbH, Breitegasse 4, 1070 Wien, Austria (opponent), represented by Piaty Müller-Mezin Schoeller, Glacisstr. 27/II, 8010 Graz, Austria (professional representative)

a g a i n s t

Daniel Tighe, 324 Blackburn Road, Darwen, Lancashire BB3 0AA, United Kingdom (applicant), represented by Wilson Gunn, Charles House, 148-9 Great Charles Street, Birmingham B3 3HT, United Kingdom (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 597 147 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 14 324 792 in Classes 9, 35, 38, 42 and 45. The opposition is based on European Union trade mark registration No 4 809 521. The opponent invoked Article 8(1)(b) EUTMR.

SCOOP	SOCIAL SCOOP
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, European Union trade mark registration No 4 809 521.

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 24/07/2015. 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 24/07/2010 to 23/07/2015 inclusive.

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

Class 35:        Advertising; business management services; business administration; office functions; updating of advertising material; marketing; publication of publicity texts; advertising agency services; public relations; business management and organization consultancy services; commercial information services; sales promotion (for others); vending machine rental services; advertising for mobile telephones; collating of data in computer databases and online advertising on computer networks; advertising on mobile radio telephone networks; electronic advertising agency services.

Class 42:        Creation of data-processing programs; research and development; website development services; computer animation; design and maintenance of websites for third parties; computer software design.

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 10/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/10/2016 to submit evidence of use of the earlier trade mark. On 10/10/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Enclosure 3: copy of an internal press release about an award received by Scoop and Spoon for the campaign ‘Peugeot 308 CC’, presented at the Media Awards in Austria. The document is in German and is translated into English. It is dated 26/05/2010.

• Enclosure 4: screenshot from the opponent’s website regarding various activities of Scoop and Spoon: the creation of international marketing campaigns, the organisation of sales meetings, the 2012 trade fair solution and the creation of an app that provides event information.

• Enclosure 5: printout from www.scoopforpublishing.com providing information about the magazine publishing app . This is an undated document.

• Enclosure 6: printout of the company’s presentation summary showing its trade name ‘scoop’ and describing its various areas of activity in relation to advertising campaigns for various clients; the information is in German and the documents are undated.

• Enclosure 7: excerpts from press releases providing information about the company’s publicity campaign for Peugeot and the company’s participation in the presentation of the German magazine brand eins, and internal press releases about the company (SCOOP and SPOON), with some references to ‘SCOOP’. The documents are dated 2008, 2009 and 2010.

• Enclosures 8 and 9: printouts from the company’s ‘SCOOP and SPOON’ website giving a detailed description of the services provided and the projects undertaken for national and international customers. These are undated documents.

• Enclosure 10: excerpts from contracts with clients for several projects, signed by the company ‘Scoop and Spoon. Scoop next level marketing GmbH’; the documents are dated 2006/2007, 2012 and 2013. The services referred to in the contracts are strategy consulting, marketing, market research, public relations, branding, advertising and publicity, and app and website development services.

• Enclosure 11: copies of nine invoices in German, issued by ‘Scoop next level marketing GmbH’ and ‘Scoop and Spoon’, for services such as app development, product launching, catalogues edition, social media strategy consulting and support, and the creation of customers’ newsletters, dated 2010, 2011, 2012 and 2013; the amounts and customers’ data have been redacted. Some of the invoices show the trade name ‘scoop’ at the bottom.

• Enclosure 12: copies of a supermarket leaflet created for the Jello Fashion Supermarket campaign in spring 2011, in German; the trade mark is not mentioned in the leaflet.

• Enclosure 13: excerpts from materials for the 23rd International Conference AVL ‘Engine & Environment’, dated 08-09/09/2011, which took place in Graz, Austria. The trade name ‘scoop’ appears on the documents.

• Enclosure 14: information about awards:

• The company SCOOP & SPOON was nominated in the top 10 for three categories at the 2014 Webby awards for its app design.
• The company SCOOP & SPOON was nominated as a finalist in the 2014 Dadi Awards (the Drum Awards for the Digital Industries: the UK’s premier digital awards).
• The company SCOOP & SPOON won the 2013 Lovie Award and People’s Lovie Award in the ‘Mobile Apps Entertainment’ category.
• Copies of press articles stating that SCOOP & SPOON is the company in charge of AVL and AVL Cultural Foundation marketing activities. The articles are dated 2008 and 2009.
• Copy of an internal press release about the creation of the company ‘Scoop next level marketing’; the document is undated.
• Printouts from the company’s press website containing information about two advertising campaigns conducted by Scoop next level marketing in 2007 and 2008.
• Copy of an excerpt from a press release stating that SCOOP & SPOON was in the finals of the World Luxury Awards for the best creation of luxury advertising and communication campaigns. The document is dated 2014.

• Enclosure 15: copy of an advertisement that formed part of the ‘Knilli’ campaign, containing a photo on which the name ‘Knilli’ is shown. The copy is undated.

• Enclosure 16: excerpts from an offer to a German customer, from SCOOP & SPOON, for software development, based on the existing app ‘SCOOP for Publishing’. The document is in German and is translated into English. It is dated 2014.

• Enclosure 17: printout from the SCOOP website providing information about the company’s ‘Performance day 2015’ regarding ‘SCOOPs goods & services’.

• Enclosure 18: documents, from an unknown source, providing information about the functionalities and use of SCOOP’s publishing app. The documents are undated.

• Enclosure 19: documents, in German, regarding a demonstration of SCOOP’s publishing app in 2013.

• Enclosure 20: quote to a customer regarding the delivery of the SCOOP publishing app, dated 2015, in English.

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers, as well as that the trade mark is used as registered or in a form differing in elements which do not alter its distinctive character in the sense of Article 15(1)(a) EUTMR.

In some of the evidence filed in the present case, ‘SCOOP’ appears not as a trade mark but, rather, as part of the company name:

• Enclosure 3: copy of an internal press release about an award received by Scoop and Spoon.
• Enclosure 4: screenshot from the opponent’s website regarding various activities of Scoop and Spoon.
• Enclosures 8 and 9: printouts from the company’s ‘SCOOP and SPOON’ website giving a detailed description of the services provided and the projects undertaken for national and international customers. These are undated documents.
• Enclosure 10: excerpts from contracts with clients for several projects, signed by the company ‘Scoop and Spoon. Scoop next level marketing GmbH’.
• Enclosure 11: copies of nine invoices in German, issued by ‘Scoop next level marketing GmbH’ and ‘Scoop and Spoon’.
• Enclosure 12: copies of a supermarket leaflet created for the Jello Fashion Supermarket campaign.
• Enclosure 14: information about awards.
• Enclosure 16: excerpts from an offer to a German customer, from SCOOP & SPOON, for software development.

Some of the abovementioned documents, namely the invoices, were issued in the name of the company SCOOP & SPOON and do not relate to services provided under the trade mark ‘SPOON’. The press articles regarding activities and awards also relate to the company SCOOP & SPOON, even though they do sometimes refer to the company only as ‘Scoop’. The printouts from the company website that give a description of the services provided and the projects undertaken for customers also show the company name SCOOP & SPOON. The excerpts from contracts with clients were issued in the company’s name and they do not mention services under the trade mark ‘scoop’. Even if it could be argued that the sign ‘SCOOP & SPOON’ was used in some of these documents not only as a company name but also as a trade mark, this would not constitute use of the earlier mark as registered, given that the addition of an ampersand and a second verbal element would clearly alter the distinctive character of the mark as registered.

The use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T-209/09, Alder Capital, EU:T:2011:169, § 55-56). In general, this is not the case when the business name is merely used as a shop sign (except when proving use for retail services), or appears on the back of a catalogue or as an incidental indication on a label (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 47). In principle, the use of the sign as a company name or trade name, is not, of itself, intended to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being run. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being run, such use cannot be considered as being ‘in relation to goods or services’ (11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21; 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156, § 31-32).

The use of a business, company or trade name can be regarded as use ‘in relation to goods’ where:

(a) a party affixes the sign constituting its company name, trade name or shop name to the goods or;

(b) even though the sign is not affixed, that party uses that sign in such a way that a link is established between the company, trade or shop name and the goods or services (11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21-23).

Provided that either of these two conditions is met, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 38).

Therefore the evidence that includes references to ‘SCOOP and SPOON’ (or variations thereof) is considered not to show use of the earlier sign as registered.

The documents filed that contain the trade mark ‘scoop’ are:

1. Internal printouts from the company’s website describing its ‘scoop’ publishing application and an offer to a customer for this application; no further information is given (Enclosures 5, 16, 18, 19 and 20).
2. A leaflet for a conference in which the trade mark appears (Enclosure 13).
3. The company’s internal event presentation regarding ‘SCOOP goods & services’ (Enclosure 17) and a printout of the company’s presentation summary showing its name as ‘scoop’ (Enclosure 6).
4. Invoices (Enclosure 11) that include the name ‘scoop’ at the bottom of the page, without any further indication connecting it to the provision of services.
5. Nine contracts with clients (Enclosure 10); the name ‘scoop’ appears in one of them.
6. Documents about awards (Enclosure 14) that, as explained above, refer to the company SCOOP & SPOON and sometimes refer to this company simply as ‘Scoop’.

The evidence that includes references to the trade mark ‘scoop’ consists either of internal documents or external documents (the latter being one contract, a few invoices without sales volume data, a leaflet for a conference and some press articles that mainly mention the company), which is not enough to demonstrate the extent of use of the mark in the absence of any other evidence corroborating such documents, such as catalogues distributed in the market to end consumers, external market research or publicity for the services, or turnover statements from external sources, for instance. The items of evidence in which the name ‘Scoop’ appears at the bottom of the page do not permit any link to be established between the mark and the goods and/or services. Therefore, the evidence filed does not provide the Opposition Division with sufficient information concerning the extent of the use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

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 territories 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

Sandra KASPERIŪNAITĖ

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Dorothée SCHLIEPHAKE

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.