OPPOSITION No B 2 493 545
Gestora de Marcas de Óptica, S.L., José Echegaray, 7, Parque Empresarial Pinar de las Rozas, E-28232 Las Rozas (Madrid) Spain, (opponent), represented by Legismark, Avda. Libertad, 10, 2ºB, 30009 Murcia Spain, (professional representative)
a g a i n s t
Landauer Inc., 2 Science Road Glenwood Illinois 60425-1586 United States of America, (applicant) represented by Cabinet Lavoix, 2 place d' Estienne d'Orves, 75009 Paris, France, (professional representative).
On 11/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 493 545 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 of European Union trade mark application No 13 435 862. The opposition is based on Spanish trade mark registration No 2 706 612 and Spanish trade mark registration No 2 875 664 .
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 namely Spanish registration number 2706612 and Spanish registration number 2875664 .
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 15/12/2014. The opponent was therefore required to prove that the trade marks on which the opposition are based were put to genuine use in Spain from 15/12/2009 to 14/12/2014 inclusive.
Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:
Spanish registration number 2706612
Class 9: Scientific, measuring, checking (supervision) apparatus and instruments, industrial or scientific optical apparatus and instruments, optical goods, microscopes, binoculars, spectacles, sunglasses, goggles for sports, spectacle frames, spectacle glasses, lenses for sunglasses, lenses for goggles for sports, lenses for varifocal spectacles, lenses for anti-reflective spectacles, lenses for monofocal spectacles, lenses for multifocal spectacles, lenses for tinted spectacles, lenses for photosensitive spectacles, lenses for treated spectacles, contact lenses, contact lenses, spectacle cases, telescopes, magnifying glasses, thermometers (not for medical purposes), barometers, hydrometers.
Spanish registration number 2875664
Class 9: Optical goods, spectacles, spectacle frames, spectacle cases, spectacle glasses, multifocal lenses (optical), lenses and contact lenses, cases for contact lenses.
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 24/11/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 29/01/2016 to submit evidence of use of the earlier trade mark. On 29/01/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
ANNEX I
SALES INVOICES:
23 invoices from GESTORA DE MARCAS DE ÓPTICA, S.L.(the opponent) billing Optical stores for publicity material of “VISION&CO” to be used as part of their corporate image:
These invoices are dated between 31/01/2009 and 30/12/2014. The top of the invoices contain the opponent’s trade mark . The products billed in the invoices are store inventory articles, stationery and publicity and merchandizing material. There is no indication of the sale of goods in Class 9, such as optical and eye correction or eyewear goods, in any of these invoices.
ANNEX II
INVOICES FROM SUPPLIERS:
SUPPLIERS SUCH AS;
12 invoices from several suppliers (for e.g., Marketing agencies, Design and Print Shops, Commercial Store decorators, Uniforms suppliers) billing GESTORA DE MARCAS DE ÓPTICA, S.L (the opponent) for the purchase of material to be used in advertising campaigns for “VISION&CO”. These invoices are dated between 30/06/2009 and 06/082014.
2009/06/30 Invoice A9000280 CrespoGomar (Marketing Agency)
2009/09/16 Invoice 535 Rolanca (Print Shop)
2010/01/04 Invoice 02623 DIN Impresiones (Graphic Arts)
2010/03/01 Invoice A/210044 Pleno Marketing y Comunicación
2010/06/07 Invoice 10/1.646 Tedisdeco
2012/02/16 Invoice 09526 DIN Impresiones (Graphic Arts)
2012/03/02 Invoice A/12057 David Sánchez-Beato Sierra-Uniforms
2012/04/24 Invoice 42 Pintura Industrial Hnos. Zapata
2013/08/30 Invoice 14596 DIN Impresiones (Graphic Arts)
2013/11/05 Invoice A2013783 Digital Gold
2014/04/01 Invoice A2140219 Digital Gold
2014/08/06 Invoice 17136 DIN Impresiones (Graphic Arts)
ANNEX III
Publicity: (7 pages in total)
These pages contain pictures of corrective glasses, eyewear and contact lenses and packaging material. Most of them contain the trademark . Taking into consideration that the material is in the Spanish language, it can be assumed that the relevant territory is Spain. Two of the pictures, pages 2 and 3, contain dates, namely 30/08/2012 and 30/09/2012. The rest of the pictures are undated.
ANNEX IV
INTERNET: (15 pages)
The internet extracts contained in pages 2 to 21 inclusive are dated either 13/11/2006 or just the year 2006, which is outside the relevant period from 15/12/2009 to 15/12/2014 inclusive. Therefore, this piece of evidence cannot be taken into consideration.
The copy of the publication “expansion” of 23/01/2014 does not show any of the opponent’s marks. The rest of the Internet publications provided show the sign and refer to a chain of opticians from 29/01/2014 where glasses and contact lenses are provided.
ANNEX V
COMPANY MAGAZINE: (37 pages in total)
Copy of the “Cione” (group of opticians) company magazine of 2014. Page 4 of the magazine contains a picture of the trademark .
ANNEX VI
Vision&co – Associate Stores: ()
This annex contains 8 pages in total. The first document is a letter in Spanish addressed to the company’s clients providing them with a voucher for using before the 31/12/2008.The header of the letter contains the opponent’s trademark . The rest consist of pictures of the shops Vision&Co and some advertising material. All of them are undated.
As an introductory remark, it is to be emphasised that, in accordance with Rule 22(3) EUTMIR, the indications and evidence required in order 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. These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43).
The documents provided show that the place of use is ‘Spain’. This can be inferred from the language of the documents being Spanish and some addresses in ‘Spain’. Therefore, the evidence relates to the relevant territory.
Most of the invoices submitted are dated within the relevant period of time. However, neither of them contains any reference to the opponent’s relevant goods or information on the turnover and sales figures to show the commercial volume of the said goods, but only to advertising material.
The documents submitted, namely the invoices, magazines and advertising pictures, do not provide the Opposition Division with sufficient information concerning the commercial volume of use in relation to the relevant goods.
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 purpose of a company, trade or shop name is not, of itself, 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 carried on. 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 carried on, such use cannot be considered ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive’, i.e. it cannot be considered to be used as a trade mark (11/09/2007, C-17/06, Céline, EU:C:2007:497, and 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156).
In the present case the evidence shows use of the sign as a shop name without any clear reference to the specific goods of the earlier Spanish registrations. For instance no yearly sales figures were provided on goods sold under the earlier marks. The invoices refer only to shop decoration materials and promotional materials. There is no unequivocally clear data on market share of any of the earlier goods in direct link with the representation of the earlier marks. The publications are of promotional nature and refer to the retail organisation as such but do not refer to the applied for goods in direct connection with any of the two earlier marks. The Opposition Division considers that the evidence does not show use of the earlier marks in relation to the relevant goods and, consequently, that the opponent has not provided sufficient indications concerning the nature of the use of the earlier marks.
Furthermore, apart from the undated sample letter addressed to clients, there is no evidence that shows how the advertising material submitted has been actually distributed or how it has reached the public for it to get acquainted with the information contained therein. Indeed, the undated photos of the goods, the internet extracts or the magazine are not convincing proof that the respective goods have been effectively commercialised within the relevant market. They neither contain any reference regarding commercial transactions nor indicate when or to what extent the earlier marks have come to the attention of the public.
Similarly, concerning the extracts of the opponent’s advertising and promotional materials, the mere existence of the promotional material neither establishes that they were distributed to a potential clientele, the extent of any distribution, nor the number of sales made of goods protected by the earlier marks. Indeed, the opponent has failed to provide any further information and evidence which would allow the Opposition Division to make a realistic assessment of the market presence of the earlier marks, such as for example the amount of advertising material distributed, which could have given more conclusive weight to this evidence.
Since the above information can neither be deducted from the advertising, promotional materials, from the contractual or corporate documents or any other pieces of evidence submitted by the opponent, the Opposition Division cannot asses if the minimum threshold for a finding of “genuine” use has been passed.
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 marks were 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
|
Patricia LÓPEZ FZ. DE CORRES
|
Steven STAM |
Liliya YORDANOVA |
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.