OPPOSITION No B 2 613 951

Angel Fernández Ovejero, Cardenal Cisneros, 84, 28010 Madrid, Spain (opponent), represented by J. Lahidalga, Calle Arturo Soria, 243 Dpl. Esc. 4-1º Izd., 28033 Madrid, Spain (professional representative)

a g a i n s t

Schiesser Marken GmbH, Schützenstraße 18, 78315 Radolfzell, Germany (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 613 951 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 14 029 921 in Class 18. The opposition is based on European Union trade mark registration No 2 947 901 and Spanish trade mark No 2 471 330. The opponent invoked Article 8(1)(a) and (b) EUTMR.

ANGEL SCHLESSER	SCHIESSER
Earlier trade marks	Contested sign

SUBSTANTIATION OF SPANISH TRADE MARK REGISTRATION No 2 471 330

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the evidence filed by the opponent consists of a ‘translation of status of Spanish trademark ES 2 471 330’.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because the opponent did not submit a copy of the relevant registration certificate.

On 04/12/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 09/04/2016.

The opponent did not submit sufficient evidence concerning the substantiation of earlier Spanish trade mark No 2 471 330. The evidence mentioned above is not sufficient to substantiate the opponent’s earlier Spanish trade mark No 2 471 330 because no original certificate was submitted.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

The examination of the opposition will now continue on the basis of the remaining earlier mark, namely European Union trade mark No 2 947 901 ‘ANGEL SCHLESSER’.

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 2 947 901.

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 01/09/2015. 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 01/09/2010 to 31/08/2015, inclusive.

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

Class 18:         Leather and imitation leather, beach bags; wallets; shopping bags; purses; valises; suitcases; suitcase handles; handbags; card holders (notecases); credit card cases [wallets]; leather thread; straps (leather -); traveling trunks; trunks (luggage); sport bags; casual bags; bags [envelopes, pouches] of leather, for packaging; business card cases; sling bags for carrying babies; vanity cases, not fitted.

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 19/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 24/10/2016 to submit evidence of use of the earlier trade mark. On 19/10/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Six copies of photographs of perfume boxes used for Angel Schlesser perfume products, the boxes being displayed on a protective cloth bag for handbags, with the earlier mark printed on it. The photographs are undated.

• One photograph of tags bearing the earlier mark, undated.

• Copies of parts of a catalogue entitled ‘Creators of Fashion Jewellery’, dated 2008, including the cover page, a page showing photographs of different items of jewellery and a price list. The earlier mark is visible on the cover page.

• Copies of parts of different catalogues, namely ‘Spring-Summer collection 2009’ (handbags, shoes), ‘Autumn-Winter collection 2012/2013’ (ready to wear) and ‘Autumn-Winter collection 2014/2015’ (ready to wear). The earlier mark is visible on what seem to be the covers of the catalogues.

• Three invoices, dated 15/01/2016, 09/09/2016 and 22/04/2016, addressed to Angel Schlesser S.L. and pertaining to materials purchased, such as crêpe de Chine and buttons.

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 assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the catalogues, invoices and photographs, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The photographs submitted by the opponent showing perfumery products, even though those products are displayed on protective bags for handbags, may, at most, show some use of the earlier mark with respect to goods in Class 3, namely perfumes, and not with respect to the relevant goods in Class 18: leather and imitation leather, beach bags; wallets; shopping bags; purses; valises; suitcases; suitcase handles; handbags; card holders (notecases); credit card cases [wallets]; leather thread; straps (leather -); traveling trunks; trunks(luggage); sport bags; casual bags; bags [envelopes, pouches] of leather, for packaging; business card cases; sling bags for carrying babies; vanity cases, not fitted.

The same applies to the photographs of tags and to the catalogue ‘Creators of Fashion Jewellery’. These items of evidence do not prove the use of the earlier mark for the goods at issue.

Only some photographs from the partly reproduced catalogues show handbags, which are some of the relevant goods in Class 18. However, these items are displayed only in the catalogue ‘Spring-Summer 2009’, which falls outside the relevant period.

The invoices submitted by the opponent cannot prove use of the earlier mark for the relevant goods either. Apart from the fact that they are all dated outside the relevant period, they refer to goods such as crêpe de Chine and buttons, which are not relevant.

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, he 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

Dorothee SCHLIEPHAKE

Patricia LOPEZ FERNANDEZ DE CORRES

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.