OPPOSITION No B 2 481 219
Dansk Supermarked A/S, Rosbjergvej 33, 8220 Brabrand, Denmark (opponent), represented by Bech-Bruun Law Firm, Værkmestergade 2, 8000 Århus C, Denmark (professional representative)
a g a i n s t
Golden Lady Company S.p.A., Via Leopardi, 3/5, 46043 Castiglione delle Stiviere (MN), Italy (applicant), represented by Barzano' & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative).
On 27/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 481 219 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 13 391 958 for the word mark ‘BODY GUARD’, namely against all the goods in Class 25. The opposition is based, after the limitation described below in the preliminary remark, on Danish trade mark registration No VR 1999 02772 for the word mark ‘BODY GUIDE’. The opponent invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARK ON THE LIMITATION OF THE SCOPE OF OPPOSITION
In the notice of opposition of 24/02/2015, the opponent based its opposition on three earlier rights, namely Danish trade mark registration No VR 1993 03670 for the word mark ‘BODY GUARD’, Danish trade mark registration No VR 1999 02772 for the word mark ‘BODY GUIDE’ and Swedish trade mark registration No 201 940 for the word mark ‘BODYGUARD’, all registered for goods in Class 25.
In its letter of 23/10/2015, the opponent informed the Office that it withdraws Danish trade mark registration No VR 1993 03670 and Swedish trade mark registration No 201 940 as basis for the present opposition.
Apart from this, following the request of proof of use submitted by the applicant, in its submissions dated 27/10/2016 and received at the Office on 31/10/2016, accompanying evidence on proof of use, the opponent limited the basis of the opposition only to the goods clothing covered by Danish trade mark registration No VR 1999 02772 in Class 25.
Considering all the above, the Opposition Division will proceed in further examination of the opposition only with respect to part of the opponent’s goods in Class 25, namely clothing, covered by Danish trade mark registration No VR 1999 02772.
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 Danish trade mark No VR 1999 02772.
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 25/11/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Denmark from 25/11/2009 to 24/11/2014 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely for clothing in Class 25 (after a limitation described in the preliminary remark).
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 26/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 31/10/2016 to submit evidence of use of the earlier trade mark. On 31/10/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Appendix 2: a printout from the website www.youtube.com showing the opponent’s commercial ‘Bodyguide – it is just underwear’ in which underwear and socks under the trade mark ‘BODY GUIDE’ were promoted. The commercial was published on 30/09/2013 and it was also used as a TV commercial on Danish TV in 2013.
Appendixes 3-7: five extracts from the opponent's Danish NETTO supermarket leaflets distributed between 03/03/2012-24/01/2014 (two in 2012, two in 2013 and one in 2014). The earlier trade mark ‘BODY GUIDE’ is depicted in the leaflets in relation to underwear, pantyhose, socks and tops.
Appendix 8: a declaration signed by Christina Lewandowski, buyer at Dansk Supermarked A/S, dated 26/10/2016 (i.e. outside the relevant period), in which it is declared that the opponent distributed supermarket leaflets in Denmark each year from 2009-2014. According to the declaration, the amount of the leaflets distributed ranges from 96,200,000 to 104,000,000.
Appendix 9: a printout from the website https://netto.dk, the printing date of which is 27/10/2016 (i.e. outside the relevant period). In the document it is mentioned that NETTO opened its first store on Godthåbsvej on 01/04/1981 and since then the chain has expanded rapidly and today it consists of 460 stores placed throughout Denmark. This document can only serve to show the information available online at the time of printing it (i.e. outside the relevant period) but not if such information was also available during the relevant period and/or if it was at all viewed by potential consumers.
Appendix 10: an extract from the Danish Business Authority printed on 27/10/2016 (i.e. outside the relevant period). The document contains some business information about the opponent’s company. It shows that the opponent operates under many secondary names, inter alia, under the name NETTO A/S.
For the sake of clarity it is to be noted that even though some of the abovementioned evidence is in Danish, with a partial translation of the relevant parts made by the opponent in the form of handwritten remarks, the Opposition Division considers this translation as sufficient for the purpose of the following evaluation.
Assessment of 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 requirements for proof of use, namely the place, time, extent and nature of use, are cumulative (05/10/2010, T-92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). Therefore, the opponent is obliged to prove each of these requirements. The Opposition Division finds it appropriate to begin the present assessment with the criterion extent of use.
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.
Having examined the evidence listed above, the Opposition Division finds that it does not provide any information concerning the commercial volume. More specifically, the above evidence mainly shows that the opponent offered some of its goods, namely underwear and hosiery, through the chain of supermarkets NETTO A/S, under the trade mark , to its customers in Denmark in the period between 03/03/2012 and 24/01/2014 (appendixes 3-7). It also follows from the evidence that some promotional activities were made in order to sell these goods in 2013 (appendix 2).
Further, the evidence indicates rather impressive numbers of leaflets distributed by the opponent in Denmark during 2009-2014 (appendix 8). However, it is not apparent what amount of these leaflets contained the earlier trade mark in connection with the opponent’s goods. In addition, the information the signatory has referred to in the declaration comes from the opponent itself or its employee. Given that the declaration submitted by the opponent was drawn up by the party involved in the dispute which may be more or less affected by its personal interests in the matter, the probative value of this piece of evidence has to be considered very low. No further evidence or information originating from an independent source was provided by the opponent with respect to these distributions of leaflets either (e.g. orders to printers to print the leaflets, or orders to companies to deliver them).
Finally, and what is of a particular importance, in the material submitted by the opponent, there is no reference to the commercial volume or quantity of goods actually sold during the relevant period of time. None of the arguments or documents submitted by the opponent provides any direct or indirect indication about the sale figures achieved under its trade mark ‘BODY GUIDE’ within the relevant time frame in Denmark. The opponent’s assertion that the goods marketed under the trade mark ‘BODY GUIDE’ have been sold in 460 NETTO supermarkets throughout Denmark cannot be considered as sufficient in this regard, and such a claim could have been supported by sales receipts showing actual sales at different stores.
As stated above, the commercial volume is only one of several factors to be assessed in the determination of whether the use is genuine or not. In that regard, other relevant factors must be weighed up, for instance territorial scope, frequency and duration of use.
In the present assessment, these other factors are not as extensive and significant as to overcome none-existence of commercial volume achieved under the earlier trade mark, as it is resulting from the material furnished. The duration of distribution of leaflets depicting the earlier mark and some of the opponent’s goods hardly covers two years (03/03/2012-24/01/2014), the frequency of such distribution is very low (two distributions in 2012, two in 2013 and one in 2014), and, furthermore, the territorial spread of these leaflets is also not sufficiently clear, since no details on exact locations of supermarkets in which these leaflets were distributed within Denmark were presented by the opponent.
The characteristics of the market in question must be taken into account (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 51). Considering this, it has to be kept in mind that the goods at issue are articles for mass consumption (clothing), the market for which is relatively large given the population in the relevant territory.
Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47). In other words, it is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 40).
On an overall assessment of the evidence submitted by the opponent, the Opposition Division comes to the conclusion that the opponent has not provided sufficient indications concerning the extent of the use of the earlier trade mark ‘BODY GUIDE’.
As shown above, the requirements for proof of use are cumulative. As the evidence fails to demonstrate extent of use, there is no need to further examine the other factors of use.
The opponent refers, in its observations of 05/04/2017, to the judgement of 08/07/2010, T-30/09, Peerstorm, in which the General Court found that two product catalogues depicting products sold under the trade mark ‘PETER STORM’ constituted proof of use of the trade mark. The Opposition Division does not consider this finding relevant in the present case, since in the case referred to by the opponent the Court took into account, inter alia, the fact that a large number of items designated by the trade mark ‘PETER STORM’ were offered in these two catalogues and that those items were available in more than 240 shops in the United Kingdom for a significant part of the relevant period. However, this is not the case of the present assessment of proof of use, which comprises, inter alia, five leaflets with the representations of the earlier trade mark and several opponent’s products, distributed within nearly two years in Denmark. Therefore, the opponent’s reference to the above judgement must be set aside.
Conclusion
Taking all the above into account, 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. Such evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43).
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) 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
|
María del Carmen SUCH SANCHEZ |
Martin MITURA |
Ric WASLEY |
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.