OPPOSITION No B 2 470 345
Infinity System, S.L., A-2. Km 48,5 Polígono Industrial Cabanillas del Campo, Parcela 12-B, 19171 Cabanillas del Campo (Guadalajara), Spain (opponent), represented by Daniel Del Cerro Linaza, Calle Jose Celestino Mutis, 4, 2C, 28703 San Sebastian De Los Reyes, Spain (professional representative)
a g a i n s t
Aeris Communications, Inc., Suite 600, 2350 Mission College Blvd, Santa Clara, California 95054, United States of America (applicant), represented by CMS Albiñana & Suárez De Lezo, C/ Génova, 27, 28004 Madrid, Spain (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 470 345 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 318 613 for the figurative mark, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 4 449 121 for the figurative mark
. 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 mark on which the opposition is based, European Union trade mark registration No 4 449 121.
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 17/11/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 17/11/2009 to 16/11/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 9: Scientific, apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; calculating machines, data processing equipment, computers and computer components.
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 31/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/08/2016 to submit evidence of use of the earlier trade mark. On 28/07/2016, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
- Item 1: A street lighting product catalogue from the opponent for the time period May-December 2014, written primarily in Spanish (some English and French text is also included). Page two of the catalogue indicates that the opponent has offices in nine countries and representation in forty countries. Page three of the catalogue contains information which the opponent states to be from Alimarket, a relevant publication for industry in Spain. This information shows that the opponent’s LED lamps have the biggest market share for this type of product in Spain, accounting for 18.8% of a market estimated to be worth EUR 68,000,000.00. Pages four to seven of the catalogue present the ‘AIRIS EXILIS’ point to point tele management system for the management of lighting installations. This section of the catalogue indicates that the ‘system controls and knows in real time each luminaire’s status, detecting any anomaly and reporting incidences to maintenance services’ and that it ‘combines three devices in one: (1) A constant current driver, (2) an intelligent driver for communication via the power line, and (3) a surge protector’. Page six of the catalogue also references the web-based management software included in the ‘AIRIS EXILIS’ system. The remaining majority of the catalogue contains information regarding the opponent’s lighting products, which appear with names such as ‘AIRIS TITANIUM’, ‘AIRIS SIGNUM’, ‘AIRIS PRAGMA’, ‘AIRIS SOLAR TITANIUM’ and ‘AIRIS MAGNUM’. The final pages of the catalogue discuss some ‘success cases’ regarding lighting installation projects carried out by the opponent, while the last page contains the contact information for the opponent’s offices/commercial delegations in Spain, Brazil, Colombia, France, Mexico, Panama, Peru and the Dominican Republic. The opponent’s
sign appears on the lower right section of the catalogue’s first page.
- Item 2: A press release by the opponent, written in Spanish and dated 11/04/2014, indicating that it participated in the GENERA Trade Fair in Madrid, Spain, displaying various lighting products and systems, including the ‘AIRIS EXILIS’ system described in Item 1. The ‘AIRIS TITANIUM’ and ‘AIRIS MAGNUM’ product lines are also referenced. The opponent’s
- Item 3: A public announcement by Alimarket (the publication described in Item 1), written in Spanish and dated 12/11/2012, stating that the opponent displayed its new LED lighting products at the MATALEC Trade Fair.
- Item 4: A press release by the opponent, written in Spanish and dated 19/03/2014, indicating that it participated in the Padel Pro Show Trade Fair in Madrid, Spain, with a product stand, as well as holding a seminar regarding the ‘revolution and innovation in the lighting for padel: LED technology to power’. The opponent’s
- Item 5: A public announcement by ‘Construible’, written in Spanish and dated 30/05/2012, indicating that the opponent participated in the GENERA Trade Fair in Madrid, Spain, displaying various LED intelligent lighting products and systems.
- Item 6: A press release by the opponent, written in Spanish and dated 22/02/2013, indicating that it participated in the GENERA Trade Fair in Madrid, Spain, displaying various LED lighting products.
- Item 7: A press release by the opponent, written in Spanish and dated 24/01/2014, indicating that it continues growing in all its business lines and that its revenue grew 4.3% in 2013, in relation to 2012.
- Item 8: A press release by the opponent, written in Spanish and dated 25/10/2010, indicating that it launched a new LED lighting division and participated in the MATALEC Trade Fair.
- Item 9: A press release by the opponent, written in Spanish and dated 21/12/2012, indicating that it launched a new air conditioning division, including products for heating and cooling air and water.
- Item 10: A public announcement by ‘El Candelero Tecnológico’, written in Spanish and dated 03/03/2015, indicating that the opponent participated in the GENERA Trade Fair in Madrid, Spain, displaying various LED intelligent lighting products and systems, including the ‘AIRIS EXILIS’ system described in Item 1. The opponent’s
- Item 11: A press release by the opponent, written in Spanish and dated 08/06/2011, indicating that it participated in the MEDPI 2011 Trade Fair, in Valencia, Spain, displaying various electronic products, including a netbook designated ‘KIRA N8000’ and a tablet designated ‘AIRIS OnePAD 700’.
- Item 12: A news article from ‘eldiario.es’, written in Spanish and dated 05/11/2014, indicating that the opponent’s installations and offices in Guadalajara, Spain, were visited by Spanish authorities, including the Spanish Minister of Industry, Energy and Commerce and the President of the Region of Castilla-La Mancha. The authorities were informed regarding the opponent’s point to point lighting management systems and new LED public lighting systems. According to the article, the information concerning the visit was provided by the opponent by way of a press release.
- Item 13: A screenshot from the opponent’s website, written in Spanish and dated 24/07/2016, showing various lighting products and photos of commercial lighting installations. The menu on the right side of the screenshot has items such as ‘AIRIS Leader in LED Illumination’, ‘Installations’, ‘Monitoring’ and ‘Solutions’. The web address on the bottom left corner of the second page of the document indicates the source of the screenshot to be ‘http://web.archive.org’ and the relevant date to be 02/07/2014. The opponent’s
Most of the evidence is dated within the relevant time period, with the exception of Item 10. The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, as well as the explanations regarding the contents of these documents provided by the opponent, the Opposition Division considers that there is no need to request a translation.
Having examined the material listed above the Opposition Division finds that the evidence is insufficient to establish genuine use of the trade mark in question.
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.
Furthermore, 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 evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates essentially to Spain. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.
The documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
The submitted product catalogue, press releases, public announcements, news article and screenshot from the opponent’s website contain no proof regarding their circulation and/or Internet traffic figures (number of online consultations of the information in question) in the relevant territory. Furthermore, no additional material was provided regarding the scope and attendance figures of the trade fairs which the opponent participated in.
It is noted that the majority of the submitted evidence originates from the opponent itself, namely Items 1 (product catalogue), 2, 4, 6, 7, 8, 9, 11 (press releases) and 13 (screenshot from the opponent’s website). Indeed, the press releases were issued through ‘Comunicae’, which, as the applicant also concluded in its observations, is a communication tool that has the objective of simplifying the relationship between content generators and any type of communication media. This type of evidence has a low probative value, unless it is corroborated by solid and objective additional evidence, preferably originating from independent sources/third parties. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
In addition, the majority of the goods referenced in the submitted evidence fall outside the scope of protection established for the registered mark in the present opposition (Class 9 of the Nice Classification), as is demonstrated below:
- Lighting installations, luminaries, LED lamps, solar-powered lamps, floodlights, lamp posts and other lighting-related goods are classified in Class 11;
- Air conditioning, heating and cooling apparatus and installations (referenced in Item 9) are also classified in Class 11.
The only goods referenced in the submitted evidence that fall within the scope of protection established for the registered mark in the present opposition are the following Class 9 goods:
- The ‘AIRIS EXILIS’ point to point tele management system for the management of lighting installations;
- A netbook designated ‘KIRA N8000’;
- A tablet designated ‘AIRIS OnePAD 700’.
Use of a mark need not be quantitatively significant for it to be deemed genuine. However, there must be some indication of commercial volume and turnover achieved with the sale of goods and/or services bearing the mark at issue. The evidence submitted contains no such information. The opponent did not submit any documents (invoices, annual accounts, auditors’ reports, copies of contracts, purchase orders from distributors, etc.) that would illustrate the aforementioned commercial volume and turnover originating from goods bearing the mark. It is noted that the market share information contained on page three of Item 1 relates exclusively to LED lamps, which, as was concluded above, fall outside the scope of protection established for the registered mark in the present opposition.
The opponent claims that there are many public sources available on the Internet regarding the use of the sign in connection with the goods in question. In this regard, it must be stressed that according to Article 76(1) EUTMR, in proceedings before it, the Office shall 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.
The opponent should have submitted all the relevant facts, information and evidence along with its observations since the Office is restricted in its examination. Therefore, the Opposition Division cannot be expected to access links provided by the parties and to introduce in the proceedings documents, facts and/or evidence which were not submitted by the parties themselves, because this would amount to an ex-officio investigation. In other words, the burden of proof lies with the opponent.
Consequently, it was up to the opponent to submit further evidence (e.g. price lists, purchase orders, packaging materials, invoices, information about distribution, published advertisements and photographs of goods bearing the mark, etc.) illustrating the use of the trade mark for the relevant goods, which would allow the Opposition Division to conclude that the mark was actually used on the market. Such a conclusion cannot be made on the basis of a reduced amount of documents, mostly originating from the opponent itself.
As mentioned above, the opponent should have filed additional supporting documentation, originating from independent sources or from third parties, as well as additional information concerning the actual use of the mark on the market. In the absence of such evidence and information, the Opposition Division cannot be expected to grant full probative value to the statements and claims made by the opponent in its observations, product catalogue and press releases.
Consequently, the Opposition Division considers that the opponent has not provided sufficient indications concerning the nature and the extent of the use of the earlier mark, for the goods 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).
Taking into account the evidence in its entirety, 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 for the relevant goods. 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
| Gueorgui IVANOV | José Alexandre DE PAIVA ANDRADE TEIXEIRA | Ewelina SLIWINSKA |
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.