OPPOSITION DIVISION
OPPOSITION No B 2 501 883
Inversiones Triunvirato S.A., Augusto Matte 1840, Comuna de Quinta Normal,
Santiago, Chile (opponent), represented by Ingenias, Av. Diagonal, 421, 2º, 08008
Barcelona, Spain (professional representative)
a g a i n s t
Jean Patou Worldwide Limited, Amertrans Park, Bushey Mill Lane, Watford
Hertfordshire WD24 7JG, United Kingdom (holder), represented by T Mark
Conseils, 9 avenue Percier, 75008 Paris, France (professional representative).
On 22/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 501 883 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
Preliminary note
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of international registration
designating the European Union No 1 216 904, namely against all the goods in
Class 3. The opposition is based on European Union trade mark registration
No 7 259 351. The opponent invoked Article 8(1)(b) EUTMR.
COLLOKY COLONY
Earlier trade mark Contested sign
Decision on Opposition No B 2 501 883 page: 2 of 5
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, now Article 47(2) and (3) EUTMR), 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.
For international registrations designating the European Union, the ‘date of
publication’ of the contested mark within the meaning of Article 42(2) EUTMR (in the
version in force at the time of filing of the opposition, now Article 47(2) EUTMR), that
is to say for the purposes of establishing the five-year period of use obligation for the
earlier mark, is considered to be six months after the first republication of the
international registration, which corresponds to the beginning of the opposition period
(Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at
the time of filing of the opposition, now Article 196 EUTMR in conjunction with
Article 190 EUTMR). The earlier mark is subject to the use obligation if, at that date, it
has been registered for at least five years.
The holder requested that the opponent submit proof of use of the trade mark on
which the opposition is based, namely the word mark ‘COLLOKY’.
The relevant date (first republication of the contested international registration plus
six months) is 26/03/2015. 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 26/03/2010 to 25/03/2015 inclusive.
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.
Furthermore, the evidence must show use of the trade mark for the goods on which
the opposition is based, namely the following:
Class 3: Perfumery, including perfumes, perfumed essences, bases for flower
perfumes, deodorants for personal use, aftershave, colognes; eau de Cologne,
essential oils for personal use and essential oils for use in the manufacture of
scented products, cosmetics, namely lipsticks, blushers, eyeliners, eyeshadows, lip
glosses, nail polishes, face masks, lip liners, foundation, eyebrow pencils, hair
lotions, soaps, lip balms, dentifrices, shampoos, skin cleansers and facial cleansers,
body shampoos, deodorants for personal use and antiperspirants, deodorant soap,
bubble baths, hair conditioners, body moisturisers, skin moisturising masks, skin
moisturisers, moisturising hand creams, shower gels, liquid soap, talcum powder,
packs of facial care preparations consisting of facial masks and cleansers; cleaning,
polishing, cleansing and rinsing preparations, rinsing preparations for dish-washing
machines.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the
request for proof of use), the evidence of use must consist of indications concerning
Decision on Opposition No B 2 501 883 page: 3 of 5
the place, time, extent and nature of use of the opposing trade mark for the goods or
services in respect of which it is registered and on which the opposition is based.
On 08/01/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the
moment of filing the request for proof of use), the Office gave the opponent until
13/03/2016 to submit evidence of use of the earlier trade mark. On 14/03/2016,
within the time limit (13/03/2016 was Sunday, i.e. a non-working day), the opponent
submitted evidence of use.
The evidence to be taken into account is the following:
A printout (three pages) from the website www.abcdelbebe.com,
corresponding to the magazine ‘ABC del bebé’ (‘ABC Baby’), with a press
note dated 22/10/2012 under the heading ‘Colloky comes to Colombia’. The
article cites that the brand is present in more than 500 outlets in Ecuador,
Guatemala, Bolivia, Chile, Paraguay and Peru. A picture of a little child is
shown with the footnote ‘proposal for children aged 0 to 12 years –
COLLOKY’;
Printouts from the website www.colloky.cl, showing the sign on
top and some images of children announcing the ‘fall winter 2016’ collection
of clothing and accessories, as well as pieces of clothing that are offered for
online sale with prices in $. The printouts are undated;
Printouts from the website of Mercado Libre Chile Ltda. (printed on
14/03/2016), showing the earlier mark ‘Colloky’ together with the sign
on top. The printouts display ‘Colloky’ clothing and footwear for
children offered for online sale with prices in $;
Printouts from the profile of ‘Colloky Colombia’ in Facebook (printed on
14/03/2016), showing some images of children. According to the available
information, the address of ‘Colloky Colombia’ is in Bogota, Colombia.
On 06/10/2016, after expiry of the time limit, the opponent submitted additional
evidence.
It follows from the wording of Rule 22(2) EUTMIR (in force at the moment of filing the
request for proof of use) that the time limit laid down is a strict one, which means that
the Office cannot take into account evidence submitted after expiry of the time limit
when the evidence submitted within the time limit is entirely irrelevant for the
purposes of establishing genuine use of the mark (18/07/2013, C-621/11 P, Fishbone,
EU:C:2013:484, § 29).
The evidence submitted by the opponent within the set time limit consists of only a
few printouts from internet websites, which appear to be targeting Colombia and
Chile (based on the references ‘Colombia’ and ‘Chile’, the addresses, the currency
and the language – Spanish). Therefore, the evidence submitted by the opponent in
order to prove genuine use of the earlier EUTM relates exclusively to the use of the
earlier mark outside the European Union. There is no reference whatsoever to the
production and/or commercialisation of the goods bearing the earlier mark within the
relevant territory. In this regard, the opponent could have submitted, inter alia, some
invoices, price lists, advertisements, sales figures and press clips as regards the
mark ‘COLLOKY’ in any of the Member States in order to show genuine use, as
Decision on Opposition No B 2 501 883 page: 4 of 5
required by Article 42(2) and (3) EUTMR (in the version in force at the time of filing of
the opposition, now Article 47(2) and (3) EUTMR).
Additionally, the Opposition Division notes that most of the evidence is dated outside
the relevant period (2016).
Furthermore, the evidence only shows use of the earlier mark for items of clothing
and footwear, but not in relation to the abovementioned goods in Class 3 on which
the opposition is based.
From all the foregoing, the evidence filed by the opponent within the time limit is
considered to be entirely irrelevant for the proceedings in question. Therefore, the
evidence submitted on 06/10/2016, after expiry of the time limit, cannot be taken into
account.
The opponent claims that, for reasons of procedural economy, it only submitted few
examples in relation to the use of the earlier mark and they should be sufficient to
show that the earlier mark has been preserving a market share in the European
Union. However, as stated above, in the present case, the content of the documents
filed is entirely irrelevant, as none of them refers to the relevant territory and the
goods in question. Consequently, the opponent’s assertions must be set aside.
Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and
Rule 22(2) EUTMIR (in force at the moment of filing the request for proof of use).
COSTS
According to Article 109(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 holder in
the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
holder are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Richard BIANCHI Marta GARCÍA COLLADO Teodora TSENOVA
PETROVA
Decision on Opposition No B 2 501 883 page: 5 of 5
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.