OPPOSITION No B 2 669 177

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB  Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Tam Enterprises Limited, Stalham Business Park, Rushenden Road, Queenborough Kent ME11 5HE, United Kingdom (holder), represented by Urquhart-Dykes & Lord LLP, One Euston Square, 40 Melton Street ,London  NW1 2FD , United Kingdom (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 669 177 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 14 885 065 in Class 3. The opposition is based on German trade mark registrations No 377 110 ‘Kult’ (word mark) and No 30 468 246 ‘CULT’ (word 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 marks on which the opposition is based, German trade marks No 377 110 and No 30 468 246.

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 11/12/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Germany from 11/12/2010 to 10/12/2015 inclusive.

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

German trade mark No 377 110 ‘KULT’

Class 3:        Perfumery, cosmetics, essential oils, soaps, bleaching preparations and other substances for laundry use, starch for laundry purposes and preparations of starch for laundry purposes (included in class 3), colour additions for laundry, spot removers, cleaning and polishing preparations (excepting for leather), abrasive preparations.

German trade mark No 30 468 246 ‘CULT’

Class 3         Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; cosmetics; perfumery; essential oils; dentifrices; hair lotions.

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 21/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/11/2016 to submit evidence of use of the earlier trade marks. On 02/11/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

“Item 1”, Pages 3 – 5:         

Affidavit of Ms. Eva Isabella Tobor, procurator of the opponent, dated 06/10/2016 stating essentially:

A list of claimed ‘minimum sales figures’ for KULT branded articles between 11/12/2010 and 2015 follows, including goods such as deodorant sprays, soap, cream shower, bath milk, styling gel, hairspray, etc., see e.g.:

The respective numbers claimed are significant and vary between tens of thousands up to over a million in some cases.

“Item 2”, Pages 6 – 61:

28 printer´s copies and copies of advertisements with partial translation, showing several goods marked with "KuIt"; the advertisements themselves do not indicate a year. Partially they indicate a day and a month. On some of them a year between 2010 and 2015 was added in handwriting. On the printer´s copies, above the advertisement itself, there are indications that appear to be printing instructions, bearing dates between 2010-2015, e.g.:

“Item 3”, Pages 62 – 201:

138 copies and photographs of labels and product packaging marked with "KuIt" showing the use for several goods and translation thereof, partially dated from 11/10/2010 till 14/09/2016.

“Item 4”, Pages 202 – 363:

80 copies of invoices of suppliers to the opponent's sales companies in Germany, dated between 2010 to 2015, showing the sale of various goods under the mark to these companies.

“Item 5”, Pages 364 – 367:

2 copies of statements issued by the suppliers "mtc – trading company GmbH" and "PARSA Haar- and Modeartikel GmbH" and translations thereof, stating that  goods with the trademark "Kult" were supplied to the opponent during the years 2010 to 2015, furthermore claiming that the opponent went on to sell those goods.

As far as the affidavit (Item 1) is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. 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.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The advertisements, invoices and labels show that the place of use is Germany. This can be inferred from the language of the documents (Germany), the currency mentioned (Euro) and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

Part of the evidence is dated within the relevant period, namely the supplier invoices and part of the copies of labels/product packaging. Regarding the advertisements (Item 2), the Opposition Division notes that none of them indicates a year themselves. As far as a year was added in handwriting this does obviously not prove that the document was published and distributed in that year. But also as far as the printing instructions on some of the documents do indicate a date, this does not prove that the document was actually published and distributed on that date. No actual evidence of print, publication and distribution in Germany within the relevant time period was filed that could support the opponent´s claims in its affidavit.

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 copies of advertisements, supplier invoices, labels and supplier statements do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Regarding the advertisements, who according to the opponent where regularly published within the relevant time in four daily German newspapers, the Opposition Division notes that the evidence submitted does not contain any evidence regarding the names of these newspapers or their circulation. Furthermore, as already set out above, these documents do not make it possible to verify their actual date of publication; therefore, no information relating to the extent of the use of the earlier mark may be drawn from those advertisements. The same is true of the copies of labels photographs of product packaging submitted by the opponent, since they do not contain any information relating to the extent of the use of the earlier mark (15/12/2016, T-391/15, ALDIANO, EU:T:2016:741, paras 43, 44)

The invoices presented are supplier invoices. They only prove the sale and delivery of the respective goods to the opponent and its distribution companies in Germany, but not the marketing, by the opponent or its distribution companies, of these goods. The same is true of the submitted supplier statements.

The opponent could and should have provided direct evidence of sales of these goods such as copies of till receipts, sales invoices or accounting documents referring to the goods bearing the marks during the relevant period in Germany, which would not have been difficult for the opponent to obtain. (15/12/2016, T-391/15, ALDIANO, EU:T:2016:741, para 45 ff.)

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier marks.

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).

For the reasons set out above 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) 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

Lars HELBERT

Tobias KLEE

Sigrid DICKMANNS

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.