OPPOSITION No B 2 633 843

Joy Shop Aktiebolag, Falkenbergsgatan 3, 412 85 Gothenburg, Sweden (opponent), represented by Kanter Advokatbyrå KB, Box 1435, 111 84 Stockholm, Sweden (professional representative)

a g a i n s t

Barts Beheer B.V., Moermanskkade 101, 1013 BC Amsterdam, The Netherlands (applicant), represented by Rise, Frederik van Eedenplein 4, 2106 ED Heemstede, The Netherlands (professional representative).

On 13/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 633 843 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 14 562 631, namely all the goods in Classes 9, 18 and 25. The opposition is based on, inter alia, Swedish trade mark registration No 364 706 and Swedish trade mark registration No 325 345. The opponent invoked Article 8(1)(b) EUTMR.

Swedish trade mark registration No 325 345 JOY Swedish trade mark registration No 364 706	CRAFTING JOY
Earlier trade mark	Contested sign

PRELIMINARY REMARK

The notice of opposition also included European Union trade mark application No 13 762 281 for the word mark JOYSHOP, as well as the abovementioned Swedish trade mark registrations, as a basis of the opposition. However, since the opposition was filed, this European trade mark application has been withdrawn. Therefore, the Opposition Division will only consider the remaining Swedish trade marks in its examination of the opposition.

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, namely, Swedish trade mark registration No 364 706 and Swedish trade mark registration No 325 345.

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 26/10/2015.The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Sweden from 26/10/2010 to 25/10/2015 inclusive.

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

Swedish trade mark registration No 325 345

Class 25:        Clothing articles except headwear and footwear and sports clothing for golf.

Swedish trade mark registration No 364 706

Class 25:        Clothing.

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 marks. On 21/10/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Evidence 1: copy of the opponent’s ‘Joy Shop AB’ annual accounts for the financial years 01/09/2011-31/08/2012, 01/09/2012-31/08/2013 01/09/2013-31/12/2014 and 01/01/2015-31/12/2015 (93 pages). The document is in Swedish, however, the opponent explains parts of its content in English in its allegations.

• Evidence 2: affidavit signed by Marie Rönnberg , CFO of Joy Shop AB, issued in English on 20/10/2016, in which she states that the earlier trademarks ‘Joy’ have been put to genuine use for the goods for which they are registered during the relevant period of time, and that the official Facebook page of the opponent belongs to and is controlled by the opponent and it is used for advertising clothing sold under the earlier trademarks.

• Evidence 3: copy of the certificate of registration for Joy Shop AB, registered at the Swedish Companies Registration Office. The document is in Swedish.

• Evidence 4: nine print outs from the opponent’s official Facebook page, showing pictures of clothing advertised with the trade mark ‘Joy’. The documents are dated between 2010 and 2015.

On 05/04/2017, after expiry of the time limit, the opponent submitted additional evidence. The documents filed consisted of another affidavit, with 2 bills and a list of stores. These documents where filed late, but even if they were taken into account, they would still not alter the assessment of the evidence provided taken as a whole because they are not considered sufficient to indicate the extent of use. Indeed, they refer to a few articles, something that in retail of clothing which operates in large quantities, is insufficient to prove 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.

The documents filed, namely the affidavit, the opponent’s annual accounts report, copies from the opponent Facebook page and the copy of the registration in the Swedish Companies Registration office, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Statements coming from the sphere of the owner of the earlier mark (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 personal interests in the matter (decision of 11/01/2011, R 0490/2010-4, BOTODERM, § 34; decisions of 27/10/2009, B 1 086 240 and of 31/08/2010, B 1 568 610).

In the present case, the majority of these documents come from the interested party itself, as well as the copies of ‘Joy Shop AB’ annual accounts and affidavit, and hence, they are not enough to demonstrate the extent of use in the absence of any other evidence corroborating them, such as invoices, catalogues distributed in the market to end customers, external market research or publicity of the goods.

The sole external document, the Certificate from the Swedish Companies Registration office, does not reflect any information on sales or use in the market of the trade mark. The printouts from the Facebook website consist of pictures of the goods, which the opponent encloses as advertising, but they are not accompanied by any marketing data on the media in which they appeared or the market that they targeted, it is an internal source and it does not prove that they have actually used it outwardly, that they have reached any public or that any items have actually been sold.

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).

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.

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

Ewelina SLIWINSKA

Dorothée SCHLIEPHAKE

Patricia LÓPEZ FERNÁNDEZ DE CORRES

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.