DORFER | Decision 2597881 – Karlovarská Korunní s.r.o. v. S.C. ROMAQUA GROUP S.A.

014000000 - 014999999, 014360945, 06, 2017, April-2017, D-trademark, Date, Decision Type, DORFER, Involved Parties, K-company, Karlovarská Korunní s.r.o., OPPOSITION, S-company, S.C. ROMAQUA GROUP S.A., Trademark, Trademark number

OPPOSITION No B 2 597 881

Karlovarská Korunní s.r.o., Stráž nad Ohří 77, 36274 Stráž nad Ohří, Czech Republic (opponent), represented by Propatent – Patent. Známk. Graf. Kancelář, Pod Pekařkou 107/1, 147 00 Podolí, Praha 4, Czech Republic (professional representative)

a g a i n s t

S.C. Romaqua Group S.A., Str. Carpati nr 46, Borsec, Jud. Harghita, Romania (applicant), represented by Milcev Burbea Intellectual Property Office, 170 Stirbei Voda Street, Bl.10G, Entr.1, Floor 5, App.18, District 1, Bucharest, Romania (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 597 881 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 14 360 945, namely against some of the goods in Class 32. The opposition is based on Czech trade mark registration No 218 637. The opponent invoked Article 8(1)(b) EUTMR.

KRONDORFER

DORFER

Earlier trade mark

Contested sign

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 Czech trade mark No 218 637.

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 28/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Czech Republic from 28/07/2010 to 27/07/2015 inclusive.

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

Class 32:        Natural mineral waters, flavoured table and spring waters, carbonated non-alcoholic drinks.

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 19/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 24/07/2016 to submit evidence of use of the earlier trade mark. On 22/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

  • A brochure about spring water from Korunní village, in which signs such as ‘Korndorfer’ and ‘Korndorf’ appear on reproductions of historic material. On the last pages of the brochure, related to the present, there is a bottle of mineral water bearing the sign ‘Korunní’.
  • Seven invoices issued by various entities in the Czech Republic, in which the opponent is mentioned as the client purchasing various services:
  • invoice of 12/02/2014 for the design of a company brochure entitled ‘Korunní – the story of water’;
  • invoice of 09/10/2014 for a ‘Korunní’ catalogue;
  • invoice of 09/10/2014 for a template for a price list and a PTT presentation branded ‘Korunní’;
  • invoice of 09/10/2014 for a photo shoot of 0.33 l bottle of ‘Korunní’ water;
  • invoice of 10/10/2014 for an A2 poster;
  • invoice of 08/12/2014 for presenters;
  • invoice of 31/07/2014 for permission to use certain documents.

In accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof of the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted.

None of the documents submitted by the opponent proves use of the trade mark ‘KRONDORFER’ for the goods on which opposition is based during the relevant period. The brochure submitted refers clearly to ‘Korunní mineral water’. The trade mark ‘KRONDORFER’ appears only once, on historical material from the 19th century.

The invoices submitted confirm that the opponent purchased various advertising services in relation to ‘Korunní mineral water’, but there is reference neither to the relevant trade mark, ‘KRONDORFER’, nor to the relevant goods.

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 clearly 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

Frédérique SULPICE

Anna ZIÓŁKOWSKA

Benoît VLEMINCQ

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.

Leave Comment