OPPOSITION No B 2 727 264
El Corte Inglés S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented
by J.M. Toro S.L.P., Viriato, 56 – 1º izda, 28010 Madrid, Spain (professional
a g a i n s t
Biheng Chen, 501 Room, Tower B, RunPeng Garden, Nº 1019 Lianhua Branch
Road, Futian District, Shenzhen, Guangdong 518036, People’s Republic of China
(applicant), represented by Casalonga Alicante S.L., Avenida Maisonnave 41-6C,
03003 Alicante, Spain (professional representative).
On 10/11/2017, the Opposition Division takes the following
1. Opposition No B 2 727 264 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 354 293 . The opposition is based on European Union
trade mark registration No 3 788 445 for the word mark ‘DULCES – EL CORTE
INGLES’ and Spanish trade mark registration No 2 283 254 for the word mark
‘DULCES’. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with 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
filing or, where applicable, the date of priority 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.
Decision on Opposition No B 2 727 264 page: 2 of 5
The same provision states that, in the absence of such proof, the opposition will be
The applicant requested that the opponent submit proof of use of the trade marks on
which the opposition is based, European Union trade mark registration No 3 788 445
and Spanish trade mark registration No 2 283 254.
The date of filing of the contested application is 20/04/2016. The opponent was
therefore required to prove that the trade marks on which the opposition is based
were put to genuine use in the European Union and Spain from 20/04/2011 to
The request was submitted in due time and is admissible given that the earlier trade
marks were registered more than five years prior to the relevant date mentioned
Furthermore, the evidence must show use of the trade marks for the goods on which
the opposition is based, namely the following:
Class 25: Clothing, footwear and headgear.
According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), 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 or services in
respect of which it is registered and on which the opposition is based.
On 16/01/2017, in accordance with Article 10(2) EUTMDR (former
Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until
21/03/2017 to submit evidence of use of the earlier trade marks. This time limit was
extended upon the opponent’s request by two months. On 22/05/2017, within the
time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
An affidavit in Spanish with an accompanying English translation thereof signed
on 16/02/2017 by Miss Inmaculada del Pozo Garzón, the legal representative
of El Corte Inglés S.A., attesting the use of the earlier marks ‘DULCES’ and
‘DULCES – EL CORTE INGLES’ in Spain and the corresponding yearly sales
revenues, which amount to at least EUR 66 464 361 for the entire relevant
period between 2011 and 2016.
Twenty-nine invoices all dated after the relevant time limit with no reference to the
earlier marks, showing various clothing items along with their quantity and
price. This evidence is considered insufficient as valid proof of use.
Samples of products/packaging: one image of product samples of which only
three are goods in Class 25 showing the earlier trade mark ‘DULCES’.
Promotional materials: two catalogues dated 2012 and 2014 showing baby
garments and the earlier national trade mark, ‘DULCES’; one printout from a
web catalogue dated after the relevant time limit (22/05/2017) showing baby
clothing with references to the earlier EUTM, ‘DULCES – EL CORTE INGLES’;
one undated catalogue entitled ‘HEREDEROS DE ESTILO’ showing baby
clothing with blurred descriptions and no recognisable indications of any trade
Decision on Opposition No B 2 727 264 page: 3 of 5
marks; three press/internet advertisements showing garments with references
to the earlier national trade mark, ‘DULCES’, of which one is dated 08/05/2012;
two printouts of results from the Google search engine and from a Tiendasmil
web page dated after the relevant time limit (19/05/2017) showing mainly
cosmetics and bath products for babies with the earlier national trade mark,
‘DULCES’; and two printouts from the opponent’s website dated 19/05/2017
with references to the earlier national trade mark, ‘DULCES’, although no
examples of products are shown.
As far as the affidavit submitted by the opponent is concerned, Article 10(4) EUTMDR
expressly mentions written statements referred to in Article 97(1)(f) EUTMR as
admissible means of proof of use. Article 97(1)(f) EUTMR refers to 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
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
In the present case, the opponent submitted an affidavit confirming its ownership of
the trade marks in question and stating its sales revenue for the relevant period of
five years (2011-2016). The affidavit also states that the relevant goods in Class 25
were sold under the trade marks ‘DULCES’ and ‘DULCES EL CORTE INGLES’ in
commercial establishments in the Spanish territory. Additional documents, in
particular the catalogues and internet printouts, confirm the geographical extent. This
can also be inferred from the language of the documents (Spanish), the currency
mentioned (euros) and the website addresses such as diezminutos.es,
www.elcorteingles.es, tiendasmil.com.elcheelx and pekenajos.com. Therefore, the
evidence relates to the relevant territory.
However, only a few of the documents (two catalogues and one press article) are
dated within the relevant period. The other promotional materials submitted, the
internet printouts and the images of samples of products do not reveal any facts
regarding the relevant period, namely 2011-2016. Although some of the internet
showing dates within the relevant period, this information refers only to the dates on
took effect. It does not show whether or not products under the relevant trade marks
were actually advertised at that particular time. Therefore, the evidence of use
submitted by the opponent does not contain sufficient indications concerning the time
For the sake of completeness, as regards the extent of use, all the relevant facts and
circumstances must be taken into account, including the nature of the relevant goods
Decision on Opposition No B 2 727 264 page: 4 of 5
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 affidavit filed provides the Opposition Division with some information concerning
the commercial volume, the territorial scope, the duration, and the frequency of use.
As stated above, the affidavit summarises the sales revenues corresponding to the
marks at issue during the relevant period, between 2011 and 2016. The evidence
submitted by the opponent in order to prove genuine use of the earlier trade marks
relates exclusively to Spain. As stated above, the territorial scope of the use is only
one of several factors to be assessed in determining whether the use is genuine or
However, as the opponent did not submit any further evidence from third parties, in
particular from an independent source that would support the validity of its statement,
the Opposition Division considers that the opponent has not provided sufficient
indications concerning the extent of the use of the earlier marks.
Finally, as regards the nature of use, most of the evidence shows the use of the
earlier national trade mark, ‘DULCES’; only one document refers to the use of the
earlier EUTM, ‘DULCES – EL CORTE INGLES’. Furthermore, the evidence of use
shows that the national trade mark, ‘DULCES’, has also been used for products
(baby cosmetics and accessories) that are not covered by the earlier national
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 either of the earlier trade marks was genuinely used in the
relevant territory during the relevant period of time.
Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR
and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).
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
applicant in the course of these proceedings.
Decision on Opposition No B 2 727 264 page: 5 of 5
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
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Loreto URRACA LUQUE Arkadiusz GORNY Judit NÉMETH
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.