OPPOSITION No B 2 442 229

Freigel Foodsolutions, S.A., Ensija s/n Pol. Ind. San Isidre, 08272 Sant Fructuoso del Bages (Barcelona), Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Frigel Sas di Piluso Giuseppe, C.Da Iannaci,13, 89851 Filandari (VV), Italy (applicant), represented by Studio Rubino SRL, Via Lucrezia della Valle, 84, 88100 Catanzaro, Italy (professional representative).

On 13/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 442 229 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 13 074 489  (figurative mark), namely against the goods in Classes 29 and 30. The opposition is based on European Union trade mark registrations No 5 966 247  (figurative mark) and No 4 324 976 ‘FREIGEL’ (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, namely of European Union trade marks No 5 966 247 and No 4 324 976.

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 27/08/2014. 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 from 27/08/2009 to 26/08/2014 inclusive.

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

EUTMs No 5 966 247 and No 4 324 976

Class 29:        Meat, fish, poultry and game; meat extracts; frozen, preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31:         Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.

On 06/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/09/2016 to submit evidence of use of the earlier trade marks. On 25/08/2016, within the time limit, the opponent submitted evidence of use.

The opponent filed the following evidence:

• Annex No 1: a sworn statement, dated 26/07/2016, in which the opponent’s general manager, Mr Ramón Talamàs Jofresa, declares that the opponent’s turnover was EUR 87 661 973.04 for the period between 2009 and 2014. There is no reference to the type of products sold or under which trade mark.

• Annex No 2: copies of 12 invoices issued by the opponent between 06/04/2009 and 18/08/2014 and showing, in the top left corner, the sign and, below it, an indication of the opponent’s denomination and address. The invoices refer to, inter alia, sales of ‘PIZZA BASES’, ‘CHICKEN TACOS’, ‘CHILLI BURRITOS’, ‘COD-FLAVOURED CROQUETETTES’, ‘COD FRITTERS’, ‘TUNA PIES’, ‘HAKE STICKS’, ‘PORTIONS OF HAKE’, ‘MEAT CANNELLONI’, ‘FISH NUGGETS’, ‘HOME-MADE HAM CROQUETTES’, ‘SQUID RING FRITTERS’, ‘CHICKEN NUGGETS’, ‘CHICKEN CROQUETTES’, ‘FISH STICKS’, ‘ONION RINGS’ and different types of flour. The quantities are indicated either by number of boxes and number of units per box or by weight (e.g. from 1 to 720 boxes and from 6 000 kg to 25 tonnes). The information on prices and total amounts has been redacted.

• Annex No 3: copies of brochure covers (dated 2009 and 2011) and an index (total four pages). The brochure covers display images of several food products, inter alia lasagnes, cannelloni and croquettes, and display the signs  in the upper central part,  in the centre and, at the bottom,  followed by ‘cocinamos para ti’ (Spanish for ‘we cook for you’). The evidence also displays (on what appears to be the back cover of a brochure) the sign , followed by the phrase mentioned above and the opponent’s contact information (address, phone and fax numbers, website). The index contains a list of products, pictures of them and page numbers. No trade mark or date is shown in the index.

• Annex No 4: photographs of the fronts and backs of packages of ‘NUGGETS DE POLLO’ and ‘DELICIAS DE POLLO’, bearing the sign  and showing, inter alia, expiry dates of 11/2017 and 12/2017 and the opponent’s company name and address () (four pages in total). None of the packaging displays either of the earlier ‘FREIGEL’ trade marks.

Assessment of the evidence – factors

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. 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 indications and proof as to the place, time, extent and nature of use has to be determined by considering the entirety of the evidence submitted.

Most of the evidence is dated within the relevant period. Furthermore, the invoices and the documents in Annexes 3 and 4 show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and addresses in Spain. Therefore, the evidence contains sufficient indications as regards the time and place of use.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Regarding the use of the sign as a trade mark in the course of trade, the evidence of use must show that the earlier trade marks have been used as a trade mark on the market. In this regard, it should be recalled that, although it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T-105/13, TrinkFix, EU:T:2014:1070, § 28-38), there must be a clear link between the use of the mark and the relevant goods and/or services.

In the present case, however, an overall assessment of the evidence does not show sufficient indications that would allow the Opposition Division to conclude that the goods are identified and offered on the market under the earlier trade marks.

The only documents that display the earlier figurative trade mark  are the invoices (Annex No 2) and the extracts from brochures (Annex No 3).

The sign  appears at the top of the invoices, as described above. Nevertheless, and taking into account that the sign is depicted in the field where the entity issuing the invoices is indicated, such use appears to be rather as a business identifier of the opponent’s company (a business or trade name) than as a trade mark.

Admittedly, the use of a sign can serve more than one purpose at the same time, and the presentation of a company/business/trade name at the top of invoices, depending on how the sign appears on them, may be suitable to support genuine use of the registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 44-45). However, mere use of such a name at the top of the invoices without a clear reference to specific products or services is not sufficient.

There are no other references to the earlier marks in relation to the products listed in the invoices and therefore it is not possible to determine with the required degree of certainty the possible link between the opponent’s trade marks and the relevant goods listed in the invoices. Furthermore, it is noted that the invoices dated 20/02/2013 and 28/02/2014 include, among other products, ‘Nuggets de pollo’, which appear to be in fact put on the market under a completely different trade mark (as shown in the photographs of packaging of ‘NUGGETS DE POLLO’ bearing the mark ‘Preli’ in Annex No 4).

The remaining evidence is not capable of remedying these deficiencies. The extracts from brochures (in Annex No 3), as described in detail in the list of evidence, feature three signs, one of them being the earlier figurative mark No 5 966 247. The way it is shown (at the bottom of the page, followed by the phrase ‘we cook for you’ and in one instance by the opponent’s identification details) supports the conclusion that it was used not as a trade mark but, again, as a business identifier (business/trade name). The use of a sign as a business or trade name cannot be regarded as trade mark use, unless the relevant goods themselves are identified and offered on the market under this sign. However, in the present case it is not possible to ascertain under which sign the products in the brochures/index were effectively put on the market and consequently to determine if the earlier signs have been used in such a way as to indicate commercial origin.

For the sake of completeness, it must be noted that the remaining evidence, namely the sworn statement (Annex No 1) and the photographs of packaging (Annex No 4) do not make any reference to the opponent’s trade marks and therefore they do not have probative value as regards whether the earlier trade marks have been used as trade marks on the market or not.

According to case-law, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence which demonstrate actual and sufficient use of the trade mark on the market concerned (15/12/2016, T-391/15, ALDIANO / ALDI, EU:T:2016:741, § 45).

In the present case, the evidence when assessed as a whole shows use of the earlier figurative mark No 5 966 247 as a business/trade name without any clear reference to specific goods. In this regard, it should be recalled that ‘the purpose of a company, trade or shop name is not, of itself, to distinguish goods or services … The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered “in relation to goods or services” within the meaning of Article 5(1) of the directive’, that is, it cannot be considered to be used as a trade mark (11/09/2007, C-17/06, Céline, EU:C:2007:497; 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156).

Conclusion

As the evidence submitted does not show use of the earlier signs as a trade mark, the Opposition Division considers that the opponent has not submitted sufficient indications concerning the nature of the use of the earlier marks.

The methods and means of proving genuine use of a mark are unlimited. The above finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the opponent chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

As stated above, the factors of time, place, extent and nature of use are cumulative, and the evidence must provide sufficient indications of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as the nature of the use of the earlier trade marks has not been established, it is not necessary to assess the other criteria (nature of use – that is, use of the mark as registered and use in relation to the registered goods – and extent of use).

The Opposition Division concludes therefore 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) 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

Keeva DOHERTY

Biruté SATAITE-GONZALEZ

Oana-Alina STURZA

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.