OPPOSITION No B 2 279 530

Tech Data España, S.L. UNIP., C/. Acero, 30-32, 5ª Planta, 08038 Barcelona, Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008 Barcelona, Spain (professional representative)

a g a i n s t

IOT Tech Limited, Unit 2, Ballinderry Business Park, Ballinderry Road, Lisburn, Northern Ireland BT28 5SA, United Kingdom (applicant), represented by Ansons, 4th Floor, Imperial House, 4-10 Donegall Square East, Belfast, Northern Ireland BT1 5HD,

United Kingdom (professional representative).

On 30/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 279 530 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 and services in Classes 9, 37, 42 and 45 of European Union trade mark application No 11 997 855 . The opposition is based on Spanish trade mark registration No 2 740 461 for the word mark ‘INTOUCH’. The opponent invoked Article 8(1)(a) and (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 shall 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 shall be rejected.

The applicant requested that the opponent submit proof of use of Spanish trade mark No 2 740 461.

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 04/09/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 04/09/2008 to 03/09/2013 inclusive.

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

Class 35: Business management, negotiation and acquisition services, including through the email on behalf of third party products and services, updating of advertising material, management of computer files, e-commerce services (e-commerce), namely order taking and order fulfilment services, electronic mail (e-commerce), specifically benefits products and services financial information and services relating to franchising; publication of publicity texts, market research and opinion polls, organization of fairs for industrial purposes or advertising, third party services, rental of advertising space in networks; advertising web sites, services marketing, electronic commerce and trade through global computer networks worldwide.

Class 39: Distribution services of computer equipment, including consumables.

On 08/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 13/06/2016 to submit evidence of use of the earlier trade mark. This deadline was extended by two months and expired on 13/08/2016. On 03/08/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Document I: a printout of the results of a Google search for the words ‘INTOUCH TECH DATA’, printed on 24/11/2015.

• Document II: a printout in English of the guide for the use of the tool ‘INTOUCH’, undated. The services offered by the opponent Tech Data are for managing accounts online, protection against fraud, presale tools and order modification.

• Document III: an extract of Tech Data’s ‘Guide of Services and Solutions’ relating to ‘In Touch’, in Spanish and translated into English, undated. ‘In Touch’ is a package of electronic tools for performing commercial operations such as selling, communicating with customers, product searches and price comparisons.

• Documents IV, VI and VII: printouts in Spanish and English from Tech Data’s website relating to ‘In Touch’, printed on 26/11/2015 with no other date reference. The service is defined as a website for online business transactions.

• Document V: certification from ICANN WHOIS, a domain name provider, certifying the registration of the domain name ‘intouch.techdata.com’ in 1991 and its expiry on 16/04/2016.

• Document VIII: extracts from Tech Data’s business guide 2012-2013, in Spanish and translated into English, for ‘In Touch’ services.

• Document IX: advertisements for the e-business web tools ‘Intouch’, in Spanish and translated into English, with no date reference.

• Documents X and XI: printouts of the opponent’s marketing services guides for 2007-2008 and 2009-2010 in Spanish and translated into English. ‘Intouch’ is offered under ‘e-marketing’ and is defined as a private party e-commerce website with product information on prices.

• Document XII: two advertisements for discounts to purchases made during two promotion periods, namely New Year 2012 and May 2013.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 indication and proof of the place, time, extent and nature of use has to be determined by considering the entirety of the evidence submitted.

The Opposition Division finds it appropriate to begin the present assessment with the criteria of extent.

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.

In the present case, although the printouts from the opponent’s website indicate the existence of an online tool called ‘InTouch’ also written as ‘Intouch’ or ‘In Touch’, among other IT logistics management services offered by the opponent, the documents submitted do not show genuine use of the mark.

In the business guide 2007-2008, it is stated that ‘We currently register an average of 2,970 different users each day, of which 2,580 are different customers’ .However, the opponent did not submit invoices relating to the provision of services under the ‘InTouch’ trade mark to any customer. The opponent could easily have provided invoices issued during the five-year period. However, the opponent has merely relied on some printouts from its website, most of which are undated or dated after the relevant period, which do not provide sufficient information concerning the commercial volume, duration and frequency of use of the earlier trade mark.

These documents do not offer information regarding annual sales of the services bearing the mark ‘InTouch’, nor has the opponent provided any evidence originating from independent sources. The certification from ICANN merely states that the opponent registered, in 1991, the domain name intouch.techdata.com. There is no information on the extent and results of the two marketing campaigns either. Therefore, these items do not show outward use of the trade mark.

Although the use of the trade mark does not need to be quantitatively significant for it to be deemed genuine, in the absence of any evidence concerning the commercial volume, duration and frequency of use of the trade mark in question, such as invoices or sales figures, and the weakness of the probative value of the documents submitted, the Opposition Division finds the information provided insufficient to demonstrate the commercialisation of any services bearing the trade mark ‘InTouch’.

It is concluded that the documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier mark.

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

Elisa ZAERA CUADRADO

Loreto URRACA LUQUE

Ana MUÑIZ RODRÍGUEZ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.