OPPOSITION No B 2 532 276
Logi-K GmbH, Auf’m Halskamp 11, 49681 Garrel, Germany (opponent), represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Kranhaus 1, Im Zollhafen 18, 50678 Köln, Germany (professional representative)
a g a i n s t
Logistica Integrata Parmense S.R.L., Via Vienna 6 – Fraz. Bianconese, 43010 Fontevivo (PR), Italy (applicant), represented by Ing. Dallaglio S.R.L., Via Mazzini 2, 43121 Parma, Italy (professional representative).
On 16/03/2017, the Opposition Division takes the following
1. Opposition No B 2 532 276 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the services of European Union trade mark application No 13 654 173 for the figurative mark , namely against all the services in Class 39. The opposition is based on European Union trade mark registration No 2 490 126 for the word mark ‘LOGI-K’. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 2 490 126.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
The contested application was published on 11/03/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 11/03/2010 to 10/03/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 39: Transport; packaging and storage of goods; travel arrangement.
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.
On 12/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/03/2016 to submit evidence of use of the earlier trade mark. The opponent submitted evidence of use within the time limit.
The evidence to be taken into account is the following:
- Exhibit 1: a press release available on the current website of the company Jungheinrich (www.jungheinrich.com), which states that the opponent, which is a subsidiary of the Lieken Group – Germany’s leading bakery goods specialist – has stood for expertise and knowledge in logistics since 2002. The opponent’s almost 1 000 trucks cover more than 43 million kilometres annually
- Exhibit 2: two copies of letters sent by the opponent to customers in Mahlberg on 19/05/2011 and in Cologne on 07/01/2014, referring to prices and remuneration for the delivery services offered. The sign is shown on the letterheads.
- Exhibit 3: an interview with the Managing Director of the opponent’s company published in the January 2015 issue (No 1) of the industry magazine brot + backwaren. The opponent’s representative states that the opponent has more than 500 transport vehicles and delivers bakery products to 15 000 customers daily. In addition, according to an article published on 17/12/2010 in Lebensmittelzeitung (issue 50), the opponent supplies, as a logistical subsidiary of Lieken AG, 17 500 food retail stores daily.
- Exhibit 4: business information concerning the opponent, as published on the website of independent business enterprise Creditreform (www.creditreform.com), which confirms that the opponent’s business was established in 2002, employs 1 450 people and had a turnover of almost EUR 200 million in both 2012 and 2013. It is also stated that the opponent is active in the ‘cargo handling and other services’ sector.
- Exhibit 5: excerpts from a presentation that the opponent gave to one of its customers on 12/01/2010. The presentation shows the opponent’s various locations in Germany.
Assessment of the evidence — factors
According to 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 services. These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43).
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods 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 submitted and listed above provide the Opposition Division with insufficient information about the commercial volume of use, the territorial extent of the area where the trade mark was used and the duration and frequency of use.
With regard to the press release, which gives details of the Logi-K logistics company on the website of the company Jungheinrich, it should be noted that it is not dated. According to the press release, the opponent has been active in the logistics sector since 2002. However, the text does not provide any other dates. Consequently, the article cannot be regarded as falling within the relevant period.
The two letters do not indicate the specific services to be provided by the opponent. Furthermore, it is unclear whether or not the services were actually provided and to what extent.
In the two articles published in industry magazines, the company is linked to logistics, transport and the business of industrial baking, but it is not possible to deduce from these articles how the brand was used for the specific services. These documents contain information on daily deliveries and on the size of the company’s fleet and list the company’s locations in Germany. However, none of this shows how often, to whom, to what extent or during what period goods were actually delivered. Furthermore, it is not clear either whether or not, for whom and to what extent goods were packaged and stored.
The information about the turnover of the opponent’s company can be found in the business information concerning the opponent (Exhibit 4). However, it is not possible to identify the specific services from which the turnover was generated. The evidence merely provides general information, indicating that the company ‘handles freight’ and offers ‘other services’. It is not possible from this general information to clearly determine the specific services for which the mark has been used.
The opponent did not submit any other relevant information, such as detailed sales figures, price lists, orders, delivery notes or invoices indicating that the specific services on which the opposition is based had been provided externally. Further relevant information, such as affidavits, records from professional associations, extracts from tax and/or trade balances, is also missing. As a result, there is no evidence documenting the commercial volume of the use of the earlier 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 such as invoices or sales figures concerning the trade mark in question, the documents submitted do not provide the Opposition Division with sufficient information regarding the commercialisation of any services under the trade mark ‘LOGI-K’.
The Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove the extent of use of the earlier trade mark.
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.
In the present case the evidence submitted shows use of the sign as a company name without any clear reference to specific services.
‘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’, i.e. it cannot be considered to be used as a trade mark (11/09/2007, C-17/06, Céline, EU:C:2007:497, and 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156).
The Opposition Division considers that the evidence does not show use of the sign as a trade mark and, consequently, that the opponent has not provided sufficient evidence concerning the nature of the use of the earlier mark.
It is not clear from the evidence submitted whether or not the mark was used publicly and externally while providing the specific services on which the opposition is based. The nature of the use of the mark for the specific services during the relevant period cannot be deduced from the business information concerning the opponent submitted.
In the press release (Exhibit 1) and in the two press articles (Exhibit 3) ‘Logi-K’ is used with reference to the opponent’s company and without referring to specific services.
The same applies to the two letters (Exhibit 2) and the excerpt from the presentation (Exhibit 5). Once more, the use of the earlier sign for any specific services on which the opposition is based cannot be determined from the evidence. Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the nature of the use of the earlier mark.
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. As indicated above, the opponent has failed to prove genuine use of its 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).
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.
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
André Gerd Günther BOSSE
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.