OPPOSITION No B 2 200 718

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Putu LLC, c/o National Registered Agents, Inc. 160 Greentree Drive, Suite 101, Dover Delaware 19904, United States of America (holder), represented by Albright IP Limited, County House Bayshill Road, Cheltenham Gloucestershire GL50 3BA, United Kingdom (professional representative).

On 26/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 200 718 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 the international registration designating the European Union No 1 151 056, namely against goods in Class 9, 16 and 18. The opposition is based on European Union trade mark registration No 4 301 768. The opponent invoked Article 8(1)(b) EUTMR.

LEOLO	LOLO
Earlier trade mark	Contested sign

Preliminary remark

On 12/06/2013, the opponent filed a notice of opposition claiming as the basis of the opposition the goods of European Union trade mark registration No 4 301 768, namely all the goods in Classes 18 and 25.

By decision rendered in Cancellation proceedings No 10 189 C of 02/12/2015, the Cancellation Division declared EUTM No 4 301 768 partially invalid by revoking the trade mark for all the goods in Class 18 and part of the goods except footwear, including sports footwear in Class 25.

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.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based.

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 relevant date (first republication of the contested international registration plus six months) is 18/09/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 18/09/2008 to 17/09/2013 inclusive.

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

Class 25:        Footwear, including sports footwear.

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 31/07/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/10/2014 to submit evidence of use of the earlier trade mark. On 18/09/2014, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

Therefore, the evidence to be taken into account is the following:

• Item 1: affidavit of 22/08/2014, signed by Mrs. Martina Bauer, Holder of Procura of the Opponent responsible for advertising and distribution of goods which were carried out by other companies. The affidavit refers to the additional enclosed evidence and gives explanation thereof.
• Item 2: 23 copies of opponent’s advertisements issued in 2008, 2009, 2010, 2012 and 2011, showing the use of the mark ‘LEOLO’ on goods such as kids sandals, kids shoes, summer slippers for kids, sneakers for kids, boots for kids, boots for girls, kids shoes for free time (casual shoes), ballerinas, for example . According to the affidavit (Item 1), the advertisements were published in approximately 280 daily newspapers in Germany from 17/03/2008 until 18/03/2013.
• Item 3: copies of different leaflets issued by ISA-TRAESKO GmbH, showing  and  mark on different children shoes. The attachment also includes 57 invoices issued in the period from 14/04/2008 until 22/07/2013 for the sales of children sneakers, girl ballerina shoes, shoes for children made of leather, sandals for kids, etc. The articles that appear on the invoices also appear in the mentioned leaflets (Item 2). According to the opponent, the invoices were issued by opponent’s suppliers.

As far as the affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are 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 independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the affidavit are supported by the other items of evidence.

The evidence submitted, namely the invoices, advertisements and leaflets show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned and some addresses in Germany. Therefore, the evidence relates to the relevant territory. All of the evidence is dated within the relevant period.

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.

In the affidavit, it is stated that the mark ‘LEOLO’ was used in the period from 18/03/2008 until 18/03/2013, that several products were sold in Germany under the mentioned mark and that sales and distribution were carried out by other sales companies of ALDI Nord group of companies. According to the affidavit, ALDI Einkauf GmbH & Co. consented in advance to the use of the trade mark by the other sales companies of the ALDI Nord group of companies in sales and distribution. Finally, the affidavit also provides with sales figures per articles ‘girl sandals, girls summers shoes, athletic sandals for kids, fashion boots for kids, kids leather boots, girls ballerina, summer slipper for girls.

As far as the invoices (item 3) are concerned, it is evident, that they were issued by the German company ISA-TRAESKO GmbH which, according to the opponent, is the supplier of the opponent’s company. The invoices were in fact addressed to the opponent’s company ‘ALDI Einkauf GmbH & Co. oHG’ and all relate to the purchase/selling of the goods such as children sneakers, sandals for kids, girls ballerina shoes, boots for girls, etc.. They do not prove the actual sale of the mentioned goods and as a result they are not capable of corroborating the information in the affidavit. The invoices only prove the sale and delivery of different footwear for kids to the opponent.

In that regard, it should be noted that, in accordance with the case-law, genuine use of a 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 (08/07/2004, , T-334/01, HIPOVITON, EU:T:2004:223, § 35 and 36, and 08/07/2004, T-203/02, VITAFRUIT, EU:T:2004:225, § 41).

Some extent of the use of the earlier mark may be drawn from the advertisements (Item 2), which according to the opponent were published in approximately 280 daily newspapers in Germany. However, it must be noted that neither the affidavit nor the advertisements contain information relating to the names of the newspapers at issue or their circulation of these newspapers in Germany. Moreover, the evidence also does not provide information in which or how many ALDI shops in Germany the products were available for sale.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier mark.

The additional evidence which could have made it possible to support the information on the extent of the use of the earlier mark contained in affidavits and advertisements and invoices from suppliers to the opponent, such as copies of till receipts, sales invoices or accounting documents referring to the footwear for kids bearing the mark ‘LEOLO’ during the relevant period on the Union’s territory is not of a kind which it would have been difficult for the applicant to obtain (18/01/2011, T-382/08, not published, VOGUE, EU:T:2011:9, §51 and the case-law cited).

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) 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

Lars HELBERT

Janja FELC

Judit NÉMETH

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.