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
1. Opposition No B 2 200 718 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
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.
Earlier trade mark
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.