OPPOSITION No B 2 623 018

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

Terragri, 18 Edith Cavell Street, Port Louis, Mauritius (applicant), represented by Cabinet André Bertrand & Associés, 95 Rue Jouffroy d’Abbans, 75 017 Paris, France (professional representative).

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

DECISION:

1.        Opposition No B 2 623 018 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 14 531 362, namely against all the goods in Classes 16 and 30. The opposition is based on German trade mark registration No 2 010 901. The opponent invoked Article 8(1)(b) EUTMR.

The marks in conflict are the following:

Mauritius	MAURICIA
Earlier trade mark	Contested sign

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 submitted proof of use of the trade mark on which the opposition is based, namely German trade mark No 2 010 901.

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 16/09/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 16/09/2010 to 15/09/2015 inclusive.

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

Class 30:        Coffee, cocoa, flour, bread, sponge cakes, cakes, pastry, confectionery, chocolate and ices.

On 28/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 02/09/2016 to submit evidence of use of the earlier trade mark. On 23/08/2016, within the time limit, the opponent submitted evidence of use.

The opponent filed the following evidence:

• Item 1: an affidavit, dated 11/08/2016, of Ms Mine Karakus, an employee of the opponent, affirming that the trade mark ‘Mauritius’ was used in Germany during the period 16/09/2010 to 16/09/2015. The affidavit refers to the additional enclosed evidence (see below under items 2 to 4) and gives an explanation thereof. Furthermore, the document states that the sales and distribution of the goods were carried out by other sales companies of the ALDI Nord group of companies and that the opponent, ALDI Einkauf GmbH & Co. oHG, consented in advance to the use of the trade mark by the said companies. Finally, the affidavit includes a table of ‘minimum sales’ figures per specific product, namely ‘Mauritius’ coconut and/or peanut chocolate. The quantities sold range from 618 000 to 1 670 000 and the values range from EUR 612 000 to EUR 1 655 000 for the period from 16/09/2010 to 16/09/2015.

• Item 2: copies of three advertisements for chocolate and pyramid cake bearing the trade mark ‘Mauritius’ (,,, ), published (according to the information provided in the affidavit) in three daily newspapers. They bear the handwritten dates 01/02/2010, 13/10/2011 and 15/11/2012, respectively. The documents are in German. The first advertisement mentions ‘ALDI informiert’ and the third one ‘ALDI’.

• Item 3: copies of two samples of packaging for coconut and peanut chocolate, respectively, bearing the opponent’s trade mark ‘Mauritius’ (,).

• Item 4: copies of 38 invoices issued between 07/09/2010 and 14/09/2015 by one supplier and addressed to Aldi GmbH & Co. KG in relation to the product ‘MAURITIUS COCONUT CHOCOLATE’. The evidence shows, inter alia, the delivery addresses (located in different cities in Germany), the number of cartons (between 64 and 960), the content per carton and the quantity (e.g. 128, 6 144, 30 720 or 36 864). The net value of the goods (expressed in euros) has been crossed out.

Assessment of the evidence – factors

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

Place of use

The evidence submitted (the advertisements, samples of packaging, invoices and affidavit) as a whole shows that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and the addresses in the invoices or mention of the country (Germany). Therefore, the evidence relates to the relevant territory.

Time of use

The invoices were issued within the relevant time period. Moreover, the dates on the advertisements correspond to the relevant period although they are handwritten. Therefore, the evidence of use sufficiently indicates the time of use.

Nature of use: use as a trade mark and use of the mark as registered

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

The evidence submitted shows a link between the use of the earlier sign and some of the relevant goods (see above under the list of evidence). The Opposition Division considers, therefore, that the evidence, when assessed in its entirety, shows use of the sign as a trade mark.

As regards the use of the mark as registered, the earlier mark was registered as a word mark. Advertisements and samples of packaging bear the earlier trade mark in a slightly stylised script as shown above. However, the stylisation does not alter the distinctiveness, since it is minimal and the word is clearly legible. The invoices contain reference to the earlier trade mark, albeit written in upper case letters, which is immaterial. Therefore, the evidence shows use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Extent of use

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.

As far as the affidavit under item 1 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.

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.

The affidavit provides certain indications of the extent of use of the earlier mark. Indeed, the document refers to the relevant period of time and contains references to the ‘minimum quantity’ and the ‘minimum sales in EUR’ for coconut/peanut chocolate. Furthermore, the quantities and sales figures are noteworthy and suggest that a considerable amount of chocolate was sold. Nonetheless, as explained above, this information is provided by the opponent, so its probative value depends on the further documentation submitted.

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 invoices under item 4 show significant quantities of ‘Mauritius’ coconut chocolate. However, they are all issued by the same supplier and addressed to different sales and distribution companies of the ALDI Nord group. Consequently, the invoices show that the opponent bought the chocolate but do not show if that chocolate was sold. Therefore, they prove the purchase but not the actual sale.

The documents under items 2 and 3, despite containing references to or showing the sign ‘Mauritius’ in relation to some of the registered goods in Class 30, do not give any indications regarding the territorial extent and/or scale of the use, or the frequency and regularity of use of the earlier mark. Therefore, these documents cannot be deemed to support the opponent’s assertions in the affidavit listed as item 1.

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 (15/12/2016, T-391/15, ALDIANO / ALDI, EU:T:2016:741, § 45).

Since the opponent did not submit any invoices proving the actual sale of the chocolate or any other evidence that could support the sales figures in the affidavit, it is not clear whether or not the chocolate was finally put on sale and to what extent. The fact that the opponent ordered chocolate does not establish its real presence on the market. Therefore, none of the factual evidence submitted by the opponent shows the actual sale of the goods.

Taking into account the characteristics of the goods for which the mark is registered, the opponent could have easily been able to produce more evidence of commercial transactions. While it is true that the proprietor has a free choice as to the means of proving extent of use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to show the reality of the commercial use of the mark at least to dispel any possible doubt that this use might be merely internal, sporadic or token.

Furthermore, the evidence which could have made it possible to support the information on the extent of the use of the earlier mark contained in the affidavit, such as copies of till receipts, sales invoices or accounting documents, is not of a kind which it would have been difficult to obtain (15/12/2016, T-391/15, ALDIANO / ALDI, EU:T:2016:741, § 48).

In an overall assessment of the evidence, the documents submitted by the opponent do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use. Against this background and in the absence of other supporting documentation, it cannot be determined that the earlier mark has indeed been commercially used during the relevant period in relation to all or some of the relevant goods, and that its use was such that it would create or preserve an outlet for the goods in question.

Conclusion

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).

Since the opponent did not submit sufficient evidence referring to the extent of use of the trade mark for the registered goods, 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.

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 to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as extent has not been established, it is not necessary to assess the other criteria (nature of use – use in relation to the registered goods).

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

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