OPPOSITION No B 2 707 159

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

MI&CU Gourmet S.L., Calle Ponent 6-8, Poligono Industrial Sant Pere Molanta, 08734 Olerdola, Barcelona, Spain (applicant), represented by Isern Patentes y Marcas S.L., Avenida Diagonal 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

On 28/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 707 159 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 051 253, namely against all the goods and services in Classes 30 and 35. The opposition is based on European Union trade mark registration No 3 426 376. The opponent invoked Article 8(1)(b) EUTMR.

The signs in dispute are the following:

MARKUS	MIRCUS
Earlier trade mark	Contested sign

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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.

The applicant requested that the opponent submitted proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 3 426 376.

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.

In the present case, the date of filing of the contested trade mark is 28/01/2016. 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 28/01/2011 to 27/01/2016 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery, edible ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices and ice in Class 30.

On 25/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/10/2016 to submit evidence of use of the earlier trade mark. On 12/10/2016, within the time limit, the opponent submitted evidence of use.

As the opponent marked the submission of the evidence as confidential, the Opposition Division will describe the evidence only in the most general terms without divulging any commercially sensitive data.

The opponent submitted the following evidence:

• Item 1: an affidavit dated 29/09/2016 and signed by an employee of the opponent stating that the trade mark ‘MARKUS’ was used during the period 10/03/2011 to 09/03/2016. The affidavit also indicates that the enclosed advertisements (item 2) were published in approximately 55 daily newspapers appearing in Germany on the dates 05/09/2011, 27/09/2012, 17/01/2013 and 05/09/2016 and that the enclosed labels (item 3) were placed on the German market during the years 2011-2016. Furthermore, the affidavit indicates that the enclosed supplier invoices (item 4) were issued to other sales companies of the ALDI Nord group of companies that carry out the sales and distribution of the opponent’s goods and that the opponent, ALDI Einkauf GmbH & Co. oHG, consented in advance to the use of the trade mark by these companies. Finally, the affidavit includes a table with figures of minimum quantities and sales in euros for the years 2011-2016 of different articles listed as ‘Gold’, ‘Mild’, ‘Gold entc.’, ‘Exklusiv’ and ‘Bio’. The total quantities sold of the different articles per year are above 15 million articles (with the exception of 2016 which only includes figures between March and April);

• Item 2: 18 extracts in German from ALDI product catalogues (as shown by the headers and/or footers of the documents submitted) including advertisements of different ‘MARKUS’ branded coffee products named ‘Gold’, ‘Mild’, ‘Gold entcoffeiniert.’, ‘Hochland Exclusiv’ and ‘Bio’ in the manner as shown in the example below:

Some of the extracts are undated whereas some have different handwritten dates from the relevant time period and others include different dates, also from the relevant time period, on the catalogue pages themselves or in the texts featured. Some of the dates of these pages also coincide with the dates of publication of advertisements in newspapers mentioned in the opponent’s affidavit as shown in the below example:

• Item 3: eight copies of packaging labels for the different coffee products mentioned above with handwritten dates (four from January 2013 and four from September 2016); and

• Item 4: 19 invoices issued between 2011 and 2016 by one supplier to Aldi GmbH & Co. KG with delivery addresses in different German cities. All invoices include various references to different ‘MARKUS’ coffee products, such as ‘MARKUS KAFFEE GOLD’, ‘MARKUS KAFFEE MILD’ and ‘MARKUS ENTCOFFEINIERT’, and each product has been purchased in thousands of items every time.

Assessment of the evidence – factors

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).

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 are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43) and the opponent must thus prove each of these requirements. However, the sufficiency of the evidence as to the place, time, extent and nature of use has to be determined by considering the evidence submitted in its entirety.

Place

The evidence submitted in items 1-4 as described above shows that the place of use is Germany. This can be inferred from the language of the documents enclosed in items 2-4 (German), the addresses in the invoices and mention of the country (Germany) and from the references to the website www.aldi-nord.de in the header and/or footer of the product catalogues enclosed in item 2. Therefore, the evidence relates to the relevant territory (the European Union).

Time

Although two of the invoices were issued after January 2016, and are thus outside the relevant time period, all other invoices were issued within the relevant period. Moreover, although some of the product catalogue extracts are undated or otherwise include handwritten dates only, many of the extracts also feature dates on the catalogue pages or in the texts featured which correspond to the relevant time period. Therefore, the evidence of use sufficiently indicates the time of use.

Nature of use

In the context of Rule 22(3) EUTMIR, the required ‘nature of use’ of the trade mark refers to its use as a trade mark in the course of trade, the use of the mark as registered, or of a variation thereof according to Article 15(1)(a) EUTMR, and use of the mark for the goods and services for which it is registered.

The evidence submitted shows use of the earlier mark as follows:

The earlier trade mark is a word mark for ‘MARKUS’. The additional verbal element ‘KAFFEE’ is non-distinctive for the relevant goods and the figurative element is only decorative. Therefore, the additional elements do not alter the distinctive character of the mark and, as a result, the above use is use of the earlier mark.

The evidence of use of the earlier mark also shows a link between the use of the mark and different coffee products as referred to above. As a result, the evidence as a whole also shows use of the sign as a trade mark for coffee.

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 to be 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.

However, this does not mean that such statements are totally devoid of all probative value. The final outcome depends on the overall assessment of the evidence in the particular case. Nevertheless, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (invoices, advertisements, packaging, etc.) or evidence originating from independent sources. Therefore, the probative strength of the further material submitted is very important.

The affidavit provides certain indications of the extent of use of the earlier mark as it refers to almost the whole of the relevant period of time and contains figures of minimum quantities and sales in euros of different coffee products. In addition, the quantities and sales figures are significant and suggest that a considerable amount of coffee was sold. Nonetheless, as explained above, this information is provided by the opponent, so its probative value depends on the strength of the further material submitted.

In view of this, it is necessary to assess the additional evidence to see whether or not the statements made in the affidavit are sufficiently supported by the other evidence.

The invoices submitted show purchases of significant quantities of coffee described as ‘MARKUS’. However, they are all issued by the same supplier to Aldi GmbH & Co. KG in different cities. Consequently, the invoices merely prove that the opponent purchased ‘MARKUS’ branded coffee but do not prove the opponent’s own sales of the same and it cannot be assumed by mere supposition that those goods were actually re-sold by the opponent in Germany, or elsewhere within the European Union, in the relevant period.

The labels submitted as item 3 with handwritten dates, although showing use of the earlier mark in relation to coffee, do not give any indications regarding any actual use of the mark on the market, or the frequency and regularity of any such use. Likewise, although the opponent states in the affidavit that the advertisements (item 2) were published in approximately 55 daily newspapers appearing in Germany on four different dates within the relevant time period, as already clarified above, the evidence submitted in item 2 does not consist of copies of advertisements in daily newspapers but rather consists of advertisements featured in ALDI product catalogues. No indications or evidence has been provided as to how this product catalogue is distributed, or to what extent and frequency it is disseminated, to end consumers.

Therefore, the further material submitted cannot be considered to support the statements made in the affidavit as regards the extent of use of the earlier mark in the market.

In this respect, according to well-established case-law, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T-39/01, HIWATT, EU:T:2002:316, § 47; 06/10/2004, T-356/02, VITAKRAFT, EU:T:2004:292, § 28).

Since the opponent did not submit any till receipts or accounting documents to prove the actual sale of the coffee products purchased to end consumers or any other evidence that could support the quantities and sales figures listed in the affidavit, it is not clear if, or to what extent, the coffee products were finally sold.

The fact that the opponent ordered ‘MARKUS’ branded coffee products from a supplier does not establish their real presence on the market. As a result, none of the factual evidence submitted by the opponent shows any actual sales of the goods.

Taking into account the characteristics of the goods for which the mark is registered, the opponent could easily have submitted more evidence of commercial transactions, copies of the relevant pages of at least some of the 55 daily newspapers in which the earlier mark, according to the opponent, had been advertised and indications and evidence concerning the distribution of its ALDI product catalogue, including for example the number of issues disseminated, in what way and with what frequency. While it is true that the proprietor (or opponent) 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 nevertheless 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, as already confirmed by the General Court in its decision of 15/12/2016 in Case T-391/15, ALDIANO / ALDI, EU:T:2016:741, § 48, 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 for the opponent to obtain.

In view of all the above and an overall assessment of the evidence submitted, in the absence of further supporting material, the opponent cannot be deemed to have proven, to the requisite legal standard, the extent of the use of the earlier mark.

Conclusion

Since the opponent did not submit sufficient evidence concerning 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 objectively prove, without probabilities or suppositions, 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 the extent of use has not been established for the earlier mark, it is not necessary to establish exactly for which goods the trade mark would have been deemed to have been genuinely used, had the extent of use been sufficiently proven.

As the proof of use submitted for the earlier mark on which the opposition is based is insufficient as a whole, 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

Benjamin WINSNER

Sam GYLLING

Frédérique SULPICE

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.