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: