OPPOSITION No B 2 675 976

Cadenas de Establecimientos Mas y Mas, S.L., Avda. de Concha Espina, 8-6º Dcha, 28036 Madrid, Spain (opponent), represented by Juan Carlos Riera Blanco, Avda. Concha Espina, 8 – 6º Dcha, 28036 Madrid, Spain (professional representative)

a g a i n s t

Millennium & Copthorne International Limited, 36 Robinson Road, #04-01 City House, Singapore 068877, Singapore (applicant), represented by Jeffrey Parker and Company, The Grange, Hinderclay, Suffolk IP22 1HX, United Kingdom (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 675 976 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 899 331 , namely against all the services in Classes 35 and 43. The opposition is based on Spanish trade mark registrations No 2 593 925 and No 282 885, both for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – EARLIER SPANISH TRADE MARK No 282 885

According to Article 8(2) EUTMR, for the purposes of Article 8(1) EUTMR, ‘earlier trade marks’ means:

1. trade marks of the following kinds with a date of application for registration that is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

1. EU trade marks;

2. trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;

3. trade marks registered under international arrangements that have effect in a Member State;

4. trade marks registered under international arrangements that have effect in the Union;

2. applications for the trade marks referred to in subparagraph (a), subject to their registration;

3. trade marks that, on the date of application for registration of the EU trade mark or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the notice of opposition, the opponent indicated that the opposition is based on, inter alia, Spanish trade mark No 282 885, in relation to which Article 8(1)(b) EUTMR is invoked. However, according to the registration certificate submitted, this earlier right is a trade name and it does not constitute a valid earlier trade mark under Article 8(1)(b) and Article 8(2) EUTMR. This earlier sign should have been invoked in accordance with Article 8(4) EUTMR.

Therefore, the Opposition Division considers that the opponent has not substantiated this earlier trade mark invoked in the notice of opposition and in the observations filed together with the notice of opposition.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on the abovementioned earlier mark.

The opposition continues on the basis of earlier Spanish trade mark registration No 2 593 925 for which proof of use has been requested.

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.

The applicant requested that the opponent submit proof of use of Spanish trade mark registration No 2 593 925  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 contested application was published on 22/12/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 22/12/2010 to 21/12/2015 inclusive.

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

Class 35: Advertising, business management; business administration, office functions, organization of exhibitions for commercial or advertising purposes, services in retail stores, services on retail products through global computer networks.

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 09/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 21/10/2016 to submit evidence of use of the earlier trade mark. This time limit was extended until 21/12/2016. On 21/12/2016, 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.

The evidence to be taken into account is the following:

• Printouts from the website www.supermasymas.com, which refer to the history of the group and its franchise network in relation to the supermarket chains ‘mym’ and ‘minymas’.

• Printouts from the website www.mymdonata.com (dated 2014), which show ‘mym’ supermarkets and goods offered for sale and promoted in advertising leaflets.

• Document (undated) entitled ‘Servicio franquicia rural integrada know-how H.L.R “minymas” & “mym”’ explaining the functioning of the rural franchises ‘minymas’ and ‘mym’ granted by Hijos de Luis Rodriguez, S.A. (franchisor).

• Article, dated 12/12/2014, relating to the IDEPA award granted in 2014 to Hijos de Luis Rodriguez, S.A., for its network of rural franchises in Spain.

• Application form for the participation in the IDEPA awards 2014.

• Extract from the website www.supermasymas.com relating to the IDEPA award 2014 granted to Hijos de Luis Rodriguez, S.A., for its project related to the franchises ‘mym’ and ‘minymas’.

• Press articles, dated 2012, referring to the new franchises ‘masymas’ and ‘mym’ in Spain (León and Nava (Asturias)).

• Two franchise contracts, dated 15/04/2011 and 06/03/2012, for the establishment of ‘mym’ franchises (supermarkets).

• Three invoices, dated 2012, addressed to the franchisor Hijos de Luis Rodriguez, S.A., in relation to the printing of the shop sign ‘mym’ (for window displays, shop window, shopfronts, etc.) and photographs of supermarkets showing the figurative sign  in their shopfronts.

• Extracts from www.facebook.com showing the figurative sign, as depicted above, in supermarkets.

• Photographs of one ‘mym’ supermarket in Pola de Gordón (Asturias) and photographs of the figurative sign ‘mym’ (as depicted above) in the shopfronts of supermarkets.

• Six invoices, dated 2010-2013, addressed to the franchisor Hijos de Luis Rodriguez, S.A., in relation to the printing of leaflets and posters for the supermarket chain ‘mym’.

• Photographs of leaflets and posters promoting some goods offered by the supermarket chain ‘mym’. They are dated 2011, 2012 and 2013.

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.

Genuine use of a trade mark cannot be proven 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 (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

In the present case, the documents show that the sign ‘mym’ is used to identify some franchised supermarkets. The franchisor, Hijos de Luis Rodriguez, S.A., which runs the supermarket chain ‘masymas’, has expanded its business through the development of a network of franchised supermarkets under the signs ‘mym’ (supermarkets) and ‘minymas’ (stores).

Contrary to the opponent’s arguments, the Opposition Division considers that, at most, the earlier trade mark is used for retail services for foodstuffs, which consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Even though the supermarkets identified under the earlier sign ‘mym’ are franchised, the earlier sign is not used for the management of franchised businesses or for business management services. The opponent runs a network of supermarkets through an internal franchise system and this system is used to develop its own retail services. The franchise services are not provided independently to third parties. Therefore, the opponent has not shown public or outward use of any kind of business services in Class 35.

Concerning the use of the earlier sign for retail services for foodstuffs, the evidence does not give sufficient indication of the extent of the commercial activities of the opponent under the earlier trade mark.

The Opposition Division was not provided with any relevant indication of the commercial volume of sales or turnover figures, or any documents concerning the frequency of use. The opponent has not submitted invoices, receipts, balance sheets or other commercial documents showing, for instance, sales transactions. Although the invoices show that the opponent has ordered some leaflets and posters to promote its goods, there is no indication of the numbers of leaflets issued and distributed to potential consumers (their circulation area and numbers). Likewise, although the invoices show that the opponent has established some supermarkets with the shop sign ‘mym’, this is not sufficient to show the extent of use. Furthermore, the figures mentioned in the application form for participation in the IDEPA awards 2014 concern both ‘minymas’ and ‘mym’. There are no figures for ‘mym’ supermarkets only. The same can be said in relation to the figures mentioned in the document entitled ‘Servicio franquicia rural integrada know-how H.L.R “minymas” & “mym”’. Futhermore, this document is not dated or signed and its origin is not indicated.

Therefore, even taken in its entirety, the evidence submitted does not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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

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) 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

Benoit VLEMINCQ

Frédérique SULPICE

Begoña URIARTE VALIENTE

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.