OPPOSITION No B 2 666 173

OMC Sociedad Anónima Española, Francesc Teixido nº 38, Parque Granland Badalona Sur,  08918 Badalona/ Barcelona, Spain (opponent), represented by IPAMARK S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain  (professional representative)

a g a i n s t

Töpfer Kulmbach Gmbh, Am Kreuzstein 5, 95326 Kulmbach, Germany (applicant), represented by Pfenning Meinig & Partner Mbb, Joachimsthaler Str. 10 – 12, 10719 Berlin, Germany (professional representative).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 666 173 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 and services of European Union trade mark application No 14 774 707 for the figurative mark.

The opposition is based on, Spanish trade mark registrations No 2 574 072 for the figurative mark, No 2 581 310 for the figurative mark, No 2 325 886 for the figurative mark  and No 2 745 101 for the figurative mark. The opponent invoked Article 8(1)(b) EUTMR.

A) SUBSTANTIATION

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 present case the evidence filed by the opponent consists of extracts from a data base.

According to the Office practice, extracts from databases are accepted only if their origin is an official database, that is to say, the official database of one of the national offices or WIPO, and if they are equivalent to a certificate of registration or last renewal. The unaltered electronic image of an online database extract reproduced on a separate sheet is also acceptable as long as it contains an official identification of the authority or database from which it originates.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade marks, because the documents submitted by the opponent do not contain an official identification of the authority or database from which they originate. The references to the data base Sitadex and the Spanish Patents and Trademarks Office (SPTO) are included on the translations but not on the original extracts.

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.

Furthermore, although the earlier rights on which the opposition was based had been duly substantiated, the opposition would also have been rejected, as it will be demonstrated below, because the evidence furnished by the opponent was insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during the relevant period of time for the goods and services for which they were registered.

B) 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 all the trade marks on which the opposition is based, namely Spanish trade mark registrations No 2 574 072 for the figurative mark, No 2 581 310 for the figurative mark, No 2 325 886 for the figurative mark  and No 2 745 101 for the figurative mark .

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 01/12/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 01/12/2010 to 30/11/2015 inclusive.

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

1. Spanish trade mark registration No 2 574 072 for the figurative mark

Class 35:        Import, export, representation, promotion and retail services of machinery for graphic arts.

2. Spanish trade mark registration No 2 581 310

Class 35:        Import, export, representation, promotion and retail services of machinery for graphic arts.

3. Spanish trade mark registration No 2 325 886 

Class 37:        Assembly, installation, repair, maintenance and after sales services of machinery for graphic arts.

4. Spanish trade mark registration No 2 745 101

Class 2:        Printing offset inks for letterpress.

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 14/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 14/12/2016 to submit evidence of use of the earlier trade marks, which has been extended until 14/02/2017 in the letter sent by the Office on 15/12/2016. Within the time limit, on 14/02/2017, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• 3 Invoices (with all the financial information blanked out by the opponent), dated 30/06/2014, 31/07/2015 and 17/11/2015 and addressed to clients in Spain (Barcelona), Italy (Milan) and Germany (no specific address or name is given). They bear the following: first two invoices (the first invoice does not contain the figurative element placed above the letters ‘omc’ and on the second invoice this figurative element is hardly visible) ,both accompanied by the abbreviation ‘sae’, placed underneath and the third invoice , also accompanied by the abbreviation ‘sae’, placed below the verbal element ‘omc’. According to the Opposition Division, the first invoice refers to services, probably spare parts replacement services because it mentions replacement costs and a delivery term for a client based in Barcelona (Spain). The second invoice makes a reference to a spare part, namely Miyakoshi servo driver for the model MLP13A-016E1 and mentions its delivery term for a client based in Milan (Italy). The same is valid for the third invoice mentioning various Miyakoshi ink vibrators rollers and their delivery term for a client based in Germany (no specific place or name is given).

• Two articles in Spanish dated: July/August 2015 and June 2014 referring to the opponent’s company OMC and its intention to cooperate with two other companies in the future on the market of labelling equipment.

• Printouts from the opponent’s website dated 14/02/2017 and showing various industrial printers, all bearing the name ‘Komori’ and referring to , accompanied by the abbreviation ‘sae’, placed underneath, together with its contact data.

• The document providing the opponent’s contact data mentioning the company name OMC, S.A.E. It does not make any reference to the relevant earlier trade marks.

The material mentioned above, in particular the invoices and the articles (in Spanish) submitted by the opponent refer to the relevant territory, namely Spain and they are mostly dated within the relevant period.

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.

In this regard, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market. The trade mark has to be used for goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (judgment of 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37). This does not mean that the opponent has to reveal the total volume of sales or turnover figures.

Concerning the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred as well as the frequency of those acts on the other (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

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. The exact decisive threshold proving genuine use cannot be defined out of context. The turnover and volume of sales of the product must always be assessed in relation to all the other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. Use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market (judgments of 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).

Low turnover and sales, in absolute terms, of a medium- or low-priced product might support the conclusion that use of the trade mark in question is not genuine. However, with regard to expensive goods or an exclusive market, low turnover figures can be sufficient (decision of 04/09/2007, R 0035/2007-2, Dinky, § 22). It is, therefore, always necessary to take the characteristics of the market in question into account (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 51).

A de minimis rule cannot be laid down. Use of the mark by a single client, which imports the products for which the mark is registered, can be sufficient to demonstrate that such use is genuine if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (order of 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 24 et seq.).

However, the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opposing party to produce additional evidence to dispel possible doubts as to its genuineness (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 37).

In the present case, the invoices (3) filed by the opponent (with important financial data blanked out) can hardly be considered corroborative evidence to demonstrate that the opponent’s use of its earlier marks is genuine. Additionally, they refer, in the opinion of the Opposition Division, rather to repair, maintenance and after sales services, whereas they bear the mark registered for the services in Class 35, which consist of import, export, representation and promotion and retail services of machinery for graphic arts. The services, like import, export, representation and promotion belong to services which support other services or help other businesses to do or improve their business. In particular, import export services are rendered by specialised consultants and are often subject to specific commercial agreements and, therefore, these services are considered to relate to business administration. They do not relate to simply selling goods (the actual retail or wholesale) to customers in another country. They are preparatory or ancillary to the commercialisation of such goods. The evidence provided by the opponent, in particular the invoices, does not contain any reference to the above mentioned characteristics and, therefore, it is clear that, according to the invoices, the opponent has not provided these services. As far as the services of representation and promotion are concerned, they consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. Therefore, the material filed by the opponent, neither the invoices nor the photographs of various machines and the articles cannot constitute evidence of genuine use of the opponent’s earlier rights in relation to these services. The abovementioned articles rather inform the reader about the opponent’s intention to cooperate with two other companies in the future. Finally, the abovementioned three invoices delivered by the opponent show that the quantity of the goods sold, although they are not daily consumption goods, is rather modest with regard to the relevant Spanish market (about 46 million habitants) and in the absence of further corroborative material in this regard the opponent filed to prove the extent of genuine use of its earlier marks in relation to the opponent’s retail services of machinery for graphic arts.  

As mentioned above, the opponent did not provide any material that demonstrates a genuine commercial justification of the use of its earlier marks in relation to the goods and services for which they were registered. In other words, the opponent must show that its earlier marks are used in relation to these goods and services in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for goods/services they represent. In the present case, the opponent did not provide any evidence that would show that the economic aspect of the use of its trade marks in relation to the goods and services mentioned above was significant enough not to be concluded as merely token, minimal or notional for the sole purpose of preserving the rights conferred by the earlier marks.

Furthermore, the earlier marks No 2, 3 and 4 do not appear at all in the evidence filed by the opponent. In case of the earlier mark No 1, appearing always accompanied by the abbreviation ‘sae’ – ‘Sociedad Anonima Española’ and in the context in which it is referred to in the evidence (often together with the opponent’s company contact references), the Opposition Division notes that the opponent’s sign is rather used as a company name than as a trade mark which serves to distinguish the goods and services of one undertaking from the other and, therefore, cannot be considered to constitute use of the sign as a trade mark for the purpose of identifying the goods and services covered by this Spanish registration.

It must be noted first of all that genuine use implies real use of the mark on the market concerned for the purpose of identifying the goods or services. Genuine use is therefore to be regarded as excluding minimal or insufficient use when determining that a mark is being put to real, effective use on a particular market. In that regard, even if it is the owner's intention to make real use of his trade mark, if the trade mark is not objectively present on the market in a manner that is effective, consistent over time and stable in terms of the configuration of the sign, so that it cannot be perceived by consumers as an indication of the origin of the goods or services in question, there is no genuine use of the trade mark.

In the present case, the lack of important financial information on the invoices and further explanations from the opponent regarding a genuine commercial use of its earlier marks in relation to the goods and services for which they were registered does not allow the Opposition Division to conclude that the opponent has seriously tried to acquire a commercial position in the relevant market. In this regard, the articles referring to the opponent’s cooperation agreements with two other companies in the future can in fact only be considered to indicate a possible intention to acquire a commercial position in the relevant market, which does not prove consistent, stable and real use of the opponent’s earlier marks capable of amounting to genuine use of these marks.

In that regard it must be held that 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.

The few documents showing actual use of the marks on the market do not refer to the goods and services for which the marks are registered and/or do not include the signs as registered. Furthermore, considered as a whole, they are manifestly insufficient to justify a finding of genuine use, in particular because they are not accompanies by any other objective indication that would confirm the opponent’s presence on the marketplace, as a manufacturer of goods and/or provider of services.

The remaining documents provided by the opponent refer either to photographs of various machines or to the opponent’s contact data, which by themselves are not capable to demonstrate the extent of use of the opponent’s earlier rights in the relevant territory.

As stated above, the extent of use is one of four factors (place, time, extent, nature) to be assessed in the determination of whether the use is genuine or not and these factors are cumulative. Therefore, the absence of any of them will lead to the conclusion that the opponent failed to prove genuine use of its earlier marks in relation to the goods and services for which they are registered and the rejection of the opposition.

Consequently, in the present case, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during the relevant period of time for the goods and services for which they are registered.

The opposition must therefore be rejected as unfounded.

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

Gueorgui IVANOV	Monika CISZEWSKA	Pedro JURADO  MONTEJANO

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.