OPPOSITION No B 2 560 301

SPAR Österreichische Warenhandels-Aktiengesellschaft, Europastr. 3, 5015 Salzburg, Austria (opponent), represented by Pressl Endl Heinrich Bamberger Rechtsanwälte GmbH, Erzabt-Klotz-Str. 21, 5020 Salzburg, Austria (professional representative)

a g a i n s t

Enrique Rubio Polo, Gran Via Marqués del Turia, nº 2; puerta 19, 46005 Valencia, Spain (applicant), represented by Padima, Calle Gerona 17, 1º A-B, 03001 Alicante, Spain (professional representative).

On 26/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 560 301 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 13 920 483 for the word mark ‘RUBIO’, namely against all the goods in Classes 24, 25 and 28. The opposition is based on International registration No 791 064 for the word mark ‘RUBIN’, designating Austria, Czech Republic, Italy, Hungary, Croatia, Slovenia and the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

According to Rule 15(2)(b) EUTMIR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) EUTMR or where the opposition is based on Article 8(3) EUTMR, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is a European Union trade mark.

According to Rule 17(2) EUTMIR, if the notice of opposition does not clearly identify the earlier mark on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

On 06/08/2015, the opponent filed notice of opposition against the contested application where it indicated that the basis of the opposition is the International registration No 791 064 (word mark ‘RUBIN’) designating European Union, Czech Republic, Austria, Italy, Hungary, Croatia, Slovenia. In its further submission, filed on 18/12/2015, i.e. after the three month period for filing an opposition, in order to substantiate the opposition, the opponent makes reference to the International registration No 914 204 for the figurative trade mark , designating i.a. European Union as a further earlier right on which the opposition is based.

However, the above mentioned International registration was not invoked as a basis of the opposition within the three-month opposition period. Therefore, invoking further earlier rights by the opponent in the above mentioned observations must be rejected as not admissible.

Hence, the opposition shall be rejected as not admissible, as far as it is based on International trade mark registration No 914 204.

Furthermore, in the notice of opposition, with regard to International registration No 791 064 (word mark ‘RUBIN’), Austria was indicated as one of the designated countries. Although the opponent mentioned in its statement and within the substantiation time limit that the Austrian trade mark registration No 76 521 is the basic registration for the International registration No 791 064, this cannot be construed as either invoking the Austrian trade mark registration No 76 521 as another earlier mark on which the opposition is based, or as substantiation of the International trade mark registration No 791 064 regarding the designation of Austria. As evident from the ROMARIN extract submitted by the opponent, Austria is not within the designated countries of the International Registration No 791 064.

Consequently, the Office will examine the opposition only in relation to the earlier International registration No 791 064 (word mark ‘RUBIN’) designating European Union, Czech Republic, Italy, Hungary, Croatia, Slovenia.

In addition, in the notice of opposition, the opponent indicated that the opposition is directed against some of the goods, including all the goods covered in Class 28 by the European Union trade mark application No 13 920 483 and based on part of the goods covered by the earlier marks, namely goods in Classes 24, 25 and 28. However, in its statement of 27/01/2017, the opponent wrote the following: “It has to be noted that the Trademark Applicant did not register the relevant trademark RUBIO in class 28. Consequentially, the trademark opposition does not refer to class 28.” Whereas an opposition could be withdrawn/partially withdrawn at any time during the proceedings, the withdrawal, however, must be explicit and unconditional. The Opposition Division considers that the abovementioned opponent’s statements are neither explicit nor unconditional and therefore will examine the opposition in relation to all goods in Classes 24, 25 und 28 as indicated in the opposition notice.

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 the earlier trade mark on which the opposition is based.

In the present case the contested application was published on 07/05/2015.

The request was submitted in due time and is admissible as the earlier International trade mark registration No 791 064 designating the Czech Republic, Italy, Hungary, Croatia, Slovenia as well as the subsequent designation of the European Union were registered more than five years prior to the relevant date mentioned above.

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 07/05/2010 to 06/05/2015 inclusive.

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

Class 24:        Fabrics and textile goods not included in other classes; bed and table covers.

Class 25:        Clothing, footwear, headgear.

Class 28:        Games, toys; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

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 27/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 27/06/2016 to submit evidence of use of the earlier trade mark. This deadline was extended upon request by the opponent until 02/09/2016. On 01/09/2016, within the time limit, the opponent submitted the following evidence of use.

• Attachments A-F: Extracts from six flyers from Interspar Austria, for the period between 28/01/2010 and 11/02/2015, depicting different assortment of products offered by Interspar e.g. coffee from Jacobs, UNCLE BEN’S rise, drinks bearing the brands COCA-COLA, FANTA, SPRITE, inflatable beds from INTEX, quilts, towels, bed sheets, bed linen, pillows, blankets bearing the following sign . The flyers are in German.
• Attachments G-J: Extracts from several flyers from Maximarkt Austria, for the period between 14/11/2011 and 25/10/2014 depicting different assortment of products offered by Maximarkt e.g. LANDLIEBE yoghurts, cream cheese PHILADELPHIA, NIVEA shower gels, BOSCH vacuum cleaners, quilts, towels, bed sheets, bed linen, pillows, blankets, bath robes, pillows in a shape of a dog, all of the latter goods bearing the following sign . The flyers are in German.
• Attachment K: Extracts from the SPAR-Group’s own brands catalogue showing the sign  next to e.g. following products bed linen, bed sheets, towels. A reference word RUBIN made in the text (in German) of the catalogue. The catalogue is from August 2016.
• Attachments L-M: Extracts from the opponent’s SAP BW-System, which are presented as an overview of turnover and sales volume in Austria. For example the overview from the Attachment L shows the turnover and the sales volume from April 2010 until April 2015 and the gross-turnover-online amounts to a total of € 14.165.863,45. According to the opponent, these overviews include information about sale of all products bearing trade mark ‘RUBIN’ in Austria (excluding figures from Maximarkt).
• Attachments N-R: Overviews of sales volume and turnover of products bearing trade mark ‘RUBIN’ distributed by Maximarkt Austria between April 2010 and April 2015. The data used in these overviews are also taken from the opponent’s SAP BW-System.
• Attachments S-T: undated copies of print templates used for print of labels and products inserts for tea towels and bed linen, bearing the following sign  as well as undated photos of products bearing either  or . Some of the photos are identical to the photos and labels already submitted previously. This set of evidence includes also photos of different pages from SPAR-Group’s own brand catalogue for 2016.
• Attachments U: Extracts from a flyer for the period between 11/05/2011 and 24/05/2011 depicting different assortment of products offered by Spar, Interspar in Slovenia e.g. toothpaste SENSODYNE, hairdryer BOSCH. On the page 21 several products like towels, bath mats, bath robes are shown while the sign  is present next to these products.
• Attachment V: Extracts from the catalogue of products offered in Slovenia by Spar showing i.a. towels, bed linen, bed sheets, bath mats, blankets, while either a word ‘RUBIN’ or the sign  is present on every page. The catalogue is in Slovenian and is from 18/06/2016.
• Attachment W: Extracts from a flyer of the products offered by Spar, Interspar in Slovenia in the period between 01/10/2014 and 14/10/2014 showing i.a. bed linen, bed sheets, quilts, pillows with the sign  next to them.
• Attachments X-Y: Overview of international turnover and sales volumes in Slovenia, Croatia und Hungary in the period between 08/04/2010 und 08/04/2015. This document is compiled by the opponent and is in German.  
• Attachment Z: Overview of sales figures of products bearing the trade mark ‘RUBIN’ in Italy in the period between the years 2011-2015. This document is compiled by the opponent and the description of the products is in Italian.
• Attachment AA: 

1. Affidavit of 28/08/2016, in which Mrs Jakimovska, managing director of the company Comfy-Angel DOO Prilep, former Yugoslav Republic of Macedonia, declares that her company supplied pillows, duvets, m. toppers to the opponent between 2013 and 2016 and this in considerable numbers, e.g. 10846 pcs of pillows in 2015, 13716 pcs duvets in 2014. Mrs Jakimovska furthermore states that all these products were distributed in Austria, Italy, Slovenia, Hungary and Croatia and were bearing the trade mark ‘RUBIN’.
2. Affidavit signed on 31/08/2016 in Salzburg, Austria by Mr. Mario Wiesinger, head of purchasing management in Interspar Gesellschaft m.b.H. where he states that the „the data of provided lists are true and right, and can be traced back to the SAP-merchandise information system Business Warehouse. I copied the data from the SAP-merchandise information system into Excel –sheets and structured it clearly without changing any data.”
3. Affidavit of 31/08/2016, signed by Mr. Michael Aichhorn, manager of the company VOG AG, Linz, Austria, where he confirms that his company has been a supplier of SPAR Österreichische Warenhandels-AG for more than 50 years. He furthermore declares the following: “For 5 years we have been supplying SPAR regularly with kitchen towels, slippers, blankets and beach towels (approx. 20.000-30.000 pcs./year) that were marketed and distributed in Austria, Italy, Slovenia, Hungary and Croatia using the trademark at issue, RUBIN.”

This set of evidence includes several undated photos of templates for the labels, which include the following sign.

•  Attachment AB: Excerpts from the companies’ registry concerning SPAR Österreichische Warenhandels-Aktiengesellschaft, Interspar Gesellschaft m.b.H., Maximarkt Handels-Gesellschft m.b.H., Simpex Import Export GmbH.
• Attachment AC: Invoice from NPDRUCK Niederösterreichisches Pressehaus to Intespar Gesellschaft m.b.H. for printed matters delivered on 27/08/2014. One of the numbers in this invoice refers to 2 567 277 pieces.

The opponent had already submitted the following documents, on 18/12/2015, (retransmitted on 10/02/2015 upon request from the Office, due to their bad quality) as a part of the arguments and evidence in support of its opposition:

• Screenshots of the digital internet archive service Wayback machine, showing the opponent’s website www.spar.at/ as it was on 31/05/2008 and on 29/10/2012 and including depictions of a duvet, a towel respectively while the word RUBIN and the sign  are present on these screenshots too.
• Screenshot of the opponent’s website www.spar.at/, which according to the opponent is from 25/11/2015. It includes a picture of a towel hanging out of the bathtub; the sign  is placed next to it whereas the word RUBIN appears underneath, followed by text in German. The date 25/11/2015 is not visible in the screenshot itself.
• Undated photo of a packaging including the sign   .  
• Undated photo of three towels, with the label including  or  and the description of the product.
• Undated photo of shop stands with towels, bath mat, bed linen and bed sheets. The sign  is recognizable there.  
• Flyers from Interspar Austria, for the weeks 05/2015, 05/2014, 05/2013, 05/2012, 04/2011, 04/2010 depicting many products of different brands and i.a. matrasses, quilts, bed linen, pillows and towels with the sign  next to them, including indication of their price and their description in German.  
• Flyers from Maximarkt, for the weeks 48/2015, 20-21/2014, 21/2013, 4/2012, 30/2011 showing i.a. bed linen, table covers, bed sheets, tea towels, carpets, quilts, pillows, blankets, towels, bath robes, with the sign  next to them, including their price and their description in German.
• Flyers from Spar/Interspar in Slovenia from September 2015, September 2014, September 2013, March 2012, March 2011, July 2010 showing i.a. quilts, pillows, bed sheets, bed linen, blankets, towels, bath robes, bath slippers with the sign  next to them, including their price and their description.  
• Flyers from Interspar in Croatia from 2015 showing i.a. quilts, bed sheets, bed linen, towels, bath robe, blankets and pillows with the sign  next to them, including their price and their description.

Trade marks must be used in the territory where they are protected – in the case at hand, the relevant territories are the European Union, Italy, Hungary, the Czech Republic, Slovenia and Croatia.

The opponent claims that the International trademark No 791 064 is actively used in Austria, Hungary, Slovenia, Croatia and Italy since 2007 and this by the opponent itself, its subsidiaries or other related companies such as Interspar Gesellschaft m.b.H., Maximarkt Handels-Gesellschft m.b.H., Spar Slovenija d.o.o., Spar Hrvatska d.o.o. It further states that the earlier trade mark ‘RUBIN’ has been used until 2015 also in the Czech Republic. According to the opponent’s statement submitted on 01/09/2016 “all and every products marketed under the trade mark RUBIN (see in detail further below) are being offered and sold in all an every domestic and foreign branches/stores”, overall in at least 917 domestic and foreign branches.

Regarding the use of the International trademark No 791 064 designating the Czech Republic, Hungary and Italy the Opposition Division notes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark ‘RUBIN’ was genuinely used in these territories during the relevant period of time.

The opponent did not submit any evidence to back its affirmation when it comes to the use in Czech Republic. As to use of the earlier mark in Hungary and Italy, there is only one document provided for each country, namely the overview of turnover and sales volume in Hungary and Italy, respectively (Attachments X-Z). The opponent did not submit any other objective document that could support its statements or the figures included in the mentioned overviews. The remaining evidence like the flyers, catalogues and the invoice for print out of printed matters refer to Austria, Slovenia and Croatia and as such do not provide the Opposition Division with any information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the goods bearing the sign ‘RUBIN’ in the Czech Republic, Hungary and Italy.

Consequently, the Opposition Division will proceed with the examination of the above listed evidence in relation to use of the International trade mark registration No 791 064 for the word mark ‘RUBIN’ designating Croatia, Slovenia and the European Union.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, flyers, catalogues, overviews of the sales volume and turnover and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The applicant furthermore points out that the sign appearing on the submitted evidence of use –  is clearly different to the earlier mark on which the opposition is based, the word mark ‘RUBIN’.

However, in the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the sign shown in majority of the submitted materials is the figurative sign . This graphical representation is not of such a nature as to alter the distinctive character of the word mark in question. The word ‘RUBIN’ is clearly present in that sign and the letter ‘r’ although dominant and placed above the word ‘RUBIN’ is in fact a reference to the first letter of that word. The combination of these two elements is situated within a label like frame of a rather decorative nature. Furthermore, the trade mark ‘RUBIN’ appears as registered within the text on some of the flyers, catalogues and on the opponent’s website.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

However, in the present case, the documents submitted do not sufficiently indicate the extent of use, as they do not provide the Opposition Division with sufficient objective information concerning the commercial volume, the duration and the frequency of use.

It has to be emphasised that, in accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods. These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43).

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).

As far as the above mentioned affidavits are concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. 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. The probative value of such statements depends on whether or not they are supported by other types of evidence or evidence originating from independent sources.

Consequently, the Office makes a distinction between statements coming from the sphere of the interested parties themselves and statements drawn up by an independent source, following the established case-law. Such statements are not in themselves sufficient to prove genuine use (09/12/2014, T-278/12, PROFLEX, EU:T:2014:1045, § 54). The extent of use claimed in these documents needs to be corroborated by additional documentary evidence.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the affidavits are supported by the other items of evidence.

The overviews of the turnover and sales figures are compiled by the opponent and are neither signed nor stamped. They are furthermore not supported by any invoices or other pertinent evidence, such as the opponent’s annual reports.  

All the submitted photos whether depicting the labelled products, the examples of packaging or the photos from the shop stands are undated. In relation to the photos of the shop stands, the opponent writes the following “…these are currently taken at the INTERSPAR-store in 5020 Salzburg, Europastraße 1. We assure that this presentation has also being made in the past; however, no pictures of the past are available”.

The undated photos of goods bearing the earlier sign and of the examples of packaging are not a proof that the respective goods have been effectively commercialised within the relevant markets and the relevant period. They neither contain any reference regarding commercial transactions nor indicate when or to what extent the earlier sign has come to the attention of the public.

Regarding the screenshots of the opponent’s website, these do not establish the intensity of the alleged commercial use of the earlier trade mark ‘RUBIN’, which may be shown by, inter alia, a certain number of visits to the site, emails received via the sites or the volume of business generated.

The provided extracts from the flyers and the catalogues do not confirm the actual distribution or sale of the relevant products as they neither contain any reference regarding commercial transactions nor indicate when, where or to what extent the earlier mark has come to the attention of the public. For example, it is not clear how many of these flyers were indeed distributed to the consumers or where the distribution took place.

Moreover, there is no additional evidence, which would have made it possible to corroborate the indications that the products depicted in the catalogues and flyers were indeed distributed, such as invoices, purchase orders or delivery notes from the relevant period of time and in the relevant territories. Therefore, the provided evidence did not allow to determine if, where and when the relevant goods reached the consumers (whether retailers or end users).

According to the opponent, the invoice submitted in the Attachment AC, confirms that the flyers submitted in the Attachments A-F, have a circulation of more than 2,5 million pieces in Austria. However, this invoice only confirms that NPDRUCK Niederösterreichisches Pressehaus delivered on 27/08/2014 some printed matters (2 567 277 pieces) to Intespar Gesellschaft m.b.H. The invoice does not include any information on their content, time and territory of their distribution.

Apart from the mentioned invoice (Attachment AC) the evidence filed, originates solely from the opponent and is not corroborated by any additional pieces of objective evidence emanating from an independent source or any other objective document that could support statements made by the opponent. 

Hence, even if the above evidence proved the nature and possibly the time and place of use of the earlier mark, it would not in any event furnish evidence to support the information contained in the affidavits as regards extent of that use. Apart from the fact, that none of the relevant evidence emanates from independent sources or would be confirmed by an independent source, the opponent has failed to provide any further information and evidence which would allow the Opposition Division to make an objective assessment of the market presence of the earlier mark, such as the invoices, purchase orders, delivery notes, which could have given more conclusive weight to the evidence submitted.

In order to prove use of the trade mark, Article 42(2) EUTMR requires information which allows reaching a safe conclusion that specific products bearing a certain mark have been sold within a relevant period in the relevant territory.

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 (judgment of 18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

The opponent, however, merely asserts but does not prove that products under the earlier mark actually reached the consumers in the relevant territories. The evidence submitted does not contain sufficient objective information regarding the extent of use of the earlier mark within the relevant period and territory.

The Opposition Division, therefore, concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territories 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 as far as it is based on International registration No 791 064 designating Czech Republic, Italy, Hungary, Croatia, Slovenia and the European Union.

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

Konstantinos MITROU

Renata COTTRELL

Claudia MARTINI

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.