OPPOSITION No B 2 477 944

PBM Import Société en Nom Collectif, 11, Boulevard Nominoe, 35740 Pace, France (opponent), represented by Fidal Rennes, 2 rue de la Mabilais CS 24227, 35042 Rennes, France (professional representative)

a g a i n s t

Atlas sp.z.o.o., Ul. Sw. Teresy od Dzieciatka Jezus 105, 91-222 Lodz, Poland (applicant), represented by Rumpel Spółka Komandytowa, Częstochowska 1 a, 93-115 Łódź, Poland (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 477 944 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 13 274 857, namely against all the goods in Classes 2, 17 and 19. The opposition is based on French trade mark registrations No 1 708 269 for ‘SILVERWOOD’ (word mark) and No 33 211 725 for  (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

European Union trade mark application No 13 274 857 was partially rejected on 06/06/2016 following decision on opposition No B 2 475 732 and was accordingly limited to goods in Classes 2, 17 and 19 not affected by the refusal.

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 shall 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 shall be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

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 17/11/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in France from 17/11/2009 to 16/11/2014 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:

French trade mark registration No 1 708 269:

Class 19:        Paneling, flooring, shutter blades, plinths.

Class 37:        Preparation work before painting and varnishing.

Class 40:        Protection products processing, wood processing by planing.

French trade mark registrations No 3 3211 725:

Class 19:        Nonmetallic transportable constructions; nonmetallic monuments; nonmetallic frameworks for building; nonmetallic partitions; wooden fences; wood pieces for garden, lawn and tree borders; door frames (not of metal); nonmetallic wainscotting; furrings of wood; parquet floors; parquet floor boards; nonmetallic beams; paving blocks and slabs of wood; cladding panels of wood; lumber; building timber; veneer wood; sawn timber; manufactured timber; semi-worked wood; moldable wood; wood trims; frames for windows and doors (not of metal); door casings (not of metal); door panels, not of metal; moldings, not of metal; cladding, not of metal; doors, not of metal, windows, not of metal; shutter slats, not of metal; baseboards, not of metal.  

Class 27: Carpets and rugs, doormats, mats, linoleum and other floor coverings; artificial turf; non-textile wall hangings; wallpaper; paper for wall coverings; floor coverings; products for covering floors.

Class 37: Building construction; repair of nonmetallic doors and windows, of nonmetallic framework for building; installation services for nonmetallic window and door frames, for door casings (not of metal), for nonmetallic door panels, for nonmetallic doors and windows; information regarding construction and repair; wallpapering; painting; outfitting of kitchens; building insulation; masonry; roofing; varnishing; fungicide and pest control treatment; rust-control treatment.

Class 40: Treatment of materials; information regarding treatment of materials; woodworking; timber felling and processing; planing; stripping finishes; sawing; electroplating; custom assembling of materials (for third parties).

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.

On 17/09/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 29/11/2015 to submit evidence of use of the earlier trade marks. Taking into account that the time limit expired on a day on which the Office was not open for receipt of documents and ordinary mail was not delivered, the time limit extended until the first day thereafter on which such was the case, namely 30/11/2015 (Rule 72 (1) EUTMIR).

The evidence shows that the place of use is France. This can be inferred from the language of the documents (French), and some addresses in France. Therefore, the evidence relates to the relevant territory. Moreover, most of the evidence is dated within the relevant period.

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

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.

The evidence provided consists of fifteen invoices issued between 2009 and 2013, for the sale of goods under the sign ‘SILVERWOOD’. However, only three of these invoices, dated 2012 (items 12, 13 and 14), actually refer to goods covered under the earlier marks, namely, panelling, for total amounts of EUR 1 686.87, EUR 7 603.13 and EUR 1 0419.84, respectively.

The remaining invoices dated 2009, 2012 and 2013, (items 1, 3 to 7 and 15 to 20), refer to goods that are not covered under either earlier French registration.

The evidence also includes six price lists, dated between 2008 and 2013 and referring to . However, only four of these lists (items 2, 8, 10 and 11) refer to goods covered by the earlier French trade mark registrations, namely cladding not of metal, panelling and non-metallic framework for building and plinths.

Taking into account that there are only three invoices that refer to goods covered under earlier trade mark ‘SILVERWOOD’ and that these invoices are dated 26/09/2012 and 29/10/2012, the Opposition Division considers that the evidence does not provide the Opposition Division with sufficient information concerning, in particular, the commercial volume, the duration, and the frequency of use of this earlier mark.

Likewise, the price lists that refer to goods covered under the earlier trade mark , do not provide any information regarding sales of such goods and as a consequence do not offer data allowing to establish, in particular, the commercial volume, the duration, and the frequency of use. The evidence provided should have been supported by additional evidence. For instance, invoices corresponding to the sale of goods covered under this earlier mark, such as cladding not of metal, panelling and non-metallic framework for building and plinths could have but have not been provided.

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

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 marks were genuinely used in the relevant territory during the relevant period of time.

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

Martina GALLE

Sandra IBAÑEZ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.