OPPOSITION DIVISION
OPPOSITION No B 2 736 992
Touring Club Italiano, Associazione non riconosciuta ex. art. 36 c. c. e. segg.,
Corso Italia, 10, 20122 Milano, Italy (opponent), represented by Bonelli Erede
Pappalardo Studio Legale, Via Barozzi, 1, 20122 Milano, Italy (professional
representative)
a g a i n s t
Globalia Corporacion Empresarial S.A., Ctra. El Arenal a Llucmajor km. 21,5 – Pol.
Son Noguera, 07620 Llucmajor (Baleares), Spain (applicant), represented by
Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional
representative).
On 12/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 736 992 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise
REASONS
The opponent filed an opposition against all the services of European Union trade
mark application No 15 299 001 , namely, against travel agency
in Class 39. The opposition is based on the following earlier rights:
– European Union trade mark registration No 1 648 005 ‘TOURING CLUB
ITALIANO’;
– Italian trade mark registration No 1 254 063 ‘TOURING CLUB ITALIANO’;
– Domain name ‘touringclub.it’ registered in the European Union for travel
agency including tourist information and assistance;
– Domain name ‘touringclub.com’ registered in the European Union for travel
agency including tourist information and assistance.
The opponent invoked Article 8(1)(b) EUTMR in respect of the two registered trade
marks and Article 8(4) EUTMR in respect of the domain names.
Decision on Opposition No B 2 736 992 page: 2 of 7
PROOF OF USE
In accordance with Article 47(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 submit proof of use of European Union
trade mark registration No 1 648 005 and Italian trade mark registration
No 1 254 063.
The date of filing of the contested application is 01/04/2016. The opponent was
therefore required to prove that the trade marks on which the opposition is based
were put to genuine use in the European Union and Italy from 01/04/2011 to
31/03/2016 inclusive.
The request was submitted in due time and is admissible given that the earlier trade
marks were registered more than five years prior to the relevant date mentioned
above.
Furthermore, the evidence must show use of the trade marks for the services on
which the opposition is based, namely the following:
European Union trade mark registration No 1 648 005
Class 39: Tourist offices and travel agencies, including tourist information and
assistance, escorting of travellers, arranging of cruises, arranging of
tours, travel arrangement, sightseeing [tourism].
Italian trade mark registration No 1 254 063
Class 39: Tourist offices and travel agencies, escorting travellers, vehicle towing,
rental of boats, horses and cars; arranging of cruises, arranging of tours,
travel arrangement, passenger transport, sightseeing.
According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), 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 or services in
respect of which it is registered and on which the opposition is based.
On 16/02/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2)
EUTMIR, in force before 01/10/2017), the Office gave the opponent until 21/04/2017
to submit evidence of use of the earlier trade marks. On 21/04/2017, within the time
limit, the opponent submitted evidence of use. The opponent also refers to the
documents already provided on 01/12/2016 and includes them as part of the
evidence of use.
Decision on Opposition No B 2 736 992 page: 3 of 7
The evidence to be taken into account is the following:
Copies of the opponent’s publication ‘Touring-il nostro modo di viaggiate’, and
document originating from the opponent detailing its print run and circulation
data for 2012-2015;
Extracts of the opponent’s publication "Paradises" ("I Paradise") for summer 2011;
"Paradises" ("I Paradisi") magazines from 2012 until 2016;
Promotional offers of tours to La Maddalena, Isole Tremiti, Marina di Camerota;
Affidavit signed by Mr. Giuseppe Bianchini;
Promotional offers of tours to the holiday villages La Maddalena, Isole Tremiti,
Marina di Camerota for 2014 and 2015;
Promotional newsletter for "Paradises" ("I Paradise”);
Touring Club Italiano "Study Holiday" "Vacante Studio" description;
Extracts of the opponent’s publication "Study Holiday" ("Vacanze Studio") for the
summer 2011; "Study Holiday" ("Vacanze Studio") magazines from 2012 until
2016;
Promotional offer for the "Study Holiday" ("Vacanze Studio");
Extracts of the opponent’s publication "Club Tours" ("Viaggi del Club") for 2016;
"Club Tours" ("Viaggi del Club") magazines for the years 2011, 2014, 2015;
Sublicense agreement;
Screenshot, dated 21/04/2017, of a promotional video dated February 2016
describing the Touring Club Italiano's services;
Screenshot of a promotional video, dated February 2014, on the Touring Club
Italiano's holiday village at La Maddalena;
Screenshot, dated 21/04/2017, of a promotional video, dated February 2014, on
Touring Club Italiano's holiday village at Isole Tremiti;
Screenshot, dated 21/04/2017, of a promotional video, dated February 2014, on
Touring Club Italiano's holiday village at Marina di Camerota;
The opponent’s publication Touring Club Italiano "Open for you" ("Aperti per Voi")
(explanation); "Open for you" ("Aperti per Voi") (list of places) 2014; Touring
Club Italiano "Open for you" ("Aperti per Voi') Maps in Milan; Touring Club
Italiano "Open for you" ("Aperti per Voi”) in Milan; Touring Club Italiano "Open
for you" ("Aperti per Voi'), "Casa Verdi" in Milan; Touring Club Italiano "Open for
you" ("Aperti per Voi”) in Naples, Capua and Salerno; Touring Club Italiano
"Open for you" ("Aperti per Voi”) in Cremona; Touring Club Italiano "Open for
you" ("Aperti per Voi') in Turin;
The opponent’s publication “Touring Club Italiano "With Consuls of Touring Club
Italiano in Lombardia" ("Con i consoli del TCI della Lombardia') 2011 (extract);
Touring Club Italiano "With Consuls of Touring Club Italiano in Lombardia"
("Con i consoli del TCI della Lombardia') 2011 – 2016; Touring Club Italiano
"With the Consuls of Touring in Campania" ("In Campania con i Consoli del
Touring”) 2010-2011 (extract); Touring Club Italiano "Campania with Touring"
("In Campania con il Touring”) 2014-2016;
Touring Club Italiano Orange Flags (description);
Screenshot, dated 21/04/2017, of a promotional video, dated 24 march 2016 on
the initiative "Orange Flags" ("Bandiere Aranciona");
EUIPO Search Report.
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, and its
commercial volume, duration and frequency.
Decision on Opposition No B 2 736 992 page: 4 of 7
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 documents filed do not provide the Opposition Division with sufficient information
concerning the commercial volume, the territorial scope, the duration, and the
frequency of use.
There is no independent evidence given about the advertising of the earlier marks in
connection with all the services it is registered for in independent press. There are no
press articles provided. There is no evidence placing the earlier marks in a relevant
market situation in relation to the services for which the marks are registered. There
is no evidence or photos about the presence of the marks in trade shows or third
party retail or wholesale establishments. There is no evidence given about the actual
provision and sale of any of the opponent’s services to clients.
Despite the high number of documents which were submitted, the evidence consists
only of the opponent’s own catalogues and extracts thereof. The print run and
circulation numbers included do not give any additional value, since there is no
evidence supporting them and they cannot be put in the market context.
In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in
accordance with its function, of use of the mark as registered, or of a variation thereof
according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for
the goods and services for which it is registered.
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
territories during the relevant period of time.
Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and
Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) in
respect of the European Union trade mark registration No 1 648 005 ‘TOURING
CLUB ITALIANO’ and pursuant to Article 47(2) and (3) EUTMR and Article 10(2)
EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) in respect of the
Italian trade mark registration No 1 254 063.
Decision on Opposition No B 2 736 992 page: 5 of 7
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF
TRADE — ARTICLE 8(4) EUTMR
The opponent has also based its opposition on Domain name ‘touringclub.it’ and
‘touringclub.com’ registered in the European Union for travel agency including tourist
information and assistance.
From the outset, it has to be mentioned that the domain name ‘touringclub.com’ is
registered in the name of Marco Luigi Girolami as can be seen on the Whois Record
provided by the opponent together with the Opposition notice. As this domain name
is not in the name of the opponent, but of a third person who is not an opponent in
the present proceedings, the opposition should fail based on this earlier right as it is
not substantiated.
According to Article 8(4) EUTMR, upon opposition by the proprietor of a
non-registered trade mark or of another sign used in the course of trade of more than
mere local significance, the trade mark applied for will not be registered where and to
the extent that, pursuant to the Union legislation or the law of the Member State
governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration
of the European Union trade mark, or the date of the priority claimed for the
application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent
trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following
requirements:
the earlier sign must have been used in the course of trade of more than local
significance prior to the filing of the contested trade mark;
pursuant to the law governing it, prior to the filing of the contested trade mark, the
opponent acquired rights to the sign on which the opposition is based, including
the right to prohibit the use of a subsequent trade mark;
the conditions under which the use of a subsequent trade mark may be prohibited
are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of
those conditions, the opposition based on a non-registered trade mark or other signs
used in the course of trade within the meaning of Article 8(4) EUTMR cannot
succeed.
a) The right under the applicable law
According to Article 95(1) EUTMR, the Office will examine the facts of its own motion
in proceedings before it; however, in proceedings relating to relative grounds for
refusal of registration, the Office will restrict this examination to the facts, evidence
and arguments submitted by the parties and the relief sought.
According to Rule 19(2)(d) EUTMIR (in the version in force at the time when the
adversarial part of the proceedings started), if the opposition is based on an earlier
Decision on Opposition No B 2 736 992 page: 6 of 7
right within the meaning of Article 8(4) EUTMR, the opposing party must provide
evidence of its acquisition, continued existence and scope of protection.
Therefore, the onus is on the opponent to submit all the information necessary for the
decision, including identifying the applicable law and providing all the necessary
information for its sound application. According to case-law, it is up to the opponent
‘… to provide OHIM not only with particulars showing that he satisfies the necessary
conditions, in accordance with the national law of which he is seeking application …
but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio
Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the
Opposition Division to determine safely that a particular right is provided for under the
law in question, as well as the conditions for acquisition of that right. The evidence
must further clarify whether the holder of the right is entitled to prohibit the use of a
subsequent trade mark, as well as the conditions under which the right may prevail
and be enforced vis-à-vis a subsequent trade mark.
As regards national law, the opponent must cite the provisions of the applicable law
on the conditions governing acquisition of rights and on the scope of protection of the
right. The opponent must provide a reference to the relevant legal provision
(Article number, and the number and title of the law) and the content (text) of the
legal provision either as part of its submission or by highlighting it in a publication
attached to the submission (e.g. excerpts from an official journal, a legal commentary
or a court decision). As the opponent is required to prove the content of the
applicable law, it must provide the applicable law in the original language. If that
language is not the language of the proceedings, the opponent must also provide a
complete translation of the legal provisions invoked in accordance with the standard
rules of substantiation.
Furthermore, the opponent must submit appropriate evidence of fulfilment of the
conditions of acquisition and of the scope of protection of the right invoked, as well as
evidence that the conditions of protection vis-à-vis the contested mark have actually
been met. In particular, it must put forward a cogent line of argument as to why use of
the contested mark would be successfully prevented under the applicable law.
In the present case, the opponent did not submit sufficient information on the legal
protection granted to the type of trade signs invoked by the opponent. The opponent
did not provide the national law in original language. The opponent did not submit
any information on the possible content of the rights invoked or the conditions to be
fulfilled for the opponent to be able to prohibit the use of the contested trade mark
under the laws in each of the Member States mentioned by the opponent.
Therefore, the opposition is not well founded under Article 8(4) EUTMR.
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
Decision on Opposition No B 2 736 992 page: 7 of 7
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
José Antonio GARRIDO
OTAOLA
Erkki Münter Marine DARTEYRE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.