OPPOSITION DIVISION
OPPOSITION No B 2 644 386
Telefonica, S.A., Gran Vía, 28, 28013 Madrid, Spain (opponent), represented by
Intecser Consultoría, Calle Goya, 127, 28009 Madrid, Spain (professional
representative)
a g a i n s t
LG electronics INC., 128, Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721,
Republic of Korea (LA) (applicant), represented by Cohausz & Florack Patent- und
Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf,
Germany (professional representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 644 386 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 goods of European Union trade mark
application No 14 776 785 ‘Terra’. The opposition is based on the following earlier
rights:
(i) European Union trade mark registration No 1 343 227 ‘TERRA’;
(ii) European Union trade mark registration No 1 332 691 ;
(iii) Spanish trade mark registration No 2 221 053 ‘TERRA’
and
Decision on Opposition No B 2 644 386 page: 2 of 6
(iv) Spanish trade mark registration No 2 261 456 .
The opponent invoked Article 8(1)(b) EUTMR.
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, now 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 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 trade marks on
which the opposition is based.
The contested application was published on 16/11/2015. 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 Spain respectively from 16/11/2010 to
15/11/2015 inclusive.
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.
Furthermore, the evidence must show use of the trade marks for the goods on which
the opposition is based, namely the following:
European Union trade mark registration No 1 343 227:
Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic,
optical, weighing, measuring, signalling, checking (supervision), life-
saving and teaching apparatus and instruments; apparatus for
recording, transmission or reproduction of sound or images; magnetic
data-carriers, recording discs; automatic vending machines and
mechanisms for coin-operated apparatus; cash registers, calculating
machines, data processing equipment and computers; fire-
extinguishing apparatus; all the aforementioned goods not referring to
the medical field.
European Union trade mark registration No 1 332 691:
Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic,
optical, weighing, measuring, signalling, checking (supervision), life-
saving and teaching apparatus and instruments, apparatus for
recording, transmission or reproduction of sound or images; magnetic
data-carriers, recording discs; automatic vending machines and
mechanisms for coin-operated apparatus; cash registers, calculating
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machines, data processing equipment and computers; fire-
extinguishing apparatus, but not including the equipment for
radiolocation and control devices for location and devices to control
subterranean soundings.
Spanish trade mark registration 2 221 053:
Class 9: Apparatus for recording, transmission and reproduction of sound or
images; magnetic data carriers, recording and optical discs; automatic
vending machines and mechanisms for coin-operated apparatus; cash
registers, calculating machines, data processing equipment and
computers, computer programs, screens (computer and television),
keyboards (computers), computer mice, CD-ROMs, telephone
apparatus, image and sound transmitters and receivers, telephone
boxes, telephone exchanges; telephones; telephone repeaters;
answering machines. Equipment for radio location and control devices
for location and devices for direct underground boreholes expressly
excepted.
Spanish trade mark registration No 2 261 456:
Class 9: Scientific, nautical, surveying, electronic, photographic,
cinematographic, optical, weighing, measuring, signaling, checking
(supervision), life-saving and teaching apparatus and instruments;
apparatus for recording, transmission and reproduction of sound or
images; magnetic data carriers, recording discs; automatic vending
machines and mechanisms for coinoperated apparatus; cash
registers, calculating machines, data processing equipment and
computers, fire-extinguishing apparatus.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the
request for proof of use), 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 15/11/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the
moment of filing the request for proof of use), the Office gave the opponent until
20/01/2017 to submit evidence of use of the earlier trade marks. On 20/01/2017,
within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Exhibit 1 Advertising materials displaying the sign together with
the logo of the Olympic games in London 2012 and the inscription
‘official internet broadcaster’. On some of the advertising materials the
web-address www.terra.com.br can be seen.
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Exhibit 2 A document referred to by the opponent as ‘Report of Results Terra –
Olympic Games’. The document is not in the language of the
proceedings but according to the opponent it shows the results of the
coverage offered by TERRA during the London Olympic Games, in
particular – 36 channels to follow the games via mobiles, computers,
tablets or Smart TVs, 122 million videos watched on TERRA
application, 275 thousand applications downloaded in two weeks, 4.7
million hours of transmission in Spanish and Portuguese.
Exhibit 3 Undated pictures of a fixed line telephone apparatus, the cover page
of the manual for the latter and the packaging box bearing the sign
.
Exhibit 4 Internet printouts of the website of the opponent www.terra.es, it’s
Twitter, Facebook and Google Play web pages and third parties
websites, most of them not in the language of proceedings. There is
also an article in English published in the news section of the
‘VARIETY’ website providing information regarding the bow of the
VOD site Sundaytv – ‘the new film/TV VOD platform of Latin American
internet portal Terra. The article reports also that ‘to grow Sundaytv,
Terra is working to increase its broadband penetration, sell prepaid
cards, and promote itself on social networks, outside Sao Paulo and
Rio, …’
Exhibit 5 A document referred to by the opponent as ‘Internet Reports (Terra –
Telefonica)’ – not in the language of proceedings. On some of the
pictures in the document the figurative trade mark is
displayed above the web-address www.terra.com.br. The Annex
contains also a printout of the opponent’s website allegedly showing all
the trade marks used by Telefonica S.A. in different sectors.
In its submissions the opponent provides also information regarding the Terra
company. The opponent states that ‘Terra, founded in 1999, is a part of the
opponent’s group and operates as a web portal and/or an internet access provider in
the U.S., Spain and 16 Latin American countries.’ Moreover, the opponent states that
‘Terra is the largest Latin American online media company, ranked as the 31
st
most
popular internet destination in the world offering entertainment, news and sports to
the 100 million people who visit its portals monthly’.
As stated in the very beginning of this section 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.
Based on the information provided by the opponent confirmed to some extent by the
submitted evidence, the Opposition Division may draw the conclusion that some use
of the earlier trade marks has been made eventually in relation to services such as
broadcasting, online streaming and video on demand services, web portal and/or
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internet access provider services. However, none of these services is covered in the
specification of the earlier marks.
An undated picture of a fixed line telephone apparatus, its manual and packaging box
without any indication regarding the extent and place of use of the earlier signs in
relation to this particular good such as turnover and sales figures supported by
invoices or annual financial audits cannot serve as proof of use for the signs in
relation to telephone apparatus. Absolutely no evidence has been provided in relation
to the remaining goods in Class 9 covered by the earlier trade marks. Therefore, the
opponent did not prove use of the trade marks in relation to the goods covered by
these earlier rights.
Even though this finding alone is sufficient for the rejection of the opposition, the
Opposition Division notes in addition that the indications regarding the place and
extent of use of the earlier marks are also insufficient for genuine use of the earlier
marks to be accepted. There are indications that some use of the marks has been
made eventually in Latin America (in particular Brazil), however there is no sufficient
indication regarding the use of the earlier marks in the relevant territories of Spain
and the European Union and absolutely no indications regarding the extent of use in
these territories. All in all, the Opposition Division considers that the opponent has
not provided sufficient indications concerning the place and extent of use of the
earlier marks either.
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) and (3) EUTMR
and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).
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
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
Decision on Opposition No B 2 644 386 page: 6 of 6
The Opposition Division
Judit NÉMETH Plamen IVANOV André Gerd Günther
BOSSE
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.