OPPOSITION No B 2 289 950

JVC Kenwood Corporation, 3-12, Moriyacho, Kanagawa-ku, Yokohama-Shi, Kanagawa 221-0022, Japan (opponent), represented by Leinweber & Zimmermann, Rosental 7, II Aufgang, 80331 München, Germany (professional representative)

a g a i n s t

Deutscher Volkshochschul-Verband e.V., Obere Wilhelmstraße 32, 53225 Bonn, Germany (applicant), represented by Von Füner Ebbinghaus Finck Hano, Mariahilfplatz 3, 81541 München, Germany (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 289 950 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 of European Union trade mark application No 12 063 831 , namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 13 235  for goods in Class 9. 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), 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 applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

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

The contested application was published on 01/10/2013. 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 01/10/2008 to 30/09/2013 inclusive.

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

Class 9: Video recording/reproducing apparatus, video cassette recorders, video camcorders, blank or prerecorded video recording media, blank or prerecorded video cassettes tapes.

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 11/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/07/2016 to submit evidence of use of the earlier trade mark. On 11/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

○ Annex 1: Affidavit dated 06/07/2016 by Mr. Ryo Saito, Trademark and Designs Group Manager, Legal and Intellectual Property Department, Technology and Manufacturing Strategy Division of JVC Kenwood Corporation (legal successor of Victor Company of Japan, Ltd by merger with Kenwood Corporation). According to the information provided, the goods under the trade mark ‘VHS’ are marketed by a licensee, Funai Electric Co. It also states that during 2011 to 2013 several thousands of recorders, dual recorders or combination devices with model nos. D50Y-100M, WD6D-D4413DB, WD6D-M101 and TD6D-M101 were sold in the European Union under the trade mark ‘VHS’. It also states that an average yearly turnover of several hundred thousand Euros was made in the EU with these products. The Affidavit contains the following Annexes:

• Annex A: translation into English of the relevant parts of a license contract dated 16/12/1983 regarding the trade mark which was concluded between Victor Company of Japan, Ltd. and Funai Electric Co.

• Annex B: a table containing indications of the sales periods (between 2011 and 2013) and the sales areas (several EU countries, among others) of four products models, namely D50Y-100M (video cassette recorder – VCR), WD6D-D4413DB (dual recorder), WD6D-M101 (dual recorder) and TD6D-M101 (3 in 1) sold under the trade mark ‘FUNAI’. The table is undated and there is no indication of the source of the information. The earlier mark does not appear in the document.

• Annex C: six invoices issued by Funai Electric Co. Ltd. (Japan) to Funai Electric Europe sp. z. o. o. (Poland), dated 2011 (one invoice dated in June), 2012 (one invoice dated in January) and 2013 (four invoices dated in January, April and May), with their corresponding shipping documents. The sales reflected correspond to ‘FUNAI BRAND’ products for the models WD6D-D4413DB (dual recorder – DVD Rec.+VCR), WD6D-M101 (dual recorder – DVD Rec.+VCR) and TD6D-M101 (HDD 3in1), as well as ‘ESSENTIEL B BRAND model no. HARMONIUM’ (dual recorder – DVD Rec.+VCR). The earlier mark does not appear in the invoices.

• Annex D 1-3: extracts of three undated owner’s manuals, two in French and one in English, corresponding to video recorders (HDD and DVD) for the models TD6D-M101, WD6D-D4413DB and WD6D-M101. The trade mark ‘FUNAI’ appears on the top left corner of the cover page in big lettering. The symbol  (‘VHS PAL SECAM’) appears in a less prominent position and size together with other indications such as ‘DOLBY Digital Stereo Creator’, ‘RW compatible’, ‘DVB Digital Video Broadcasting’, ‘mp3 Surround’, ‘DVD Video’, ‘Compact disc Digital audio/video’, etc. It also appears in the Guide to the Owner’s Manual among a list of the ‘recording mode or media type applying to each function’ of the device, where, however, it is hardly recognisable due to its small reproduction.

• Annex D 4-11: eight undated photographs of the packaging of video recorders under the trade mark ‘FUNAI’. Three of them show the model numbers TD6D-M101, WD6D-D4413DB and WD6D-M101 mentioned before, and one the model number D50Y-100M, whereas three of them do not show the model reference. The trade mark ‘FUNAI’ appears in a prominent position at the top left corner and big lettering on the box and/or on the product. The sign ‘VHS’ is present at the bottom right corner of the product or in the cassette recorder entrance next to the DVD drive or on the box either alone (e.g. model D50Y-100M) or together with other media type as mentioned before (remaining models).

○ Annex 2: Index card dated in 1976 containing information about a VHS videotape in German and a picture of a videotape under the trade mark ‘JVC’.

Furthermore, on 12/01/2017, after expiry of the time limit, the opponent submitted further documents. The question concerning the admissibility of this evidence will be discussed further on. These documents are the following:

• Exhibit 4: copy of the title pages and relevant pages 138-139 of the Encyclopedia of Ulrich Freyer ‘Abkürzungen aus der Elektrotechnik’, 1983 (in German), where it is indicated that the acronym ‘VHS’ stands for ‘video home system’ in English and it is a system of the firm Japan Victor Corporation.

• Exhibit 5: copy of the title pages and relevant page 353 of the Encyclopedia ‘Abkürzungen in der Technik’, Fachbuchverlag Leipzig, 1991 (in German), where it is indicated that the acronym ‘VHS’ stands, inter alia, for ‘video home system’ in English and it is a system of the Japanese firm JVC.

• Exhibit 6: copy of the title pages and relevant page 589 of the ‘Dietrich Ratzke, Handbuch der Neuen Medien’, 1982 (in German), where it is indicated that the acronym ‘VHS’ stands for ‘video home system’.

• Exhibit 7: copy of the letter of editor of Collins Dictionary dated 27/11/1997 informing that in the next revision of the dictionaries the entry for VHS will be amended labelling it as a trade mark.

• Exhibit 8: copy of an advertisement in The Wall Street Journal dated 15/10/1996 where it can be read the following: ‘JVS thanks all of the authorized VHS video product manufacturers supporting the high quality VHS world!!’ and that these manufacturers have produced more than 600,000,000 VCRs and billions of cassettes under the VHS Video Cassette System Standards […]. There is a list of more than two hundred companies listed among which are Funai Electric, Aiwa Co. Ltd., Basf Magnetics GmbH, Fuji Photo Film Co. Ltd., Hitachi Maxell Ltd., Konica Corporation, LG Electronics Inc., Mitsubishi Electric Corporation, Nokia Technology GmbH, Sanyo Electric Co. Ltd., Sharp Corporation, Thomson Multimedia, Toshiba Corporation, etc.

• Exhibit 10: English translation of judgment dated 26/02/1997, issued by the Paris Tribunal de Grande Instance regarding an infringement of the trade mark ‘VHS’, indicating that at this time, it had ‘not become the usual denomination for cassettes, as the defendant acknowledges that there are other tape formats on the market, such as U-Matic, V2000 or Betamax’.

Regarding these latter documents submitted by the opponent after the expiry of the time limit for submitting evidence of use, namely on 12/01/2017, even though, according to Rule 22(2) EUTMIR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 76(2) EUTMR (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 30).

The factors to be evaluated when exercising this discretion are, first, whether the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, whether the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 36).

In this regard, even if this belated evidence can be considered to be additional and, therefore, can be taken into account, the Opposition Division is of the opinion that the information contained in these documents can in no way vary the findings in relation to the evidence timely submitted by the opponent. Therefore, despite the fact that the applicant has not been given the chance to comment on these documents, the Opposition Division does not consider it appropriate to re-open the opposition proceedings.

The Opposition Division will, therefore, proceed to the examination of the proof of use taking into account all the evidence listed above.

The Opposition Division deems it appropriate to, first, comment on the witness statement submitted by the opponent. In this regard, as far as this kind of documents 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. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. 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.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

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

The translation of the license agreement may prove that the Funai Electric Co. is a non-exclusive licensee of Victor Company of Japan, Limited for the production and selling of video cassette recorders (VCR) ‘VHS’. However, the license agreement also states that Funai shall attach its own trade mark to the products manufactured in order to indicate their origin and prevent such products from being confused with the products sold by JVC.

In this regard, the table and part of the invoices refer to the trade mark ‘FUNAI’ and also the owner’s manuals contain the trade mark ‘FUNAI’ in a prominent position as an indication of the origin of the goods as required by the license agreement. The guides to these owner’s manuals mention the ‘VHS’ sign among the recording modes or media types that apply to each of the functions of the video cassette recorders. It also appears on the covers of the owner’s manuals among the indication of various technical functions or modes as described above. The same can be said as regards the pictures of the goods and their packaging presented by the opponent, where the trade mark ‘FUNAI’ is present conspicuously, whereas the sign ‘VHS’ is mostly hidden among additional technical indications within the boxes or is depicted on the product itself next to or directly on the cassette entrance.

In the opinion of the Opposition Division, the additional evidence submitted by the opponent only reinforces or at least does not change these appreciations in the sense that the advertisement shows a list of more than two hundred companies, including Funai Electric, which are authorised to manufacture and sell the video cassette recorders and cassettes under the VHS Video Cassette System Standards and, therefore, the indication of the origin of the goods may be, somehow, diluted.

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.

Nature of use requires, inter alia, that the earlier trade mark is used as a trade mark that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers, which is the essential function of a trade mark. It is, therefore, required that the evidence must establish a clear link between the use of the mark and the relevant goods.

With respect to the present case, the evidence submitted does not give any indication about the use of the sign as a trade mark. It is clear that whenever the sign ‘VHS’ appears, it appears as a reference to a video system or recording mode. In this regard, the consumers of this kind of products are used to seeing the source of origin together with other symbols denoting technical functionalities of the products.

It is also evident that the video cassette recorders manufactured by Funai Electric are branded with the sign ‘FUNAI’ which immediately catches the attention of the consumer due to its clearly visible reproduction and independent position and its normal distinctiveness in relation to the relevant goods. Even if the EUTM appears also somewhere on the products, the packaging or the owner’s manuals, there is absolutely no reason to believe that the relevant consumer will refer to the particular product with the sign ‘VHS’ as the origin of the goods or perceive it in any other possible way than as a video system.

As for the argument and evidence of the opponent according to which the acronym ‘VHS’ appears in several dictionaries/encyclopaedias as meaning ‘video home system’, a video recording system of the enterprise Japan Victor Corporation or JVC, the Opposition Division does not see how this argument would help to dispel the doubts about the use of the EUTM not as a trade mark but as a reference to the particular recording system of the opponent.

Additionally, regarding the argument and evidence submitted that the entry ‘VHS’ in the Collins English Dictionaries would be amended in the next revision of the dictionaries to label it as a trade mark, the Opposition Division finds it appropriate to note the following. Using the ®-sign in a dictionary to make the public aware of the fact that a certain term is a registered trade mark is a measure intended to prevent a trade mark becoming generic. This situation will occur when a term that can initially function as a trade mark becomes the generic name for the relevant products or services – no matter who produced/provided them. If a trade mark loses its distinctiveness and becomes a pure generic term, it also loses trade mark protection. However, it is impossible to reverse the process and ‘resurrect’ a generic term and make it capable of being a trade mark (unless it is long forgotten), nor is it possible to make an inherently generic term in relation to particular goods and services become other than a generic term by putting the ®-sign next to the term.

Therefore, the evidence for the nature of use does not show use of the EUTM as a trade mark. It only shows that the sign ‘VHS’ serves as an indication of a video system or standard use of which does not suggest that the consumer will eventually perceive it also as a trade mark. Such use will not make it possible for the relevant public to distinguish between these goods and the goods of different providers by the sign ‘VHS’. Bearing in mind the market reality and the usual perception of the relevant consumer of electronic products, the goods manufactured by the EUTM proprietor and/or its many licensees will be perceived as branded with the sign ‘FUNAI’ (or the trade marks corresponding to its other licensees) and certainly not with the sign ‘VHS’.

The opponent refers to a previous national decision to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399). Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous case referred to by the opponent is not relevant to the present proceedings. Firstly, the judgment submitted by the opponent refers to a patent and trade mark infringement regarding the VHS cassettes of JVC and dates back to 1994 and, furthermore, the argument of the Tribunal that, at this time, ‘VHS’  had ‘not become the usual denomination for cassettes, as the defendant acknowledges that there are other tape formats on the market, such as U-Matic, V2000 or Betamax’ cannot serve, at least nowadays, as a valid reason for not considering it as a reference to a video cassette recording mode and format.  

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 mark was genuinely used in the relevant territory during the relevant period of time.

As is clear from the previous reasoning, the evidence fails to show use as a trade mark, thus in accordance with Rule 22(3) EUTMIR. Given that an essential factor has not been fulfilled it is not necessary to enter into an analysis of the remaining factors.

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.

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

Martin MITURA

Alexandra APOSTOLAKIS

Vanessa PAGE

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.