Lumiqs | Decision 2513763
Date Published: Oct 10, 2017
OPPOSITION No B 2 513 763
Krinner Innovation GmbH, Passauer Str. 55, 94342 Straßkirchen, Germany (opponent), represented by Winter, Brandl, Fürniss, Hübner, Röss, Kaiser, Polte Partnerschaft Patent- und Rechtsanwaltskanzlei, Alois-Steinecker-Str. 22, 85354 Freising, Germany (professional representative)
a g a i n s t
IQ Group Holdings Berhad, 9, Fieldhead Way, Heckmondwike WF16 9DU, United Kingdom (holder), represented by Wilson Gunn, 5th Floor Blackfriars House, The Parsonage, Manchester M3 2JA, United Kingdom (professional representative).
On 16/03/2017, the Opposition Division takes the following
1. Opposition No B 2 513 763 is upheld for all the contested goods.
2. International registration No 1 220 053 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 220 053. The opposition is based on, inter alia, European Union trade mark registration No 5 236 435. 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 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.
For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The holder requested that the opponent submit proof of use of, inter alia, European Union trade mark registration No 5 236 435.
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 relevant date (first republication of the contested international registration plus six months) is 24/04/2015. 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 24/04/2010 to 23/04/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 11: Lighting installations, namely electric lights for Christmas trees (chains of candle lights or decorative Christmas tree lights, candle lights without cables, decorative Christmas tree lights without cables), decorative, low-voltage Christmas tree lights.
Class 28: Electric decorations for Christmas trees (chains and decorative Christmas tree lights without cables).
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 17/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 17/01/2016 to submit evidence of use of the earlier trade mark. On 15/01/2016, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is, in particular, the following:
- Items 7, 8 and 9: some internet archive extracts from the website www.amazon.de offering Krinner Lumix wireless Christmas tree candles (products No 74132 and No 74122, ivory edition) and showing packaging on which the mark appears in the upper right-hand corner, together with an image of a Christmas tree and some decorative candle lights without cables. These extracts are in German, but the prices can be seen in euros. They are dated 29/05/2010, 14/06/2010 and 04/07/2010.
- Item 10: an internet extract from the website www.amazon.de offering the product ‘Lumix’ and showing packaging on which the mark appears, together with an image of a decorative Christmas candle light without cables. It can be seen that other models are offered under the earlier mark, such as ‘Krinner Lumix Classic Erweiterungs-Set’, ‘Krinner Lumix Classic Mini Basis Set’ and ‘Krinner Lumix Classic Mini Erweiterungs-Set’, with different prices in euros. Although this document is in German, in the product information (‘produktinformatioinen’) some technical details are provided (i.e. measurements, weight, batteries and model) along with the date from which the product has been available on Amazon in Germany, 01/08/2010.
- Item 11: an internet extract from the website www.amazon.fr offering the product ‘Lumix’ and showing packaging on which the mark appears, together with an image of a decorative Christmas candle light without cables. It can be seen that other models are offered under the earlier mark, such as ‘Krinner Lumix Classic Mini-Pack’, ‘Krinner Lumix Classic Pack’ and ‘Krinner Lumix Classic Mini Set’, with different prices in euros. Although this document is in French, in the product information some technical details are provided (i.e. measurements and weight) along with the date from which the product has been available on Amazon in France, 04/10/2011.
- Item 12: an internet extract from the website www.amazon.es offering the product ‘Lumix’ and showing packaging on which the mark