Decision on Opposition No B 2 745 670 page: 6 of 13
registered only in negligible elements, so that the two signs can be regarded as
broadly equivalent, the abovementioned provision envisages that the obligation to
use the trade mark registered may be fulfilled by furnishing proof of use of the sign
which constitutes the form in which it is used in trade’ (23/02/2006, T-194/03,
Bainbridge, EU:T:2006:65, § 50).
It is appropriate to consider whether the mark as used differs from its registered form
in a way that would affect its distinctive character or, in spite of some differences, the
mark as used and its registered form are essentially the same.
The Spanish trade mark No 2 858 873 consists of the word mark ‘TESSLA’. However,
in the documents submitted, namely the pictures of products, the brochure and the
report demonstrates use of the element ‘TESSLA’ as , that is to
say with a graphical representation of the letters in blue and white, their contours
being delimited by a double blue line.
As to the white and blue colours used, it is evident that word marks are registered in
black and white. However, it is customary to use marks in colour. Such use does not
constitute a variant use of the registered mark. With regard to the specific stylised
font, such a depiction is one of the many variations in which commercial designations
are used in the course of trade. It is considered to constitute an acceptable means of
bringing the mark in question to the public’s attention and, consequently, does not
materially affect the distinctiveness of the word mark ‘TESSLA’, which is still clearly
distinguishable and readable in the sign.
In view of the above, the Opposition Division considers that the evidence does show
use of the sign as registered within the meaning of Article 15(1), second
subparagraph, point (a) EUTMR.
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).
Taking into account the evidence in its entirety, although the evidence submitted by
the opponent is not particularly exhaustive, it does reach the minimum level
necessary to establish genuine use of the earlier trade mark during the relevant
period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade
mark for all the goods covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation
to part only of the goods or services for which it is registered it will, for the purposes
of the examination of the opposition, be deemed to be registered in respect only of
that part of the goods or services.
According to case-law, when applying the abovementioned provision the following
should be considered: