TORRONFETTA | Decision 2699679

Date Published: Oct 22, 2017

OPPOSITION No B 2 699 679

Barbero Davide S.r.l., Via Brofferio, 84, 14100 Asti, Italy (opponent), represented by Nicola Novaro, Via Marconi, 14, 18013 Diano Castello (Imperia), Italy (professional representative)

a g a i n s t

Closed Joint-Stock Company Fabrika Russkiy shokolad, ul. Vereyskaya, d. 29, str. 143, Moscow 121357, Russian Federation (holder), represented by Foral Patent Law Offices, Kaleju 14-7, Riga, 1050, Latvia (professional representative).

On 19/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 679 is upheld for all the contested goods.

2.        International registration No 1 294 661 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 294 661, ‘TORRONFETTA’. The opposition is based on European Union trade mark registration No 8 239 121, ‘https://euipo.europa.eu/copla/image/CJ4JX4FZVCC523YA2TMALSKFLFLE55FD5V3KODQITM47COK2I63YOVAXWP6XDUXWLH6NIAICCCIFA’.The opponent invoked Article 8(1)(b) EUTMR.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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.

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.

For international registrations designating the European Union, the ‘date of filing’ or, where applicable, the ‘date of priority’ of the contested mark within the meaning of Article 47(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 the date of registration, the date of subsequent designation of the European Union or the date of priority of the contested international registration, as applicable. 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 the trade mark on which the opposition is based, European Union trade mark No 8 239 121, ‘https://euipo.europa.eu/copla/image/CJ4JX4FZVCC523YA2TMALSKFLFLE55FD5V3KODQITM47COK2I63YOVAXWP6XDUXWLH6NIAICCCIFA’.

The relevant date for the contested international registration (date of international registration) is 09/02/2016. 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 09/02/2011 to 08/02/2016 inclusive.

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

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

Class 30:        Pastry and confectionery.

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 15/12/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 20/02/2017 to submit evidence of use of the earlier trade mark. On 17/02/2017, 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:

  • a set of more than 4 000 invoices, bearing the opponent’s name and address and covering the period 2011-2016, to customers in, inter alia, Italy, Germany, France and the United Kingdom, containing references to the sign ‘Torronfette’, for ‘crumbly, sliced torrone’;

  • a list of turnover figures for the product ‘Torronfette’, deriving from the opponent, for the years 2011-2016 by country, showing sales figures mainly in Italy, but also in, inter alia, Germany, France and the United Kingdom;

  • catalogues for 2011-2016, in Italian but with some pages in English, showing the mark ‘Torronfette’ on confectionery products, such as , , ;

  • some press cuttings, including, inter alia, one from the German magazine Slow Food, from December 2014, in German, but referring to the word sign ‘Torronfette’ (p. 31), and one from The Telegraph magazine, from December 2009, in English, referring to torronfette as slices of nougat (p. 71);

  • samples of products and packaging, showing the sign for confectionery as, for example,