OPPOSITION No B 2 197 997

Jose Luis Mazo Lerdo De Tejada, Gran Vía Juan Carlos I, 42, 26002 Logroño, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

King.Com Limited, Aragon House Business Centre, Dragonara Road, St. Julians STJ 3140 Malta (applicant), represented by Noerr Alicante Ip S.L., Avenida México 20, 03008 Alicante, Spain (professional representative).

On 28/07/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 197 997 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 11 540 201 , namely against all the goods in Class 25. The opposition is based on Spanish trade mark registration No 1 260 464 ‘SWEET DE MAZO’ and Spanish trade mark registration No 1 719 221 , The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the two Spanish trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application. The request of the applicant was forwarded to the opponent.

The contested application was published on 15/03/2013. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 15/03/2008 to 14/03/2013 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Class 25: Ready-made clothing for women, men and children, including footwear.

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.

According to Rule 22(2) EUTMIR, the Office gave the opponent until 21/06/2014 to submit evidence of use of the earlier trade marks. On 23/06/2014 within the time limit, the opponent submitted evidence of use. The opponent expressly stated in its letter the following: “In accordance with Article 42.2, Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, the opposing party in this matter hereby provides the documentation necessary to support its opposition rights with respect to prior Spanish trademarks No. 1260464 Sweet de Mazo (word), class 25 and No 1719221 Sweet de Mazo (device), class 25. The Opposition Division admits the evidence presented for the two earlier marks and has examined the evidence presented in respect of the two earlier marks.

The evidence to be taken into account is the following:

• Invoices: 2011 - 3 invoices, from EUR 457 to EUR 777 each, 2010- 1 invoice, containing an item ‘Sweet’ invoiced for ca EUR 56. The invoices are issued by a third party, CIA de Etiquetas y Fornituras SL- COEFOR to the opponent.

The invoices are issued for the production of the Sweet- brand labels to be used later by the opponent on its products. The invoices are not issued for a sale of a clothing or footwear item bearing a ‘Sweet’ label.

• Several samples of labels typically used on clothing items. The images are undated and the labels are not attached to any of the clothing items, but presented separately.

• Four documents titled as ‘Propuesta del pedido’, translated as ‘customer’s orders’. Two documents date from 2012 and one from 2013. On one document the date is illegible. The contents of these documents is not clear or is partly illegible.

• Several pages of printouts from the opponent’s website www.mazo.es in Spanish. The extract dates from 23/06/2014 and shows some images of clothing items.

• Thirteen undated photos of unknown origin depicting ladies clothing items with a label ‘Sweet’, or just the labels.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In the present case there are no actual invoices showing the sale of the goods under the two earlier opposing marks. The few invoices presented are in fact invoices from a provider of labels to the opponent for manufacturing the labels. This, however, does not prove that the opponent later actually sold any goods using these labels.

The four handwritten and partially illegible documents, one of which is not dated, that are claimed to be customers orders, can not prove that these goods mentioned on the documents were actually sold and/invoiced. As the Spanish title ‘Propuesta del pedido’ on these documents indicates, these are just proposals for order/sale, not the invoices or sales agreements. Furthermore, the quantities on the documents are very minimal.

There is no independent evidence given about the advertising of the earlier marks in connection with all the goods these are registered for. There are no press articles provided. There is no evidence placing the earlier marks in a relevant market situation in relation to the goods for which the mark is registered. There is no evidence or photos about the presence of the marks in trade shows or third party retail or wholesale establishments. The undated images of some clothing items with variations of opposing marks placed on them have been presented without further contextual explanations.

The printout from the opponent’s own website was done outside the relevant time period. Although there are a few images of clothing items visible on the website, there are no statistics given about the visitor numbers and visitor origins to this website.

The Opposition Division notes that proof of use should show actual and lasting use in the real and relevant market for all the goods.

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 documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the two earlier marks in respect of the goods they are registered for.

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 for the relevant goods.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) 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

Richard THEWLIS

Erkki Münter

Benoît VLEMINCQ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.