OPPOSITION No B 2 327 594

Jack Penrod, 1 Ocean Dr., Miami Beach, Florida 33139, United States of America (opponent), represented by Petosevic B.V.B.A., Raymond Hyelaan 6, 3090 Overijse, Belgium, (professional representative)

a g a i n s t

Sahm El-Sayegh, Geisental 4, 44805 Bochum, Germany (applicant), represented by Schneiders & Behrendt, Huestr. 23, 44787 Bochum, Germany, (professional representative).

On 3/31/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 327 594 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 and services of European Union trade mark application No 12 261 913, namely against all the goods in Classes 9, 16 and 25. During the proceedings, the applicant requested a restriction of some of its goods by deleting all the goods applied for in Class 25. In response, the opponent informed the Office that he maintains the opposition following the limitation of the EUTMA. The opposition is based on French trade mark registration No 3 380 224. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	Contested sign

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 French trade mark No 3 380 224, on which the opposition is based.

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 publication of the contested application.

The contested application was published on 16/12/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 16/12/2008 to 15/12/2013 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: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; fire-extinguishing apparatus

Class 16: Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); printers' type; printing blocks.

Class 25: Clothing, footwear, headgear.

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 20/10/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 25/12/2014 to submit evidence of use of the earlier trade mark. Upon a request filed by the opponent, the time limit was extended until 25/02/2015.

On 25/02/2015, 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 the following:

• An invoice and a supporting sales receipt dated in 2011 which the opponent claims to be showing that 250 CDs have been sold in France under the name ‘Nikki Beach in the House’. It is seen from the documents that the price is in dollars and the goods were sold under the name ‘NB IN THE HSE’ (item 1.1).

• Screenshots from the iTunes store in French, showing that various CDs under the names ‘NIKKI BEACH IN THE HOUSE’ (Mixed by the Shapeshifters); ‘NIKKI BEACH Miami’ (Mixed by Miguel Migs & Roman Rosati) and ‘NIKKI BEACH ST. BARTH’ were available for purchasing by consumers. The documents are dated in March 2011, October and November 2012, respectively. They are in French and the price displayed in them is in Euros. With regard to the CDs the opponent also submitted three printouts of its alleged Facebook page in English bearing the name ‘Nikki Beach Lifestyle’, dated in May and November 2012 and March 2013 and providing information that the abovementioned CDs may be purchased via the opponent’s online store (items 1.2 and 1.3).

• Screenshots from the opponent’s alleged website. However, only the name Nikki Beach lifestyle is visible and not the website as it is, contrary to what the opponent has claimed. The website is in English and the price of the goods is in dollars. In addition, the screenshots are undated and as seen from them, the telephone number provided for contact information is in the USA. Although the opponent claims that there are CDs bearing the earlier trade mark under the ‘Music’ category of the website, the mark cannot be seen on the goods as the representations of the pictures are not clear enough. The mark only appears in the explanations given in relation to the goods being sold (item 1.4).

• Screenshots from www.amazon.fr website showing that CDs under the names ‘Nikki Beach in the House Mixed by The Shapeshiifters’ and ‘Nikki Beach Music: Summer in St. Tropez Volume 1’ have been available for purchasing by consumers. The website is in French and the price is in Euros. As for the third CD claimed by the opponent to be shown for purchasing, no evidence was submitted (item 1.5). The screenshots are undated; however in one of them, as part of the information about the CD, the year 2011 appears.

• A document without an indication of source which is supposed to be a summary of sales of songs through the platform TuneCore for the period 2010-2013. It includes reference to different country codes, including France. It can be seen from the printouts that the price earned is in dollars and the mark does not appear anywhere on the documents (item 1.6).

• A printout of the opponent’s Nikki Beach St. Tropez club website. The website is in English and claims that the club was opened in 2002.

• Cover pages and pages of content of digital magazines under the names ‘NIKKI style’ or ‘NIKKI’. As seen from the magazines, some of them are issued by NIKKI BEACH PUBLISHING, located in Miami Beach, Florida. On some, there is a telephone number in the United States. On some no information about the place is indicated. Some of the magazines are dated outside of the relevant period, namely in 2004, 2005, 2007 and 2015. All of the magazines are in English (item 2).

• A printout from the website www.nikkibeach.com, providing information for an upcoming opening of NIKKI BEACH resort & spa in Dubai. The information is in English and states that the event will take place in the fall of 2015.

• An affidavit signed by Mr Jack Penrod, on 17/02/2015 in his capacity as the opponent and trade mark owner of the trade mark ‘NIKKI BEACH’. The affidavit refers to the ownership of Mr Jack Penrod of various ‘NIKKI BEACH’ trade marks across the world, either in his capacity as a natural person or as the sole owner of a few companies, possessing some of the trade marks (item 3.1).

• Approximately twenty invoices and the supporting documents, such as shipping documents, shipper’s letters of instructions, certificates of origin; communication between the opponent and the provider of the goods, all of which are dated within the relevant period (2010, 2011 and mostly in 2013). The invoices relate mainly to the export of clothing from the USA. On some, the goods in relation to which the invoices have been issued are handwritten as ‘Clothing’. For the majority of the purchases, the price is in US dollars; few display the price in British pounds. Only a few of the invoices regard shipping of the goods to the relevant territory - France (St. Tropez). As seen from the rest of the invoices, most of them either do not provide information about the territory of shipping, or specify Spain as a country for delivery. Most of the invoices bear ‘Nikki Beach Clothing’ with an address in Florida, USA as the company name of either the customer or the seller of the goods. The trade mark ‘NIKKI BEACH’ appears only on one of the invoices as ‘Scarf Nikki Beach print’. Some indicate goods like bags and hats.

• Printouts from the opponent’s fan page on Facebook under the name ‘Nikki Beach Lifestyle’. The extracts are all in English and contain pictures of clothing, bearing the sign ‘NB’ and referring to St. Barth, ‘Nikki Beach 10 anniversaire’, footwear, hats, bearing the signs ‘Nikki Beach’, ‘Miami Beach’, ‘USA’, swimsuits in different colours. Some of the printouts contain an announcement that the goods will be available for purchase in the near future. It can also be seen that the price of some of the goods is in dollars (item 4).

• A printout from what is a supposedly an Internet page under the name of ‘NIKKIBEACHLIFESTYLE’. The printout is in English and contains a reference to a website – www.nikkibeachlifestyle.com and a few pictures of people or accessories. However, the trade mark does not appear on any of the goods displayed.

As far as the affidavit is 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. In addition, it should be mentioned that the affidavit submitted in this case does not contain any commercial data or any date regarding the use, but only statements regarding the ownership of trade marks.

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 ascertain whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUCTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, some of the evidence refers to use outside the relevant period, as some of the abovementioned cover pages of magazines under item 2 are dated in 2004, 2005, 2007 and 2015. They cannot confirm use of the opponent’s mark within the relevant period, because the use of the sign referred in some of them is not sufficiently close in time to the relevant period.

In fact, few of the documents are dated within the relevant period and others do not contain any indication concerning the time of use.

The submitted printouts of what the opponent refers to as ‘Facebook’ pages under the name ‘item 4’ are all in English and have no indications that they refer to France as the relevant territory. Therefore, they do not provide any relevant indication as regards the use of the sign in the relevant territory. The same reasoning applies for documents under the names ‘item 1.1’, ‘item 1.3’, ‘item 1.5’, ‘item 2’, the opponent’s Nikki Beach St. Tropez club website, the electronic correspondence and the submitted printout of the website www.nikkibeach.com for the upcoming opening of a resort in Dubai. In addition, most of the documents mentioned under ‘item 3’, either concern a different relevant territory (Spain) or do not specify such at all.

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.

The remaining relevant documents, namely few invoices, printouts from the iTunes store in French (item 1.2) and printouts from the www.amazon.fr website (item 1.5), even if they refer to the relevant territory, period of time and to some of the relevant goods, 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 mark in the relevant territory, since it has not been established that the goods in question were actually sold in France within the relevant period. It cannot be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier mark.

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.

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 (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

Gueorgui IVANOV

Ewelina SLIWINSKA

Carmen SÁNCHEZ PALOMARES

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. 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 (Article 2(30) EUTMFR) has been paid.