OPPOSITION No B 2 317 785

Gfl SA, Via Sorengo 1, 6900 Lugano, Switzerland, (opponent), represented by Marietti, Gislon e Trupiano S.R.L., Via Larga, 16, 20122 Milan, Italy (professional representative)

a g a i n s t

Global Fragrances Labs SL, Avenida Apel·Les Mestres 36 Bis, 08820 El Prat De Llobregat, Spain (applicant), represented by Duran Haeussler S.L.U., Avda. Diagonal 640 Pl. 6A, 08017 Barcelona, Spain (professional representative).

On 26/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 317 785 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 Community trade mark application No 12 458 907 , namely against all the goods in Classes 3 and 5. The opposition is based on Community trade mark registration No 6 092 531 . The opponent invoked Article 8(1)(b)CTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) CTMR, 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 trade mark 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 29/01/2014. 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 29/01/2009 to 28/01/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes), brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

According to Rule 22(3) CTMIR, 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 24/03/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 29/05/2015 to submit evidence of use of the earlier trade mark. On 25/05/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• 10 invoices dated in 2010, issued to clients in Belgium, the United Kingdom, Poland and Ireland showing the sale of cosmetics such as soap, shampoo, bath foam and shower gel as well as sewing kits, dental kits, laundry bags and accessories like shower caps. The trade mark only appears at the top of the invoice with the name of the company below it. In the invoices the earlier mark does not appear in relation to the goods, even in word format; instead, other marks seem to be indicated e.g. Lecorbu, Prija and Anyah.

• Approx. 20 invoices dated in 2011, issued to clients in Austria, the United Kingdom, Poland, the Netherlands, Greece and Belgium showing the sale of cosmetics such as soap, shampoo, conditioner, make up remover, bath foam, body lotions and creams as well as sanitary bags, wc seals, laundry bags etc., and accessories like shower caps, razors, cotton buds and emery boards. The earlier figurative trade mark does not appear on the invoices at all. Only the name of the company ‘GFL SpA a socio unico’ appears in the left upper corner of the documents. In the invoices the earlier mark does not appear in relation to the goods, even in word format; instead, other marks seem to be indicated, e.g. Lecorbu, Prija and Anyah.

• Approx. 20 invoices dated in 2012, issued to clients in Austria, Poland, the Netherlands and Belgium showing the sale of cosmetics such as deodorant ‘towelette’, soap, shampoo, conditioner, shower gel, make up remover, bath foam, body lotions and creams and amenities sample boxes, as well as paper tissues, sanitary bags, wc seals and laundry bags, and accessories like shower caps, door hangers, sewing kits, shoe shine sponges, cotton buds, emery boards and refreshing towels. The earlier figurative trade mark does not appear on the invoices at all. Only the name of the company ‘GFL SpA a socio unico’ appears in the left upper corner of the documents. In the invoices the earlier mark does not appear in relation to the goods, even in word format; instead, other marks seem to be indicated , e.g. Chesa Valisa, Hotel Loewen, Lecorbu, Prija and Anyah.

• Approx. 20 invoices dated in 2013, issued to clients in Poland, Italy, Belgium, France and Croatia showing the sale of cosmetics such as deodorant ‘towelette’, soap, shampoo, conditioner, shower gel, make up remover, bath foam, body lotions and creams and amenities sample boxes , as well as paper tissues, sanitary bags, wc seals, laundry bags etc., and accessories like shower caps, sewing kits, dental kits, shoe shine sponges, cotton buds, emery boards, refreshing towels etc. The earlier figurative trade mark does not appear on the invoices at all. Only the name of the company ‘GFL SA’ appears in the left upper corner of the documents. In the invoices the earlier mark does not appear in relation to the goods, not even in word format; instead, other marks seem to be indicated e.g. Lecorbu, Prija and Anyah.

• Approx 10 invoices dated in 2014, issued to clients in Italy and France showing the sale of cosmetics such as soap, shampoo, conditioner, shower gel, bath foam, body lotions and creams as well as paper tissues, wc seals etc., and accessories like shower caps, dental kits, shoe shine sponges, cotton buds. The earlier figurative trade mark does not appear on the invoices at all. Only the name of the company ‘GFL SA’ appears in the left upper corner of the documents. In the invoices the earlier mark does not appear in relation to the goods, not even in word format; instead, other marks seem to be indicated e.g. Lecorbu, Prija and Anyah.

• 3 invoices dated in 2015, issued to clients in Italy and Poland showing the sale of cosmetics such as soap, shampoo, shower gel, bath foam, body and bath creams, and sewing kits, and accessories like shower caps, dental kits, shoe shine sponges, cotton buds. The earlier figurative trade mark does not appear on the invoices at all. Only the name of the company ‘GFL SA’ appears in the left upper corner of the documents. In the invoices the earlier mark does not appear in relation to the goods, not even in word format; instead, other marks seem to be indicated e.g.Lecorbu, Prija and Anyah.

• Photos of products and pages from a catalogue including goods such as shower gel, sewing kits, shower caps, make up remover, refreshing towelettes, personal hygiene towelettes, deodorant towelettes, shaving kits, shoe-shine towels, dental kits and soaps in sachets, hair and body gel, shower gel and shampoos in bottles.

• Layouts of designs of packaging of shower gel, shower caps, sewing kits and shaving sets in sachets.

For the sake of completeness it must be mentioned that on 22/10/2015 the opponent filed some of the above evidence again, for instance the photos of products, where it placed some additional markings. This additional material neither adds anything to the above mentioned evidence nor affects the assessment of the proof of use.

The invoices show that the place of use are various countries within the European Union, as the invoices are issued to clients in different EU countries such as Belgium , Italy, Poland, France. This can be inferred from the addresses mentioned, the currency mentioned – euro. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

In the context of Rule 22(3) CTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) CTMR, and of its use for the goods and services for which it is registered.

In the present case the most of the evidence does not reproduce the earlier trade mark . This image appears only in the invoices from the year 2010 and is placed in the upper left corner with the name of the company beneath.

In the description of the goods in the invoices there is no mention of the trade mark at all, but other brands are mentioned, e.g. Anyah, Prija and Lecorbu. The same applies to the remaining invoices with the exception that the earlier trade mark does not appear in them at all, because different images are placed in the upper left corner, for instance:

.

These last images are very different from the earlier trade mark, so they can hardly constitute use of this trade mark, contrary to what the opponent argues. Nevertheless taking into account further considerations, even if the image of the earlier trade mark was also placed on the remaining invoices, it would not change the assessment below, which equally applies to both scenarios.

The use of the trade mark in the header of the invoices can constitute a trade mark use provided that it may serve as identifier for these goods. The Opposition Division is of the opinion that it is not likely to have this function in a situation where in the description of the goods a different trade mark is used instead, as in the present case. However this would depend also on the manner in which the trade mark is used in relation to the relevant goods. This can be inferred from the photos of the packagings submitted by the opponent. It is true that they have not been dated, but links to the invoices can be established on the basis of the descriptions of the products and their code numbers.

In the pictures of the packagings submitted by the opponent the names Anyah and Lecorbu are placed in the prominent position of the frontal part of the packaging, in large print; thus, they will be perceived by the public as trade marks identifying these goods.

.

As seen from the images above the same cannot be said about the earlier mark, because on some of the packagings it is not visible at all, for example the bottles, and on the sachets it is displayed on the back, among other elements, depicted in quite small print. It may easily go unnoticed by consumers.

Moreover it is very often placed near the name of the company, or the internet address of the website next to the phrase ‘Lecorbu is made by www.glf.it’, which suggests the use of this sign to indicate the company or business rather than the trade mark. It is also very often used next to informative pictograms normally placed on the back of packaging and has the same size and colour, or it is lost in the description of the product and its ingredients, for example:

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. 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, Par. 43).

The Opposition Division considers that putting the trade mark, for such goods as cosmetics or cosmetic accessories, on the back of the packaging in very small print does not constitute trade mark use, because it does not allow the sign to perform its main function which is to identify the goods and distinguish them from the goods of other undertakings. A sign placed in such a manner will not be perceived as a trade mark by the public. It may not be noticed at all, or if noticed, will be associated with the company, if it is next to the Internet address as seen above, or if it is next to the informative pictograms it may even be perceived as one of them, especially since it has a similar size and colour.

Consumers, especially in the case of everyday goods like cosmetics and cosmetic accessories, are not used to looking for trade marks on the back of packaging. It is normal on the market that trade marks are clearly placed on the packaging in a prominent place at its frontal part, which is facing the consumer, so that they can be easily noticed. This is especially true considering that these products are displayed in rows on shelves and placing a sign on the back in small print will not draw consumer’s attention, and will not act as a trade mark identifying the commercial origin of the goods. It can neither be considered to be use as a house mark together with a sub-brand, because of the way it is placed and its small size. It is also not used in any proximity to the other trade mark, which has the main position on the packaging, so that a connection between the two could be made.

The Opposition Division considers that the evidence does not show use of the sign as a trade mark and, consequently, the opponent has not provided sufficient indications concerning the nature of the earlier mark.

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) CTMR and Rule 22(2) CTMIR.

COSTS

According to Article 85(1) CTMR, 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) CTMIR, 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

Deirdre QUINN

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, 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 800 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) CTMIR, 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) CTMFR) has been paid.