OPPOSITION No B 2 354 598

Erjutoys,S.L., Calle 21 de julio nº 9 - 13, 03420 Castalla (Alicante), Spain (opponent), represented by Clarke, Modet & Co., Rambla de Méndez Núñez, 12 -1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Brimarex, Ptasia 28 A, 60-319 Poznań, Poland (applicant), represented by Kancelaria Patentowa Elżbieta Piątkowska, Skórzewo, ul. Truskawkowa 12, 60-185 Poznań, Poland (professional representative).

On 23/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 354 598 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services, in classes 28, 35, of European Union trade mark application No 12 534 715 . The opposition is based on European Union trade mark registration No 5 742 275 . 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 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 03/03/2014. 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 03/03/2009 to 02/03/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; 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); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

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 19/11/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until, together with an extensions, 19/05/2015 to submit evidence of use of the earlier trade mark. On 19/05/2015 within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Transfer agreement, signed 07/01/2012 between the initial opponent Comercial Eurolusa, S.L.U and a company ‘We are traders SLU’ to use the mark on toys.

• Certificate of Mr. Franco Granero, manager of ‘We are traders SLU’. According to him, the sales volume rom 2012-2014 was EUR 234 258, 84 for total of 49 ‘Playme’ products within the whole European Union.

• Two undated printouts from the website of the company ‘We are traders SLU’ indicating that the company is a retail, wholesale and distribution company for toys, household equipment, kitchenware, tools, cleaning products, stationery, hosehould plastics etc, in general. The opposing mark is not visible on the printouts.

• Invoices for 2012-2014 issued by ‘We are traders SLU’ company to clients in Spain. The invoices show sales of a very limited variety of toys and playthings in Spain, of ‘play me’ goods the sales amounts vary from EUR 0.42 to 2.38. The remaining goods on the invoices are various types of household and cleaning materials. There are two invoices also issued to a client in Belgium.

• Undated images of some toys, games and playthings with the opposing mark attached to them.

• Undated printouts from google search showing a variety of toys, none of which presents the opposing trade mark on them. One printout from www.milanuncios.es, in Spanish, dated 18/05/2015, showing second hand sale offers for some toys with the opposing mark name. One printout from www.aviounesjuguete.blogspot.com.es, dated 18/05/2015 which contains a Spanish text. The partial translation indicates that the company ‘Playme’ produced toy airplanes in the 1960’s.

The Opposition Division notes, that the initial opponent Comercial Eurolusa, S.L.U transferred the ownership of the mark on 16/11/2015 to a third person- ERJUTOYS,S.L..

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 invoices presented show only very small sales amounts in relation to a very limited number of goods.

There is no evidence given about the advertising of the earlier mark in connection with all the goods it is registered for. There is no evidence placing the earlier mark 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 mark in trade shows or third party retail or wholesale establishments. The undated images of some toys and playthings with the opposing mark placed on them have been presented without further contextual explanations

The document claimed to be an affidavit referring to financial data is from a third party, not the opponent (not the initial nor the consecutive one), and is not backed up by any third party evidence or, in fact, by any evidence at all. The turnover figures referred to are vague, it is not made clear whether or not the opponent’s earlier mark have been used in relation to this product and where, nor indeed of what it consists. There is no concrete evidence presented in respect of where the opponent’s goods have been provided or sold using the registered opponent’s mark. There are no product catalogues nor press articles. The two only printouts from a third party website come from outside the relevant period. The google search printout is undated and bears no images of the opposing mark in connection with the goods claimed.

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.

The evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates to Spain, with the exception of two very small invoices for a client in Belgium. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

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) 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

Vít MAHELKA

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.