OPPOSITION No B 2 392 143

Swatch AG (Swatch SA) (Swatch Ltd), Jakob-Stämpfli-Str. 94, 2502 Biel/Bienne, Switzerland (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

LG Electronics Inc., 128 Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic of Korea, (applicant), represented by Novagraaf France, Bâtiment O2 – 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur–Seine, France (professional representative).

On 11/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 392 143 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 of European Union trade mark application No 12 777 521 for the word mark ’SMART SKIN’, namely against all the goods in Classes 9 and 14. Subsequently, on 28/10/2015, the opponent restricted its opposition against Class 9 of the application. The opposition is based on Swedish trade mark registration No 333 568 for the word mark ‘SKIN’. The opponent invoked Articles 8(1)(b) and 8(5)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 Swedish trade mark registration No 333 568 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 26/05/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Sweden from 26/05/2009 to 25/05/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 14: Precious metals and their alloys; jewelry, precious stones; clocks and watches and time measuring instruments; parts thereof included in class.

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 20/03/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 25/05/2015 to submit evidence of use of the earlier trade mark. On 30/04/2015, within the time limit, the opponent submitted the following evidence:

• Annex 1: a document named ‘Swatch-Clopedia’ – The ultimate Swatch guide (International Version 2008, issued in the Netherlands 2008) referring to ‘Swatch’ watches, ‘Swatch Bijoux’ and ‘Flik Flak’ watches. The annex also introduces ‘Swatch SKIN’ collection, including products Skin Chrono, Skin Beat and Skin Standard. According to the catalogue, the collection was introduced in 1997. The products shown in the catalogue bear the mark ‘swatch swiss’. None of the pictures of the products shows the mark ’SKIN’.

• Annex 2: an extract from a database Swatch Finder in French. The first page of the extract gives information on ‘SKIN’ collection products, while the remaining pages show watches on which the ’swatch swiss’ appears. Under the products, the names of the watches appear (for example ‘Jelly SKIN’, ‘Animal SKIN’, etc.). However, the products itself do not bear the mark ‘SKIN’.

• Annex 3: a picture of a back side of a hand watch on which the wording ‘swatch’ and ‘SKIN’ appear.

• Annex 4: a table dated on 18/06/2014, giving information on global sales of ‘SKIN’ products in the 28 countries of the European Union from 2011 until May 2014.

• Annex 5: invoices covering the period 2005-2009, issued by the opponent in Switzerland. The invoices show that the ‘swatch’ and ‘flik flak’ goods were shipped to the subsidiary companies established in France, Germany and Spain. No reference to the earlier mark is made.

• Annex 6: an extract containing press clip dated on 16/06/2014 printed out from the opponent’s website http://www.swatchgroup.com, mentioning that the watch ‘Skin Chrono’ was shown in one of the James Bond movies.

In its observations of 30/04/2015, the opponent also referred to six additional annexes which, as the applicant also pointed out, have not been submitted by the opponent.

On 28/10/2015, after expiry of the time limit, the opponent submitted additional evidence.

• Annex 1: a table showing the sales of ‘SKIN’ products (2008-2012). The document gives information about the ‘Product class’ (Skin Standard Plus, Skin Chrono and Skin Standard) and on the price of the goods in Swiss franc (CHF).

• Annex 2-6: several invoices dated in 2008, 2009, 2010, 2011 and 2012 addressed to Swatch Sweden, showing the distribution of the goods under different trade marks, among others Swatch. A reference to ’red leather SKIN’ and ’JELLY SKIN TRANSPARENT̸PLAST’ is made in some of the invoices.

• Annex 7: an extract from the website ‘You Tube’, showing a package with a watch inside and the title of the video ’Tr Review: Swatch Skin Flat watch’.

• Annex 8: an extract from www.swatchandbeyond.com, dated on 28/10/2015, showing the results for the search ‘swatch skin’. The prices of the products appear in American dollars.

• Annex 9: a print out from www.watchshop.com, dated on 28/10/2015, showing results for the search ‘swatch skin’.

• Annex 10: print out from amazon.co.uk, dated on 28/10/2015, showing results for the search ‘swatch skin’.

Even though, according to Rule 22(2) EUTMIR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 76(2) EUTMR (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 30).

The factors to be evaluated when exercising this discretion are, first, that the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, that the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

Moreover, the Office is not required, when exercising its discretion under Article 76(2) EUTMR, to examine all the criteria referred to above. One of those criteria alone is sufficient to establish that it does not have to take into account the late evidence.

In this regard, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

The opponent did not file the additional evidence in its next submission after the expiry of the time limit, but at a much later stage of the proceedings, namely on 28/10/2015. A justification for this very late filing has not been provided, although the late evidence was available even before the time limit had expired. For the above reasons, and in exercise of its discretion pursuant to Article 76(2) EUTMR, the Office therefore decides to take into account only the evidence submitted within the time limit (i.e. Annexes 1- 6 filed on 30/04/2015).

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).

In the present case, the evidence mostly consists of the documents which come from the opponent itself. There is not a single document emanating from an independent source or any other objective document that refers to the products branded under a trade mark ‘SKIN’.

Moreover, none of the documents refer to the territory of Sweden where the earlier mark is registered. The Annex 1 consisting of a Swatch watches guide relates to the territory of Netherlands and the Annex 2 concerns a French speaking territory (this can be inferred from the language of the document). The Annex 4 contains a table with data on sales volumes of ‘SKIN’ products in the European Union in general and does not separately refer to the relevant territory of Sweden. The Annex 5 shows that the goods were manufactured in Switzerland and sold in Germany, Spain and France. This document shows that the goods were exported but the does not show that they were exported to the relevant territory. Therefore, the evidence of use filed by the opponent does not contain indications concerning the place of use concerning the relevant territory.

Furthermore, the documents do not relate to the goods registered under a trade mark ‘SKIN’ as on most of the goods shown in the documents the mark ‘Swatch’ is represented. The only document that shows the earlier mark on a product is attached in Annex 3. However, as the applicant correctly stated, this document does not give any information about the time, place and the extent of use of the Swedish earlier trade mark.

The evidence taken as a whole does not provide sufficient indications to allow the Opposition Division to conclude whether there were any actual sales of the goods under a trade mark ‘SKIN’ on the Swedish market or to what extent the goods have been distributed within Sweden.

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 Swedish 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) CTMR and Rule 22(2) CTMIR, as far as it is based on Article 8(1)(b) and 8(5) CTMR.

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

Rhys MORGAN

Janja FELC

Benoît VLÉMINCQ

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.