OPPOSITION No B 2 507 658

Mekalan, S.A., Polig. Ind. Txindoki, Naves 1-2 Crta. Zaldibia, 20240 Ordizia (Gipuzkoa), Spain (opponent), represented by Eurosigno Patentes y Marcas, Txakursolo n° 23, bajo, 48992 Getxo (Vizcaya), Spain (professional representative)

a g a i n s t

Mecalan, Zone Industrielle des Trois Routes 2 rue de l'Europe, 49120 Chemille Melay, France (applicant), represented by 3A, 2bis, rue Georges Charpak, Parc de la Vatine, BP195, 76825 Mont-Saint-Aignan Cedex, France (professional representative).

On 29/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 507 658 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 13 333 703 , namely against some of the goods in Class 7 and all the goods in Class 8. The opposition is based on Spanish trade mark registrations No 1 554 491 and No 2 221 311. 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 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 contested application was published on 13/01/2015. 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 13/01/2010 to 12/01/2015 inclusive. Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Earlier Spanish trademark No 1 554 491

Class 7: Machines and machine-tools.

Earlier Spanish trademark No 2 221 311

Class 37: Installation, repair and maintenance services.

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 30/10/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/12/2015 to submit evidence of use of the earlier trade marks. On 23/12/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is

• A considerable number of invoices issued by the opponent to its clients in the years from 2011 to 2015. The concepts in the invoices are ironmongery works on demand.

• A considerable number of invoices dated between 2011 and 2015 sent to the opponent for the purchasing of different goods or the provision of services for the running of its business. As of the goods, those are for example: brass wire, plates, bars, saws, copper rounds, drills, straps, grinders, tubes, stationery and graphics.

• Two business cards.

• An advert for the opponent in the business telephone repository.

• Promotional material such as a calendar of 2012, a lighter, a pen drive and pens.

• Forms for the invoices.

• Map of a town with the opponent’s business location.

Most of the evidence is dated within the relevant period.

Even if the documents confirm some of the factors such as place of use, it is clear from the outset that the evidence does not show use for the goods and services, as set out below.

In the context of Rule 22(3) EUTMIR, 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) EUTMR, and of its use for the goods and services for which it is registered (stress added).

Every invoice has been translated into the language of proceedings. The description of their concepts are for example: make screws and nuts, closing cap, roller for conveyor, springs, rail, tooling; or remove, erosion, modify, slice. As the opponent explains its business is a small workshop for machining parts and pieces, construction of machinery under sample or drawing, EDM and high-speed machining that only works on request, according to customers specific demands.

From these descriptions and the explanation of the kind of workshop the opponent runs, the evidence of use shows that the mark has been used for the production of parts and pieces of metal that would be used as components for bigger tools. The opponent produces on demand pieces of ironmongery, small items of metal hardware which pertain to Class 6, such as those mentioned above. These goods do not fall within any of the categories for which the earlier mark is registered in Class 7. As to Class 37, there is no evidence about the provision of any of these services.

Therefore, the opponent has not shown use for the goods and services for which the mark are registered, but for other goods for which it has no protection.

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 marks were 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 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

Steve HAUSER

Loreto URRACA LUQUE

Vanessa PAGE

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.