OPPOSITION No B 2 470 816

Aritzia LP, 118-611 Alexander Street, Vancouver V6A 1E1, Canada (opponent), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158 Milano, Italy (professional representative)

a g a i n s t

Richman S.R.L., Via Fonda di Mezzana 61/a 61/e, 59100 Prato, Italy (applicant), represented by Società Italiana Brevetti S.P.A., Corso dei Tintori, 25, 50122 Firenze, Italy (professional representative).

On 30/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 470 816 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 in Class 25 of European Union trade mark application No 13 401 311. The opposition is based on European Union trade mark registration No 4 620 894. The opponent invoked Article 8(1)(b) EUTMR.

WILFRED	WILFED
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 trade mark on which the opposition is based, namely European Union trade mark No 4 620 894 for the word mark ‘WILFRED’.

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 06/11/2014. 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 06/11/2009 to 05/11/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 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 17/08/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent a deadline until 22/10/2015, which was extended on 20/10/2015 until 22/12/2015 to submit evidence of use of the earlier trade mark. On 21/12/2015, 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.

List of evidence

The evidence to be taken into account is the following:

ANNEX 1: Printouts, undated, from www.aritizia.com, showing the various items of clothing (e.g. sweaters, coats, blankets, socks, tights) and hats offered under the brand ‘WILFRED’. In its observations, submitted along with the evidence on 21/12/2015, the opponent also referred to a table indicating how many users from EU countries visited its website in the period 13/12/2014 to 13/12/2015, that is, outside the relevant period. Even though the table, assessed in conjunction with the printouts from the opponent’s website, indicates that the customers from the relevant territory could possibly see the goods offered via online catalogues under the brand ‘WILFRED’, the fact remains that the table refers to a timeframe that is irrelevant in the present case.

ANNEX 2: In its observations, the opponent states that there are three Italian companies acting as its vendors (manufacturers of the goods under its instructions). In order to support this claim, the opponent submits two affidavits, the first signed on 18/12/2015 and the second on 16/12/2015, on behalf of two companies from Tuscany in Italy, declaring that these companies have manufactured certain goods, namely scarves and tights, since 2014, under the instructions of Aritzia LP (the opponent). According to the affidavits, these goods are produced and marked as ‘WILFRED’ in the Italian territory and then regularly exported to Aritzia LP in Canada. It is also mentioned that the value of the exported goods, scarves, amounted to tens of thousands of euros during the period 2014-2015, and the value of the exported tights amounted to several hundreds of thousands of euros during the period 2013-2015 (without, however, giving any more specific data). Representations of the goods are enclosed with the affidavits, in the case of the affidavit dated 16/12/2015 showing a label bearing the mark ‘WILFRED’. Therefore, the affidavits originate from two out of the three vendors referred to by the opponent. In addition, in its observations the opponent mentions another vendor based in Tuscany with a factory in Lombardy.

ANNEX 3: Email correspondence, showing pictures of the opponent’s goods, more specifically socks and tights, offered under the mark ‘WILFRED’ via an online catalogue. Some of the depictions of the goods contain the information that they were made in Italy. At the end of the document, there is a table with descriptions of the goods identified under the trade mark ‘WILFRED’ (e.g. WILFRED Merino Cashmere Trouser Socks, WILFRED Cotton Blend Tights, WILFRED Wool Blend Sweater Tights, WILFRED Nylon Sheer Tights), their style codes, generic articles, dates of purchase orders placed (all within the relevant period) and delivery dates (five delivery dates from December 2014 and all six dates from 2015 are outside the relevant period).

ANNEX 4.1: Documents related to the manufacture of particular goods, namely ladies’ tights and ladies’ socks, in Italy under the orders of the opponent and their subsequent shipping to Canada during the year 2013. This set of evidence includes the following items:

• 12 bills of lading issued by various couriers in June and November 2013, regarding the shipping of the abovementioned goods from the opponent’s vendors in Italy to its address in Canada;

• 12 invoices issued by the opponent’s vendors from Italy in June and November 2013, concerning the production of the abovementioned goods, all addressed to the opponent;

• 12 sketch sheets describing the goods to be manufactured with the label ‘WILFRED’ for the seasons autumn 2012 and 2013 and winter 2013 (the sketch sheets are from March 2012 and March and October 2013);

• 12 purchase orders for the abovementioned goods identified under the brand ‘WILFRD’ issued by the opponent in March and October 2013 and addressed to its vendors in Italy.

The physical quantities of the goods produced, as well as the sales figures mentioned in this batch of evidence, significantly differ from order to order (from several hundred to several thousand items and the same as for the sales volumes, varying from hundreds to thousands of euros). Nevertheless, a significant number of these documents refer to rather low volumes.

ANNEX 4.2: Documents related to the manufacture of particular goods, namely ladies’ tights, ladies’ socks and scarves, in Italy under the orders of the opponent, and their subsequent shipping to Canada, during the year 2014. This set of evidence includes the following items:

• 16 bills of lading issued by various couriers in July and September 2014, regarding the shipping of the abovementioned goods from the opponent’s vendors in Italy to its address in Canada;

• 16 invoices issued by the opponent’s vendors from Italy in July and September 2014, concerning the production of the abovementioned goods, all addressed to the opponent;

• 16 sketch sheets describing the goods to be manufactured with the label ‘WILFRED’ for the seasons autumn and winter 2013 and 2014 (the sketch sheets are from March and October 2013 and March, April and June 2014);

• 16 purchase orders for the abovementioned goods identified under the brand ‘WILFRD’ issued by the opponent in April, May and June 2014 and addressed to its vendors in Italy.

The physical quantities of the goods produced, as well as the sales figures mentioned in this batch of evidence, significantly differ from order to order (from several hundred to several thousand items and the same as for the sales volumes, varying from hundreds to thousands of euros). Nevertheless, a significant part of those documents refer to rather low volumes.

On 05/08/2016 (i.e. after the expiry of the time limit for submitting proof of use), the opponent submitted some additional evidence:

ANNEX 5: A specification sheet for tights to be manufactured by one of the vendors in Italy for the 2014 winter season. The document shows instructions as regards the labelling of the goods produced. It also contains a sample of the label with the earlier mark, ‘WILFRED’, and the indication ‘made in Italy’.

As regards the evidence sent by the opponent in the final round of observations, the Office forwarded it to the applicant by notification of 10/08/2016. The Opposition Division notes that, in view of the nature and content of the additional evidence, particularly the fact that this document is analogous to the ones submitted within the time limit, it is considered that it is unnecessary, in the present case, to re-open the opposition proceedings and to give a time limit for the applicant to comment on ANNEX 5. Even if the evidence submitted on 05/08/2016 were taken into account, the outcome of the present assessment would be the same.

Assessment of evidence

The requirements for proof of use, namely the place, time, extent and nature of use, are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). Therefore, the opponent is obliged to prove each of these requirements. The Opposition Division finds it appropriate to begin the present assessment with the criterion extent of use.

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.

Having examined the evidence listed above, the Opposition Division observes that the opponent, the Canadian undertaking being the proprietor of the earlier EUTM on which the opposition is based, has made an overseas arrangement with three Italian undertakings by which contract manufacturing of certain goods is carried out in Italy. The opponent’s EUTM is affixed to the goods produced by the Italian manufacturers (vendors, as referred to by the opponent) and they are shipped to Canada, whence the opponent distributes the goods to its customers in Canada and the United States.

It is undisputed that contract manufacturing of goods and affixing the EUTM on those goods constitutes ‘use in the course of trade’. According to Article 15(1) EUTMR, affixing of the EUTM to goods or to the packaging thereof in the European Union solely for export purposes also constitutes genuine use.

Rather, the question in the present case is whether or not such contract manufacturing in only one Member State of the EU can justify maintaining the rights of a European Union trade 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 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 evidence submitted by the opponent in order to prove genuine use of the earlier mark relates exclusively to one Member State of the EU, namely Italy. As a matter of fact, the evidence (particularly Annexes 2, 4.1 and 4.2) refers to only three factories in Italy that are located in three towns, two of them in Tuscany and the third in Lombardy (more specific information on those undertakings cannot be divulged because the opponent requested that the evidence it submitted remain confidential). The relatively small size of those locations in the context of the territory of Italy, let alone the EU, dramatically reduces the territorial scope of use. Therefore, the territorial extent of use is too limited to constitute genuine use of the earlier EUTM.

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. In that regard, other relevant factors must be weighed up.

The evidence (particularly Annexes 4.1 and 4.2) demonstrates that the opponent’s purchase orders for the contract manufacturing rendered by three Italian undertakings and the subsequent shipments of the goods to Canada were done in a rather sporadic manner. There was no continuous flow of orders, but rather they appear to be occasional, made in only two months in 2013 and three months in 2014, as already described in detail above. All the above indicates a low frequency and short duration of use.

The characteristics of the market in question must be taken into account (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 51). Considering this, it has to be kept in mind that the goods at issue are articles for mass consumption (hosiery and scarves), the market for which is immense, given the population in the relevant territory.

In terms of commercial volume of use, from the invoices issued by the Italian manufacturers (vendors) in the years 2013 and 2014 (Annexes 4.1 and 4.2), without divulging any commercial data, it can be seen that only in exceptional cases does the evidence indicate fair amounts, both physically and financially (several thousands of items produced and thousands of euros in value, respectively), whereas the vast majority of the documents suggest low quantities of goods and financial figures (only hundreds of items produced and hundreds or several thousand euros in value, respectively).

Taking into account the physical volumes and sales figures of the goods in question, as described above, and, in particular, the characteristics of the market of those goods, it is considered that the commercial volume of the goods is relatively low.

The smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opponent to submit additional evidence to dispel possible doubts as to its genuineness (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 37). In this regard, it has to be pointed out that the affidavits issued by two of the opponent’s contract manufacturers (Annex 2) present turnover figures in a highly aggregated manner. It is impossible to infer from them, let alone verify, what proportion of the export volumes was within the relevant period, since the data referred, in a very general way, to the period from 2013 to 2015. Those items of evidence shed little light on the quantitative aspects of use.

Consequently, and taking all the above into account, the evidence shows a limited territorial extent of use that is not outweighed by more significant quantitative aspects of use.

On an overall assessment of the evidence submitted by the opponent, the Opposition Division comes to the conclusion that the opponent has not provided sufficient indications concerning the extent of the use of the opponent’s mark that would justify maintaining the rights for a European Union trade mark.

In addition, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 47). In other words, it is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 40).

In its submission of 21/12/2015, the opponent argued that the Court has ruled that the Board of Appeal should have reasoned why it disregarded evidence of sales outside the relevant territory (invoices addressed to clients outside the EU). In fact, such sales outside the EU cannot be simply discarded for that reason only (28/11/2013, T‑34/12, Herba shine, EU:T:2013:618, § 48-49 and 54). Nevertheless, from the Opposition Division’s point of view, the case law referred to by the opponent is not applicable to the present case. This is because of the different circumstances of the cases in question. More specifically, in the present case the Opposition Division does not dispute the evidence submitted on sales outside the EU territory; however, as stated above, the extent of use of the earlier mark is insufficient to reach a conclusion on genuine use. However, case T‑34/12 deals with use in import and export trade. Therefore, the opponent’s arguments in that regard are set aside.

As shown above, the requirements for proof of use are cumulative. As the evidence fails to demonstrate sufficient extent of use, there is no need to further examine the other factors of use.

Taking all the above into account, 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. Such evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43).

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

Bekir GÜVEN

Martin MITURA

Solveiga BIEZA

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.