OPPOSITION No B 2 531 542

Manuli Rubber Industries S.p.A., Via Pietro Paleocapa, 7, 20121 Milano, Italy (opponent), represented by Jacobacci & Partners S.p.A., Via Berchet, 9, 35131 Padova, Italy (professional representative)

a g a i n s t

Jürgen Koch GmbH, Hansestraße 35, 51688 Wipperfürth, Germany (applicant), represented by Bernd Kutsch, Valdenaire-Ring 85B, 54329 Konz, Germany (professional representative).

On 21/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 531 542 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 13 649 215 for the figurative mark , namely against all the goods in Classes 6, 7 and 17. The opposition is based on the following earlier rights:

• European Union trade mark registration No 2 820 744 for the figurative mark ;

• Italian trade mark registration No 1 064 295 for the figurative mark .

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, namely European Union trade mark No 2 820 744 and Italian trade mark No 1 064 295.

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 24/02/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Italy from 24/02/2010 to 23/02/2015 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:

European Union trade mark registration No 2 820 744

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware, pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Italian trade mark registration No 1 064 295

Class 6: Common metals and their alloys; Metal building materials; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Safes; Goods of common metal not included in other classes; Ores

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, not of metal

Class 35: Advertising; Business management; Business administration; Office functions

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 02/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 14/01/2016 to submit evidence of use of the earlier trade marks. This time limit was extended and finally expired on 14/03/2016. On 14/03/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Product catalogues dated 2012–2013 in English for ‘Adaptors’, ‘Hoses, fittings, Accessories’, ‘Quick couplings’ and ‘Refrigeration’, with the sign clearly displayed at the bottom of each page. These catalogues also include a brief history of the company and a list of its headquarters in the EU and worldwide.

• An extract from the website whoisdomaintools.com showing that the opponent’s website www.fluiconnecto.com was created on 22/11/2004.

• Eight invoices issued from 01/07/2015 to 11/03/2016 in Dutch, accompanied by English translations, and a template for an invoice explaining the relevant fields in English. All the invoices are dated outside the relevant period. The sign is clearly depicted at the top of each invoice. The invoices refer to the relevant goods, such as hoses, valves, etc.

• An undated advertisement in Oil, Gas and Shipping Magazine with the sign clearly depicted. The advertisement refers to hoses and fluid connectors.

• Screenshots, of uncertain dates, of the website www.fluidconnecto.com showing that the company is active in ‘top quality hydraulic solutions’ and offers fittings, hoses, bite-ring fittings, machines, refrigeration tools, quick couplings, valves and other accessories.

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 documents filed, namely catalogues, invoices, website screenshots, website information and advertisements, 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, in the form of promotional catalogues, demonstrates some use of the trade mark in relation to at least some of the relevant goods within the relevant time frame; however, this is not sufficient to prove that the trade mark at issue has been genuinely used on the market.

The evidence, taken as a whole, does not provide sufficient indications to allow the Opposition Division, without resorting to probabilities or suppositions, to ascertain if there were any actual sales of the goods or provision of services in question on the market within the relevant period or to what extent the goods have been distributed. A promotional catalogue or a printout from a website cannot prove the extent of any distribution or the number of sales of the relevant goods or provision of services under the earlier marks on the European and Italian markets.

Furthermore, all the invoices are dated after the publication date of the contested application and therefore the opponent failed to prove that the trade marks have been genuinely used before that date, as the extent of use cannot be assessed.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier marks.

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 territories 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

Magnus ABRAMSSON

Katarzyna ZANIECKA

Victoria DAFAUCE MENDEZ

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.