OPPOSITION No B 2 534 454

Distribuidora Dos SA, Marià Cubi y Soler, 21 Pol. Ind. Can Torras, 08192 Sant Quirze Del Valles, Barcelona, Spain (opponent), represented by Ricardo Rodrigues, Rua da Moeda, 1, 1º, sala 9, 1200-275 Lisboa, Portugal (professional representative).

a g a i n s t

Raphael Lombard, 9, rue Sainte-Claire, 63000 Clermont-Ferrand, France (applicant), represented by Eric Le Forestier, 22, rue du Plateau Saint-Antoine, 78150 Le Chesnay, France (professional representative).

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

DECISION:

1. Opposition No B 2 534 454 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 of European Union trade mark application No 13 679 303, word mark ‘TAPCARDS’, namely against all the goods and services in Classes 16, 35, 40 and 42. The opposition is based on Portuguese trade mark registration No 404 427, and Spanish trade mark registration No 2 680 587, . The opponent invoked Article 8(1)(a) and (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 Portuguese trade mark registration No 404 427 and Spanish trade mark registration No 2 680 587.

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 20/03/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Portugal and Spain from 20/03/2010 to 19/03/2010 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Portuguese trade mark registration No 404 427

Class 16: Paper, cardboard and goods made from these materials, not included in other classes.

Spanish trade mark registration No 2 680 587

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed mattter; publications; books, magazines, newspapers and periodicals; bookbinding; photographs; stationery; adhesives (glues)for stationery or household purposes; artists'materials; brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printed characters; cliches; cards.

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 25/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/06/2016 to submit evidence of use of the earlier trade marks. On 27/06/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Item 1: Extract from Spanish website http://topcards.es. The extract has a variant of the earlier mark on display and contains information showing that the opponent offers different cards for different occasions. According to the opponent the extract is from 16/06/2016, which is outside the relevant time period.

• Item 2: One sample of a party invitation (christening) in Portuguese. The card has the earlier sign on the back side but it shows no dates.

• Item 3: One sample of a postcard in Portuguese. The card has the earlier sign on the back side but it shows no dates.

None of the documents are dated within the relevant period. Therefore, the evidence of use filed by the opponent does not contain any indication concerning the time 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.

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 an extract from a Spanish website, one sample of a party invitation and one sample of a postcard, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. These documents give no indication of the volumes of sale, under what time they been used nor the frequency.

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

José Alexandre DE PAIVA ANDRADE TEIXEIRA

Benjamin Erik WINSNER

Denitza STOYANOVA-VALCHANOVA

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.