OPPOSITION No B 2 529 231

Juan Barcelo Homs, Anselmo Clave, 7, 08500, Vic (Barcelona), Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010, Madrid, Spain (professional representative)

a g a i n s t

UAB Energus, Lazdynų g. 21, 04129, Vilnius, Lithuania (applicant), represented by Gintaras Balčiūnas, A. Tuméno str. 4, 01109, Vilnius, Lithuania (professional representative).

On 24/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 529 231 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 688 213 for the figurative mark , namely against all the goods and services in Classes 9, 11, 37 and 42. The opposition is based on Spanish trade mark registrations No 1 047 749 and No 1 092 596, both for the word mark ‘ENERBUS’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Spanish trade marks No 1 047 749 and No 1 092 596, both for the word mark ‘ENERBUS’.

The contested application was published on 02/03/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 02/03/2010 to 01/03/2015 inclusive.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the services on which the opposition is based, namely the following:

Spanish trade mark registration No 1 047 749

Class 35: Energy consultancy services.

Spanish trade mark registration No 1 092 596

Class 42: Technical projects studies for assistance in management of energetic business activities.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 26/08/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 31/10/2016 to submit evidence of use of the earlier trade marks. At the request of the opponent, the deadline was subsequently extended until 31/12/2016. On 02/01/2017, the opponent submitted evidence of use. Given that the deadline expired on a public holiday, the evidence is deemed to have been submitted within the time limit and it is admissible.

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.

The evidence to be taken into account is the following:

• Annex 1: an extract from the Internet Archive Wayback Machine showing the home page of the website www.enerbus.com as it was on 02/05/2010.

• Annex 2: three press articles (partially translated) giving an account of Enerbus’s activities. Two of them were published in March 2007 and April 2008 (i.e. outside the relevant period). The third is not dated but refers to an energy audit carried out free of charge for the Catalonian government in 2011. This annex also includes an order, dated 22/01/2014, for services to be delivered by Enerbus in the city of Barcelona worth around EUR 1 000.

• Annex 3: two offers (‘ofertas’) issued by Enerbus, dated 14/01/2014 and 23/11/2012 and addressed to the same company in Spain. Each is for services worth EUR  425 (VAT excluded). They are accompanied by the corresponding order forms (‘hojas de pedido’) issued by the Spanish company requesting the services. This annex also contains:

  • two further orders (‘pedidos’), both dated 23/07/2012, for energy audit and infrared thermography, each worth EUR 1 960, from two companies located in Spain;

  • one offer for services worth about EUR 200. The date at the bottom of the document is illegible;

  • three confidentiality agreements between Enerbus and other companies, dated 23/10/2015, 23/05/2014 and 20/02/2014.

• Annex 4: an extract from a directory issued by the Spanish trade association ‘Asociación de Empresas de Eficiencia Energética’, partially translated. The document is undated. It provides information about the company’s field of activity. The only reference to the date is a mention that in 2009 (i.e. outside the relevant period) Enerbus carried out 140 audits.

• Annex 5: a website extract and a leaflet about a course on energy saving given by, inter alia, a trainer of the Enerbus group. The extract is dated 10/03/2015 (i.e. outside the relevant period).

On 29/08/2017, at the applicant’s request, the opponent submitted further English translations of some of the evidence in Annexes 1, 3, and 5.

Assessment of the evidence

In accordance with Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43).

This means that the opponent is obliged not only to indicate, but also to prove each of these requirements. However, the sufficiency of the indication and proof as regards the place, time, extent and nature of use has to be considered in view of the evidence submitted in its entirety.

The Opposition Division considers it appropriate to focus the assessment of the evidence on the criterion of extent of use; in its opinion, the evidence submitted by the opponent is insufficient to prove that this requirement has been met in the present case.

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, and 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 by the opponent do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The extract from the Internet Archive Wayback Machine in Annex 1 shows only that the site http://www.enerbus.com was operational in May 2010. However, it does not provide any indications about turnover, sales or indeed any transactions carried out using the opponent’s marks.

As regards the press articles in Annex 2, two of them are dated considerably outside the relevant period and the remaining one mentions only briefly an audit carried out for free by the company Enerbus. There is no mention of the turnover generated by the opponent’s marks.

A single order form in Annex 2 and the two further orders in Annex 3 (with the letterhead of the company Endesa and mentioning Enerbus as the provider of the services in question) are dated within the relevant period, and admittedly they shed some light on the use of the opponent’s signs on the market. However, they are limited in number and the sum of their amounts (approximately EUR 5 000) falls short of demonstrating a sufficient extent of use of the mark. They should have been supported by other items of evidence to corroborate them. The remaining evidence submitted by the opponent is manifestly insufficient in that regard, as will be explained below.

Concerning the offers in Annex 3, only two out of three are legible and only one has been (partially) translated. The amounts indicated are very low, and they are supported by two order forms (‘hojas de pedido’) of a rather informal nature, which are untranslated. The two offers that are legible are addressed to the same company and list exactly the same services for the same price, so it is possible that the second offer is a mere repetition of the first, which was never executed.

The three confidentiality agreements in Annex 3 are not conclusive either, for a number of reasons. Firstly, only two of them are dated within the relevant period and one of these two is not even signed by one of the parties. Secondly, none of the agreements has been translated into the language of the proceedings. Finally, these documents are of a preparatory or accessory nature and do not show any actual sales of services under the opponent’s marks.

With regard to the extract in Annex 4, it bears no date. It seems, in fact, to have been issued well outside the relevant period, as can be deduced from the reference to the year 2009 therein. It is also unclear if the information contained in it was provided by the opponent himself.

Finally, Annex 5 is, again, dated outside the relevant period and only provides information on a course in which one of the trainers came from the Enerbus group.

When looking at the evidence submitted, it has to be evaluated whether the owner has seriously tried to acquire a commercial position in the relevant market. This does not mean that the opponent has to reveal the total volume of sales or turnover figures but there should be information that allows the commercial volume, duration and frequency of the transactions to be surmised (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35). In the evidence submitted there is limited information concerning the transactions carried out and no information about the turnover achieved under the opponent’s marks in the relevant period. Even though the assessment of evidence entails a degree of interdependence, the onus is on the opponent to submit materials that create a clear picture of how its mark is used on the market. In the present case, financial information (e.g. invoices, annual reports, audits) is scarce and, in addition, such information as was submitted is not complemented by convincing circumstantial evidence dated within the relevant period, such as catalogues, advertising materials and press cuttings. On the basis of the evidence listed and analysed above, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of 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).

Article 47 EUTMR requires proof of genuine use of the earlier mark. 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 (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22).

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.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).

COSTS

According to Article 109(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, he must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Andrea VALISA

Riccardo RAPONI

María Clara IBÁÑEZ FIORILLO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.