OPPOSITION No B 2 613 530

EUREL Convention of National Associations of Electrical Engineers of Europe AISBL, Rue d’Arlon 25, 1050 Ixelles, Belgium (opponent), represented by Hofstetter, Schurack & Partner, Patent- und Rechtsanwaltskanzlei, PartG mbB, Balanstrasse 57, 81541, München, Germany (professional representative)

a g a i n s t

European Association on Antennas and Propagation AISBL, Avenue de Tervueren 13A — Boite 2, 1040 Bruxelles, Belgium (applicant), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001, Madrid, Spain (professional representative).

On 09/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 613 530 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 services of European Union trade mark application No 14 640 502 for the word mark ‘EUCAP’, namely against all the services in Classes 38, 41 and 42. The opposition is based on European Union trade mark registration No 6 361 323 for the word mark ‘EUCAP’. 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 mark on which the opposition is based.

The contested application was published on 22/10/2015. 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 22/10/2010 to 21/10/2015 inclusive.

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

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; electric apparatus and instruments (included in class 9); data and data processing programs recorded on data carriers.

Class 41: Education; training; entertainment; arranging and conducting of congresses and seminars for further training, in particular for technical and scientific further training, for the promotion of technology and for educational purposes, arranging and conducting of exhibitions and other information events for further training, in particular for technical and scientific further training, for the promotion of technology and for educational purposes; publishing of technical regulations, standards, in particular technical standards, technical and scientific publications and other publications, in particular in the form of printed works, machine-readable data carriers and retrievable database records.

Class 42: Technical and scientific promotion of key technologies, electrical engineering, electronics, energy technology, information technology, communication engineering, microelectronics and microtechnologies, in particular technical and scientific support for research into basic principles, for the conception and development of new products and for the improvement of products already introduced onto the market, in particular with regard to the safety, electromagnetic compatiblity, easy handling, durability and efficiency thereof.

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 19/06/2017, 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 24/08/2017 to submit evidence of use of the earlier trade mark. On 24/08/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Attachment 1: affidavit signed by Andreas Landwehr, the opponent’s secretary general. This affidavit states that the opponent’s mark is in use for arranging and conducting conferences and seminars for training, was used between October 2010 and October 2015, and was used in connection with the ‘EuCAP’ conference.

• Annexes AF1-5: information about a ‘EuCAP’ conference, published on the opponent’s website under the heading ‘EUREL Sponsored Conferences’. According to these documents, ‘EuCAP’ conferences took place in Gothenburg, Prague, Rome, Barcelona and Berlin in 2013, 2012, 2011, 2010 and 2009 respectively.

• Annex AF6: copy of an email dated 29/10/2011, from Juan Mosig, EurAAP Chairman and EuCAP Series Chair, and Bruno Casali, member of the EurAAP board of directors, confirming that the opponent owns the right to the registered trade mark ‘EuCAP’. According to the email, EuCAP (with logo) was registered on 21/01/2009, under the number 006603732, but it does not specify where the trade mark was registered.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements.

Extent of use

In assessing the extent of the use of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

Moreover, the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 36-38, and the case-law cited therein).

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.

In the present case, the documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume.

As correctly pointed out by the applicant, statements coming from the owner of the earlier mark (drawn up by the interested parties themselves or their employees) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (11/01/2011, R 490/2010-4, BOTODERM, § 34; 27/10/2009, B 1 086 240; 31/08/2010, B 1 568 610). As far as the affidavit is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence. In the present case, with the exception of one email sent by a third party, the documents come from the opponent and, moreover, do not contain any information about the commercial volume achieved under the earlier mark. No invoices or financial reports were submitted that would allow the Opposition Division to assess the commercial volume achieved under the mark. The information from the opponent’s website providing details about EuCAP conferences is not sufficient.

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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Since the conditions for proof of use are cumulative and the extent of use of the earlier mark has not been proven, the place of use, period of use and nature of use need not be examined.

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.

The opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

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, it 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

Zuzanna STOJKOWICZ

Birgit FILTENBORG

Francesca DRAGOSTIN

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.