OPPOSITION No B 2 755 471

Promociones Musicales Get In, S.L., Pº Portuetxe, 53A, Ofi. 305, 20018 Guipúzcoa - San Sebastián, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Meininger Verlag GmbH, Maximilianstr. 7-17, 67433 Neustadt, Germany (applicant), represented by Patentanwälte Dr. Keller Schwertfeger Partnerschaft mbB, Westring 17, 76829 Landau, Germany (professional representative).

On 16/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 755 471 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 228 505 , namely against all the services in Class 41. The opposition is based on Spanish trade mark registration No 2 878 075 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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 Spanish trade mark No 2 878 075 on which the opposition is based.

The date of filing of the contested application is 17/03/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 17/03/2011 to 16/03/2016 inclusive.

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 relevant date mentioned above.

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

Class 35: Advertising; business management; business administration; office functions, including management of performing artists.

Class 41: Publishing of sound and video recordings; publishing services for books and texts, other than publicity texts; organization and production of musical shows; musical and record productions; services of a musical ensemble.

On 28/03/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 02/06/2017 to submit evidence of use of the earlier trade mark. As requested by the opponent, this time limit was extended. On 02/08/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex no 1: one invoice. dated 14/05/2013, between Promociones Musicales GET IN and Warner Music Spain, S.L., in Madrid, for EUR 72 600, in which the sign is depicted, for ‘Project in Malmö-Pulmantur with El Sueño de Morfeo’, claimed by the opponent to be a very important Spanish band from Asturias.

• Annex no 2: three advertising concert posters: ‘The River Tour’ (according to the opponent, in 2016), ‘The Wild Feathers’ (according to the opponent, from 2014) and ‘Sabina’, on which the sign or is displayed, as well as 10 tickets/invitations for various concerts.

• Annex no 3: printout, dated 02/08/2017, of the ‘about us’ page of the website www.getin.es, presenting the activities of the music promoter ‘GET in’. The information is in Spanish, and a partial English translation is supplied. According to this, ‘“Get In” is a music promoter founded in Donostia in 1991. Its work spans the Basque Country, Europe, Latin America and the United States.’ The sign is displayed at the top of the website.

• Annex no 4: printout of two Spanish-language articles from digital newspapers, dated 29/12/2014 and 24/01/2014, in which reference is made to the music promoter ‘GET IN’ in connection with two concerts organised in Spain, namely:

- ‘As reported Musical Promotions Get In, the two new confirmated [sic] dates for the new Pablo Alboran concerts will be on Friday, June 13, in the Ventas Square …’

- ‘The singer Andrés Calamaro has sold out the tickets for his concert on 23rd May …, as reported by Get In musical promotions.’

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.

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.

Assessment of the evidence with regard to the nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The opponent refers to the Office’s practice and claims that invoices constitute a direct means of evidence that the trade mark has been put to genuine use. However, the Opposition Division points out that in the present case the opponent submitted only one invoice and that it does not include any indication of the services provided by the opponent. The mere indication ‘Project in Malmö-Pulmantur with El Sueño de Morfeo’ is not sufficient to elucidate the nature of the service(s) that was/were offered by the opponent to the addressee of the invoice.

The same applies to the other documents submitted, since they do not contain any indication as regards the services provided by the opponent under the earlier mark. In particular, the concert tickets, posters and press articles do not allow the Opposition Division to establish any link between the services in Classes 35 and 41 on which the opposition is based. The evidence does not contain any specific information concerning the services provided by the opponent during these events. Although the opponent claims that the above evidence shows that ‘GET IN promoted concert tours’, the presence of the opponent’s logo on some of those documents is not sufficient to corroborate this statement, as the opponent’s role and specific involvement in these events is unclear. In fact, the opponent could have been the organiser, but could equally have been a sponsor, the artists’ agent or a company otherwise related to the organisation of the concerts or to the printing or distribution of the tickets.

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).

Finally, the extract from the opponent’s website presenting the company ‘Get In’ cannot be considered as evidencing any use of the mark in relation to the relevant services, as it merely describes the opponent’s area of activity (‘Get In is a music promoter’) and it does not refer to any specific services provided. Furthermore, it is not corroborated by any documents from external sources that would specify the nature of the services offered by the opponent. Moreover, contrary to the opponent’s claim, it is insufficient to attest to the mark’s ‘presence on the Internet’ in the absence of any indication of the number of visits to the website and of the orders placed through that website.

The opponent’s mark is registered for various services in Classes 35 and 41 and none of the documents submitted by the opponent enables the Opposition Division to conclude that use of the mark has been made in relation to at least one of the services advertising; business management; business administration; office functions, including management of performing artists; publishing of sound and video recordings; publishing services for books and texts, other than publicity texts; organization and production of musical shows; musical and record productions; services of a musical ensemble.

It follows that, as pointed out by the applicant, even when considered globally, the evidence provided is not sufficient to attest that the mark was used for the services for which it is registered.

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

Since the conditions for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI, EU:T:2010:424, § 43) and the nature of use of the earlier mark has not been proven, the place of use, period of use and extent of use need not be analysed.

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) and (3) 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

Julie, Marie-Charlotte HAMEL

Ferenc GAZDA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.