OPPOSITION No B 2 850 553

Michele Ventrella Firma Modeagentur Ventrella, Inhaber Michele Ventrella e.K., Wilhelm-Wagenfeld-Str. 20, 80807, München, Germany (opponent), represented by Gille Hrabal, Brucknerstr. 20, 40593, Düsseldorf, Germany (professional representative)

a g a i n s t

Shehzad Rahim Saya also trading as Zellbury, G-33, Block-06, P.E.C.H.S., Karachi, Pakistan (applicant), represented by Ratza & Ratza SRL, Bulevardul A.I. Cuza NR. 52, 54, Sector 1, 011056, Bucharest, Romania (professional representative)

On 15/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 850 553 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 (i.e. Classes 24, 25 and 35) of European Union trade mark application No 15 819 014 .

The opposition is based on all the goods and services (i.e. Classes 18, 25 and 35) of European Union trade mark registration No 7 232 754 .

The opponent invoked Article 8(1)(a) and (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 the trade mark on which the opposition is based, namely European Union trade mark registration No 7 232 754 .

The date of filing of the contested application is 12/09/2016. 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 12/09/2011 to 11/09/2016 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 goods and services on which the opposition is based, namely the following:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, belts, footwear, headgear.

Class 35: Arranging of trading and economical contacts, also over the Internet; arranging of commercial transactions, for others, including within the framework of e-commerce.

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.

On 15/12/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 15/02/2018 to submit evidence of use of the earlier trade mark. This deadline was later extended until 28/04/2018. On 30/04/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Declaration under Oath signed by the opponent. It explains that “the purpose of the company is: trade with, consulting in and brokerage of textile orders and design”. It refers to the earlier mark as “the DRAGON LOGO”, which claims that has been used continuously since 2007. It contains a picture of what is explained to be the entry of the business offices in Munich. There is no reference as to the date in which the picture was taken. The images show the earlier mark in small size next to the word “VENTRELLA”, as follows:

The opponent claims that the mark is also used in all business papers (no evidence submitted in this regard), and explains that the mark appears in all the invitation brochures for the fashion exhibitions (Annexes 2-11) that are mailed twice a year. It explains that about 2000 of these units were sent to Germany, 800 to Austria and 750 yearly between 2013 and 2017.

The opponent claims that it trades with textile and does brokerage of textile orders, showing collections of Italian manufacturers. It explains that the invitations referred to above are sent to business guests, as warehouses, stores, boutiques and selected end customers.

In relation to the brokerage of textile, it refers to the documents in Annex 15 described below, and in this regard claims “In 2017 we charged at least EUR 100 000”. In relation to the trade with textiles, the opponent refers to the documents in Annex 16, also described below, and explains that “In 2017 the turnover was at least EUR 10 000 for such sales”.

• Annex 1. Invitation to an exhibition for the F/W collection in 2007. This document is dated out of the relevant period of time, and does not contain any information that could be understood as an indication of/reference to the use of the sign during the relevant period.

• Annexes 2-11. Invitation brochures for the fashion exhibitions described in the Declaration under oath signed by the opponent, above. They are dated 2007, 2014, 2016, 2017, and the earlier mark appears represented in different stylisation and colours at the background, behind the word “VENTRELLA”.

• Annex 12. Print order dated for the invitation brochures to which Annex 11 corresponds. The document contains the name of the opponent, but there is no reference to the earlier mark. It is dated 2017, and therefore falls out of the relevant period of time.

• Annexes 13-14. A total of 2 receipts issued by Deutsche Post that, according to the opponent, correspond to the amount paid for the delivery of the mailings to which Annexes 2-11 refer. They are dated 2015 and 2018, being the latter out of the relevant period of time. They do not contain any reference/representation of the earlier mark, and only one of them contains the name of the opponent.

• Annex 15. A total of 3 invoices to Italian textile manufacturers. They are dated 2017, and therefore out of the relevant period of time. The mark appears on the top part of the page, as follows:

• Annex 16. A total of 3 invoices to consumers in Germany for which the opponent claims it is trade with textiles (i.e. “some fashion is sold (Collection Sale) directly to small companies or private customers”). They are dated 2017, and therefore out of the relevant period of time. The first and second invoices show sales of 1 item each, and the third one of 3 items.

• Annexes 17a-17b. Example of returned mail of the mailing fall/winter 2018. Both the event they refer to and the dates of the return of the mail fall out of the relevant period of time (i.e. 2018)

• Annexes 18a-18b. Screenshots of Facebook postings announcing “collection sale”, and showing pictures of what seem to be invitations or brochures with the characteristics of the ones described in Annexes 2-11 above. These posts are dated 2015 and 2016. The number of people following the page is 309.

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.

The opponent has referred to some turnover figures in its Declaration under Oath (see description of the content of the document above) and explains in its arguments that “2017 is an exemplary year and all mentioned years 2013-2017 have been similar, so that each year provisions of at least EUR 100 000 were charged to the Italian manufacturers by invoices with the dragon logo, identical to Annex 15”. However, the opponent´s explanations in this regard are vague and imprecise.

Even if the use of the mark need not be quantitatively significant for it to be deemed genuine, the Opposition Division notes that the opponent has not submitted any documents in relation to effective sales of the goods or services under the earlier mark during the relevant period of time, besides a small amount of invoices (Annex 15-16) in which the sales of very few goods were shown (1 or 3 per invoice). In addition, these documents are dated out of the relevant period of time.

The rest of evidence submitted, which constitutes the vast majority of documents
(i.e. Annexes 1 to14 and 17 to 18b), mainly refers to the invitations that the opponent claims to be sending twice a year (i.e. images of the invitations, a document showing returned mail, the printing order and the receipts in relation to the printing of those invitations, etc). However, there is no evidence of those events taking place, the number of people attending them, if the mark was used at the events, or to the kind of goods/services offered. In addition, it is not possible to know if the invitations reached their destination at all and the exact territories/cities they were sent to. Lastly, most of these documents were dated outside the relevant period of time. Therefore, these documents are clearly not capable of compensating the significant lack of information referred to above, and give no substantial information on the extent of use of the earlier mark.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent 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; 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 mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition based on Article 8(1)(a) and (b) EUTMR 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

Francesca CANGERI SERRANO

María del Carmen SUCH SANCHEZ

Sylvie ALBRECHT

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.