OPPOSITION No B 2 829 417

Infiauto, S.A., Calle Josep Irla I Bosch, 1-3, 08034, Barcelona, Spain (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008, Barcelona, Spain (professional representative)

a g a i n s t

CGG – Consumer Guidance Group GmbH, Michaelkirchstr. 17-18, 10179, Berlin, Germany (applicant), represented by Oliver Hauf, Michaelkirchstr. 17-18, 10179, Berlin, Germany (employee representative).

On 24/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 829 417 is rejected in its entirety.

2. The opponent bears the costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. 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 some of the services of European Union trade mark application No 15 826 902 for the figurative mark , namely against all the services in Classes 35 and 36. The opposition is based on European Union trade mark No 5 424 163 for the figurative mark . 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 the trade mark on which the opposition is based.

The date of filing of the contested application is 15/09/2016. 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 15/09/2011 to 14/09/2016 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 services on which the opposition is based, namely the following:

Class 35: Advertising; business management; business administration; office functions; franchise-issuing services in relation to commercial management assistance in the field of automobiles and vehicles in general; import, export, agency and sole agency services in relation to vehicles and components, parts and fittings therefor; information and consultancy services in relation to retailing.

Class 36: Insurance and financial affairs; monetary affairs; real estate affairs.

On 17/07/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 22/09/2017 to submit evidence of use of the earlier trade mark. On 22/09/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Attachment 1: a document of 28 pages entitled ‘Uso de la marca QUADIS’. The following logos are visible on various buildings, an information sign, websites (e.g. www.quadisrentacar.es and Facebook), business card, cars, advertising posters, etc.: (page 3), (page 4), (page 6), (page 7), (page 8), (page 11), (page 15), (page 16), (page 21), (page 22), (page 23), (page 24), (page 25) and (page 27). This document contains pictures of some of the opponent’s shops, and in relation to the opponent’s sponsorship activities and attendance at various automotive industry gatherings. Few images are dated (page 21 is dated October 2014, page 22 is dated March 2015, etc.), but all the dates were added by the opponent.

• Attachments 2 and 3: undated documents entitled ‘Nou Centre Quadis a Mercabarna’. Each of these documents contains a list of automotive brands. The following logos are visible: and . The opponent claims that these documents are dated 2012.

• Attachment 4: an undated single-page document in which is depicted. The document is a leaflet containing information on the renting of a car. The opponent claims that this document is dated 2013.

• Attachment 5: a leaflet indicating the location of an autocentre, ‘QUADIS’. The following logo is depicted: . The opponent claims that this document is dated 2013.

• Attachments 6 and 7: single-page documents entitled ‘QUADIS EMPRESAS, 29 MARCAS Y UN SOLO CONTACTO’. The following logos are depicted: and . The opponent claims that these documents are dated 2015 (on the first document, the date 07/05/015 is in fact visible). These documents indicate that there is a car concession named ‘QUADIS EMPRESAS’ and give its location.

• Attachment 8: an undated single-page document dated ‘3 of Julio’ (the year is not mentioned). This document seems to be a brochure for a music festival. The following logo is depicted: . The opponent claims that this document is dated 2015.

• Attachment 9: an undated leaflet. The following logo is depicted: . The opponent claims that this document is dated 2015.

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 this case, the documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use, as explained in detail below.

In the present case, even if the documents submitted are related to the opponent’s presence on the market, they do not contain any information about the commercial volume achieved under the earlier mark. Furthermore, as only some of the documents are dated, it is not possible to asses the duration and frequency of use of the mark. Moreover, it is almost impossible to determine which services are provided under the mark, except car rental services, which are not a basis for the opposition.

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 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.

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). Consequently, the opposition is rejected in its entirety.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Zuzanna STOJKOWICZ

Birgit FILTENBORG

Julie, Marie-Charlotte HAMEL

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.