OPPOSITION No B 2 835 497

Rigromont GmbH, Alter Ostring 34, 58339 Breckerfeld, Germany (opponent), represented by Patentanwälte Köchling, Döring PartG mbB, Fleyer Str. 135, 58097 Hagen, Germany (professional representative)

a g a i n s t

Kasanova Spa, Viale Monte Rosa 91, 20862 Arcore (MB), Italy (applicant), represented by Canella Camaiora Società Tra Avvocati, Via Carlo Giuseppe Merlo 3,

20122 Milano, Italy (professional representative).

On 13/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 835 497 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No  16 013 311 (KASANOVA), namely against all the goods in Class 27. The opposition is based on European Union trade mark registration No 7 329 808, . 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 No 7 329 808.

The contested application was filed on 09/11/2016. 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 09/11/2011 to 08/11/2016 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 on which the opposition is based, namely the following:

Class 27: Carpets, rugs, linoleum, floor coverings of gum, plastic, textile material, wood and cork, or mixtures of the aforesaid materials.

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 12/09/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 17/11/2017 to submit evidence of use of the earlier trade mark. On 06/11/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Letter from the opponent explaining that it is a purchasing and marketing company, the shareholders of which are wholesale companies and affiliated enterprises or subsidiaries in Germany, Austria and Switzerland. The letter goes on to name the seven shareholding wholesalers of the opponent, and to explain that said entities order sample collections of floor coverings (including price lists) from the opponent, and that same are marked with the trade mark in question. It is further explained that these specialist, wholesale companies go on to purchase floor coverings from the manufacturers at the “intercession” of the opponent, and that these products are then marketed to flooring installers, parquet layers, painters, interior designers, contractors etc using the sample collection provided by the opponent and, necessarily, the trade mark.

• 13 invoices: in German to four of the opponent´s stated shareholders in Germany in respect of sample collection books. The invoices mainly date from within the relevant period. In the main, there is no specific mention of the trade mark or the goods (enclosure A).

• A small quantity of (to) third party invoices in German coming from one of the opponent´s shareholders in respect of a variety of unspecified goods, some of which are identified with the trade mark. The unspecified goods bearing the subject mark come to a sales total of under €10,000 (enclosure B). The documentation is dated August 2016.

• Affidavit of the opponent´s managing director attesting to the commercial set up of the opponent and its relationship to the mark.

• Photographs of rolled up products bound with tape bearing the trade mark (with smaller writing underneath), together with further images of palleted goods which bear the mark.

• Sample collection folders and some pricelists bearing the mark, for floor coverings of a variety of different materials. The opponent says the collection folders are used by sales persons and shown to prospective customers. A number of the books bear the name of one of the opponent´s shareholders.

The invoices from the named opponent date from within the relevant period, though they do not demonstrate, of themselves, that goods the subject of those invoices (sample books of flooring, according to the opponent) were in fact marketed, e.g. one of the few invoices that specifically mentions the mark also states that the goods it refers to (themselves unspecified) are for a 2018 collection. The invoice dates from 2016 but reflects that the goods are to be marketed subsequently by the wholesaler.

The hardest evidence includes a small quantity of third party invoices in German coming from just one of the opponent´s shareholders in Germany in respect of a variety of unspecified goods. Those unspecified goods which are specifically identified with the trade mark come to a sales total of under €10,000 (enclosure B). The documentation is dated August 2016. Again, it is not possible to deduce from this single source of documentation if the goods at issue were sold while bearing the mark in question. Those goods which do bear the sign involve sums which are low for this market in the European Union, and date from a narrow window of time within the period. Even taking the case at its highest, the requisite extent, nature, time, volume, duration and frequency of use in question is not shown, taking into account the nature of the relevant goods and the characteristics of the market concerned (as explained by the opponent).

None of the other evidence provided (affidavit, sample books, photographs of packaged and palleted goods) manage to fill these lacunae, since none of them demonstrate that the goods the subject of the mark which forms the basis of these proceedings were externally marketed under the mark during the relevant timeframe. Therefore, the Opposition Division does not agree with the opponent that use of the mark in question has been genuinely shown in relation to the instant goods in these proceedings.

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).

As 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, 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

André Gerd Günther BOSSE

Keeva DOHERTY

Natascha GALPERIN

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.