OPPOSITION No B 2 921 537

The Java Coffee Company, Naamloze Vennootschap, Wingepark 20, 3110, Rotselaar, Belgium (opponent), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000, Antwerpen, Belgium (professional representative)

a g a i n s t

Coffee Snacks USA LLC, 1 Apple Road, 01915, Beverly, United States of America (applicant), represented by Hiddleston Trade Marks, Polhill Business Centre, London Road, Polhill, Halstead, TN14 7AA, Sevenoaks, The United Kingdom (professional representative).

On 29/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 921 537 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 of European Union trade mark application No 16 494 908, “JAVA ME UP!” (word mark). The opposition is based on Benelux trade mark registration No 907 469, (figurative). 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 Benelux trade mark registration No 907 469, (figurative) on which the opposition is based.

The date of filing of the contested application is 22/03/2017. The opponent was, therefore, required to prove that the trade mark on which the opposition is based was put to genuine use in the Benelux countries from 22/03/2012 to 21/03/2017 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 on which the opposition is based, namely the following:

Class 30: Cacao products; cookies; speculaas.

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 27/09/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 02/12/2017 to submit evidence of use of the earlier trade mark. On 01/02/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

• 5 pictures supposedly taken by the opponent and pasted in a word document referenced as follows by the opponent:

• “JAVA” brownie and chocolate offered with “JAVA” coffee (emphasis added) (2013);

• “JAVA” chocolate sprinkles on a “JAVA” coffee (2013);

• “JAVA” ladyfinger and chocolate offered with “JAVA” coffee (2013);

• Hand-made “JAVA” speculaas (spiced cookie) offered with a “JAVA” coffee (2013);

• “JAVA” muffin offered with a “JAVA” coffee (2013).

• Several items packed under the mark , and indexed/listed in the following manner by the opponent:

• The original Speculaas (spiced cookie) – expires on 07 May 2018. According to the opponent this product has been produced and sold within the relevant period.

• “JAVA” chocolate that, according to the opponent, is issued from a box of chocolates that expired on 27 March 2014.

• “JAVA” coffee milk.

• “JAVA” coffee sugar.

• “JAVA” Espresso La Esperanza –Brown bag of coffee beans (1000g) (2015).

• “JAVA” decaffeinated quick-liter- White bag of ground coffee (250g) (2015).

• “JAVA” Brazil Santos- Red bag of ground coffee (205g)(2015).

• “JAVA” Max Havelaar- White bag of pre-dosed filter coffee (80g) (2015).

• “JAVA” Dessert- Yellow bag of ground coffee (250g) (2015).

• An advertisement in a guide, called “Horeca guide 2017”, about “JAVA” coffee roaster.

• A “JAVA” discount voucher valid until 2015 for coffee products.

• An advertisement in “Fokus KMO” newspaper from February 2017 (page 3) about JAVA coffee.

Even though, according to Rule 22(2) EUTMIR (in force at the moment of filing the request for proof of use), the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 95(2) EUTMR (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 30).

The opponent, in its reply to the applicant’s arguments, also submitted the following documents on 26/07/2018 (outside the above mentioned set time limit 02/12/2017):

• Copy of two pages of its webshop in relation to “JAVA” chocolates and “JAVA” sugar sticks.

However, at this point, the Opposition Division considers it appropriate to take into account in the examination also the belated evidence submitted by the opponent, which will not be to the applicant’s prejudice, as will be seen below.

Assessment of genuine use

In accordance with Article 10(3) EUTMDR, the indications and evidence required in order to submit proof of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered (emphasis added) and on which the opposition is based, and evidence in support of these indications.

As mentioned above, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 30: Cacao products; cookies; speculaas.

In this sense, nearly all the documents refer to coffee or coffee related goods. From the evidence submitted, the Opposition Division can see three pictures taken by the opponent (supposedly) of coffee mugs accompanied by a ladyfinger, a spiced cookie and a muffin, respectively. These three items do not even show the mark “JAVA” on them. They are accompanying the coffee mugs with the “JAVA” logo. From the items received in the Office, wrapped with the “JAVA” logo, only a chocolate and a spiced cookie fall under the category of the earlier goods on which the opposition is based. The rest of items relate to coffee or coffee related goods and services.

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 evidence submitted consists mostly of internal documents (photographs and printouts from the website, even though filed outside the period), which have, per se, less probative value and should be corroborated by independent evidence. For instance, useful evidence in this regard could have been the records that are generally kept when operating a website, for example records relating to the number of visitors received at various times by the websites in relation to which evidence was submitted. Similarly, no documents or evidence were submitted regarding whether or not, from where and/or to what extent, the websites were accessed or whether or not the price lists were actually distributed.

Furthermore, the opponent did not submit any evidence proving its commercial volume. In particular, there is no evidence that the opponent has seriously tried to acquire a commercial position in the relevant market, as there is no document showing that any relevant product was actually sold or reached the consumer. Although the opponent submitted some evidence suggesting the intention of marketing (i.e. mentionings in magazines and online sites), there is no evidence that this material was distributed to or reached the (possible) consumers or to what extent. As a result, since no data were submitted about the sales/distributions to consumers, the documents submitted by the opponent, described above, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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).

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the earlier mark. Since it is an integral part of the proof of use, it is impossible for the Opposition Division to establish that the opponent’s mark has been genuinely used on the market.

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. Consequently, even taking into account the belated evidence submitted by the opponent, the required genuine use of the earlier trade mark has not been proved and the Opposition Division considers it unnecessary to reopen the proceedings and give the applicant an opportunity to comment on that evidence.

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

Alicia BLAYA ALGARRA

Inés GARCIA LLEDO

Chantal VAN RIEL

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.