OPPOSITION No B 2 921 248

Groupement D’achats Des Opticiens Lunetiers - Gadol, 5 avenue Newton, 92140 Clamart, France (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006, Lyon, France (professional representative)

a g a i n s t

Ulrich Pohlmann, An der Umflut 4, 48683 Ahaus, Germany (applicant), represented by Bischof & Partner Rechtsanwälte Partnerschaftsgesellschaft mbB, An den Speichern 6, 48157 Munster, Germany (professional representative).

On 25/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 921 248 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services in Class 35 of European Union trade mark application No 16 539 711 for the word mark ‘Shop 2000’. The opposition is based on French trade mark registrations No 96 639 468 ‘AUDIO 2000’, for which the opponent invoked Article 8(1)(b) EUTMR, and No 83 558 031 ‘OPTIC 2000’, in relation to which Article 8(1)(b) and Article 8(5) EUTMR were invoked.

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 missed the deadline of 26/01/2018 for submitting the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR. The applicant was informed of this in the letter of 08/02/2018. On 08/02/2018 (within two months of the expiry of the unobserved time limit, as Article 105 EUTMR requires) the applicant requested the Office for a continuation of proceeding in relation to the deadline for the request for proof of use. On 11/04/2018, the Office informed the parties that pursuant to Article 105 EUTMR, such a request was admissible and was granted on 27/04/2018 and, therefore, the Office requested the opponent to submit proof of use of the trade marks on which the opposition is based, namely French trade mark registrations No 83 558 031 (for the word mark ‘OPTIC 2000’) and No 96 639 468 (for the word mark ‘AUDIO 2000’).

The date of filing of the contested application is 30/03/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in France from 30/03/2012 to 29/03/2017 inclusive.

The request is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

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

French trade mark No 83 558 031 ‘OPTIC 2000’:

Class 9: Optical apparatus and instruments; glasses (optics); glasses frames.

French trade mark No 96 639 468 ‘AUDIO 2000’:

Class 9: Apparatus for recording and transmitting sound for hearing impaired persons; apparatus for medical and surgical purposes, namely hearing aids; devices for the treatment of deafness; devices for the protection of hearing.

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 27/04/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent a deadline to submit evidence of use of the earlier trade marks, which was extended (after a request by the opponent) until Sunday, 02/09/2018. Since this was a non-working day for the Office, the last day to submit the evidence of use is considered the first subsequent working day, that is, Monday 03/09/2018. On that day, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Evidence in relation to earlier mark ‘OPTIC 2000’:

 Appendix 1: selection of screenshots (in French but with partial translations), mostly from the opponent’s website ‘Optic 2000’, giving information, inter alia, about its history (e.g. brand born in 1969), structure, success, turnovers and points of sale along the French territory (up to 1 200 stores). The brand is shown (e.g. ), but in relation to retail services of optical goods (and not to the opponent’s optical goods), as can be inferred from the statements, ‘Optic 2000 is the leader in optical distribution in France’, ‘the 1^st network opticians in France’.

 Appendix 2: selection of articles from third party magazines/websites, giving information about turnovers and market position (in years included within the relevant period) of the ‘Optic 2000 group’ (a cooperative which also includes the brands ‘Lissac’, ‘Optic 2000 Switzerland’ and ‘Audio 2000’). For instance, the first article (dated 2015) indicates that ‘Optic 2000’ was the leading French brand in 2014, with 1 210 stores; that it enjoyed 13.3% of the market share and an increasing turnover, amounting to EUR 461 million (according to a report made by ‘GFK’). The two following articles reflect similar information with regard to the years 2016 and 2017. This appendix also includes a report (made with the collaboration of ‘GFK’) about the market share in 2015. It compares it with its main competitors in the optician’s field, stating that it occupied the first position.

 Appendix 3: reports made by the communication agency ‘Business’, about the investments made in advertising by Optic 2000 (e.g. press, TV, Radio) from years 2012 to 2017 and making reference to some advertising materials such as commercials (where the brand appears as a distributor of glasses and frames).

 Appendix 4: extracts from the Internet archive ‘The Wayback Machine’ concerning the opponent’s website in different years within the relevant period. It clearly offers optical goods. However, the brand ‘OPTIC 2000’ does not appear in relation to the opponent’s goods but as retailer. On the contrary, the glasses and lenses offered relate to other brands such as ‘RayBan’, ‘elite’, ‘Dia’ etc.

 Appendix 5: extracts from a variety of OPTIC 2000’s social media pages (i.e. ’Youtube’, ‘Facebook’, ‘Twitter’ and ‘Instagram’) mostly dated within the relevant period. The brand is presented as ‘the 1st French optician’ and they include, inter alia, advertisements for the sale of glasses. ‘OPTIC 2000’ branded goods cannot be seen in the images, but the name is shown as the brand of the outlet itself. Additionally, the goods that can be linked to brands, are linked to important brands of glasses such as ‘Ray-Ban’ and ‘Polo’.

 Appendix 6: selection of extracts, screenshots and catalogues from different sources offering the sale of optical goods corresponding to national and local advertising materials published/distributed all around France, according to the opponent. They are partly dated within the relevant time and partly non-dated. Most of the documents refer to the offer of optical goods (by the OPTIC 2000 retailer) bearing no brands or those famous marks cited above. However, there are two documents where the earlier mark appears (as a part of a composite brand), namely a catalogue (non-dated) containing glasses branded as and an article from the website www.labeauteparisienne.com (dated 2016), where a model of glasses appears (with its price indicated) bearing the sign .

 Appendix 7: extracts from ‘OPTIC 2000’`s YouTube page dated from 2012 to 2018, concerning advertising about the sale of glasses. From them it is quite clear that the opponent offers these services under the earlier mark (e.g. the logo appears at the end of the spots as well as the signboards of the physical stores), but none of the goods offered can be linked to its mark.

Evidence in relation to earlier mark ‘AUDIO 2000’.

 Appendix 8: selection of various types of documents (in French, with partial translations) such as a Wikipedia extract and third party websites, giving information about, inter alia, the history of ‘AUDIO 2000’, commercial activity (mainly in connection to the research and development of hearing-aid devices and the sale of these products), turnovers and the centres (254) that they have in France (using the signboard ).

 Appendix 9: reports made by the communication agency ‘Business’, about the investments made in advertising by AUDIO 2000 (e.g. press, TV, Radio) from the years 2012 to 2017 with reference to some advertising materials such as commercials (where the brand appears as a retailer of hearing-aid devices). While it is clear that they offer these services under the brand ‘AUDIO 2000’, it is not shown in relation to the specific goods. Some of the goods are branded with third party marks (e.g. ‘Motion SX’ and ‘Pure’ by ‘Siemens’, as can be seen below:

.

 Appendix 10: extracts from the official ‘YouTube’ and ‘Facebook’ pages of ‘AUDIO 2000’, mostly dated within the relevant period, offering auditory screening and sale of hearing aids. The brand is shown constantly in relation to these services and the stores/centres appearing in the advertising, but the goods bearing a brand relate to other marks (i.e. ‘Siemens’):

.

One of the publications in Facebook includes images of batteries for hearing aids bearing the brand ‘AUDIO 2000’:

 Appendix 11: extracts from the internet archive ‘The Wayback Machine’ concerning the opponent’s website www.audio2000.fr, in different years within the relevant period. It clearly offers services related to the prevention, detection and support of hearing issues under its brand, but not the specific devices, which are branded with other marks.

 Appendix 12: extracts from the newsletter Frequences published by ‘AUDIO 2000’, mostly dated within the relevant period and concerning varied information (e.g. news, articles on auditive issues, offers). The only reference to AUDIO 2000 products is that made on page 19, reporting that the apnoea world champion, Morgan Bourc’his, is the brand image for this mark’s waterproof earplugs (a fact that is also stated in the extracts from the opponent’s webpage in appendix 11).

 Appendix 13: reference to the turnover for ‘AUDIO 2000’ within the period 2012-2017. This is a simple document containing the figures per year but there is no further information such as to which products or services they relate, the origin of the information or who declared or signed it.

Having examined the material listed above, the Opposition Division finds that the evidence is insufficient to establish genuine use of the trade mark.

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 earlier marks have not been used (or at least such use has not been proven) in accordance with their function. The reason is that the use of the signs ‘OPTIC 2000’ and ‘AUDIO ‘2000’ (both with varying depictions as illustrated above), in the documents submitted (e.g. website of the opponent, articles, advertising materials) are, in the main, used to designate the retail services of the goods for which the earlier marks are registered (in essence, optical and auditory products) but not for the products themselves. The great majority of the goods offered are referred to by another brand (e.g. ‘RayBan’, ‘Polo’, ‘Siemens’) or with no brand at all (or at least not a recognisable one in the pictures) with the exception of a couple of mentions of collections of goods where the earlier marks are shown as a part of another composite mark in relation to glasses (i.e. and ) and to waterproof earplugs under the mark ‘AUDIO 2000’. However, even assuming that these signs do not alter the distinctive character of the marks in the form in which they are registered, these small pieces of evidence are not supported by any further material such as invoices that could suggest an effective use of the marks.

Therefore, the evidence merely shows some use of the signs as a retailer of these kinds of products or as a company name. They do not function as indicators of origin for the goods sold or offered for sale, but for identifying a company/retailer or designating a business which is being run. Such use cannot be considered as being in relation to the relevant goods (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 47-48; 13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156, § 31-32).

Moreover, although there seem to be indications of a strong use of the marks (for retail services) and the opponent owns two of the leading companies in this sector (as can be inferred by the declared turnovers, market share, advertising materials, multiple stores in France and other indirect evidence), the opponent does not provide any solid evidence such as invoices or orders, to back up this information and prove the extent of use in relation to the retail services, and much less to the goods for which the earlier marks are registered.

The use of a sign as a business, company or trade name can only be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T‑209/09, Alder Capital, EU:T:2011:169, § 55-56).

However, this is not the case. It is clear from the evidence submitted that the opponent is a distributor of optical and hearing-aid devices (see in particular appendices 1, 4, 5, 8 and 11). For example, in appendix 1 it is stated that ‘Optic 2000 is the leader in optical distribution in France’ and ‘the 1^st network opticians in France’; appendices 2 and 3 refer to the turnovers and advertising expenditure for the company (or the brand) ‘OPTIC 2000’. However, these figures cannot be linked to the sale or promotion of optical products bearing this mark. The same applies for the other earlier mark ‘AUDIO 2000’ (appendices 8, 9 and 13). This assertion is somewhat reinforced by the remaining evidence (opponent’s website, advertising materials, catalogues) since the majority show the offer of products bearing other marks, which rather suggests that the opponent runs multi-brand stores providing goods and related services (e.g. devices for auditory and visual problem prevention and detection).

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).

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).

Since it is also clear from the evidence submitted that the marks have not been used in relation to the goods for which they are registered, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territories during the relevant period of time.

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).

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

Riccardo RAPONI

Birgit FILTENBORG

Andrea VALISA

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.