OPPOSITION No B 2 984 790

Isowat Made, S.L., Avda. Finisterre, 309-311, 15008 La Coruña, Spain (opponent), represented by J. Lahidalga, Calle Arturo Soria, 243 Dpl. Esc. 4-1º Izd., 28033 Madrid, Spain (professional representative)

a g a i n s t

Made.com Design Limited, 100 Charing Cross Road, London WC2H 0JG, United Kingdom (applicant), represented by Bird & Bird LLP, 12 New Fetter Lane, London EC4A 1JP, United Kingdom (professional representative).

On 21/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 984 790 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 930 505 for the word mark ‘MADE’. After the division of the contested EUTM application (with, as a result, that a new trade mark application No 17 883 413 covering non-contested goods and services has proceeded to registration), the opposition remains directed against all the goods and services covered by European Union trade mark application No 16 930 505 in Classes 6, 9, 11, 16 and 35. The opposition is based on the following earlier marks:

• EUTM No 6 352 645 for the word mark ‘MADE SOLAR’ covering services in Classes 37, 40 and 42;

• Spanish trade mark registration No 418 361 for the word mark ‘MADE’, covering goods in Class 6;

• Spanish trade mark registration No 991 275 for the figurative mark , covering goods in Class 9;

• Spanish trade mark registration No 1 597 685 for the figurative mark in combination with the verbal elements ‘MADE SISTEMAS ELECTRICOS S.A., covering goods in Class 6;

• Spanish trade mark registration No 2 517 883 for the figurative mark covering goods in Classes 9, 11 and 16.

The opponent invoked Article 8(1)(b) EUTMR.

CEASING OF EXISTENCE OF EARLIER EUTM No 6 352 645

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

1. by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

[…].

Furthermore, according to Article 8(2) EUTMR, ‘earlier trade mark’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

In this respect, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the EUTM application and the earlier right that has ceased to have effect cannot coexist any more, the opposition cannot be upheld to this extent. Such a decision would be unlawful (13/09/2006, T‑191/04, Metro, EU:T:2006:254, § 33-36).

On 30/10/2017, the opponent filed a notice of opposition claiming as the basis of the opposition, inter alia, EUTM No 6 352 645 for the word mark ‘MADE SOLAR’. However, that trade mark registration expired on 30/01/2018 and was not renewed within the due deadline or within the further six months following the day on which protection ended. It follows that this earlier mark trade has ceased to exist and is not an ‘earlier trade mark’ within the meaning of Article 8(2) EUTMR.

The opposition must therefore be rejected as unfounded as far as it is based on this earlier mark.

SUBSTANTIATION of earlier Spanish trade mark registration No 991 275

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, as regards the substantiation of earlier Spanish trade mark registration No 991 275 on which the opposition is based, the opponent indicated in its opposition notice that it accepts that the necessary information for this earlier trade mark registration invoked as basis of the opposition is imported from the relevant online official database, accessible through TMview. The Opposition Division accessed through TMview the relevant official database of the Spanish Trade Mark Office and established that this earlier mark is no longer in force and was cancelled due to a division into two new trade marks for specific goods in Class 9, namely Spanish trade mark registrations Nos 3724038 and 3724032, respectively.

According to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

In the present case, the evidence accessible online by the opponent is not entirely in the language of the proceedings. In particular, the list of goods covered by the new trade marks following the division of earlier Spanish trade mark registration No 991 275 is not in the language of proceedings. The evidence mentioned above is thus not sufficient to substantiate the opponent’s earlier Spanish trade mark registration No 991 275 as indicated in the opposition notice (nor of the two Spanish trade marks following its division), on which the opposition is based.

On 16/11/2017, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 21/03/2018.

The opponent did not submit the necessary translation.

According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier Spanish trade mark registration No 991 275 (or, for that matter, on Spanish trade mark registrations Nos 3724038 and 3724032 following the division of the earlier mark as indicated in the opposition notice.

Consequently, the examination of the opposition will only proceed in relation to the remaining earlier trade mark registrations on which the opposition is based, namely:

• Spanish trade mark registration No 418 361;

• Spanish trade mark registration No 1 597 685;

• Spanish trade mark registration No 2 517 883.

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 all the earlier trade marks on which the opposition is based, namely of EUTM No 6 352 645 and Spanish trade mark registrations Nos 418 361, No 1 597 685 and No 2 517 883.

The date of filing of the contested application is 28/06/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union/Spain, respectively, from 28/06/2012 to 27/06/2017 inclusive.

The request was submitted in due time and 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 and services on which the opposition is based, namely the following:

• 37Installation and maintenance of intelligent systems for private houses; installation and maintenance of programmable home automation;  lettering for vehicles.

• 40Professional consultancy in the field of the production of energy, namely production of solar energy; treatment of materials by means of mechanical or chemical transformation of inorganic or organic substances in new products; treatment of building and surfacing materials.

• 42Technical information and consultancy on energy supply and/or production and/or distribution installations, namely solar energy; technical study and analysis, diagnostics (developed by engineers) for the establishment and installation of energy supply and/or production and/or distribution installations, namely solar energy; studies, investigations and reports (services of engineers) in the fields of the environment, natural resources, sustainable development and urban planning; legal and technical reports relating to technology transfer; analysis (study) and industrial research on home automation; material testing and technical testing; technical consultancy and reports (services of an engineer) on lighting; technical reports relating to lighting, data processing, ergonomics, development and updating of computer programs relating to lighting, data processing, ergonomics; programming of programmable home automation; studies and technical research on the treatment of materials.

ES TM No 418 361 for the word mark ‘MADE’

Class 6: Metallic sandals.

ES TM No 1 597 685 for the figurative mark in combination with the verbal elements ‘MADE SISTEMAS ELECTRICOS S.A.’

Class 6: Safety barriers for roads, bridges, crossings and railways; towers, hardware and metal fittings for railways; substations and overhead power lines; clamps, wires, cables and non-electric wires; containers and metal valves; parts in general of aluminum, brass, bronze and their alloys; metal locksmithery and hardware in general; all kinds of metal structures; mineralsSafety barriers for roads, bridges, crossings and railways; towers, hardware and metal fittings for railways; substations and overhead power lines; clamps, wires, cables and non-electric wires; containers and metal valves; parts in general of aluminum, brass, bronze and their alloys; metal locksmithery and hardware in general; all kinds of metal structures; minerals.

ES TM No 2 517 883 for the figurative mark

Class 9: Scientific, nautical, geodetic, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), safety and teaching apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images, magnetic recording media, acoustic discs, automatic distributors and mechanisms for payment devices, cash registers, calculating machines, information processing equipment and computer; fire extinguishers.

Class 11: Lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water distribution and sanitary equipment.

Class 16: Letters, envelope, cards, folders, pamphlets, catalogs, instruction books, user manuals and publications.

• 9Scientific, nautical, geodetic, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), safety and teaching apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images, magnetic recording media, acoustic discs, automatic distributors and mechanisms for payment devices, cash registers, calculating machines, information processing equipment and computer; fire extinguishers

• 11Lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water distribution and sanitary equipment.

• 16Letters, envelope, cards, folders, pamphlets, catalogs, instruction books, user manuals and publications

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 08/06/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 13/08/2018 to submit evidence of use of the earlier trade marks. Subsequently, this term was extended until 10/10/2018. On 10/10/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Six and two invoices issued by MADE, TORRES Y HERRAJES addressed to clients in Spain and Dublin, respectively, dated in the period 08/11/2013 – 30/05/2018; one invoice in English is issued to an address in Kenia, Africa (Item 1).

• A company brochure of MADE and MADE TORRES dated 2916, stating:

- the establishment of the opponent in 1940 in Spain,

- the opponent’s history and change of name into ‘ISOWAT MADE S.L.’,

- the opponent’s core activity, i.e. the production of steel structures for power lines and solar energy, and the different business lines (engineering, hardware and fittings, steel structures manufacturing, hot dip galvanising),

- the opponent’s facilities and some of the opponent’s clients (Item 2).

• An internal table with national and international clients for numerous hot dip galvanising projects in the years 1983-2016, and an invoice dated 10/11/2016 showing significant amounts and volume for unidentified goods (Item 3).

The minimal materials filed do not show use of the mark on the goods; the only objective documents, the invoices, refer to goods without any reference to the earlier marks on which the opposition is based and no catalogue(s), pictures or other materials were filed to corroborate that these goods referenced in the invoices would actually bear the earlier mark(s). Therefore, the invoices, not even in conjunction with the evidence filed in its entirety, are not suitable for proving external use of the earlier marks in relation to the goods and services. The mere fact that the company name ‘MADE TORRE Y HERRAJES’ is referenced in the left upper corner on the invoices cannot held sufficient to reach a conclusion that the goods sold would bear (any of) the earlier marks. Furthermore, from the list of names and years of projects and the company brochure (made up by the opponent itself), it cannot be deduced that the marks have actually been used in relation to the goods and services in question.

Even if inter alia a very modest amount of use can suffice in certain circumstances, proprietors should adduce comprehensive evidence of use. In accordance with Article 10(3) EUTMDR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. 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.

In the present case, the minimal evidence filed, not even taken as a whole, does clearly not provide sufficient solid evidence concerning the extent of use for the goods and services at issue.

Furthermore, there are no special circumstances which might justify a finding that the brochure submitted by the opponent, in combination with the list of places and years of projects extracts, and the invoices without references to the earlier marks, prove the extent of use of any of the earlier marks for any of the goods and services involved. Consequently, genuine use must be denied for all the earlier marks invoked.

In light of all the foregoing, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks are 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, as regards the earlier EUTM and pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR, as regards the earlier Spanish trade marks on which the opposition is based.

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

Edith VAN DEN EEDE

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.