OPPOSITION No B 2 985 755

Zar Solares, S.L., Barrio Balabarca, 166, 39719, Orejo (Cantabria), Spain (opponent), represented by José Donato García Gómez, C/ La Gloria, 105, 3° E, 39012, Santander (Cantabria), Spain (professional representative)

a g a i n s t

Nanz medico GmbH & Co. KG, Wilhelmsplatz 11, 70182 Stuttgart, Germany (applicant), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative).

On 26/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 985 755 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 17 001 421 (figurative mark), namely against some of the goods and services in Classes 5, 9, 10, 35 and 44. The opposition is based on European Union trade mark registration No 6 305 015 (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, namely European Union trade mark registration No 6 305 015 .

The date of filing of the contested application is 20/07/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 20/07/2012 to 19/07/2017 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 and services on which the opposition is based, namely the following:

Class 7: Automatic drinkers (agricultural machines).

Class 9: Electric fencing for animals.

Class 35: Commercial retailing or retailing via global computer networks of fencing for animals, drinkers and feeders for animals, buckets, teats and bottles for nursing animals.

According to Article 10(3) EUTMDR, 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.

In accordance with Article 10(2) EUTMDR, the Office gave the opponent a term until 07/10/2018 to submit evidence of use of the earlier trade mark. This term was extended at the request of the opponent until 07/12/2018. On 07/12/2018, within the time limit, the opponent submitted evidence of use.

The evidence consists of the following:

 Evidence 1: (1 page) Invoice dated 28/11/2014 addressed to a customer in Portugal, itemising various goods, inter alia, animal feeding bottles for calves and lambs and bottle teats of rubber.

 Evidence 2: (2 pages) Invoice dated 22/12/2017 (outside the relevant period) addressed to the same customer in Portugal, itemising various goods, inter alia, animal feeding bottles, lactation cubes, teats of rubber, electric fencing and battery.

 Evidence 3: (1 page) Invoice dated 05/12/2015 addressed to a customer in Spain, itemising various goods, inter alia, animal feeding bottles and teats.

 Evidence 4: (1 page) Invoice dated 05/09/2016 addressed to a customer in Spain, itemising various goods, inter alia, cubes and teats.

 Evidence 5: (83 pages) Product Catalogue referring to 2017. The catalogue is not dated but the opponent identified it as dated 2017 and it is mentioned in the catalogue that the company has been operative for 40 years since 1977. The catalogue shows various goods, such as electric fence, batteries and accessories thereof, drinkers, nipples, livestock equipment (feeders, dairy accessories, teats, etc.). The catalogue includes pictures, product information and specifications, product codes. In addition, the catalogue shows address and contact details at the last page.

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

The requirements for proof of use, namely the place, time, extent and nature of use, are cumulative (05/10/2010, T‑92/09, ‘STRATEGI’, EU:T:2010:424, § 43). Therefore, the opponent should prove each of these requirements. The Opposition Division will focus the analysis on the criterion of extent of use since, in its opinion, the evidence provided by the opponent is insufficient to prove that this requirement has been met.

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 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.

The smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opponent to submit additional evidence to dispel possible doubts as to its genuineness (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 37).

In the present case, examining the documents in their totality and in combination with each other, the Opposition Division considers that they are not sufficient. The documents filed do not provide the Opposition Division with sufficient information concerning the duration, the commercial volume and the frequency of use.

The volume of use shown in the invoices is very low. As indicated above, the invoice filed as Evidence 2 is dated after the relevant period and cannot be taken into account. The invoices dated in the relevant period show that the place of use is Spain and Portugal - this is usually a factor that may compensate for a low volume/intensity of use. However, the quantity of goods itemised in the invoices is so low that it can hardly be compensated by use in two geographically neighbouring countries.

Furthermore, the invoices do not bear any reference to a trade mark. The opponent highlighted and translated in the language of proceedings the items, which supposedly refer to the goods sold under the respective trade mark. These goods have been listed above against each invoice description. Indeed, only after an in-depth analysis of the enclosed product catalogue of 2017 (Evidence 5), the Opposition Division was able to ascertain that the product codes of most of the goods highlighted in the invoices (although dated in 28/11/2014, 05/12/2015 and 05/09/2016) match the goods identified under the same product codes of the Catalogue of 2017. However, bearing in mind the nature, unit price and respective market sector to which the goods belong, the commercial volume, frequency, intensity and duration of use shown is not sufficient.

In particular, Evidence 1 show sales of three types of goods, namely product code MG2034 feeding bottle calves 2l, product code MG2035 feeding bottle lambs 2l and product code MG2054 not found in the catalogue (bottle teats of rubber). The unit price of these goods is EUR 3.75, EUR 3.75 and EUR 0.50, respectively. The total sales pertaining to these goods amount to EUR 77.25. Similarly, Evidence 3 itemises the sale of five different products (MG2034 feeding bottle calves 2l, MG2050 lambs teat reinforced, MG2051 red lambs cube teat, MG2037 feeding bottle lambs 50ml and MG 2046 silicone bottle teat) totalling EUR 30.54. Evidence 4 itemises the sale of two types of goods (MG2032 calve feeder and MG2050 lambs teat reinforced) totalling EUR 268.33 (with VAT). Even if Evidence 2 is considered in the analysis, it shows sales of between two to ten items of the following goods: feeding bottles, teats, lactation cubes, electric fencing and batteries.

In the lack of any other conclusive evidence, such as advertisements, turnover and sales figures, information about customers, price lists, etc. showing, either directly or indirectly, the frequency, intensity and dimension of use, the Opposition Division is not able to infer that the opponent has seriously tried to acquire a commercial position in the relevant market.

Looking at the remaining piece of evidence, namely Evidence 5, it should be mentioned that, indeed, under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (15/07/2015, T-398/13 TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57-58; 08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.). Nevertheless, in the present case, the enclosed catalogue does not contain sufficient indications enabling the Opposition Division to draw sound conclusions on the extent of use during the relevant period. Apart from the physical and website address details of the opponent, there is no additional information as to, for example, distribution network or possibility of online purchase through the website, availability of the goods in specialised channels of distribution or stores, etc. There is no information either whether the catalogue was distributed to any customers or distributors, in print or in electronic version. The fact that the catalogue shows a fairly wide variety of goods (that are commonly used in farming) makes it necessary to demonstrate a broader scope of market presence and penetration, availability and/or sales.

Therefore, in conclusion, 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 a last point, the Opposition Division hereby notes that at least part of the goods itemised in the invoices (e.g. teats, feeding bottles) do not fall within any of the categories of goods and services in Classes 7, 9 and 35, for which the earlier mark is registered. However, the issue of nature of use will not be examined in detail, since it would be superfluous. As mentioned above, the requirements concerning the place, time, extent and nature of use are cumulative. This means that the opponent is obliged not only to indicate but also to prove each of these requirements. Therefore, failure to prove at least one of the necessary requirements is sufficient to reject 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).

The opponent has not provided sufficient indications concerning at least the extent of use of the earlier mark.

Consequently, 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.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR.

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, 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

Jakub MROZOWSKI

Liliya YORDANOVA

Anna MAKOWSKA

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.