OPPOSITION No B 2 991 548

Estudio 2000, S.A., Avenida de Brasil, 17 - planta 13, 28020 Madrid, Spain (opponent), represented by Sonia Álvarez López, Nuñez de Balboa, 31, 28001 Madrid, Spain (professional representative)

a g a i n s t

Jinhua Laibo Electronic Commerce Co., Ltd, (Xiaoyiquanhu) Xiaxiao Village, Yangbu Town Wucheng District, 321000 Jinhua City, People’s Republic of China (applicant), represented by A.Bre.Mar. S.R.L., Via Servais, 27, 10146 Torino, Italy (professional representative).

On 30/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 991 548 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 17 114 001 for the word mark ‘RAINBOWPONY’, namely against all the goods in Class 18. The opposition is based on Spanish trade mark registration No 1 022 398 for the word mark ‘PONY’. 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 Spanish trade mark ‘PONY’ on which the opposition is based.

The date of filing of the contested application is 17/08/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 17/08/2012 to 16/08/2017 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 18: Leather and imitations of leather, goods made of these materials not included in other classes, skins, trunks and suitcases, umbrellas parasols and walking sticks, harness and saddlery.

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. 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. Therefore, the absence of any of them will lead to the conclusion that the opponent failed to prove genuine use of its earlier marks in relation to the goods for which it is registered and the rejection of the opposition.

On 11/04/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 16/06/2018 to submit evidence of use of the earlier trade mark. On 15/06/2018, 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 the following:

 Document 1: Numerous invoices and their associated catalogues of products corresponding to the relevant period 2012-2017. All invoices are addressed to a national sport organization indicating also the regional delegations within the Spanish territory. The invoices contain a description of the products, their model name and reference, colours, quantities and prices. The references therein are found also in the catalogues, along with an image of the products, their measures, composition and colours. The invoices and the catalogues show the earlier mark as a figurative sign or . The products bearing the earlier mark are sport bags, first‑aid‑kit bags, balls bags, big bags with wheels, bags with ‘carry boots’ and backpacks.

 Document 2: Action planning and budget for the release of the trade mark ‘PONY’ in the market, issued by the communication agency Gallery Room in June 2016. Although the document contains information as regards, inter alia, the position of the brand, the media and the product strategy, communication and corporate materials, it is completely in Spanish.

 Document 3: A dossier under the title ‘Pony, new release from Spain Spring/Summer 2017-2018; Fall/Winter 2017-2018’. It is a launching proposal of a sneaker product. It includes an Action Planning for the years 2016-2018. The document is completely in Spanish.

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 evidence of use shows that the earlier mark has been used for sport bags, first‑aid‑kit bags, balls bags, big bags with wheels, bags with ‘carry boots’ and backpacks. Furthermore, as clearly indicated in the catalogues (document 1), the composition (‘composición’ in Spanish) of these goods is either nylon or polyester. In this sense, nylon is defined as ‘any of various synthetic thermoplastic polymers with a straight-chain polyamide structure, many of which are tough, lightweight, and resistant to heat and chemicals, may be produced as filaments, sheets, or moulded objects, and are widely used for textile fabrics and industrially’ and polyester fibre is ‘a man‑made fibre consisting of such a polymer (any polymer in which the units are joined by an ester linkage); a fabric made from such fibre’ (information extracted from Oxford English Dictionary online, on 28/01/2019, at www.oed.com).

As mentioned above, the opponent had to prove use of the earlier mark for leather and imitations of leather, goods made of these materials not included in other classes, skins, trunks and suitcases, umbrellas parasols and walking sticks, harness and saddlery. However, the invoices and the catalogues (document 1) submitted by the opponent do not refer to any of the goods protected under the earlier mark. Indeed, the possibility that those bags commercialised by the opponent could be considered goods made of these materials (leather and imitations of leather) is discarded from the fact that they are made from nylon or polyester. These are both lightweight and durable synthetic fabrics that share many of the same properties, such as easy care, wrinkle resistance, stretch resistance and shrink resistance. In other words, these fabrics are of a different nature and they are in competition with the opponent’s leather and imitations of leather.

Accordingly, these goods do not fall within any of the categories for which the earlier mark is registered in Class 18.

For the sake of completeness, as regards the evidence submitted as document 3, a mere launching proposal in relation to a sneaker product cannot be conclusive in itself, as it does not show that said product was finally commercialised. In any event, a sneaker would be classified as footwear in Class 25, which is not protected under the earlier mark claimed in the present proceedings.

Furthermore, even if the opponent had submitted a full translation of the content of the documents 2 and 3, this would not change the outcome.

Therefore, the opponent has not shown use for the goods for which the mark is registered, but for other goods for which it has no protection.

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 stated above, the nature of use, in the sense of use in relation to the goods for which the mark is registered and on which the opposition is based, is one of four factors (nature, place, time and extent) to be assessed in the determination of whether the use is genuine or not and these factors are cumulative.

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) 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

Adriana VAN ROODEN

Marta GARCÍA COLLADO

Monika CISZEWSKA

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.