OPPOSITION No B 3 048 489

Manuel Castiñeiras Pérez, Vía Edison, 25 - Polígono Do Tambre, 15890, A Coruña, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043, Madrid, Spain (professional representative)

a g a i n s t

Casper Sleep Inc., 230 Park Avenue South 13th. Floor, 10003 New York, United States of America (applicant), represented by Withers & Rogers LLP, 4 More London Riverside, SE1 2AU London, United Kingdom (professional representative).

On 03/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 489 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 of European Union trade mark application No 17 300 815 namely against all the goods in Class 24, for the word mark ‘CASPER’. The opposition is based on international trade mark registration No 601 012 designating Benelux, Portugal, Italy and France and on Spanish trade mark registration No 760 353, both for the word mark ‘CASPER’. The opponent invoked Article 8(1)(a) and (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 marks on which the opposition is based, namely international trade mark registration No 601 012 and Spanish trade mark registration No 760 353, both for the word mark ‘CASPER’.

The date of priority of the contested application is 24/04/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Benelux, Portugal, Italy, France and Spain from 24/04/2012 to 23/04/2017 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 on which the opposition is based, namely the following:

Class 24: Textile, bed and table covers, textile goods and specially bed sheets and table linen

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.

On 06/08/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 15/10/2018 to submit evidence of use of the earlier trade marks. Upon the opponent’s request of 11/10/2018, extension of time for providing proof of use was granted until 15/12/2018. On 17/12/2018, within the time limit (since the 15/12/2018 was a Saturday), the opponent submitted evidence of use.

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

• Annex 1: Around 30 invoices referring to the sale of textile and curtains displaying the sign or the sign (albeit accompanied also by the sign ) and including references to the home page address of the opponent’s website encompassing the sign ‘CASPERDOS’. They cover the years 2012-2016 (within the relevant period, with the exception of one invoice dated 07/03/2012) and are addressed to dealers in several provinces of Spain (e.g. Inca, Oviedo, Vizcaya, Zaragoza, Orense) and Portugal (e.g. Porto, Azores, Portalegre). Some of these invoices are also accompanied by the relevant purchase orders displaying the signs and ;

• Annex 2: four pictures (not dated) of company premises showing the company signboards and , and 21 pictures (not dated) of fabric samplers, products packaging and labels displaying the signs , , , , , , , .

• Annex 3: one invoice dated 20/04/2017 referring to the costs of participation in a promotional event showing the company name ‘Casperdos, S.A.’.

• Annex 4: two extracts from the website www.decoraciontextil.com, dated 13/03/2018 (outside the relevant period) showing the sign and ‘CASPERDOS’ in connection with textiles, curtains and bed clothes;

• Annex 5: two samples of purchase orders including the signs and .

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

Although the evidence submitted contains relevant indications concerning the place of use (Spain and Portugal), in particular the invoices, which are mostly dated within the relevant period, there is no concrete reference related to the use of the earlier marks as registered (nature of use).

In the context of Article 10(3) EUTMDR, 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.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The word ‘CASPER’, constituting both earlier marks on which the present opposition is based, does not appear in the product descriptions within the invoices and purchase orders. However, the invoices submitted display, on their upper part, the figurative sign or, in alternative, the figurative sign , while the purchase orders submitted display the sign .

The other pieces of evidence either do not refer to any mark (e.g. some of the pictures) or are not conclusive in relation to the use of the marks in the relevant period, since they are not dated.

While in all these signs displayed on the invoices and purchase orders the earlier mark ‘CASPER’, depicted in bold lower-case letters, is accompanied by (i) the elements ‘-2’ or ‘-dos’ along with the indication ‘, s.a.’ (in significantly smaller characters) and by (ii) the depiction of a crown on top of the first two letters ‘ca’, in some invoices, the word ‘CASPER’ is also encompassed in a squared blue background along with the sign including the elements ‘C2’ and ‘home decor’.

With specific reference to this additional sign the Opposition Division notes that two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T‑463/12, MB, EU:T:2014:935, § 43).

Although is included along with in the same blue square element on the upper part of some of the invoices, it is reasonable to consider that it constitutes an independent mark of the opponent since it uses a clearly different font and appears to be used independently in connection with textiles, curtains and bed clothes in the remaining invoices (see annex 1), in the purchase orders (see annex 5) and in the extracts from the website www.decoraciontextil.com (see annex 4) submitted by the opponent. Although these extracts are not dated inside the relevant period, circumstances subsequent to the relevant period may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 31).

Therefore, considering that there is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark in isolation when genuine use is required within the meaning of Article 47 EUTMR, the Opposition Division considers that this additional element, , has been used as part of a composite mark along with the sign .

As mentioned above, all the signs appearing in the invoices and purchase orders also include the descriptive additional element ‘s.a.’ (sociedad autonoma) which indicates that they refer to the company name, ‘casper-2, s.a.’ or ‘casper-dos, s.a.’.

The use of a sign as a company name, or trade name, is not, of itself, intended to distinguish goods or services. However, it can be regarded as use ‘in relation to goods’ where, even though the sign is not affixed to the goods (as in the present case), it is used in such a way that a link is established between the company, trade or shop name and the goods or services (11/09/2007, C‑17/06, Céline, EU:C:2007:497, § 21-23).

Nevertheless, even considering that the signs , and , as appearing in the invoices and purchase orders submitted, can be regarded as use ‘in relation to goods’, it is necessary to assess whether they constitute use of the earlier marks as registered (nature of use) despite the presence of additional elements, namely the element ‘-2’ or ‘-dos’ and the depiction of the crown on top of the first two letters ‘ca’.

In principle, a difference in words or even letters constitutes an alteration of the distinctive character of the mark. That said, there may be additions with no impact on the distinctiveness of the mark as registered. These could be, in particular, generic indications of the product or descriptive terms (e.g. about the characteristics of the goods and services, such as their kind, quality, quantity or intended purpose), insignificant elements such as punctuation marks, the use of plural or singular forms, normally, or specifying the type of enterprise (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 29 et seq.; 10/06/2010, T‑482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

As concerns the elements ‘-2’ and ‘-dos’ (meaning ‘two’ in Spanish), they have no meaning in relation to the goods in question and carry no descriptive or otherwise allusive information that could suggest any essential characteristic of the latter. Furthermore, they cannot be deemed insignificant or irrelevant, as punctuation marks or any other of the generally admissible additions (14/07/2014, T‑204/12, Via Vita, EU:T:2014:646, § 30). Therefore, in the opinion of the Opposition Division, these elements do not comply with any of the criteria indicated above that would enable the conclusion that they are an addition with no impact on the distinctiveness of the earlier mark as registered.

Although, under certain circumstances, distinctive additions do not alter the distinctive character of the earlier mark, such a situation does not seem to apply in the present case.

As already mentioned, this would be the scenario of two independent marks being validly used at the same time, either because the mark has been used as part of another composite mark or because it is used in conjunction with another mark, which happens, for instance, when goods and services bear their individual mark and also the mark of the business or product group, a ‘house mark’.

In such cases, the opponent’s evidence must demonstrate that the additional signs ‘-2’ and/or ‘-dos’ are independent marks or signs (12/09/2001, R 206/2000-3, MINU’ / MINUTO, § 17-18).

The opponent has not submitted any evidence to allow the Opposition Division to ascertain the existence of two independent marks that are validly used at the same time (i.e. ‘casper’ and ‘-2’ or ‘-dos’). On the contrary, as also confirmed by the additional information concerning the home page address of the opponent’s corporate website (www.casperdos.com) in the invoices submitted and the sign mentioned therein (‘CASPERDOS’), it appears that the hyphenated two ‘-2’ or ‘dos’ are always used alongside with the sign ‘CASPER’. Therefore, it cannot be concluded that the requirements concerning the nature of use have been met in this regard.

In addition, the figurative element of the sign as used (a crown on top of the first two letters ‘ca’) is sufficiently conspicuous and stylised in order to constitute another distinctive feature of that sign and, therefore, creates a further difference in a distinctive element compared to the earlier mark as registered, namely as a word mark ‘CASPER’.

Therefore, in the opinion of the Opposition Division, the additional verbal and figurative elements described do not comply with any of the criteria indicated above that would enable the conclusion that they are an addition with no impact on the distinctiveness of the earlier mark as registered. Instead, it is concluded that the inclusion of these elements (the crown, and the numeral ‘-2’ or the word ‘dos’), used consistently in the opponent’s evidence as a combined mark, creates a sign which alters the inherent distinctiveness of the marks as registered, as it incorporates additional distinctive features.

Furthermore, all the pictures in which the verbal element ‘CASPER’ appears independently are not dated and are not accompanied by any statement explaining what they refer to. Hence, in the absence of any other relevant documents (invoices, catalogues, advertisements, etc.) that would actually show how the alleged ‘CASPER’ goods are being marketed, the Office cannot give full probative value to the opponent’s claims on the basis of such pictures only. Indeed, according to established case-law, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade marks on the market concerned (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 24; 08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 42).

In view of the above, the Opposition Division considers that the evidence does not show use of the signs as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

The requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43), which means that the opponent is obliged to prove each of these requirements and failure to satisfy any one of them means that the claim cannot succeed.

Considering all the above, 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 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.

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

Gueorgui IVANOV

Rosario GURRIERI

Jakub MROZOWSKI

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.