OPPOSITION No B 3 047 392

Kreon N.V., Industrieweg Noord 1152, 3660 Opglabbeek, Belgium (opponent), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative)

a g a i n s t

Shenzhen Sanzhandeng Industrial Co., Ltd, 6F No.49, Area 1, YuanLing JiuCun Yunmei Community, ShiYan Street Baoan, 518000 Shenzhen, People’s Republic of China (applicant), represented by A.BRE.MAR. S.R.L., Via Servais 27, 10146 Torino, Italy (professional representative).

On 10/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 392 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 17 374 018 (word mark ‘Uplight’), namely against all the goods in Class 11. The opposition is based on European Union trade mark registration No 3 392 156 and Benelux trade mark registration No 732 459 (both word mark ‘UP’). 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 marks on which the opposition is based.

The date of filing of the contested application is 23/10/2017. 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 and the Benelux from 23/10/2012 to 22/10/2017 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:

EUTM registration No 3 392 156

Class 11: Lighting apparatus and installations, and fittings therefore.

Benelux trade mark registration No 732 459

Class 11: Lighting apparatus and installations and accessories.

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 28/09/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 03/12/2018 to submit evidence of use of the earlier trade marks. On 03/12/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Catalogue dated October 2017 with an overview of products and projects under the mark ‘UP’ and explanation and specification of the products, namely LED lighters (attachment 1 and 2).

 7 invoices, dating from 08/10/2018 the earliest to 30/12/2018 the latest and sent to various clients in the Benelux (attachment 3).

 2 invoices, dating 26/10/2018 and 27/01/2018 and sent to clients in Germany (attachment 4).

 1 invoice, dating 12/10/2018 and sent a client in the France (attachment 5).

Although the documents filed and in particular the invoices, mentioning addresses in Belgium, the Netherlands, Luxemburg, Germany and France, show that the evidence relates to the relevant territory, this is not the case as regards the relevant period.

All the invoices are dated within the period 08/10/2018 and 30/12/2018, that is, the last quarter of 2018. However, as stated above the relevant period is from 23/10/2012 to 22/10/2017.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well.

Although it is true that events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50), nevertheless, this cannot be applied to the present case, since the invoices are issued far after the end of the relevant period, namely one whole year.

The only document dated within the relevant period is the catalogue which contains the indication ‘© kreon nv 10/2017’. However, there are no special circumstances which might justify a finding that the catalogue submitted by the opponent, on its own, proves the extent of use of any of the earlier signs for any of the goods involved. Although the catalogue submitted shows use of the earlier sign in connection with LED lightning, the opponent did not produce any evidence whatsoever indicating the commercial volume of the exploitation of this sign to show that such use was genuine within the relevant period, apart from the invoices issued that relate to a time far after the end of the relevant period.

Therefore, the evidence of use filed by the opponent does not contain sufficient indication concerning the time of use and the extent of use.

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 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 territories 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

Lars HELBERT

Konstantinos MITROU

Tobias KLEE

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.