OPPOSITION No B 3 048 518

Conrad Electronic SE, Klaus-Conrad-Str. 1, 92240, Hirschau, Germany (opponent), represented by Stippl Patentanwälte, Freiligrathstr. 7a, 90482, Nürnberg, Germany (professional representative)

a g a i n s t

Redeclaro - Networking Solutions 4 Healthcare LDA., Rua Poeta Bocage No.1, 1600 581 Lisboa, Portugal (applicant), represented by J. Pereira Da Cruz S.A., Rua Victor Cordon 14, 1249-103 Lisboa, Portugal (professional representative)

On 30/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 518 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 and services of European Union trade mark application No 17 459 512 ‘CLAPP’ (word mark), namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 8 798 969 . 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 European Union trade mark registration No 8 798 969 for the figurative mark for all the goods and services on which the opposition is based, namely for:

Class 8: Hand tools and implements (hand operated); cutlery; side arms; razors.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer software (recorded), computer programs (recorded), computer programs (downloadable), computer peripheral devices, electric and electronic apparatus and devices composed thereof, namely television sets, satellite receivers, radio sets, tuners, electric amplifiers, mixing amplifiers, reverberation equipment, mixing desks, equalisers, record players, juke boxes and record player chassis, audio and/or video CD players; cassette recorders, tape recorders, microphones, head phones, loudspeaker boxes, loudspeaker chassis, loudspeakers, crossover networks, video apparatus, video recorders, video text equipment; cameras, including cameras for moving images and individual images, including video cameras, electronic cameras, cinematographic cameras or photographic cameras; lasers and laser installations including those for lighting effects; apparatus and light sources, including light scanners for lighting effects, electronic control devices and controllers for apparatus and light sources, including light scanners for lighting effects; CB radio sets (hand, mobile and fixed apparatus), amateur radio transmission and receiver sets, service radio transmission and receiver sets, radio amplifiers; electric, electronic and optoelectronic components, in particular resistors, potentiometers, adjustable and sliding regulators, capacitors, adjustable capacitors, dimmer resistors, coils and coil elements for electric and electronic circuit boards, ferrite and iron cores, diodes, transistors, thyristors and triacs, integrated circuit boards and switching circuits, temperature and light dependent resistors, photo and lamp diodes, photo transistors, rectifiers, dissipaters for electric, electronic and optoelectronic components, commutators, modulators, relays, transformers and transmitters, safety fuses, mounts and holders for electric and electronic or optoelectronic components, connectors, bushes and pin and socket connectors for electric and electronic commutators and equipment; electric and electronic components for solar technology and components for laser technology (included in class 9); model-making electronics, namely transmission and receiver sets for remote control and units thereof, switching and control circuits for models, electronic switching circuits for flashing lights for models, electronic noise generators; electronic amusement apparatus adapted for use with television receivers only; apparatus and instruments for weak-current engineering, namely for communications engineering, high-frequency engineering and control engineering, electric, electronic and electromechanical measuring instruments, in particular built-in measuring instruments and multiple measuring instruments, digital display multiple measuring apparatus, oscillographs, ondoscopes, frequency counters, adjustable and non-adjustable mains apparatus, in particular including low voltage apparatus, charging apparatus for batteries, television sound transponders and adapters, electric and electronic alarm apparatus and installations and parts therefor, namely optical and acoustic signal transmitters, acoustic sensors (ultrasound movement indicators), optical sensors and light barriers, electromechanical sensors (door and window contacts, vibration contacts for windows and doors), microcomputers, structural components and kits for all the aforesaid apparatus (included in class 9); radio and television aerials, room aerials, car aerials, amateur radio and CB radio aerials, being mobile aerials and station aerials, electric and electronic aerial accessories, namely aerial amplifiers, aerial crossover networks, cables for aerials, level regulators and distributors for aerials, aerial plugs, moving loads for aerial lines, bushes, connectors and adapters for aerials, baluns for aerials, co-axial commutators and relays, mains apparatus for aerial amplifiers and rotors for aerials; mechanical aerial accessories, namely aerial masts, bearings for rotating aerials, mechanical fastening elements for aerials and aerial masts, in particular including fastening elements for fastening mobile aerials to automobiles, mast casings and mast holders for securing aerial amplifiers and crossover networks; electrical installation material, dimmer switches for electric room lighting, mains pin and socket connectors, in particular plugs and sockets, electric lines, wires and flex, batteries and accumulators, timer switches, intercom installations, consisting of external and internal speaker stations and, if required, including change-over switches, supply units, amplifiers and video apparatus; electric and electronic demonstration boxes, consisting of electric and electronic components and structural components; electronic desk and pocket calculators; electronic and mechanical voltage testers, electronic metal-detecting equipment, electric soldering irons and electric soldering stations, consisting of soldering irons and electric supply and control apparatus for soldering irons; telecommunications equipment, in particular telephones, telephone answering machines, fax machines, telex machines, modems, mobile telephones, telephone accessories, namely telephone extension installations, hands-free devices, telephone subscriber call meters, telephone connection boxes, manual and electronic changeover switches for telephones, telephone connectors and sockets, telephone flex; computers, PCs, printers, scanners, screens, hard disks, CD-ROM drives, CD printers, floppy disk drives, keyboards, mice, computer cards, in particular graphics cards and interfaces, memory cards, modems and computer installations composed thereof, computer pin and socket connectors; computer programs recorded on data carriers, including for controlling laser and light sources; software tools, data communications software for electronic data exchange, in particular between computers, computer systems and interfaces, including on the Internet and/or intranets, and for the carrying out of other computer-based functions; housings of metal or plastic for electric or electronic apparatus.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 37: Building construction; repair; installation services; maintenance services; configuration of apparatus; upgrading and modifying of apparatus.

Class 39: Transport; packaging and storage of goods.

Class 41: Providing of training; training and further training consultancy; commissioning of technical apparatus, commissioning of computers or computer software; providing instruction in technical apparatus, instruction in computers or computer programs.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; technical consultancy; consultancy relating to the conservation of energy; Telecommunications engineering consultancy; consultancy in the field of computers; consultancy in the field of computer hardware and software; computer programming; engineering; technical testing; technical process planning; configuration of computer programs or computer hardware.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant data mentioned above.

The contested application was published on 22/12/2017. 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 22/12/2012 to 21/12/2017.

On 29/10/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 08/01/2019 to submit evidence of use of the earlier trade mark. On 19/12/2018, within the time limit, the opponent submitted evidence of use.

Furthermore, the evidence must show use of the trade mark for the goods and services in Classes 8, 9, 11, 37, 39, 41 and 42 on which the opposition is based as listed above.

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.

The evidence to be taken into account is the following:

• Witness statement with annexes dated 18/12/2018 signed by the senior director retail management of Conrad Electronic SE. The document states that the opponent is the largest retailer of electric and electronic products in Europe. Further, it lists the services that are offered under the earlier mark and more importantly that the turnover in relation to the earlier mark varies between 2,6 million euro in 2013 and 1,4 million euro in 2017.

• Annexes 1 and 2: Printouts from the content available on the website www.klappt.com extracted through the internet archive WaybackMachine between April 2012 - September 2014 and March 2015 - January 2017.

• Annex 3: undated picture of an unlocated service area, showing the earlier mark .

• Annex 4: undated picture of a service vehicle, showing the earlier mark .

• Annex 5: Four invoices dated 26/04/2014, 11/08/2015, 10/11/2015 and 01/09/2016 respectively, sent to Hamburg and Schwerin, Germany. The names of the clients have been struck through. In small letters on the left top the word ‘klappt’ appears. The total amount of the four invoices together is 2.828,26 euro.

Assessment of evidence

The requirements for proof of use, that the place, time, extent and nature of use must be indicated, are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). Therefore, the opponent is obliged to prove use with reference to each of these requirements.

Having examined the documents filed together with the Witness Statement, they do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

The final outcome depends on the overall assessment of the evidence in the particular case. All the circumstances of the specific case have to be taken into account and all the materials submitted must be assessed in conjunction with each other. However, since the evidence submitted in the present case is not considered to be sufficient all together, the Opposition Division finds it appropriate to focus the assessment on the extent of use.

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.

Aside from the evidence being sparse, it is not possible to make any links unless on the basis of speculation. Article 47 EUTMR requires proof of genuine use of the earlier mark. Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

The opponent relies mainly on the submitted witness statement by its senior director retail management stating that the opponent is the largest retailer of electric as well as electronic products and that their product portfolio comprises more than 1.000.000 products that are being offered through 25 stores in Germany. Furthermore, it is stated that the earlier mark is used to offer various technical services and that the minimum turnover during the relevant period amounted to 1,4 million euros.

In general, according to the case-law, in order to assess the evidential value of ‘statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up’ within the meaning of Article 97(1)(f) EUTMR, it is necessary to verify the credibility of the information they contain, taking into account inter alia the provenance of the document, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, it appears sound and reliable (21/06/2012, T-514/10, Fruit, EU:T:2012:316, § 55).

In the present case, the witness statement comes from the senior director retail management of the opponent. In this regard, it must be observed that, in general, affidavits from a person who has close links with the party concerned, are of less evidential value than those of third parties and cannot therefore, on their own, constitute sufficient proof of use of the mark (16/07/2014, T-196/13, la nana, EU:T:2014:674, § 32; 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156, § 39; and 13/06/2012, T-312/11, Ceratix, EU:T:2012:296, § 30). On the basis of the foregoing, it is necessary to establish whether the other evidence submitted can substantiate the content of the witness statement.

The existence of a website, some invoices and the appearance of the earlier mark in a service area and on a service vehicle can, at most, make it probable that some of the services advertised under the earlier mark were, at least, offered for sale within the relevant territory, but it cannot prove its extent. In this regard, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market. The trade mark has to be used for goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (judgment of 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37). In this respect the evidence is not clear as it does not paint a convincing picture that the mark was used in such a manner that could amount to genuine use.

None of the submitted documents supports the content of the witness statement, namely that the mark has been used in the course of trade of more than local significance in the relevant territory prior to 22/12/2017. The opponent did not provide independent evidence confirming the information of its witness statement such as independent publications, advertisements etc. in the general or specialised media regarding the use of the mark, offers made to clients/customers, feedback/statements from users or clients, participation in events offering or presenting the products/services designated with the mark.

According to the Witness Statement, the opponent’s turnover in relation to the earlier mark surpasses millions of euros, however, in order to support such a statement only four invoices have been submitted amounting to a total of only 2.828,26 euros and from which it, moreover, seems more likely that the opponent offers its services under the trademark which takes up a prominent position on the invoices opposed to the mention of ‘klappt’ as a mere reference in the invoices.

As a general rule, the Office considers material produced by third parties as being of a higher probative value than material produced by the owner himself or by its representative (09/12/2014, T-278/12, PROFLEX, EU:T:2014:1045, § 51; 06/11/2014, T-463/1, MB, EU:T:2014:935, § 54). Also, statements coming from the sphere of the owner of the earlier mark (drawn up by the interested parties themselves or their employees) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (11/01/2011, R 490/2010-4, BOTODERM, § 34). In that sense, the self-produced references to total sales referred to above cannot be taken into account in their totality but have to be supported by additional evidence. This however does not mean that such statements do not have any probative value at all.

Conclusion

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).

Therefore, bearing in mind the above said, the Opposition Division concludes that the evidence furnished by the opponent does not provide the Opposition Division with enough information concerning the commercial volume, the territorial scope, the duration and frequency of use and can hardly be considered corroborative evidence.

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 (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

Loreto URRACA LUQUE

Cynthia DEN DEKKER

Erkki MÜNTER

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.