OPPOSITION No B 3 061 053

Vivre le Japon, Société à responsabilité limitée, 30 rue Saint Anne, 75001 Paris, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France (professional representative)

a g a i n s t

NTT Docomo Inc., 11-1 Nagatacho 2-chome, 100-6150 Chiyoda-ku, Tokyo, Japan (applicant), represented by Grünecker Patent- und Rechtsanwälte Partg mbB, Leopoldstr 4, 80802 München, Germany (professional representative).

On 19/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 053 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 services of European Union trade mark application No 17 768 912 , namely against some of the services in Classes 39 and 41 and against all the services in Class 43. The opposition is based on European Union trade mark registration No 11 078 102 . 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 date of filing of the contested application is 05/02/2018. 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 05/02/2013 to 04/02/2018 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 services on which the opposition is based, namely the following:

Class 39: Travel arrangement; excursion organisation; booking of seats for tourism, transport and travel; information relating to tourism, transport and travel; information relating to air, road, sea and rail traffic; sightseeing (tourism); transportation of passengers; transport of travellers; transport of goods; air-transportation; car transport; marine transport; freight brokerage [forwarding]; ship brokerage; shipping services; rental of vehicles; car rental; rental of boats; garaging of vehicles; vehicle towing; packaging, storage and delivery of goods; packaging of goods; unloading cargo; moving services; delivery of goods.

Class 41: Education; providing of training; sporting and cultural activities; organising of sports competitions and events; gymnastic and health clubs; providing sports facilities; publication and issue of tickets, travel tickets, receipts, vouchers, books of travel tickets, printed matter, books, newspapers, magazines, periodicals, catalogues, guides, handbooks, cd-roms, notes, reports and newsletters; publication of texts (except publicity texts); entertainment services; leisure services; ticket agencies (entertainment); radio entertainment, via television or via websites; organisation and conducting of colloquiums, conferences, congresses, seminars and symposiums; organization and holding of exhibitions for cultural or educational purposes; providing of information relating to entertainment, recreation, leisure and education; casino facilities; photographic reporting; provision of on-line electronic publications (not downloadable); services for the electronic publication of tickets, travel tickets, receipts, vouchers, books of travel tickets, books, magazines, periodicals and catalogues (non-downloadable) online.

Class 43: Hotel services; temporary accommodation; motels and hotel residences; holiday homes and guest houses; holiday camps services (accommodation); rural holiday accommodation; hotel reservations for travellers, temporary accommodation reservations and boarding house bookings; services for providing food and drink, bars and brasseries; snack-bars; tea rooms; consultancy and information (non-business) in the fields of hotels and restaurants; rental of temporary accommodation and meeting rooms; rental of transportable buildings, tents, chairs, tables, table linen and glassware.

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 07/01/2019, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 17/03/2019 to submit evidence of use of the earlier trade mark. On 18/03/2019, within the time limit, since 17/03/2019 was a Sunday, the opponent submitted evidence of use.

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

 Invoices: Three invoices for rail passes, dated 2016-2017, for the amounts of GBP 656, GBP 2115 and EUR 236, directed to clients in the UK, Poland and Greece, respectively. Two of the invoices are in English and one invoice is in Spanish. One invoice issued to a Portuguese client for an airport transfer, within the relevant period and for the amount of EUR 80, in Portuguese. One invoice issued to a German client for a room reservation, within the relevant period and for the amount of EUR 655, in German. Two invoices issued to a third party, namely ‘Japan Experience London’, showing the participation of this company in two trade fairs in Japan, in English and dated within the relevant period. The remaining six invoices are dated outside the relevant period or are for services for which the earlier right is not registered (e.g. invoice for translation services for the amount of EUR 65).

 Extracts: Several extracts from online versions of UK magazines, showing that the opponent is a UK tour operator and offers rail passes and car rental services, dated within the relevant period and in English. The opponent’s mark in all extracts is displayed in standard characters and not as registered.

 Articles: Three press articles in magazines distributed in the UK (and one in France), such as Vanity Fair and Lonely Planet, showing offers of car rental and house rental services, in English and dated within the relevant period.

 Publications: The 2017 edition of the travel guide Japan by Train, edited by the opponent and bearing the trade mark as registered, and the 2018 edition of the Tokyo City Map, bearing the opponent’s trade mark as registered.

 Statement: Statement of the president of the opponent’s company stating that the earlier mark is used in relation to organizing travel in Japan.

As far as ‘the statement of the president of the opponent’s company’ is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements 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 its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The opponent has submitted three invoices for rail passes dated during 2016-2017, one invoice for a room reservation in 2016 and another invoice for an airport transfer in 2017. The opponent further submitted some invoices dated outside the relevant period and, consequently, these will not be taken into account in the assessment of the proof of use.

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. 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). In the case in question, the invoices dated outside the relevant period are very few and for such insignificant amounts that they do not provide the Opposition Division with any additional proof that the earlier mark has been put to genuine use in the relevant territory and that the opponent has created a share in the market for the services protected by the mark.

The use of the mark need not be quantitatively significant for it to be deemed genuine. Nevertheless, ‘genuine use’ does not include token use for the sole purpose of preserving the rights conferred by the mark. The invoices submitted by the opponent show merely token use for some of the registered services and, consequently, are in no way sufficient to show use for the services protected under the earlier mark.

In addition, the magazine articles submitted by the opponent only inform consumers about some of the services offered, but are not accompanied by any other evidence that would prove that these services have actually been bought by consumers in the relevant territory and that, consequently, the opponent has made efforts to gain market share. The same reasoning applies to the website extracts; the information contained therein is not corroborated by any of the remaining evidence. In particular, this evidence does not even indicate possible extent of use. The fact that these extracts show that, at different points in time during the relevant period, these websites were showing some of the opponent’s services is not sufficient to show whether, or to what extent, the website has been visited by third parties or that a sign appearing on it has been seen (19/11/2014, T‑344/13, FUNNY BANDS, EU:T:2014:974, § 26).

In conclusion, the documents submitted do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the opponent’s mark in relation to the registered services.

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.

Therefore, the opposition must be rejected pursuant to Article 47(2) 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

María Clara IBÁÑEZ FIORILLO

Sylvie ALBRECHT

Sofia SACRISTAN MARTINEZ

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.