OPPOSITION No B 3 061 206

Paolo Picchiotti, Don Bosco, 108, 55049 Viareggio and Sandro Picchiotti, Via di Corniola 121, 50053 Empoli, Italy (opponent), represented by Alessandro Legnante, Via Cantagalli 4 / i, 50125 Firenze, Italy (professional representative)

a g a i n s t

Alessandro Miele, Via di Pandoiano, 39, 57014 Collesalvetti, Italy and Michele Parini, p.za Barontini 11/E, 57023 Cecina (applicants).

On 25/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 206 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 889 500 for the figurative mark .

The opposition is based on:

1. International trade mark registration No 829 195 , designating Benelux, France, Italy and Spain;

2. International trade mark registration No 829 196 for the word mark ‘LEOPARD’, designating Benelux, France, Italy and Spain;

3. International trade mark registration No 832 072 , designating Benelux, France, Italy, Spain and the United Kingdom.

The opponent invoked Article 8(1)(a) and (b) as well as Article 8(5) EUTMR in relation to them.

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 19/04/2018. The opponent was therefore required to prove that the international trade marks on which the opposition is based were put to genuine use in the designated countries (i.e. Benelux, France, Italy and Spain for all of them, and the United Kingdom for IR No 832 072) from 19/04/2013 to 18/04/2018 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 12: Motor boats.

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 marks for the goods or services in respect of which they are registered and on which the opposition is based.

On 06/05/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 11/07/2019 to submit evidence of use of the earlier trade marks. On 11/07/2019, within the time limit, the opponent submitted evidence of use.

The opponent indicated that its submissions as regards proof of use were confidential, thus expressing a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Opposition Division does not consider these submissions confidential. In any event, the Opposition Division will describe the evidence in general terms, without disclosing commercially potentially sensitive information.

The evidence to be taken into account is the following:

 Annexes 1-5: WIPO certificates and extracts in relation to the earlier International registrations.

 Annex 6: exclusive marketing contract signed on 28/08/2012 between the opponent and ‘YachtMoments Ltd.’, as exclusive agent, granting the worldwide sales and marketing rights for all the yachts produced under the brand ‘Leopard’.

 Annex 6.1: undated extract from www.yatchmoments.com, showing a ‘Leopard’ yacht for sale without any further information.

Subsequently, there are two undated extracts of the results obtained in Google for the search ‘yachtmoments.com leopard’.

 Annex 6.2: extracts from www.superyachts.com (dated August 2012) and www.boatinternational.com (dated May 2013), reporting that ‘Yacht Moments’ is ‘now sole distributor of Leopard Yachts’ and that a specific model of ‘Leopard’ is for sale at ‘Yacht Moments’.

 Annexes 7-9: three extracts from Instagram and Facebook home page of ‘Leopard Yacht’ showing mainly (undated) images of yachts.

 Annex 10: Instagram post by ‘bushnoble_yachts’ (dated 02/10/2018, after the relevant period), showing a ‘Leopard’ yacht for sale. The location indicated is Bahrain.

 Annex 11: Instagram post (dated 09/09/2017) by ‘thenotoriousmma’, the famous martial artist Conor McGregor, in which he appears in a yacht bearing the sign .

 Annexes 12 and 13: Instagram post by ‘carolfeith’ (dated 13/06/2018 and 16/12/2018, after the relevant period), showing pictures of yachts. The second post contains the hashtag #LeopardYacht.

 Annex 14: Instagram post by ‘millionaire.life.style’ which shows a ‘Leopard’ yacht at the St. Tropez port, according to the title. The post is dated 28 January without indicating the year.

 Annex 15.1: screenshots from the websites of ‘Mondial BROKER’ and ‘YACHTWORLD’, which are portals offering boat sales, showing different models of ‘Leopard’ boats, according to the descriptions. Most of these show the characteristics of the model, a specific year (it is not known whether it refers to the year of production or the launch of the model), the company selling it and the place or port where it is located. Those announcements which indicate the date of publication are dated after the relevant period. See example below:

 Annex 15.2: five invoices issued by the opponent to clients in Romania, France, Germany and Malta in the years 2009 and 2011, that is, before the relevant period. Only the invoice in relation to France refers to one of the relevant territories. This is from 2009, the model of yacht is specified (Leopard 43/01) and the cost is very high.

 Annexes 16-23: extracts from press articles and newspapers (La Nazione, Il Tirreno, Yacht Italia, TTM, Barche and Superyacht) in Italian and English, dated between 2008 and 2011. They include articles and advertisements in relation to ‘Leopard’ yachts.

 Annexes 24-25: screenshots from websites www.bachemaginze.com and http://www.boatinternational.com. The first one, in Italian, is undated. The remaining are in English and are dated 07/06/2018, 12/07/2018, 15/06/2015 and 10/12/2018, respectively. They contain information about the sales of ‘Leopard’ yachts by third party companies such as ‘IYC’, ‘HMY’ and ‘Moran Yacht & Ship’. However, they do not reflect important information such as the countries where the purchase took place, the price, conditions etc.

 Annex 26: selection of five screenshots (Signature luxury travel, Executive Stile, YouTube, Business insider) undated or dated before the relevant period (2011) showing content in relation to ‘Leopard’ yachts.

On 08/02/2019, within the substantiation period (before the request for proof of use), the opponent submitted also evidence to support its claim of reputation. The evidence refers to the same documents listed above (although in a different order) except for the invoices (annex 15.2), which were only submitted subsequently (for the purpose of showing use of the marks) and the following items (which are not included in the second submission):

 Annex 28 (from the first submission of evidence): selection of five (undated) screenshots from www.arconyachts.com, showing four ‘Leopard’ yachts offered for rent (prices per week are shown) and also providing information about the history and evolution of the company.

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).

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.

This means that the opponent is obliged not only to indicate, but also to prove each of these requirements. However, the sufficiency of the indication and proof as regards the place, time, extent and nature of use has to be considered in view of the evidence submitted in its entirety.

While some evidence indicates that the earlier marks have been used in the recent past (e.g. as it can be inferred from some of the evidence such as the invoices of annex 15.2 (dated between 2009 and 2011) and the press articles and advertising included in annexes 16-23 (dated between 2008 and 2011)), they are retrospective and do not show that the yachts have been in production or offered for sale during the relevant period (from 19/04/2013 to 18/04/2018).

With respect to the opponent’s exclusive contract signed with ‘YachtMoments’ on 28/08/2012 (slightly before the relevant period), granting the worldwide sale and marketing rights for ‘Leopard’ yachts, it is deemed that it cannot constitute use of a trade mark since it merely reflects an agreement between parties and not an effective use. The contract states that it is for an initial period of one year (which overlaps with the first year of the relevant period) and that it could be automatically renewed according to some conditions (e.g. the sale of a yacht within the first year). However, the opponent has not provided any evidence supporting this contract and showing the actual sale of any yacht, by itself or ‘YachtMoments’, within the relevant period. Annexes 6.1 and 6.2 are linked to this contract in the sense that they are online publications informing either the fact that ‘YachtMoments’ is sole distributor of ‘Leopard’ yachts or the sale of a ‘Leopard’ yacht. However, they do not contain supporting information in order to prove effective use of the mark. The only publication, dated within the relevant period, is merely a publication stating that this company has a ‘Leopard’ yacht for sale, without giving any further information such as the place.

Similarly, the offers of second-hand yachts (websites of annex 15.1) made by third parties, which are in principle not related to the opponent, may not constitute use of the trade marks by the opponent. Furthermore, there is no evidence to show that any of these offers resulted in actual sales of the yachts advertised. Moreover, and most importantly, all the publications, when indicated, are published after the relevant period and many of them refer to places outside the relevant territories. Referring to the four articles of annexes 24-25 (reporting sales of ‘Leopard’ yachts by third parties e.g. ‘IYC’ and ‘HMY’), only one is dated within the relevant period. Additionally, important information is missing (e.g. the places where they took place, under which conditions etc.) Therefore, it cannot be inferred whether they refer to second-hand sales and/or the relevant territories.

Lastly, although the evidence concerning social media publications may contain pictures and references in relation to ‘Leopard’ yachts (e.g. the picture of the famous martial arts fighter, McGregor), they do not provide information about any eventual sale. For example, the yachts could have been purchased before the relevant period and in countries different to the relevant ones. Additionally, some of the publications are not dated within the relevant time.

The Office does not asses commercial success. Even minimal use (but not mere token or internal use) can be sufficient to be deemed ‘genuine’, as long as it is viewed as warranted in the economic sector concerned to maintain or acquire a share in the market. It has duly considered the special characteristic of the yachts market, the nature and price of these goods, as the opponent requested. However, not a single invoice, or other reliable objective item or convincing indirect evidence has been submitted in order to prove the extent of use of the earlier marks in relation to the relevant specific territories within the relevant period.

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 (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22).

In the light of the foregoing, even assessing all the materials as a whole, the evidence of use submitted is insufficient to prove that the earlier trade marks were genuinely used in the relevant territories during the relevant period of time.

Failure to prove use of the earlier marks leads to the failure of the opposition in full on all grounds. Even if some evidence may suggest use of the marks and assuming that they are known by part of the public or had some kind of historical reputation, the fact remains that the proprietors of the earlier marks must prove that the marks are still in use in the relevant period as set out above. Given that the opponent did not succeed on that point then all other claims automatically fail.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Riccardo RAPONI

Birgit FILTENBORG

Michele M. BENEDETTI - ALOISI

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.