OPPOSITION No B 3 065 346

El Corte Ingles, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Liu Yajun, 1213,Bldg. 5, Bihaifutong City, Xingye Rd. XiNanCe, Xixiang, Bao'an Dist., Shenzhen, China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018Paris, France (professional representative).

On 24/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 346 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 17 899 016 for the figurative mark . The opposition is based on European Union trade mark registration No  9 688 961 for the figurative mark . 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 mark on which the opposition is based European Union trade mark registration No  9 688 961 for the figurative mark .

The date of filing of the contested application is 11/05/2018. 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 11/05/2013 to 10/05/2018 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 goods on which the opposition is based, namely the following:

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

Class 21: Household or kitchen utensils and containers; Combs and sponges; Brushes; Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Chinaware, glassware, porcelain and earthenware not included in other classes.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); Padding and stuffing materials (except of rubber or plastics); Raw fibrous textile materials.

Class 28: Games, toys, and playthings; Gymnastic and sporting articles not included in other classes; Christmas tree decorations.

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 20/05/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 25/07/2019 to submit evidence of use of the earlier trade mark. On 30/07/2019, after a request for extension received on 25/07/2019, the Office gave the opponent an extension of the time limit until 25/09/2019. On 25/09/2019, within the time limit, the opponent submitted evidence of use.

 Copy of an extract from the online version of Spanish newspaper ‘El Mundo’ dated 04/2011 stating that El Corte Inglés creates ‘Primeriti’, its private sales club through Internet.

 Copy of an extract from the online version of Spanish newspaper ‘El Economista’ dated 04/2011 about the launch of ‘Primeriti’, and stating that ‘The outlet on line of El Corte Inglés is its first private outlet on line which incorporates trademarks of fashion, accessories, cosmetics, technology and household items.’

 Copy of screenshots dated 2011-2019 about Primeriti web sales.

 Invoices from providers dated 2013-2018 issued to the opponent regarding a wide range of products. The earlier mark appears in purchase orders for serums, creams, conditioners, and masks which are not the goods on which the opposition is based.

 A table concerning advertising costs from 03/2013 to 02/2019 for PRIMERITI. However, the table does not provide any information about its origin (probably of the opponent itself) and the relevant goods or services.

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. These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43).

The evidence shows that the opponent’s mark is used for an online outlet and for retailing of a wide range of goods of different brands. The marks is not used to identify the origin of the goods which bore their own mark or no mark at all. Therefore, the mark is not used for any goods but in relation to services. This is considered insufficient to establish a link between the earlier mark and the relevant goods. In other words, the earlier mark may well be a mark for the retail of goods, but it is not used as a trade mark for goods. Furthermore, the Opposition Division notes that the earlier mark does not even appear on purchase orders issued by the opponent with relation to goods on which the opposition is based. These documents show that the opponent was engaged in retail services of goods which were not even the ones for which the earlier mark was registered but various products not marketed under the earlier mark and belonging to cosmetics.

Therefore, the opponent has not shown use for the goods for which the mark is registered, but for services for which it has no protection.

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 for the goods for which it is registered during the relevant period.

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, 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

Maria SLAVOVA

Francesca CANGERI

Aurelia PEREZ BARBER

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.