OPPOSITION No B 3 064 766

Operadora de Telecomunicaciones Opera, S.L., Vara de Rey, 5-3º.1º.Oficina, 5, 26002 Logroño, Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Susanna Salvati, Località Rocca Calascio snc, 67020 Calascio (AQ), Italy (applicant), represented by Enrico La Malfa, Via Santo Stefano 58, 40125 Bologna, Italy (professional representative).

On 28/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 766 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 17 917 607 for the figurative mark , namely against all the goods and services in Classes 9, 41 and 42. The opposition is based on Spanish trade mark registration No 2 266 598 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.

The date of filing of the contested application is 15/06/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 15/06/2013 to 14/06/2018 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 35: Retail or retail sales, import, export, representation and exclusive commercial, advertising services; sales promotion (for third parties).

On 06/05/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 16/07/2019 to submit evidence of use of the earlier trade mark. On 10/07/2019, within the time limit, the opponent submitted evidence of use.

The opponent submitted the following evidence.

• Doc 1: a link to the website https://web.archive.org/web/20160308120306/http://opera.es/

The Opposition Division notes that only in its final observations of 17/03/2020 did the opponent insert a screenshot of the information contained in the web page linked in doc 1, following the applicant’s comments in its observations of 27/09/2019.

Even though, according to Article 10(2) EUTMDR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 28).

According to Article 10(7) EUTMDR, where the opponent submits, after the expiry of the time limit set by the Office, indications or evidence that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 95(2) EUTMR.

Taking into account that the screenshot merely illustrates the information found by clicking on the aforementioned link, it can be considered to be supplementary. Moreover, the fact that the applicant had already commented on its content justifies the submission of this additional evidence in reply.

For these reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Opposition Division therefore decides to take the abovementioned screenshot into account.

• Doc 2: a selection of 22 invoices dating from 05/07/2013 to 01/06/2018, issued by the opponent to various customers throughout Spain. All of these invoices pertain to the relevant period and are dated as follows: three invoices from 2013; four invoices from 2014; three invoices from 2015; four invoices from 2016; four invoices from 2017; and four invoices from 2018.

The earlier mark is depicted on the upper left-hand side of the invoices.

The services rendered are mentioned in Spanish.

None of the invoices include (any reference to) amounts, as these seem to have been redacted.

• Doc 3: two items of stationery depicting the earlier mark, namely copies of a sheet with the opponent’s letterhead and an envelope.

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. These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). 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 to the place, time, extent and nature of use has to be determined by considering the entirety of the evidence submitted.

It is emphasised that 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 (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35-36; 08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 41-42).

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.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Admittedly, the invoices submitted as doc 2 include information on the territorial scope, the duration and even the frequency of use. However, as the invoices do not include any amounts, quantities or other indications which could help in assessing the turnover generated by the provision of the relevant services, they do not provide the Opposition Division with any information concerning the commercial volume achieved.

Moreover, the opponent did not provide any other evidence that could indicate the commercial volume of the exploitation of the earlier mark. Even though the stationery submitted as doc 3 illustrates the form in which the opponent has been using the earlier mark, this evidence does not provide information about the territorial extent of use, the commercial volume, duration or frequency. The link in doc 1, and the corresponding screenshot, submitted later, merely refer to the presence of the earlier mark on a website, and do not provide any information on the extent of use.

This lack of crucial information hinders the Opposition Division from taking the aforementioned interdependence principle into consideration. The evidence does not indicate to what extent the earlier mark came to the attention of the public. Indeed, there is no satisfactory evidence that demonstrates that the opponent has seriously tried to acquire a commercial position in the relevant market.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the earlier mark.

As stated above, the factors of time, place, extent and nature of use are cumulative. This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as neither extent nor nature of use has been established, it is not necessary to discuss the other requirements.

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 of time.

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.

The Opposition Division

Zuzanna STOJKOWICZ

Christophe DU JARDIN

Ferenc GAZDA

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.