OPPOSITION No B 3 070 246

Autocarpe Concesionario S. L., C/Chile 11, Pol. Ind. Azque, 28806 Alcalá de Henares, Spain (opponent), represented by Ana Maria Bueno Ferran, Brillante 33, 28260 Galapagar (Madrid), Spain (professional representative)

a g a i n s t

Jaguar Land Rover Limited, Abbey Road, Whitley CV3 4LF Coventry, United Kingdom (applicant), represented by Reddie & Grose LLP, The White Chapel Building, 10 Whitechapel High Street, E1 8QS London, United Kingdom (professional representative).

On 21/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 246 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 in Classº12 of European Union trade mark application No 17 924 110 for the word mark ‘CARPE’. The opposition is based on Spanish trade mark registration No 602º825 for the word mark ‘AUTOCARPE’. 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 Spanish trade mark registration No 602º825 for the word mark ‘AUTOCARPE’.

The date of filing of the contested application is 26/06/2018. 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 26/06/2013 to 25/06/2018 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 goods on which the opposition is based, namely the following:

Class 12: Automotive vehicles, their spares and accessories.

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 04/10/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 09/12/2019 to submit evidence of use of the earlier trade mark. On 06/12/2019, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

 Exhibit 1: Around thirty invoices for the period 2014-2018 where, according to the opponent, are shown sales of new cars, used cars and spare parts for them. All the invoices are issued by the opponent (Autocarpe Concesionario S. L.). They are all in euros and are issued to costumers in Spain. This can be deduced from the currency showed on the invoices and the addresses. Four of the invoices are outside the relevant time limit with dates 14/12/2018, 04/09/2018, 16/07/2018 and 11/12/2018. Some of the invoices contain partial translations to which goods the sales refer, such as air tube, right flank, wind mirror, etc. Another ones contain product references (codes). However, these cannot be cross-checked since no product catalogue is provided. None of the provided invoices bear the trade mark in question. On the contrary, most of the invoices bear another car trade marks. ‘AUTOCARPE’ is only mentioned as part of the opponent’s name Autocarpe Concesionario S. L. together with his address on the top left corner.

 Exhibit 2: Sponsorship posters, amount to thirteen pages (screenshots), from different activities sponsored by the opponent where the sign is displayed like , or together with other words such as ,or with other trade marks such as , Four of the sponsorship posters bear dates far away from the relevant time limit (the years 1991, 1992 and 1997) and will not be taken into account. One of the posters refers to an event from 30/09/2018, i.e. three months after the relevant period. However, considering that advertising of such events usually takes place a couple of months in advance, it is reasonable to assume that this poster was exposed to consumers within the relevant time. From the language of the advertising materials and references to some places where the events took place, it can be concluded that the posters were exposed in Spain. However, it is not clear for what period of time these were exposed and to how many people. No relationship to the goods in question can be established either. The car displayed on one of the posters clearly cannot be linked to the mark in question but rather to another sign, namely RENAULT.

 Exhibit 3: One press clip from the opponent, dated 22/04/2015, and one award where, according to a translation provided by it, Renault Spain has awarded ‘AUTOCARPE’ with the prize ‘Dealer of the year 2014’ and Autocarpe Concesionario S.L. was also awarded with the Renault global quality award in 2008 and 2010 and the Dealer of the Years 2012 and 2013. Apart from the text in Spanish, the press clip bears the sign like

and also a picture . The award looks like:

 Exhibit 4: Adveritisng materials, namely:

o calendar from 2018

o Christmas greeting card from 2011

o one street poster

o and two lottery tickets

On most of the materials ‘AUTOCARPE’ appears as opponent´s company name, namely AUTOCARPE, S.L., or AUTOCARPE CONCESIONARIO, S.L. Only on the street poster the sign appears independently, not as the name of the company. However, the sign on the street poster is not affixed on any of the products for which the mark is registered, but it is rather used together with another car brand, namely RENAULT. The cars displayed there belong also to RENAULT. In addition, it is also not clear when exactly and for how long this poster was exposed. From the language on it, it can only be deducted that the place was Spain.

Analysis of the evidence

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.

After analysing the provided evidence, the Opposition Division is of the opinion that the use of the sign ‘AUTOCARPE’ was not meant to identify the origin of the goods for which the marks is registered (Automotive vehicles, their spares and accessories in Classº12), but rather the company name or trade name of the car retailer.

‘The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services … The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive’, i.e. it cannot be considered to be used as a trade mark (11/09/2007, C‑17/06, Céline, EU:C:2007:497; 13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156).

Use of a business, company or trade name can be regarded as use ‘in relation to goods where:

 a party affixes the sign constituting its company name, trade name or shop name to the goods or;

 even though the sign is not affixed, the party uses the sign in such a way that a link is established between the company, trade or shop name and the goods or services (11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21-23).

None of the above conditions has been met in the case at hand. On none of the provided materials the sign was affixed on any relevant product. By contrast, the cars on some of the provided materials bear their own mark. The invoices also bear or make references to another car trade marks and the origin of the products there (various car parts) could not be linked in any way with the trade mark ‘AUTOCARPE’ since mere use of a business name at the top of invoices without a clear reference to specific products is not sufficient. On several occasions ‘AUTOCARPE’ appears together with the brand RENAULT displayed like , or .

The content of the press clip, where according to the opponent, it is stated that ‘AUTOCARPE’ has received several awards for best car dealer during the years, together with the award for ‘Dealer of the year 2014’ reinforces the conclusion that no link could be established between the company name and the goods in Classº12 for which the mark is registered, but rather to retail and wholesale services relating to cars. In other words, ‘AUTOCARPE’ may well be a mark for retail of cars (a service that falls under Classº35), but it was not used as a trade mark for goods in Classº12. (s. Decision of General Court of 13/05/2019, T-183/08, Jello Schuhpark II, § 31-32).

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 relevant goods 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

Valeria ANCHINI

Meglena BENOVA

Maria SLAVOVA

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.