OPPOSITION Nо B 3 083 207

 

Rewe-Zentral AG, Domstr. 20, 50668 Köln, Germany (opponent), represented by Schmitt Teworte-Vey Simon & Schumacher Partnerschaft von Rechtsanwälten mbB, Im Klapperhof 3-5, 50670 Köln, Germany (professional representative) 

 

a g a i n s t

 

Penny Black Coffee Ltd, 4 Church Row, Chislehurst BR7 5PG, United Kingdom (applicant), represented by Marks & Us, Marcas y Patentes, Ibañez De Bilbao 26, 8º Dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 11/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 083 207 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 18 020 524 for the word mark 'PENNY BLACK', namely against all the goods in Classes 30 and 33. The opposition is based on European Union trade mark registration No 41 616 for the word mark 'PENNY'. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

According to Article 2(1) EUTMDR, a notice of opposition may be entered on the basis of one or more earlier marks within the meaning of Article 8(2) EUTMR, provided that the earlier marks or earlier rights all belong to the same proprietor or proprietors. Therefore, the right to file an opposition jointly with other opponents applies only in cases where the opponents have a certain relationship, namely:

 where they are co-owners of the earlier right(s) on which the opposition is based,
or

 where the opposition is filed by the owner or co-owner of an earlier mark or right
together with one or more licensees of these earlier marks/rights.

By contrast, it is not admissible for an opposition to be filed by multiple opponents who are each proprietors of different trade marks.

In the present case, the notice of opposition designated two opponents, namely, (1) Rewe-Zentral AG as the registered owner of the earlier European Union trade mark registration No 41 616 for the word mark 'PENNY' and (2) PENNY-Markt GmbH as the registered owner of the earlier European Union trade mark registration No 12 824 694 .

In its communication of 19/10/2020, the Office invited the opponents to regularise the situation by withdrawing the opposition in respect of one of the opponents and its earlier mark by 24/11/2020. At the same time, the opposition proceedings were suspended.

On 23/11/2020, the opponents replied confirming that the opposition should continue solely with the opponent Rewe-Zentral AG based on its European Union trade mark registration No 41 616 for the word mark 'PENNY'. 

In its communication of 27/11/2020 the Opposition Division acknowledged receipt of the opponent's letter of 23/11/2020 and confirmed that the opposition continued on the basis of European Union trade mark registration No 41 616.

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 European Union trade mark registration No 41 616 'PENNY'.

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.

The date of filing of the contested application is 08/02/2019. 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 08/02/2014 to 07/02/2019 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following: 

 

Class 3: Bleaching preparations and other substances for laundry use; rinsing, cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices, dental hygiene preparations, mouth washes; moist wipes for sanitary and cosmetic purposes; cotton wool, cotton wool pads, cotton sticks.

Class 5: Pharmaceutical and sanitary preparations; plasters, materials for dressings; disinfectants; cotton wool, cotton wool pads, cotton wool sticks; sanitary towels, tampons, panty liners, napkins for adults, including all the aforesaid goods made of or using cellulose, non-woven textile fabrics and nap fabrics; dietetic foodstuffs and foodstuff preparations, dietetic auxiliary agents for healthcare, in particular vitamins, minerals and nutritive food supplements; food for babies; chewing gum for medical purposes.

Class 6: Household foils of aluminium.

Class 8: Cutlery; Razors and razor blades.

Class 14: Household kitchen utensils, namely pans, pots, strainers, soufflé dishes, baking tins, of precious metal or coated therewith.

Class 16: Paper products for household and hygienic purposes (included in class 16), in particular toilet paper, kitchen towels, handkerchiefs, table napkins, cosmetic tissues and cosmetic wipes of tissue, and napkins for babies, including all the aforesaid goods made of or using cellulose, non-woven textile fabrics and nap fabrics; bags of paper or plastic, for preserving foodstuffs; freezer bags; household films of paper and plastic.

Class 21: Household kitchen utensils, namely pans, pots strainers, soufflé dishes, baking tins; articles made of glass, porcelain, ceramics, earthenware or plastic for household and kitchen purposes, in particular glasses, cups, pots, mugs, plates, dishes, vases, bowls; hand brushes, dustpans, brooms, brushes of all types (included in class 21); scrubbing brushes, sponges, cleaning and household cloths, skins of chamois, feather-dusters, mops, carpet sweepers, steel wool, buckets, gloves for household purposes, scouring pads.

Class 29: Meat, fish, poultry, game and shellfish, including preparations of the aforesaid goods; sausage, meat, poultry and fish products, caviar; salads of meat, fish, poultry and game; meat, poultry, game and fish pastes, meat extracts; fruit, vegetables and pulses (processed); fruit and vegetable pulp; delicatessen salads made of vegetables or lettuce; potato products of all types, namely French fries, croquettes, baked potatoes, prepared potatoes, potato fritters, potato dumplings, fried potato cakes, potato pancakes, crisps, potato sticks; semi-prepared and prepared meals, namely soups (including instant packet soups), stews, dry and liquid prepared meals, mainly of one or more of the following goods: meat, fish, vegetables, prepared fruit, cheese, including where applicable the aforesaid goods with added pasta or rice; meat, fruit and vegetable jellies, jams; eggs, milk and milk products, namely drinking milk, sour milk, butter milk, yoghurt, fruit yoghurt, yoghurt with chocolate or cocoa additives, non-alcoholic mixed milk drinks, whey drinks, chocolate beverages, kefir, cream, quark, fruit and herb quark desserts, desserts, mainly of milk and flavourings with gelatine and/or starch being binding agents; butter, clarified butter, cheese and cheese preparations; fruit jellies; edible oils and fats; savoury pastries, crisps of cereals, salted and unsalted nuts and other snackfoods, included in class 29; including all the aforesaid goods (where possible) frozen or preserved, sterilised or homogenised.

Class 30: Sauces, including salad dressings, fruit sauces, ketchup, horseradish, capers; coffee, tea, cocoa, chocolate, chocolate goods, cocoa-based beverage powders; marzipan, nougat, marzipan and nougat products; spreads mainly of sugar, cocoa, nougat, milk and/or fats; pralines, including filled pralines; sugar, confectionery, sweets, namely boiled, peppermint, fruit sweets and chews, lollipops, chewing gum not for medical purposes; rice, tapioca, artificial coffee; pizzas; flour and cereal products, kernel cereals, namely rice, wheat, oats, barley, rye, millet, maize and buckwheat, the aforementioned goods also in the form of mixtures and other preparations, in particular wheat bran, wheat germ, maize meal, maize semolina, linseeds, muesli and muesli bars (mainly of cereal flakes, dried fruit, nuts), cereals, popcorn; bread, bread rolls, pastry and confectionery; pasta and wholemeal pasta, in particular noodles; ices, ice cream; honey, treacle; yeast, baking-powder; blancmanges; salt; mustard; vinegar; spices, mixed spices, pepper corns; savoury biscuits, crisps, snacks, included in class 30; dry and liquid ready-to-serve meals, mainly consisting of pasta or rice, including all the aforesaid goods (where possible) also frozen or preserved, sterilised or homogenised.

Class 31: Fresh fruits and vegetables; pulses; seeds, animal foodstuffs.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, vegetable juices; syrups and other preparations for making beverages; whey beverages; instant powdered drinks.

Class 33: Alcoholic beverages, in particular wine, sparkling wine, spirits, liqueurs.

Class 34: Tobacco, tobacco goods, in particular cigars, cigarettes, smoking tobacco, snuff, chewing tobacco, cigarette papers, cigarette cases; tobacco pipes, pouches for pipes, lighters, matches, pipe cleaners.

Class 42: Providing of food and drink and temporary accommodation.

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 13/01/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 18/03/2020 to submit evidence of use of the earlier trade mark. This time limit was extended upon the opponent´s request until 18/05/2020.

On 14/05/2020, within the time limit, the opponent submitted evidence of use and in its brief explaining the contents of the proof of use it indicated that 'for the purposes of the present opposition the proof of use of the opponent's trademark 'PENNY' can be restricted to coffee products'. The opponent also referred to images filed together with its statement of grounds. Indeed, on 28/11/2020, within its deadline to submit facts, evidence and arguments in support of the opposition, the opponent submitted 4 Annexes to prove the purported reputation/enhanced distinctiveness of its earlier mark. Since these documents were filed before the expiry of the period for submission of evidence of use they will also be taken into account in the assessment of the evidence of use.

Therefore, the evidence to be taken into account is the following:

Evidence submitted on 28/11/2019:

 Annex 1: Extract from Wikipedia on 'Penny (supermarket)' printed on 25/11/2019 and last edited on 06/11/2019. It provides its history and states that it is a food discount supermarket chain based in Germany operating 3.550 stores in the retail industry, with a revenue of 10.3 billion in 2010 and fully owned by Rewe Group since 1989. It also indicates the number of 'PENNY' stores in Austria, Czech Republic, Germany, Hungary, Italy and Romania and shows the trade mark in word form and represented as follows: logo 1975-1999; old logo between 2002 and 2014; logo since about 2012.

 Annex 2: Screenshots from the web www.penny.de printed on 28/11/2019 including images of packages of coffee products (Kaffee Der Würzige, Kaffee Classic Instant, Kaffee Löslich). The printouts show the trademark 'PENNY' in word form and affixed to the coffee packages as follows .

 Annex 3: Two press articles of 'Presseportal' in German (with translations) and printed on 25/11/2019. The first one is dated 27/09/2013 and reports the result of a study conducted by the German Institute for Service & Quality (DISQ) in which it was concluded that the customers of 'PENNY' (discounter supermarkets) were the most satisfied, with a value of nearly 87% satisfied consumers. It indicates that 1,177 people who had bought from at least one discounter in the previous 12 months took part in the online survey and that the focus of the panel survey was customers opinions on service, product quality, assortment, prices and brand design. The second press article is dated 28/05/2014. It reports the result of another study conducted by DISQ from February to April 2014, in 15 food market chains in Germany, focusing on the range of products available, the competence and friendliness of the staff, waiting times and design and cleanliness of the stores. The article states that the best discount store was 'PENNY' and that it had already won the Hamburg market research institute’s test in 2009, 2011 and 2013.

 Annex 4: Printout from the web www.statista.com in German (with partial translation) showing a chart reflecting the 2017 and 2018 turnover figures of 'PENNY' in Europe: 5.14 billion euros in 2017 and 5.48 billion euros in 2018.

Evidence submitted on 14/05/2020:

 Annex 4 [BIS]: Two extracts from Wikipedia printed on 08/05/2020. The first one refers to 'Penny (supermarket)'. It is the same document cited above as Annex 1. The second one provides information on 'REWE Group' and states that it is a German diversified retail and tourism co-operative group based in Cologne and that the most important companies under its umbrella operate under REWE-Zentral AG (the opponent) and REWE-Zentralfinanz eG names. 'PENNY' is listed as one of the divisions of the group and described as a discount supermarket chain with 3000 stores in Germany, Austria, Italy, Romania, Hungary, Czech Republic.

 Annex 5: Excerpts from the web www.penny.de in German dated 08/05/2020 showing use of 'PENNY' in word form and affixed as follows  (1) on various food packages and (2) on coffee packages, among other. As far coffee products are concerned it shows images of packaging of 'PENNY Kaffee der Würzige' (the aromatic coffee) 'PENNY Kaffee löslich mild' (soluble mild coffee), 'PENNY Kaffee löslich' (soluble coffee), 'PENNY Kaffee Gustoso Crema'.

 Annex 6: Ten supplier invoices with a sample partial translation (two copies of invoice Nº 90285 filed), issued by the German company Schirmer Kaffee GmbH and addressed to Penny-Markt GmbH, for the provision of ‘PENNY-Der Würzige 500g' ('PENNY - The Aromatic 500g'), dated between 25/02/2015 and 23/12/2015. They cover a total quantity of 23.616 kg of ‘PENNY-Der Würzige’ coffee, in 500g packs.

 Annex 7: Ten supplier invoices, issued by the German company Schirmer Kaffee GmbH and addressed to Penny-Markt GmbH, for the provision of 'PENNY-Der Würzige 500g', dated between 05/02/2016 and 23/12/2016. They cover a total quantity of 18.432 kg of ‘PENNY-Der Würzige’ coffee, in 500g packs.

 Annex 8: Nine supplier invoices, issued by the German company Schirmer Kaffee GmbH, addressed to Penny-Markt GmbH, for the provision of 'PENNY-Der Würzige 500g', dated between 29/03/2017 and 22/12/2017. They cover a total quantity of 12.672 kg of ‘PENNY-Der Würzige’ coffee, in 500g packs.

 Annex 9: Ten supplier invoices, issued by the German company Schirmer Kaffee GmbH and addressed to Penny-Markt GmbH, for the provision of, inter alia, 'PENNY-Der Würzige 500g', dated between 28/03/2018 and 20/12/2018. They cover a total quantity of 24.778 kg of ‘PENNY-Der Würzige’ coffee, in 500g packs.

 Annex 10: Sworn statement of May 2020 made by a Senior Buyer of REWE Group Buying GmbH (centralized purchase entity of REWE Group) responsible for the products sold at the 'PENNY' stores, showing the sales figures in Germany for the coffee product 'PENNY' of the type 'Der Würzige' during the years 2015, 2016, 2017 and 2018 and indicating that the total turnover generated with this product during such period amounts to more than 20 million Euro. 

 Annex 11: Two printouts dated 07/05/2020 from the web www.discounter-preisvergleich.de in German (with translations) showing a package of a 'PENNY Der Wúrzige' coffee product and including the following information: (1) 2.99€/ Ground roasted coffee-500g pack/ Trademark: PENNY/ The price of the product has not been updated for a long time and should therefore be checked again urgently/ Last updated on 06/05/2018/ Created 20/05/2015. (2) Price development: 20/05/2015: 2.99€; 26/11/2016: 2.99€; 27/11/2017: 2.99€.

 Annex 12: An undated screenshot and a screenshot dated 07/05/2020 from the web www.discounter-preisvergleich.de in German (with translations) showing a package of a 'PENNY Classic Instant (Lóslicher Kaffee)' coffee product and including the following information: (1) 3.59€. 200g/Trademark: PENNY/ The price of the product has not been updated for a long time and should therefore be checked again urgently. (2) Price development: 03/07/2012: 3.59€; 06/01/2016: 3.59€; 13/02/2017: 2.89€; 12/07/2017: 3.89€; 06/03/2018: 3.59€.

On 20/07/2020, the opponent filed in response to the applicant’s observations, and therefore after the expiry of the time limit (18/05/2020), the following belated evidence:

 Annex 13: Four pages of the Rewe-Zentralfinanz EG Group management Report for financial year 2019 and a printout dated 20/07/2020 from https://www.rewe-group-geschaeftsbericht.de, both in English. They refer to the structure of the Rewe Group and indicate that it operates in various business segments, divided into divisions and segments. They state that the Retail Germany business segment of the group includes, among other, the Penny Germany Central Company division operating 2.169 discount stores under the PENNY brand and that its Retail International business segment covers, among other, the Penny International divisions where the PENNY MARKT and PENNY MARKET brands are operated at a total of 1550 locations in Italy, Austria, Romania, the Czech Republic and Hungary.

Pursuant to Article 10(7) EUTMDR the Office must exercise its discretion under Article 95(2) EUTMR and decide whether or not to accept this belated evidence.

Assessment of the evidence

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 indications and evidence required to provide proof of use must concern the place, time, extent and nature of use of the opponent’s trade marks for the relevant goods and services. 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. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31). Therefore, 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.

Moreover, 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).

The Opposition Division considers it appropriate to begin the assessment of the evidence on the criterions of 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.

As indicated previously, the opponent decided to submit evidence of use of the earlier mark ‘PENNY’ confined to coffee. However, the documents filed by the opponent do not provide the Opposition Division with sufficient and reliable information concerning the commercial volume, the duration, and the frequency of use.

The opponent submitted as Exhibit 10 an affidavit signed by a Senior Buyer of REWE Group Buying GmbH, including sales figures in Germany for the coffee product 'PENNY' of the type 'Der Wúrzige', from 2015 to 2018 and total turnover generated with this product during such period. As far as affidavits are concerned, Article 10(4) EUTMDR 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.

In the present case, since the affidavit comes from a company related to the interested party, its evidential value is lower than that of affidavits coming from a third party. Furthermore, the other items of evidence filed by the opponent do not support or corroborate its contents. 

Indeed, Annexes 1 and 4 [BIS] (Wikipedia excerpts) are dated after the relevant period and state that the trade mark ‘PENNY’ is used to identify a food discount supermarket, i.e. retail services for which the earlier mark is not registered. They do not contain any information on the use of the mark for coffee or any of the other goods and services on which the opposition is based.

The evidence filed as Annex 3 (two press articles) is dated within the relevant period. However, it concerns satisfaction surveys/customers’ opinions on ‘PENNY’ as a discount supermarket. It does not contain any information on the use of the mark for any of the goods and services on which the opposition is based.

Annex 4 (printout of the web www.statista.com) refers to turnover figures of ‘PENNY’ in Europe (not in the European Union) and, in any case, it does not provide information on the sale/turnover corresponding to the specific goods and services on which the opposition is based.

Annexes 2 and 5 (printouts of the web www.penny.de) show use of trade mark ‘PENNY’ on images of coffee packages, and on some other food packages. The earlier mark is used in word form (as registered) or represented in ways which do not affect the distinctive character of the word mark as registered, since the additional elements are purely decorative (square background and dot placed after the term) or descriptive terms (e.g. ‘Der Würzige’ for coffee, namely, ‘the aromatic’). However, these printouts are dated after the relevant period and the opponent has not explained how they could enable conclusions to be drawn as to the use of the earlier mark during the relevant period. Therefore, their relevance is also limited and needs to be weighed upon taking into consideration the other pieces of evidence filed by the opponent.

Regarding Annexes 6 to 9 (supplier invoices concerning the coffee product ‘PENNY Der Würzige’ issued by the company Schirmer Kaffee GmbH and addressed to Penny-Markt GmbH), according to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Furthermore, the fact that the opponent has submitted these items to prove use of its mark by third parties implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). Consequently, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by these other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

Having said this, since these invoices are from a supplier which, according to the opponent, is a coffee roaster that manufactures the coffee products ‘PENNY Der Würzige’ on behalf of the opponent (or a company belonging to the same group), they are not suitable evidence to prove that the referenced product was put on the market during the relevant period and sold to final customers. These invoices relate to the purchase of the coffee product by the opponent (or a company belonging to the same group). In other words, they prove the sale and delivery of a coffee product (among other) to the opponent (or a company belonging to the same group), but they are not evidence of the marketing and actual sale of such coffee product by the opponent. In effect, the opponent has not submitted invoices or other items proving the sale of the coffee product ‘PENNY Der Würzige’ (or of any other product) on which the opposition is based. The fact that the owner of the earlier trade mark (or a company belonging to the same group) has ordered coffee does not establish its real presence in the market. Therefore, these invoices do not prove the actual sale of coffee bearing the earlier mark, let alone the date and extent of that sale, and, as a result, they are not capable of corroborating the information contained in the affidavit.

As for Annex 11 (printouts from the web www.discounter-preisvergleich.de), it was printed well after the relevant period. Although it contains the image of the package of a 'PENNY Der Würzige' coffee product, coinciding with the name of the product cited in the supplier invoices and in the affidavit, the mere indication in a web of price development of a product in three dates (albeit falling within the relevant period), which in this case does not show any development since the amount in all three references is 2.99€, accompanied by the indication that ‘the price of the product has not been updated for a long time and should therefore be checked again urgently’, without any further information on the web, such as whether it is trustworthy, how it gathers the data about products and checks the prices, etc., do not make it possible to consider this piece of evidence as solid, objective and sufficient evidence to corroborate by itself the contents of the affidavit and the real presence of the mark in the market, for the product to which the affidavit refers, 'PENNY Der Würzige'.

In Annex 12 (screenshots from the web www.discounter-preisvergleich.de) one of the screenshots is undated and the other one is dated well after the relevant period. Furthermore, they refer to a product which is not cited in the affidavit or in the supplier invoices, namely, 'PENNY Classic Instant (Löslicher Kaffee)'. This document, by itself or even considered together with the images of the same contained in Annexes 2 and 5 (dated after the relevant period) is clearly insufficient to prove use of the earlier mark for coffee.

Finally, in its reply to the applicant’s observations, the opponent submitted (belatedly) Annex 13 to confirm that the ‘PENNY’ supermarkets are part of the REWE Group and that the ‘PENNY’ mark is being used by other companies of the group, such as PENNY-Markt GmbH, with the prior consent of the opponent.

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. The Office must exercise its discretionary power if the late indications or evidence merely supplements, strengthens and clarifies the prior relevant evidence submitted within the time limit with the purpose of proving the same legal requirement laid down in Article 10(3) EUTMDR, namely, 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 opposition is based.

As indicated above, and as pointed out by the opponent in its brief explaining the contents of the proof of use filed within the time limit, according to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Since the belated evidence filed by the opponent is only meant to confirm such statement, the Opposition Division has taken into consideration Annex 13 as supplementary evidence. Nonetheless, given that the supplementary evidence filed does not help to meet the requirement of the extent of use of the earlier mark and, therefore, the applicant is not prejudiced by the acceptance of this belated evidence, the Opposition Division does not deem it necessary to re-open the proceedings and give the applicant a further round of observations.

Indeed, the opponent has failed to provide any further information and evidence which would allow a realistic assessment of the market presence of the earlier mark, such as dated advertising material distributed, copies of till receipts, sales invoices or accounting documents referring to the coffee products (or to any of the other opposing goods and services) bearing the mark ‘PENNY’ during the relevant period on the European Union territory (15/12/2016, T‑391/15, ALDIANO / ALDI, EU:T:2016:741, § 48).

Consequently, as the annual sales figures and total turnover figures declared in the affidavit have little probative value, in the absence of any other relevant and sufficiently solid supporting documents that infer that the relevant goods and services have been marketed/rendered and to what extent, the Opposition Division cannot assume that the earlier mark has been effectively used in the relevant territory.

Even though the assessment of evidence entails a degree of interdependence, the onus is on the opponent to submit materials that create a clear picture of how its mark is used on the market. On the basis of the evidence listed above, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the earlier mark.

Conclusion

Article 47 EUTMR requires proof of genuine use of the earlier mark. 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).

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) 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

 

 

Denitza STOYANOVA-VALCHANOVA

Helena GRANADO CARPENTER

Martin EBERL

 

 

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.