OPPOSITION Nо B 3 094 171

 

Miroslav & Lyilyana Marinkovic, 79 Langwa Street, Strijdom Park, Gauteng, South Africa (opponents), represented by Ipamark S.L., Segre, 27 - 1º C, 28002 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Grzegorz Elert, Ul. Jana Zakrzewskiego 10, 07-300 Ostrów Mazowiecka, Poland (applicant), represented by Sławomir Budzik, Al. Stanów Zjednoczonych 72/201, 04-036 Warszawa, Poland (professional representative).

On 18/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 094 171 is rejected in its entirety.

 

2.	The opponents bear the costs, fixed at EUR 300.

 

REASONS

 

On 10/09/2019, the opponents filed an opposition against all the goods of European Union trade mark application No 18 038 403 (figurative mark), namely against all the goods in Classes 1, 17 and 19. The opposition is based on EUTM registration No 7 244 213 (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 opponents submit proof of use of the trade mark on which the opposition is based, namely EUTM registration No 7 244 213 (figurative mark).

 

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 20/03/2019. The opponents were, therefore, required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 20/03/2014 to 19/03/2019 inclusive.

  

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

 

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated.

Class 12: Vehicles; apparatus for locomotion by land, air or water; parts, fittings, components and accessories therefore; motor parts and accessories.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal. 

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 19/03/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponents until 24/05/2020 to submit evidence of use of the earlier trade mark. Following an extension of time requested by the opponents, on 24/07/2020, within the time limit, the opponents submitted evidence of use.

  

The evidence to be taken into account is the following:

 Document 1: Some invoices (only three within the relevant period) addressed to one client in Denmark and with the following main information:

Date	Item description	Amount (in euros)
19/12/2018	Code reference	2,367 euros
29/08/2018	Caliper Seal	6,250 euros
14/02/2019	Code reference	5,431 euros
27/03/2019	Code reference	1,560 euros
27/11/2019	Code reference	25,301 euros
18/04/2019	Code reference	blank

The code references consist of the letter ‘C’ or ‘R’ followed by a number.

There are also four additional invoices dated 2020, with the description of goods under a code reference and only one indicating the amount in euros.

The earlier mark appears at the bottom of the invoices.

 Document 2: Some evidence of the participation, as an exhibitor, of the company LMB Euroseals (Pty) Ltd. at ‘Automechanika’, held in Frankfurt (Germany) in 2016. In particular, there is a ‘commercial invoice packing list’ showing the sign and with the following main details:

The document also contains some photos of the stand and promotional material, where the earlier mark appears at the bottom of some posters.

 Document 3: A catalogue (undated) showing the sign and an information catalogue dated 2010 showing the sign , which includes the history of LMB Euroseals, indicating that the company ‘specializes in manufacturing brake and clutch components and has developed into a recognized brand in the Southern African automotive market and is now expanding globally’. There are also some photos of products showing the earlier mark in their packaging, as follows:

 Document 4: Some screenshots, dated 24/07/2020, extracted from the website www.mbtautomotive.co.za, showing the sign with some commercial information about the company LMB Euroseals.

Assessment of the evidence

According to Article 10(3) EUTMDR, the indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the contested trade mark 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 proprietor is obliged not only to indicate but also to prove each of these requirements. The sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted.

The Opposition Division considers it appropriate to focus the assessment of the evidence on the criteria of extent of use. The evidence submitted by the opponent is insufficient to prove that this requirement has been met.

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.

 

The documents filed, namely the invoices, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

In particular, the invoices designate the items sold by means of a code reference. However, the opponents did not submit any other evidence (e.g. price lists or full catalogues) to identify the goods sold under the code references mentioned and whether those goods were actually commercialized under the earlier mark or a different one. Furthermore, there are only three invoices dated within the relevant period and only one designates the items sold as ‘caliper seal’, but with no reference to the trade mark in question. The fact that the invoices include the earlier mark at the very bottom does not reveal, by its own, any conclusive information in that regard.

Considering otherwise will require to resort to assumptions and suppositions probabilities or suppositions, while it is for the opponent to demonstrate by solid and objective evidence the effective and sufficient use of the trade mark in relation to the relevant goods on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

The first catalogue (undated) basically shows the sign and the range of products offered with no indication whatsoever to any code reference assigned to the goods in question. The second catalogue, which predates the relevant period, only shows the earlier mark at the very bottom of the front page and its content covers the history of the company LMB Euroseals and the product range, but there are no code references mentioned therein either. Finally, the screenshots extracted from a website shows the sign and contains further information of the company LMB Euroseals.

As regards the evidence in respect of the participation of the company LMB Euroseals in an exhibition in Germany, the invoice submitted shows the sign and the description of the goods does not include neither a code reference nor the trade mark under which the goods in question were offered.

In essence, the earlier mark is shown at the very bottom of some documents (i.e. the invoices and some posters), but under these premises it cannot be inferred that the goods sold, which are not identified in a clear and precise manner neither in the invoices nor in the remaining documents, were actually commercialised under the earlier trade mark in the relevant territory. Although there are a couple of photos showing the earlier mark in the packaging of some products, this evidence, even when considered in conjunction with the remaining documents, is not particularly conclusive.

As already outlined above, the invoices lack the relevant data (i.e. a clear description of the goods sold and an indication of their trade mark). The opponents have not accompanied the invoices with any supporting evidence, such as price lists, turnover and sales figures or even an affidavit, which could provide the Opposition Division with clear information about the commercialization of the goods protected under the earlier trade mark, within the relevant period.

Accordingly, the documents filed, taken as a whole, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, or the frequency of use.

Indeed, while it is true that use of the mark need not be quantitatively significant for it to be deemed genuine, the evidence does at least need to provide an indication of what goods are provided and where they are provided. In this case, from the evidence provided it is not even clear what goods have been sold.

Therefore, the Opposition Division considers that the opponents have not provided sufficient indications concerning the extent of use of the earlier mark, which is one of the requirements mentioned above.

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

 

 

Chantal VAN RIEL

Marta GARCÍA COLLADO

María del Carmen COBOS PALOMO

 

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.