OPPOSITION Nо B 3 102 207

Garant Worldwide Holding S.à.r.l., 42, Route de Trèves, 6793 Grevenmacher, Luxembourg (opponent), represented by Rechtsanwälte Schils & Kollegen, Vossenstraße 4, 33332 Gütersloh, Germany (professional representative)

a g a i n s t

Mascot Online B.V., Veluwezoom 32, 1327 AH Almere, Netherlands (applicant), represented by Joep Mens Trademark Company B.V., Slotlaan 379, 3701 GZ Zeist, Netherlands (professional representative).

On 16/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 207 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 04/11/2019, the opponent filed an opposition against all the goods (in Class 20) of European Union trade mark application No 18 085 809 ‘LIFA KIDS’ (word mark). The opposition is based on German trade mark registration No 302 011 060 730 (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 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 25/06/2019. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 25/06/2014 to 24/06/2019 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, which, after its restriction of 28/07/2020, are the following:

Class 20: Furniture, mirrors, upholstered furniture, beds (furniture).

On 02/04/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 02/06/2020 to submit evidence of use of the earlier trade mark. This time limit was extended by two months and expired on 02/08/2020. On 29/07/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following.

 Attachment 1: a list of all points of sale with the addresses of the 43 furniture retailers in Germany selling ‘LIVA’ furniture. The document bears no date but the opponent claims that it corresponds to 2020.

 Attachments 2 and 3: the annual turnover in 2019 and 2020 of ‘LIVA’ retailers, extracted in documents drawn up by the opponent.

 Attachments 4 and 5: pictures of sealing hangers and labels to be used in the points of sale where the opponent’s products are offered.

 Attachment 6: pictures of illuminated displays for the mark .

 Attachment 7: eight mega print posters of the mark .

 Attachment 8: two pictures of the interior of a ‘LIVA’ furniture point of sale.

 Attachment 9: a picture of a car promoting the mark ‘LIVA’.

 Attachment 10: a leaflet entitled ‘10 Jahre LIVA. Feiern sie mit uns’ (‘Ten Years LIVA’), displaying marketing materials (advertising flags, ‘LIVA’ displays, window stickers, sweets, leaflets and postcards).

 Attachment 11: a leaflet entitled ‘Mehr Marke’ with pictures of ‘LIVA’ furniture on the cover and the inside pages.

 Attachment 12: an undated leaflet entitled ‘Polster Ideen’ by Reco-Möbel Stollberg featuring the mark .

 Attachment 13: an undated leaflet entitled ‘Was Für ein Zuhause’ by Möbel Herbig featuring the mark .

 Attachments 14 and 15: the annual ‘LIVA’ furniture catalogues ‘Wohnbuch 2019/2020’ and ‘Wohnbuch 2020/2021’.

 Attachment 16: screenshots of the homepage www.mein-liva.de.

 Attachment 17: screenshots of the opponent’s homepage www.garant-gruppe.de.

 Attachment 18: an affidavit of the opponent’s brand manager, dated 27/07/2020, stating that ‘LIVA’ is one of the six collections of the opponent which are sold through a network of LIVA-partners. Their annual turnover figures are sent to the opponent’s brand manager yearly. The marketing material in attachments 4 to 7 are used at the discretion of the retailers in their points of sale and correspond to 2020. The leaflet in attachment 11 is to inform the LIVA-partners about the use of the marketing materials. The leaflets in attachments 12 and 13 are the furniture catalogues of two ‘LIVA’ retailers. The opponent’s annual catalogues are distributed by the opponent itself and by all the LIVA-partners.

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 regards the place, time, extent and nature of use has to be considered in view of the evidence submitted in its entirety.

The Opposition Division considers it appropriate, first, to focus the assessment of the evidence on the criterion 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.

The documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The evidence submitted does not contain any invoices. Although invoices are not necessary to prove use, they normally constitute concrete evidence that sales have taken place and they indicate the time and place of such sales. In the affidavit, the opponent states that its partners (listed in attachment 1) send their turnover yearly and it provides an internal list summarising their figures for the years 2019 and 2020 (attachments 2 and 3). The opponent’s catalogues in attachments 14 and 15 correspond to the period 2019-2021, that is, the last six months of the relevant period and beyond. The retailers’ annual turnover table and the catalogues, even if their dates were entirely within the relevant period, do not demonstrate sales, including when viewed in conjunction with the affidavit.

As far as the affidavit and the accompanying retailers’ turnovers 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. Nevertheless, as far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees, even if sworn or affirmed in accordance with the law under which it is rendered, must be corroborated by independent evidence, taking into account that its probative value is rather low. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (11/01/2011, R 490/2010‑4, BOTODERM / BOTOX, § 34; 27/10/2009, B 1 086 240 and 31/08/2010, B 1 568 610).

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. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The affidavit and the accompanying retailers’ turnovers are the only documents indicating that a certain amount of sales took place. However, turnover figures drawn up by the opponent itself cannot be considered convincing without any supporting evidence, especially because the data originate from the opponent’s own sources. Moreover, even if they originated from the party itself, the figures representing the annual sales could have been extracted from official financial documents that have been audited and provide the general overview of the opponent’s business activity such as annual financial reports that are prepared by the company and made publicly available. This affidavit does not show or attach any other independent evidence to support the statements contained therein. Therefore, on its own, this affidavit is insufficient to establish the genuine use of the earlier mark.

The catalogues, the promotional material (attachments 10 to 13) and the screenshots from web pages (attachments 16 and 17) showing the availability of the opponent’s goods for sales, can only demonstrate that the goods have been offered for sale to the public. The mere presence of the trade mark in catalogues, leaflets, leaflets or on websites is, in itself, not sufficient to prove genuine use, since this evidence does not provide information with regard to the extent of use.

The remaining documents in attachments 4 to 9 do not shed any light on the commercial activity in question either, as they merely indicate presence, but do not help to prove the extent of use of the earlier mark. They are not sufficient without supporting evidence.

Therefore, there is no conclusive information about the quantity of ‘LIVA’ furniture actually sold during the relevant period. There are no invoices that would show the commercial volume of the trade mark and the frequency of use in relation to the goods in question, and the figures concerning turnover are not corroborated by independent evidence.

Moreover, the opponent did not take advantage of any other possibilities of providing evidence, such as delivery notes, figures relating to marketing campaigns, annual reports giving a general overview of its overall commercial and financial activities, or any other independent evidence.

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 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).

In light of all the above, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the earlier mark in relation to any of the goods on which the opposition is based. The failure to prove even one factor of use leads to the rejection of the evidence of use.

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

Rasa BARAKAUSKIENĖ

Loreto URRACA LUQUE

Manuela RUSEVA

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.