OPPOSITION DIVISION




OPPOSITION No B 1 959 470



El Corte Inglés, S.A., Hermosilla, 112 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56-1ºizda 28010, Madrid, Spain (professional representative)

a g a i n s t


Lloyd Shoes GmbH, Hans-Hermann-Meyer-Str. 1 27232, Sulingen, Germany (applicant), represented by Bird & Bird LLP, Carl-Theodor-Str. 6 40213 Düsseldorf, Germany (professional representative).


On 28/09/2017, the Opposition Division takes the following



DECISION:


1. Opposition No B 1 959 470 is partially upheld, namely for the following contested goods and services:


Class 3: Perfumery, cosmetics.


Class 14: Jewellery, jewellery, costume jewellery, tie pins, tie clips, horological and chronometric instruments.


Class 18: Leather and imitations of leather, and goods made of these materials (included in class 18), in particular purses, pouches and wallets (included in class 18); travelling bags and handbags; trunks and travelling bags; briefcases and attaché cases.


Class 25: Clothing, footwear, headgear.


Class 35: Wholesaling and retailing, including via the internet and through teleshopping, in the fields of jewellery, costume jewellery, tie pins, tie clips, horological and chronometric instruments, leather and imitations of leather, travel bags, trunks and travelling bags.


2. European Union trade mark application No 10 367 721 is rejected for all the above goods and services. It may proceed for the remaining services.


3. Each party bears its own costs.



REASONS:


The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 367 721 . The opposition is based on: European Union trade mark registration No 2 957 132 ; Spanish trade mark registrations No 2 193 659, No 2 193 661 and No 2 193 662 for the figurative mark ; Italian trade mark registration No 1 175 068 for the figurative mark .



The opponent invoked Article 8(1)(b) EUTMR.



PROOF OF USE


In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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, on 12/09/2016 that the opponent submit proof of use of some of the trade marks on which the opposition is based, namely:


Spanish trade mark registrations No 2 193 659, No 2 193 661 and No 2 193 662 for the figurative mark for goods in Classes 14, 18 and 25;

Italian trade mark No 1 175 068 for the figurative mark for goods in Classes 3, 14, 18 and 25.


The request was filed in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.


On 12/11/2016, the opponent was given two months to file the requested proof of use.

The opponent did not furnish any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.


According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.


Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR in respect of the earlier Spanish trade mark registrations No 2 193 659, No 2 193 661 and No 2 193 662 and Italian trade mark No 1 175 068.


The examination will continue on the basis of the earlier mark which is not subject of proof of use, namely European Union trade mark registration No 2 957 132