OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 102 385
Lacticinios do Paiva, S.A., Lugar de Penelas, Cambres, Apartado 19, 5100-407 Lamego, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)
a g a i n s t
Pasteurizadora Tachira, S.A., Rue des Pilettes, 1, 17300 Fribourg, Switzerland (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative).
On 25/01/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods and services
of Community trade mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.
The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.
The contested application was published on 09/08/2012. The opponent was therefore required to prove that the Portuguese trade marks on which the opposition is based were put to genuine use in Portugal and that the Community trade mark was put to genuine use in the European Union from 09/08/2007 to 08/08/2012 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:
PT No 270 821
Class 29: Dairy products.
CTM No 1 703 792
Class 29: Dairy products, including cheese.
CTM No 3 401 321
Class 29: Milk products, including cheese.
According to Rule 22(3) CTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 13/04/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 18/06/2015 to submit evidence of use of the earlier trade marks. Following the opponent’s request, this time limit was extended until 18/08/2015. On 18/08/2015, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
a printout from www.allfood.com showing a picture of cheese (‘Queijo Flamengo’) bearing the trade mark ‘PAIVA’ with the packaging dated 06/04/2015 and 10/10/2015;
a printout from www.lacticiniospaiva.pt showing pictures of various ‘PAIVA’ goods; this printout is dated 18/08/2015;
a copy of an invoice dated 29/05/2007 issued by the opponent’s company, which shows sales of ‘PAIVA’ goods for a total of EUR 84.93;
a copy of an invoice dated 03/08/2010 issued by the opponent, which shows sales of ‘PAIVA’ goods for a total of EUR 11 261.79;
printouts from an internet blog containing references to ‘PAIVA’ cheese, dated between 27/07/2011 and 10/12/2013.
Most of the documents are dated outside the relevant period.
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, 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 website and blog printouts and the copies of two invoices that contain references to ‘PAIVA’ goods, do not provide the Opposition Division with sufficient information concerning the commercial volume, territorial scope, duration or frequency of use.
The images of ‘PAIVA’ goods only provide information about the goods the mark is used for, but not about the extent of use. In addition, most of the dates on the packaging or documents are outside the relevant period.
One of the invoices for sales of ‘PAIVA’ goods is dated outside the relevant time frame and its total amount is only EUR 84.93. The other invoice, which is dated within the relevant period, indicates sales of ‘PAIVA’ goods for a total of EUR 11 261.79. This is not considered compelling evidence of use, given that the goods in question are for everyday consumption. Although the invoices are made out to addresses in two different cities in Portugal, there is a gap of more than three years between the dates indicated.
Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier marks.
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; and 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 marks were genuinely used in the relevant territories during the relevant period of time.
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) CTMR and Rule 22(2) CTMIR.
According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) CTMIR, 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
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.