DECISION

of the Second Board of Appeal

of 8 April 2016

In Case R 543/2015-2

ADAMA Agan Ltd.
Ashdod Israel	Applicant / Appellant

represented by Arnold & Siedsma, Amsterdam, Netherlands

v

BIOIBERICA, S.A.
Barcelona Spain	Opponent / Respondent

represented by Sugrañes Patentes Y Marcas, Barcelona, Spain

APPEAL relating to Opposition Proceedings No B 2 111 105 (European Union trade mark application No 11 152 402)

The Second Board of Appeal

composed of T. de las Heras (Chairperson), R. Ocquet (Rapporteur) and C. Negro (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 30 August 2012, Celsius Property B.V., Leusden (NL), Schaffhausen Branch (‘the original applicant’) sought to register the word mark

OPTIMUS

for the following list of goods:

Class 1 ‒ Chemical products for used in agriculture and horticulture; plant growth regulators.

2. The application was published on 10 October 2012.

3. On 12 December 2012, the original applicant requested the recordal of a name change to Celcius Property B.V., Amsterdam (NL), Schafhausen Branch, which was recorded by the Office on 13 December 2012.

4. On 14 December 2012, BIOIBERICA, S.A. (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amended goods.

5. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

6. The opposition was based on the following earlier right:

‑ Spanish trade mark registration No 2 606 457 (‘the earlier mark’) for the word mark

OPTIMUS

filed on 14 July 2004 and registered on 2 December 2004 for the following goods:

Class 1 ‒ Chemicals used in agriculture, horticulture and forestry, especially biostimulating products for plant growth.

7. After an extension of the cooling-off period, on 27 June 2014 Celcius Property B.V., Amsterdam (NL), Schafhausen Branch requested the opponent to submit proof of use of the earlier mark.

8. On 7 July 2014, the opponent submitted a current status of its Spanish trade mark No 2 606 457 and on 28 August 2014 it submitted evidence of use of its earlier mark within the time limit (summarised below in paragraph 11).

9. On 11 August 2014, Celcius Property B.V., Amsterdam (NL), Schafhausen Branch requested the recordal of a further name change to ADAMA Celsius B.V., Amsterdam (NL), Schaffhausen Branch, which was recorded by the Office on 12 August 2014.

10. On 3 October 2014, ADAMA Celsius B.V., Amsterdam (NL), Schaffhausen Branch filed its observations in reply stating that the proof of use provided by the opponent did not show genuine use of the mark in Spain.

11. By decision of 9 February 2015 (‘the contested decision’), the Opposition Division upheld the as amended for all the contested goods and rejected European Union trade mark application No 11 152 402 in its entirety on the grounds that there wasas amended likelihood of confusion. It gave, in particular, the following grounds for its decision:

On the proof of use

• The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, Spanish trade mark No 2 606 457.

• 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 publication of the contested application.

• The contested application was published on 10 October 2012. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 10 October 2007 to 9 October 2012, inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 1 ‒ Chemicals used in agriculture, horticulture and forestry, especially biostimulating products for plant growth.

• On 10 July 2014, according to Rule 22(2) CTMIR, the Office gave the opponent until 15 September 2014 to submit evidence of use of the earlier trade mark. On 28 August 2014, within the time limit, the opponent submitted evidence of use.

• The evidence to be taken into account is the following:

• Document 1: three invoices issued by the opponent, dated between 19/12/2007 and 01/04/2011, for goods including exported chemical products used in agriculture, among which are the opponent’s goods sold under the trade mark ‘Optimus’. The invoices are in Spanish and English, clearly specifying the country of origin, Spain, and are addressed to clients located in Italy and Portugal. They indicate the sale of ‘Optimus’ products under the trade mark totalling EUR 36, 336.00;

• Document 2: an internet article in English, published by the evaluation agency ‘EVALUATE’ on 15/06/2012, revealing details about a national horticulture congress held in Spain during the relevant period (16-20/06/2012), stating that the opponent’s chemical product bearing the mark ‘Optimus’ was part of a public trial demonstrating its use in the relevant horticultural field, namely as a fertiliser with protective ingredients for the plants;

• Document 3: a leaflet in Portuguese including images which show the opponent’s sign and information regarding the goods for which it was registered, namely protection for fruits and trees. Three pages from a brand catalogue in Portuguese including information about the opponent’s products and showing the mark in question used for the relevant goods. A safety data sheet in both English and Spanish serving to specify the essence of the opponent’s product, for which the mark ‘Optimus’ was used, and an internal survey with advice and results on the application of the product in effective plant growing;

• Document 4: three samples of labels for the goods with the mark present on them, dated between July 2008 and December 2010 and containing information about the products (fertilisers), as well as the place of origin, Spain, or the distribution channels, in particular Portugal and Italy. Some of these labels are in Spanish, whilst some are in Portuguese;

• Document 5: two printouts of the home page of the company website, with information about its participation in various events and news about the use of the opponent’s horticultural goods under the mark ‘Optimus’. The printouts are not dated, but they refer to the dates of the National Congress of Horticulture Sciences – 16-20/04/2012 – and the Despertar del Olivo in 2013, which the company attended with its product under the mark ‘Optimus’. The printouts are in English. However, the top left corner of the home page gives the option of switching the language to the original Spanish version.

• The opponent’s documents 1, 2, 3 and 4 show that the place of use is Spain, Italy and Portugal, to which countries the goods were exported. This can be inferred from the language (Spanish) of some of the documents, in particular the invoices and the labels, as well as from the fact that the opponent’s goods were presented at a conference held in Spain. Therefore, the evidence relates to the relevant territory or is considered to be used for export purposes.

• According to Article 15(1), second subparagraph, point (b) EUTMR, the following shall also constitute use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the European Union solely for export purposes.

• The invoices and labels show that the goods were manufactured in Spain and sold in Spain, Italy and Portugal. This clearly shows that the goods were exported from the relevant territory.

• Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

• Most of the evidence is dated within the relevant period.

• The documents filed, namely documents 1 to 5, including invoices, advertisements, samples of labels and evidence of a web presence, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, and the duration and the frequency of use.

• The evidence shows that the mark has been used as registered for some of the goods for which the mark is registered.

• 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).

• Taking into account the evidence in its entirety, the Opposition Division finds that although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

• However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

• According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

• In the present case, the evidence shows genuine use of the trade mark for the following goods: Class 1 ‒ ‘Biostimulating products for plant growth’.

• Therefore, the Opposition Division only considered the abovementioned goods in its further examination of the opposition.

Double identity (Article 8(1)(a) EUTMR) and Likelihood of Confusion (Article 8(1)(b) EUTMR)

• Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, an opposition based only on Article 8(1)(b) EUTMR which meets the requirements of Article 8(1)(a) EUTMR shall be dealt with under the latter provision without any examination under Article 8(1)(b) EUTMR.

• Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

• The wording of Article 8(1)(a) EUTMR clearly requires identity between both the signs concerned and the goods/services in question. This situation is referred to as ‘double identity’. Whether there is double identity is a legal finding to be established from a direct comparison of the two conflicting signs and the goods/services in question. Where double identity is established, the opponent is not required to demonstrate likelihood of confusion in order to prevail; the protection conferred by Article 8(1)(a) EUTMR is absolute. Consequently, where there is double identity, there is no need to carry out an evaluation of likelihood of confusion, and the opposition will automatically be upheld.

Contested goods

• The goods on which the opposition is based are the following:

Class 1 ‒ Biostimulating products for plant growth.

• The contested goods are the following:

Class 1 ‒ Chemical products for use in agriculture and horticulture; plant growth regulators.

Contested goods in Class 1

• The contested ‘chemical products for use in agriculture and horticulture; plant growth regulators’ include, as a broader category, the opponent’s ‘biostimulating products for plant growth’. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical.

Comparison of the signs

OPTIMUS	OPTIMUS
Earlier mark	Contested sign

• The signs are identical.

Global assessment, other arguments and conclusion

• The signs and the goods were found to be identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for all the goods.

• Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

• Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to examine the ground on which the opposition is based, namely Article 8(1)(b) EUTMR.

12. On 15 March 2015, the applicant filed an appeal against the contested decision. requesting that the decision be as amended set aside as amended accepted. The statement of grounds of the appeal was received on 3 June 2015.

13. No observations in reply were filed by the opponent.

14. The appeal was forwarded to the Opposition Division for consideration pursuant to Article 62 CTMR and was remitted to the Boards of Appeal on 19 June 2015.

15. On 23 December 2015, ADAMA Celsius B.V., Amsterdam (NL), Schaffhausen Branch requested the recordal of a transfer of ownership of the contested application to ADAMA Agan Ltd. (‘the applicant’), which was recorded by the Office on 23 December 2015.

Submissions and arguments of the parties

16. The applicant requests that the Board uphold the appeal. Its arguments are summarised as follows:

• Based on ‘the use materials’ provided by the opponent it cannot be concluded that the earlier mark was put to genuine use during the relevant time frame.

• Documents No 3 and No 5 do not apply to the relevant time frame. The opponent was well aware of this fact when it submitted ‘use materials’ on 28 August 2014 (page 7 of submission). The applicant quotes the following: ‘As indicated in the document Nos. 1, 2 and 4 the time frame is included within the relevant period (from 2007 to 2012)’.

• Nevertheless, the Office took these documents into consideration. However, the Office was not allowed to do so. It concludes that only documents Nos. 1, 2, and 4 may be taken into consideration and that the Opposition Division wrongfully also took documents No 3 and No 5 into consideration.

Use on the Spanish domestic market

• Even if one argued that the earlier mark has been genuinely used, it is very clear that no ‘OPTIMUS’ products have been sold on the Spanish market. Even though this is very clear from the ‘use materials’, the applicant will briefly elaborate this below.

• It is clear that the earlier mark has not been put to use on the Spanish domestic market. The mark ‘OPTIMUS’ may have been promoted on a few conferences that were held in Spain. However, this is not relevant due to the absence of invoices referring to sales to the Spanish domestic market. Based on the invoices provided by the opponent, it must be concluded that the mark has not been used on the Spanish domestic market. If the Spanish domestic market was indeed relevant to the opponent, it would have been able to provide multiple invoices for domestic sales and/or advertisements etc. However, the opponent has not submitted any domestic sales invoices, not even one (!). Thus, the mark ‘OPTIMUS’ has not been used genuinely on the domestic Spanish market, even though the opponent may have promoted the mark on a few conferences in Spain. Some promotional activities are clearly insufficient to prove genuine use in the absence of evidence of sales to actual end customers.

• The opponent has failed to show any proof showing that sales were made to end customers in Spain.

Use for export purposes

• Contrary to the Opposition Division’s statement, Article 15(1)(b) EUTMR is not applicable to the present case, due to the fact that the earlier mark is not a European Union trade mark. Apart from that this section would only be relevant if there would be export from one or more countries within the European Union to one or more countries outside the European Union. In the present case this does not apply.

• In spite thereof, according to Article 39 Spanish Trade mark act, a Spanish trade mark is genuinely used if the mark is applied to the goods and/or services in Spain for export purposes.

• Based on the sales invoices provided by the opponent, it may be argued that the opponent was using the mark for export purposes in the relevant territory i.e., Spain. However, it will be explain below that this usage does certainly not qualify as genuine use.

• The Opposition Division rightly concludes that there are three debit notes only. In order to create genuine use for export purposes, the number of debit notes is in fact too small to qualify as genuine use. However, the Opposition Division stated that there would be sales in a considerable amount based on the amount of the invoices. Of course, this should be seen in relation to the goods. Based on amounts only, one can impossibly say that it is dealing with a considerable amount.

• In fact the Opposition Division states ‘It follows from settled case law that such a low amount of invoices is not sufficient to show indication of the commercial volume, the duration, and the frequency of use of the earlier mark in the relevant territory (see decision R979/2013-2 of 11 December 2013 and 08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298, § 44). Therefore, it is clear that the opponent has not used the mark to create or maintain market share in the relevant territory (19/12/2012, C‑149/11, Leno, EU:C:2012:816). Based on the amount of invoices, one may even say that the opponent was just attempting to preserve rights conferred by the mark i.e. this use may be qualified as token use.

• In case of 16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675 and of 18/01/2011, T‑382/08, Vogue, EU:T:2011:9, the Court gave clear criteria for genuine use.

• Account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use.

• A low volume of goods marketed under that trade mark may be compensated by a high intensity or a certain constancy in time of use of that trade mark or vice versa.

• The turnover achieved and quantity of product sales under the earlier mark cannot be assessed in absolute terms but must be assessed in relation to the relevant factors, such as the volume of commercial activity, the production or marketing capacities or the degree of diversification of the undertaking exploiting the mark, and the characteristics of the products or services on the market in question.

• Use of the earlier mark need not always be quantitatively significant for it to be deemed genuine. When it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use.

• The smaller the commercial volume of the exploitation of the mark, the more necessary it is for the party opposing the new registration to produce additional evidence to dispel possible doubts as to its genuineness.

• Three debit notes for amounts that within this field of business are not to be considered as considerable cannot show genuine use, particularly because additional evidence to dispel possible doubts as to its genuineness is completely missing. A conference in Spain will not change this. If in fact the mark ‘OPTIMUS’ was genuinely used by the opponent, it would have been able to provide a lot more invoices.

• The opponent has also mentioned that the mark was used in Italy and Portugal, i.e., countries of the European Union in which the applicant seeks protection for its ‘OPTIMUS’ mark. The use in the latter countries is not relevant in the present case, because use in these countries does not show that the mark was genuinely used in Spain or that the mark was applied to the relevant goods in Spain for export purposes. Although use is not a subject of opposition proceedings, presently use by the applicant in Portugal and/or Italy can never infringe any trade mark rights, for the simple reason that the opponent does not have any trade mark rights in Italy and Portugal.

• Therefore, a likelihood of confusion amongst the relevant public, i.e., farmers, in Italy or Portugal is not relevant, because the opponent owns no earlier rights in Italy or Portugal. The opposition is based on earlier rights in Spain only.

• The earlier mark has not been put to genuine use in the relevant territory, Spain, because there has not been sufficient use.

17. On 23 December 2015, the Office confirmed the transfer of ownership of the applicant from ADAMA Celsius B.V., Amsterdam (NL), Schaffhausen Branch to ADAMA Agan Ltd.

Reasons

18. The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR.
    It is, therefore, admissible.

Preliminary remark: applicable Regulations

19. It is to be noted that the opposition was filed before the entering into force on 23 March 2016 of the new European Trade Mark Regulation which was introduced by Amending Regulation (EU) 2015/2424 (EUTMR), for which the former Community Trade Mark Regulation (EC) No 207/2009 (CTMR) is applicable to this appeal. However, for easy reference the Board will refer to EUTMR and to the new terminology introduced by the amendment, although the material changes in the Regulation (e.g. the relevant period for the proof of use) will obviously not be applied to the case at hand.

20. Since the new European Union Trade Mark Implementation Regulation (EUTMR) will not enter into force until 1 October 2017, the Board will keep on referring to the current Community Trade Mark Implementation Regulation (EC) No 2868/95 (CTMIR).

Scope of appeal

21. The applicant appeals the contested decision in its entirety, though its arguments are limited to the assessment by the Opposition Division of the proof of use of the earlier Spanish mark submitted by the opponent.

22. The Opposition Division found that the opponent had shown use for ‘biostimulating products for plant growth’ in Class 1, though not for the remaining goods covered by the earlier mark.

23. The opponent did not reply to the appeal, and therefore no ancillary appeal in the sense of Article 8(3) BoA-RP was filed, for which the contested decision has become final with respect to the finding that no genuine use was shown for the remaining goods covered by the earlier mark.

24. The scope of the appeal, therefore, includes the assessment of genuine use of the earlier mark in relation to ‘biostimulating products for plant growth’ in Class 1, and – as a consequence - the assessment of the application of Article 8(1)(a) and/or (b) EUTMR.

Proof of use

25. Since the applicant brought up the issue of genuine use of the earlier mark before the Opposition Division and bearing in mind that it is specific and preliminary in character to the opposition proceedings (13/09/2010, T-292/08, Often, EU:T:2010:399, § 32-33) and the assessment by the Opposition Division has been contested by the opponent within its statement of grounds (see in this regard judgment of 16.05.2011, T-18/08, Atlas, EU:T:2008:329, § 40, 41, 46 and 55), the issue of genuine use constitutes a disputed matter that has to be decided by the Board before the opposition based on Article 8(1)(a) and/or (b) EUTMR is examined.

26. It is apparent from the 10th recital in the preamble to the EUTMR that the legislature considered that there is no justification for protecting an earlier trade mark, except where it is actually used. In keeping with that recital, Article 42(2) and 42(3) EUTMR provides that an applicant for a European trade mark may request proof that the earlier trade mark has been put to genuine use in the territory where it is protected – namely within the European Union according to Article 42(2) EUTMR for European trade trade marks, and within the relevant Member State according to Article 42(3) EUTMR for national trade marks – during the five years preceding filing or date of priority of trade mark application against which a notice of opposition has been given (whereas under the rules of the EUTMR, which are applicable to this case, the proof should relate to the five years preceding the publication of the contested application) (12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 34; 27/07/2007, T-418/03, La Mer, EU:T:2007:299, § 51). Failure to demonstrate such use of the goods or services on which opposition is based will lead to the rejection of the opposition.

27. With respect to European Union trade marks, Article 15 EUTMR determines:

‘1. If, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

The following shall also constitute use within the meaning of the first subparagraph:

1. use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it is registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor;

2. affixing the EU trade mark on goods or to the packaging therefore in the Union solely for export purposes.’

28. With respect to national trade marks, Article 10(1) of the Trade Mark Directive 2008/95/EC applicable to this case (replaced and amended by Article 16 of the new Trade Mark Directive (EU) 2015/2436 which also applies to IRs) determines:

‘1. If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use.

The following shall also constitute use within the meaning of the first subparagraph:

(a) use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;

(b) affixing of the trade mark to goods or to the packaging thereof in the Member State concerned solely for export purposes.’

29. According to Rule 22(3) and (4) CTMIR, the indications and evidence for the furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the contested mark for the goods and services in respect of which it is registered. The evidence shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspapers, advertisements, and statements in writing as referred to in Article 78(1)(f) EUTMR.

30. There is ‘genuine use’ of a trade mark where the mark 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 market share within the relevant territory for those goods or services (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 58); genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, is used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37; 30/04/2008, Sonia Sonia Rykiel, EU:T:2008:135, § 38; and 18/01/2011,
    T-82/08, Vogue, EU:T:2011:9, § 27).

31. 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 (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47). In other words, it is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 40).

32. In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223).

33. In particular, when assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 43; 16/11/2011, T-308/06, Buffalo Milke, EU:T:2011:675, § 48).

34. Concerning the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

35. Use of the mark need not always be quantitatively significant in order to be deemed genuine, and even minimal use can be sufficient, provided that it is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 21).

36. The question of whether the Opposition Division was correct in finding that the opponent had furnished proof of genuine use of the earlier Spanish mark for ‘biostimulating products for plant growth’ in Class 1 has to be assessed bearing the above considerations in mind.

37. The earlier mark was registered on 2 December 2004. During the course of the opposition proceedings, the applicant requested evidence of use of the earlier mark for all the goods on which the opposition is based pursuant to Article 42(3) EUTMR.

38. The opponent had to show that it had genuinely used its earlier mark during the five-year period preceding the publication of the contested application (as specified in Article 42(2) of the former EUTMR).

39. The date of publication of the contested mark is 10 October 2012. Therefore, the opponent was required to prove that the earlier mark was put to genuine use in Spain during the period of 10 October 2007 to 9 October 2012, inclusive.

40. On 28 August 2014, the opponent filed its proof of use, listed under paragraph 11 above.

41. In the contested decision, the Opposition Division considered that, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier mark during the relevant period in the relevant territory (Spain) for the products concerned.

42. The applicant disputes the Opposition Division’s finding that genuine use was shown during the relevant period in Spain.

43. The Board will now assess the submitted evidence, bearing in mind, as mentioned above, that under Rule 22(3) CTMIR, the indications and evidence for furnishing proof of use are to consist of indications concerning the place, time, extent and nature of use.

Time

44. As regards the period of use, as is clear from Article 10(1) of the Trade Mark Directive 2008/95/EC, only national trade marks genuine use of which has been suspended during an uninterrupted period of five years are subject to the sanctions provided by the Directive. Accordingly, it is sufficient that a trade mark was put to genuine use during a part of the relevant period for it not to be subject to the sanctions (see, to that effect, 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 45, confirmed by judgement of 11/05/2006, C-416/04 P, Vitafruit, EU:C:2006:310).

45. Regarding the time of use, the Board notes that, in particular, the following parts of the evidence are relevant for the assessment:

    1. Document 1: three invoices for products bearing the mark ‘OPTIMUS’ issued by the opponent dated 19 December 2007, 30 June 2009 and 1 April 2011, respectively, to two entities, one based in Italy and another in Portugal;

    2. Document 2: a press release, issued on the internet by the evaluation agency ‘EVALUATE’ on 15 June 2012, stating that the results of the trial test carried out in 2008 regarding the opponent’s chemical product bearing the mark ‘OPTIMUS’ were presented during a national conference on horticulture science held in Almeria (Spain) from 16 to 20 April 2012;

    3. Document 3: what is relevant in this annex is a safety data sheet in both English and Spanish dated May 2011 serving to specify the essence of the opponent’s product, for which the mark ‘OPTIMUS’ was used;

    4. Document 4: three samples of labels for the goods bearing the mark ‘OPTIMUS’, which contain the followed codes: ‘E011915/1210’ and ‘E011903/0708’ and ‘E011997/0708’ and which were interpreted by the Opposition Division as dates between July 2008 and December 2010.

    5. Document 5: (undated) printouts of the home page of the company’s website www.bioiberica.news.com which, as to the relevant period, also refers to the presentation of the results of the trial test between 16 and 20 April 2012 as mentioned in Document 2 (see also, as to webpage extracts falling outside the relevant period, 09/12/2015, T-354/143, Zumex, EU:T:2015:947, § 56-57).

46. Although it is questionable whether Document 4 contains dates, the Opponent did not question this (as it merely stated that documents 3 and 5 do not apply to the relevant time frame and that only documents 1, 2 and 4 could be taken into consideration), and the Board considers that the remaining documents, listed above and taken as a whole, show that the earlier mark was used during the relevant time period.

Place

47. As to the place of use, the Board notes that the following parts of the evidence are relevant:

    1. Document 1: the invoices are issued in Spain and addressed to two entities, one in Portugal and one in Italy.

    2. Document 2: shows the presence of the product bearing the mark ‘OPTIMUS’ at a conference held in Almeria (Spain);

    3. Document 3: the leaflet and the brand catalogue in Portuguese suggest that it is destined for the Portuguese market; the safety data sheet is drafted in English and Spanish;

    4. Document 4: the samples of the labels contain information in Italian, Portuguese and Spanish.

48. The Board notes, that apart from the fact that it seems apparent that the goods are produced in Spain, there is no indication that the goods bearing the earlier mark were actually sold in the relevant territory, i.e. Spain, as correctly raised by the applicant. Indeed, the mere fact that the safety data sheet (Document 3) is, in addition to English, also drafted in Spanish and that the labels (Document 4) also include, apart from Portuguese, indications in Spanish, does not appear sufficient to conclude that the goods were provided on the Spanish market.

49. However, although the number of invoices filed is clearly limited (three), it does show that these are addressed to Italian and Portuguese consumers and therefore they represent suitable evidence in demonstrating use of the earlier Spanish mark for export purposes within in the meaning of Article 10(1) of the Trade Mark Directive 2008/95/EC (cf. Article 16 of the new Trade Mark Directive (EU) 2015/2436).

50. The circumstance, raised by the applicant, that the Opposition Division referred to Article 15(1)(b) EUTMR, which is applicable to use of a European Union mark for export purposes rather than of a national mark (see, in this sense, 04/06/2015, T-254/13, Stayer, EU:T:2015:362), is not relevant for the outcome of the opposition, since the content of Article 15(1)(b) EUTMR is identical to that of Article 10(1) Directive applicable to national marks (see, for example, 24/09/2014, R 1955/2013-2, 1982/1932 et al., § 30).

51. Moreover, on many occasions the Boards have applied Article 15(1)(b) EUTMR by analogy to national trade marks, whether or not referring to the equivalent Article 10(1)(b) of the Directive (see, for example, 05/07/2012, R 1312/2010-4, HYDRAMYST/HYDRA, § 19; 17/10/2013, R 417/2012-1, HYGA (fig.) / HYGENA, § 21; 03/07/2014, R 03/07/2013-4, CLEO/CLEO, § 17; 14/07/2014, R 1703/2013-5, MAR DE FRADES (fig.) / VIÑA DEL FRADE, § 20; 01/12/2015, R 2215/2014-4, GA GRAPE ALLIANCE (fig.) / ALLIANCE, § 20). Also the General Court in its ‘AL BUSTAN’ judgement refers to Article 15(1)(b) EUTMR while in that case it concerned an earlier Greek mark: 19/04/2013, T-454/11, Al bustan, EU:T:2013:206 § 21) .

52. The applicant acknowledges that based on the invoices provided it may be argued that the opponent was using the earlier mark for export purposes in Spain, though that this use does not qualify as genuine use. The Board will address this argument under the title below.

Extent

53. Concerning the extent of use to which the earlier mark has been put, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred as well as the frequency of those acts on the other (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

54. The opponent has submitted, in total, three invoices, of which the sums relating to the earlier mark amount to EUR 8, 928.00, EUR 24, 384.00 and EUR 3, 024.00, respectively, i.e. a total of EUR 36, 336.00.

55. Bearing in mind that the unit prices (per 5 litre) of the items sold are EUR 4.65, EUR 6.35 and EUR 6.30, these invoices refer to quantities of 1, 920, 3, 840 and 480 units, respectively, i.e. a total of 6, 240 units of 5 litres, or 31, 200 litres.

56. Although the monetary value of the three invoices submitted is low, it is clear that they represent a quantity of goods which cannot be considered insignificant and can certainly not be considered token use.

57. The applicant contests the Opposition Division’s findings, arguing that the sales should be seen in relation to the goods and that based on the amounts alone, it would be impossible to determine whether it concerns a considerable amount. By that it merely claims that the amounts representing the invoices are not to be considered as considerable within the field of business concerned and therefore cannot be taken as showing genuine use, though it does not put forward any reason as to why this would not be the case.

58. The Board considers, on the contrary, that bearing in mind that it is indeed always necessary to take into account the characteristics of the market in question (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 51), the goods for which the proof of use is assessed in these proceedings (‘biostimulating products for plant growth’) are rather specialised products relating to a specific market of plant growth stimulators which are not necessarily provided on a daily basis.

59. In view of the absence of any indications to the contrary, and in line with the Opposition Division’s findings in this respect, the Board is under the impression that 31, 200 litres of ‘biostimulating products for plant growth’ represents a considerable amount, even if used for agricultural purposes where, arguably the product will be used on a larger scale.

60. Furthermore, the evidence must be assessed globally, since even circumstantial evidence such as catalogues featuring the trade mark, despite the fact that they do not provide direct information as to the quantity of goods actually sold, they can be sufficient by themselves to prove the extent of use in an overall assessment (08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

61. In this sense, the other parts of the evidence, although not particularly exhaustive, support the extent of use, in particular the leaflet and brand catalogues (Document 3). In addition, it was shown that the opponent participated, using its earlier mark, in a national conference held in Spain (Documents 2 and 5) during the year 2012.

62. Therefore, in the view of the Board, despite the small number of submitted invoices, the proof of use can be considered to consist of solid and objective evidence of effective and efficient use (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22)

63. In the view of the Board, the use of the earlier mark has been continuous and lasted several years, i.e. between 2007 and 2012. The use has been actual, outward and public with commercial purposes. Taking into account the market conditions in which the opponent operates, relating to plant growth stimulators which are not necessarily sold on a daily basis, the Board considers that the evidence shows sufficient frequency and duration of the commercial acts of the opponent to fulfil sufficiently the requirements for extent of use (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

Nature

64. Finally, it is noted that ‘nature of use’ in the context of Rule 22(3) CTMIR further comprises the need for evidence on use of the mark as registered, or of a variation thereof according to Article 10(1), second paragraph (a) of the Trade Mark Directive 2008/95/EC and the use for the goods and/or services for which it is registered.

Use as a trade mark

65. The proof of use must establish a clear link between the use of the mark and the relevant goods and/or services, as clearly indicated in Rule 22(3) CTMIR, since a trade mark has, inter alia, the function to operate as a link between the goods and services and the person responsible for their marketing. Genuine use requires that use is made as a trade mark 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 (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 43).

66. Before carrying out the examination as to use as a trade mark, it should be recalled that a connection between the use of the mark at issue and the goods concerned can be established without it being necessary for the mark to be affixed on the goods (see, to that effect, 06/03/2014, T-71/13, Annapurna, EU:T:2014:105, § 44 and the case-law cited therein).

67. It is noted that the earlier mark ‘OPTIMUS’ / ‘Optimus’ is mentioned on the invoices (Document 1). It is also mentioned in the press release (Document 2) which comments on the trial test about the effects of the product bearing the mark ‘OPTIMUS’ on the overall aspect and quality of mandarins and lemons; in the leaflet (Document 3) which includes information regarding the goods bearing the mark; in the brands catalogue (Document 3) which also includes information regarding the products concerned; and in the safety data sheet (Document 3) which specifies the essence of the product bearing the earlier mark. Finally, the product labels (Document 4) also contain information regarding the products concerned.

68. It can be seen that the earlier mark has been the only indicator as regards the origin of the goods concerned and the link between the mark used and the goods manufactured and provided can be established. Therefore, the Board concludes that the evidence shows that the opponent has used the earlier Spanish mark as a trade mark.

Use as registered

69. Regarding the use of the mark as registered, Article 10(1), second subparagraph (a) of the Directive applicable to national marks (and the corresponding Article 15 EUTMR applicable to EUTMs), states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark. The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50). The General Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

70. As indicated above, the earlier word mark ‘OPTIMUS’ / ‘Optimus’ appears on the invoices, (Document 1), in the press release (Document 2), in the leaflet, in the brands catalogue and in the safety data sheet (Document 3).

71. It must be noted that for the protection of word marks it is irrelevant whether they are written in capitals or lower-case letters (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57), for which use in either way constitutes use of the mark as registered.

72. On the samples of the labels (Document 4), the mark is shown in a stylised version which, in any case, does not affect its distinctiveness.

73. Indeed, the Board considers that the slight stylisation of the letters and the variation arising from the contrasting colours (black/white) does not alter the distinctive character of the mark. The marks as used and as registered are broadly equivalent since the overall impression given by the signs is the same.

74. Therefore, it is concluded that the evidence shows that the opponent has used the earlier mark as registered.

Use for the registered goods

75. As to use for ‘biostimulating products for plant growth’ Class 1, for which the Opposition Division considered that genuine use was shown, the Board notes that the evidence refers in several parts to the product bearing the mark ‘OPTIMUS’, which is described with terminology such as:

• ‘in mandarin and lemon [it] reduces the damage caused by saline stress and increases the overall quality of the crop’ (press release, Document 2);

• ‘phytoftera protection, for trees and fruits’, ‘protection against biotic and abiotic stress’ and ‘increases the consistency and quality of fruits’ (leaflet, Document 3);

• ‘inductor for the multiplication of the natural defenses’ (leaflet, Document 3);

• ‘description: water solution of aninoacids from natural sources and inorganic salts for agriculture purposes’ (data safety sheet, Document 3);

• ‘a product that contains a special formula that combines specific peptides with a phosphonate group (Fosfipéptidos®) that activates the endogenous defence mechanisms (PR proteins); and therefore, they are especially recommended to stimulate protection against pathogens that attack the plants leaves from within (like powdery mildew, for instance) (data safety sheet, Document 3);

• ‘Optimus is a multi-purpose product that increases the resistance (due to genetics) biotic stress and increases tolerance to abiotic stress (environmental cause climate)’ and ‘increases the vegetable nutrition, especially in the moment of maximum physiological activity and at the maximum demand for nutrients’ (product labels, Document 4).

76. Although the above descriptions mostly contain terminology referring to the stimulation of the protection, defence and resistance of plants, it concerns a multi-purpose product that also increases their nutrition and consequently plays a role in plant growth. Therefore, the Board considers that the Opposition Division rightfully found that the mark concerned was used in relation to ‘biostimulating products for plant growth’ Class 1.

Conclusion

77. It should be noted that although Rule 22(3) CTMIR refers to indications concerning the place, time, extent and nature of use, and gives examples of acceptable evidence, such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing, that rule does not state that each item of evidence must necessarily give information about all four elements to which proof of use must relate, namely the place, time, nature and extent of use (19/04/2013, T-454/11, Al bustan, EU:T:2013:206 § 35 and the case-law cited therein).

78. Moreover, it is established case-law that it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of these items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts 19/04/2013, T-454/11, Al bustan, EU:T:2013:206 § 36 and the case-law cited therein). The evidence of genuine use must be therefore assessed globally, taking into account all of the submitted evidence.

79. Consequently, although it may well be that, for example, as indicated by the applicant, the participation in a national conference in Spain is – taken individually – not sufficient to constitute proof of use, the evidence as a whole (the invoices, the press release, the leaflet, the brands catalogue and the safety data sheet, the samples of the labels and the printouts of the webpage) does show the required time, place, extent and nature of use of the earlier mark.

80. Considering all the above, the Board concludes that, in line with the Opposition Division’s findings, the opponent has shown genuine use in relation to the following goods:

Class 1 ˗ ‘biostimulating products for plant growth’

Double identity - Article 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if it is identical to the earlier trade mark and the goods or services for which protection is sought are identical to the goods or services for which the earlier trade mark is protected.

Comparison of the signs

81. The signs to be compared are the following:

    OPTIMUS	OPTIMUS
    Earlier mark	Contested sign

82. The signs involved are identical. This has not been disputed by the applicant.

Comparison of the goods

83. The relevant goods to be compared are the following:

Class 1 ‒ Biostimulating products for plant growth.	Class 1 ‒ Chemical products for use in agriculture and horticulture; plant growth regulators.
Earlier mark	Contested sign

84. It is settled case-law that goods or services can be considered as identical when the goods or services designated by the trade mark application are included in a more general category designated by the earlier mark, or, in other words, where the goods or services covered by the earlier mark include the goods or services covered by the trade mark application (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 32-33; 12/12/2002, T-110/01, Hubert, EU:T:2002:318, § 43-44; 18/02/2004, T-10/03, Conforflex, EU:T:2004:46,
    § 41-42; 07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 29; 22/05/2012, T-585/10, Penteo, EU:T:2012:251, § 57; T-29/04, Cristal Castellblanch, EU:T:438, § 51; 29/02/2012, T-525/10, Servo Suo, EU:T:2012:96, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 42). Indeed, identity between the goods or services does not only exist in the case of goods or service terms that are identical in terms of wording, but also between a broad generic term and the goods or services covered by that generic term.

85. In view of the above considerations, the Opposition Division correctly found that the contested ‘biostimulating products for plant growth’ are contained in the broader category of goods covered by the earlier mark, and that the goods concerned are, therefore, identical.

Conclusion

86. Both the signs and the goods are identical. Pursuant to the relevant case-law, where there is a double identity of both the signs and the goods or services, there is no requirement to prove a likelihood of confusion on the part of the public in order to afford absolute protection (20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 48-49).

87. Indeed, where rigorously identical signs or trade marks are used in the course of trade for identical goods or services it is difficult, if not impossible, to conceive of circumstances in which a likelihood of confusion pursuant to Article 8(1)(b) EUTMR could be ruled out. Article 8(1)(a) EUTMR is intended to apply only in such cases, since a likelihood of confusion can be presumed without further investigation (on this point, see the Opinion of the Advocate General, Mr F.G. Jakobs, submitted on 17 January 2002, ECLI:EU:C:2002:27 and the judgment of 20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 37 and 39).

88. Consequently, the contested application must be refused pursuant to Article 8(1)(a) EUTMR for all the contested goods on the basis of earlier Spanish trade mark No 2 606 457 ‘OPTIMUS’ and there is no need to assess the application of Article 8(1)(b) EUTMR.

89. For these reasons, the appeal must be dismissed.

Costs

90. As the appeal has been dismissed, the applicant, as the losing party, shall bear the costs incurred by the opponent in the appeal proceedings, pursuant to Article 85(1) EUTMR. Pursuant to Article 85(6) EUTMR and Rule 94(3) CTMIR, last sentence, the applicant shall bear the costs of professional representation in the appeal proceedings, the amount of which is fixed at EUR 550 in accordance with Rule 94(7)(d) CTMIR. As to the opposition proceedings, the Opposition Division ordered the applicant to bear the costs of the opponent in the amount of EUR 650.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the total amount of EUR 1 200 in respect of the opponent’s costs in the opposition and appeal proceedings.

Signed T. de las Heras

Signed R. Ocquet

Signed C. Negro

Registrar: Signed H.Dijkema