OPPOSITION DIVISION




OPPOSITION No B 2 151 127


Automobili Lamborghini S.p.A., Via Modena, 12, 40019 Sant’Agata Bolognese (Bologna), Italy (opponent), represented by Audi AG/Bugatti International S.A. Klaus B. le Vrang, Patentabteilung, 85045 Ingolstadt, Germany (professional representative)


a g a i n s t


Arturo Di Modica, 253 Church Street, New York, NY 10013, United States of America (applicant), represented by Pronovem Marks Socièté Anonyme, avenue Josse Goffin 158, 1082 Bruxelles, Belgium (professional representative).


On 19/05/2021, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 151 127 is rejected in its entirety.


2. The opponent bears the costs.



REASONS:


The opponent filed an opposition against all the goods of European Union trade mark application No 11 304 516. The opposition is based on European Union trade mark registrations No 3 968 252 and No 4 696 837, in relation to which the opponent invoked Article 8(1)(b) EUTMR, and European Union trade mark registration No 1 098 375, in relation to which the opponent invoked Article 8(5) EUTMR.



PROOF OF USE


In accordance with Article 42(2) and (3) EUTMR, 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, namely European Union trade mark registrations No 3 968 252, No 4 696 837 and No 1 098 375.


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 19/12/2012. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 19/12/2007 to 18/12/2012 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:


European Union trade mark No 3 968 252, for the figurative mark


Class 14: Jewellery, precious stones.


Class 18: Leather goods made of leather or leather imitation, included in class 18; trunks and travelling bags; umbrellas and parasols.


Class 20: Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic.


Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); glassware, porcelain and earthenware not included in other classes.


Class 25: Clothing, footwear, headgear.


European Union trade mark No 4 696 837, for the figurative mark


Class 8: Hand tools and implements (hand operated); cutlery; side arms; razors.


European Union trade mark No 1 098 375, for the figurative mark


Class 12: Vehicles and their constructive parts, boats.



According to Rule 22(3) EUTMIR, 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 02/09/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 02/11/2015 to submit evidence of use of the earlier trade marks. This was extended until 02/01/2016. On 17/12/2015, within the time limit, the opponent submitted evidence of use.


The evidence to be taken into account is the following:


  • Attachments 1-12: a set of 12 invoices dated from 19/12/2007 to 24/07/2008, addressed to customers in the USA and Canada, including references to the marks ‘AUTOMOBOLI LAMBORGHINI’ and , and the trade mark device at the top right of the invoices. The sales are of clothes, including leather jackets, headwear, bags, leather and nickel card holders, document holders, wallets, mouse pads, silver and gold crest cufflinks, towels, magnets, mugs, thermos flasks, notepads, calendars, posters, post cards and model cars.

  • Attachment 13: the cover page and two other pages of the catalogue ‘Automobili Lamborghini Collection’, dated spring/summer 2008, including photographs of a bag, a t-shirt and a key holder bearing the mark .

  • Attachments 14-17: pictures of articles mentioned in the invoices, including caps, t-shirts, polo shirts, jackets, pullovers, shoes, ties, mugs, cups, plates, thermos flasks, crest cufflinks, key holders, bags, back packs, scarves and gloves, bearing, inter alia, the marks , and .

  • Attachment 18: a copy of a licence agreement between the opponent and Albanu Sam concerning the production and sale of bracelets made of bull horn/leather.

  • Attachment 19: copies of invoices of the opponent referring to the delivery of bracelets, with the mark at the top right of the invoices.

  • Attachment 20: a photograph of a bracelet bearing the mark .


In addition, on 19/05/2015, the opponent provided the following evidence to demonstrate the reputation of the bull device on Lamborghini automobiles:

  • Attachment 1: 17 different front covers of books about Lamborghini cars, with a raging bull on the covers, for example , , , , and .

  • Attachment 2: a screenshot of the top of the web page http://en.wikipedia.org/wiki/Lamborghini to show the logo of the company, including the bull, and that it is directly associated with the reputation and image of the brand Lamborghini. It appears as .



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 Union solely for export purposes.


The evidence demonstrates that the goods were manufactured in Italy and sold in the USA and Canada. 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.


All of the evidence is dated within 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 and the characteristics of the market concerned, the territorial extent of use, 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 and the catalogues – even though the number of invoices is quite low – provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.


Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.


In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.


However, according to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union 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, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.


In the present case, registered European Union trade marks No 3 968 252 and No 4 696 837,