OPPOSITION DIVISION




OPPOSITION No B 2 306 184


Globalia Handling, S.A.U., Ctra. Arenal a LLucmajor Km. 21,5 Polígono Son Noguera, 07620 Llucmajor (Baleares), Spain (opponent), represented by Herrero & Asociados, Alcalá, 35, 28014 Madrid, Spain (professional representative)


a g a i n s t


Groundforce Digital Ltd., c/o Gowling Lafleur Henderson LLP, One Main Street West,

Hamilton Ontario L8P 4Z5, Canada (applicant), represented by Advokatfirman Nordia, Kungsportsavenyen 1,411 36 Göteborg, Sweden (professional representative).


On 15/12/2016, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 306 184 is rejected in its entirety.


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



REASONS:


The opponent filed an opposition against all the services in Class 35 of European Union trade mark application No 12 157 202. The opposition is based on European Union trade mark registrations No 4 378 238 and No 5 341 706. The opponent invoked Article 8(1)(b) EUTMR.






GROUNDFORCE DIGITAL


Earlier trade marks


Contested sign



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 4 378 238 and No 5 341 706.


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 24/10/2013. 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 24/10/2008 to 23/10/2013 inclusive. Furthermore, the evidence must show use of the trade marks for the services on which the opposition is based, namely the following:


European Union trade mark registration No 4 378 238:


Class 35 Business administration, assistance in business management and commercial functions of a commercial enterprise, including the compilation, systematisation and transmission of written communications and records.


And European Union trade mark registration No 5 341 706:


Class 35 Business administration, business management assistance or assistance with the commercial functions of a commercial enterprise, systemisation and transmission of written communications and records.

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 04/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/04/2016 to submit evidence of use of the earlier trade marks. On 30/03/2016, within the time limit, the opponent submitted evidence of use.


As the opponent requested to keep the content of the evidence submitted strictly confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms.


The documents submitted as evidence are the following:


  • Annexes 1 and 12: two certificates issued by the Managing Director and Legal Representative of the company Globalia Handing S.A. concerning turnover for the financial periods 2008 to 2013 related to the services provided with the earlier trade marks.


  • Annex 2: a set of 58 invoices dated between October 2008 until November 2013 issued to clients from Luxembourg and Algeria (5 of each), Cyprus, Sweden, Turkey, Italy, Jordan and France (1 of each), Spain (23), United Kingdom (6), Russia (9), Greece and Ukraine (2 of each). All of them contain the earlier figurative sign ‘Groundforce we handle, you fly’ and are numbered. These invoices contain services identified with code numbers and mainly referred to in the concept column as: ‘Basic Handling’, ‘Passenger assistance’, ‘Baggage assistance’, ‘Ground Operations Assistance’, ‘Cleaning assistance service (except de-icing)’, ‘Unaccompanied minors’, ‘Handle lost/found /damaged property matters’, ‘Use of DCS initial flight’, ‘Provide arrange crew transportation’, ‘Pax transport between a/c and a/p termina’, ‘Cargo/mail transport a/p and cargo’ ‘self-propelled steps’. They reflect the volume of sales and the sales prices (in EUR currency) of the opponent’s services.


  • Annexes 3-5, 14-15: brochures (undated): a ‘Corporate brochure’ on ‘Groundforce’, a brochure and a fold-out brochure both entitled “Groundforce we handle, you fly”. Among the information contained therein, page 2 of the first brochure refers to Groundfoce as a brand of Globalia Handling and describes it as a company that began its activity in 1994 providing handling services to third parties. According to the content of these brochures, the services rendered by the opponent mainly consist of passenger services, ramp services, flight operations, ticketing, load control, airport representation, aircraft cleaning, crew administration, GSE maintenance, training, Vip services, warehouse terminal and ground transportation. The brochure ‘Groundforce cargo’ and the booklet ‘Standard ground handling agreement 2008-2004’ also contain information relating to these same services and activities.


  • Annex 6: Invoices pertaining to advertising expenditure relative to the commercialization of the trade marks ‘Groundforce’.


  • Annex 7: A Corporate Identity Standards manual setting rules and recommendations to guarantee the correct and coherent application of the ‘Groundforce’ brands.


  • Annex 8: Advertisements and articles in specialized magazines relating to the opponent’s activities referred to as a ground handling service provider at airports. The magazines are dated February, March, September and December 2010, October and December 2013, February and September 2014 and April 2015.


  • Annex 9: Printout from the websites www.aena.es providing a list of the ‘Handling Agents’ from Groundforce that operate within Spanish airports.


  • Annex 10: Printout from the opponent’s website (www.groundforce.aero) containing information on the opponent’s activities consisting of providing handling services.


  • Annex 11: Certificate signed by the General Manager and Legal Representative of the opponent’s company certifying that its website (referred to in annex 10) was created in the year 2015.


  • Annex 13: a set of 40 invoices dated between October 2008 until December 2013 issued to clients from Spain (23) and the Netherlands (1). They are all numbered and contain the earlier figurative sign ‘Groundforce cargo’ and some of them are accompanied by the slogan ‘we handle, you fly’. The services described in these invoices are mainly ‘Delivery Documents’, ‘Non-secure cargo’, ‘Check-in live animals’, ‘Handling express’ ‘Import storage’, ‘Loading/unloading trucks’, ‘Secure cargo (agent)’, ‘Storage valuables/weapons/explosives/radioactives’ ‘Logistic input’, ‘Freight delivery out of office hours’, ‘Garments’ ‘Foodstuffs’ ‘Lift parts’ ‘Spare parts’, furniture and equipment parts. They reflect the volume of sales and the sales prices (in EUR currency) of the opponent’s services.



As an introductory remark, it is to be emphasised that, in accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods. These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43).


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.


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.


In the present case, the documents furnished by the opponent as proof of use do not contain any information that demonstrates that the opponent has used its earlier trade marks in connection with the services in Class 35, indicated above, which it cites as justification for its opposition.


Indeed, business management services are usually rendered by specialist companies such as business consultants that gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. Likewise, business administration services consist in assisting a business in the administration of its own commercial functions.


Neither of these services appears to have been rendered according to the information contained in the evidence submitted by the opponent. In fact, from the content of these documents it can be clearly deducted that the services provided by the opponent consist and are related to handling services at airports which have no connection whatsoever with the business management and business administration services on which the opposition is based. Indeed, the services which were effectively provided by the opponent are essentially included in Class 39 of the Nice Classification, as they share no relevant characteristic in common with the business management and business administration services included in Class 35.


Therefore, since the opponent has failed to show the nature of use in relation to the relevant services in Class 35, the Opposition Division considers that that the trade marks on which the opposition is based have not been genuinely used within the relevant territory and period in connection with the relevant services.


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) EUTMR and Rule 22(2) EUTMIR.



COSTS


According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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


Liliya YORDANOVA

Patricia LOPEZ FERNANDEZ DE CORRES

Gueorgui IVANOV



According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.

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