CANCELLATION No 14 800 C (INVALIDITY)
Club Deportivo Numancia de Soria, S.A.D., Avd. Mariano Vicen, nº 16, 42003 Soria, Spain (applicant), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)
a g a i n s t
Moet Hennessy España S.A., Sociedad Unipersonal, Calle Consell de Cent, 334-336, 3º, 08009, Barcelona, Spain (EUTM proprietor), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative).
On 28/02/2019, the Cancellation Division takes the following
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 12 264 404 NUMANTHIA (word mark), namely against all the goods and services in Classes 16, 18, 24, 25, 28 and 41. The application is based on Spanish trade mark registration No 1 984 450(6), Spanish trade mark registration No 1 984 449(2), Spanish trade mark registration No 1 984 447(6) and Spanish trade mark registration No 1 984 448(4), all for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that there is a likelihood of confusion between the contested EUTM and the earlier registered trade marks. The contested goods and services are identical or similar to the applicant’s goods and services. The marks are visually highly similar, aurally almost identical and conceptually they evoke the same concept. The earlier trade marks are inherently distinctive and, in addition, have acquired a high level of distinctiveness as a result of their intensive use on the market. The applicant also filed evidence in support of its claim.
The EUTM proprietor requested that the applicant submit proof of use of the earlier trade mark registrations, on which the application is based.
The applicant submitted evidence as proof of use. The applicant reaffirms that the marks are visually highly similar, aurally almost identical and conceptually they evoke the same concept. It refers to its previous observations in relation to the similarity/identity between the relevant goods and services.
In its reply, the EUTM proprietor refutes the arguments of the applicant and requests that the declaration of invalidity should be rejected. It disputes the evidence filed and argues that the applicant failed to demonstrate genuine use of the earlier trade marks. It compares the marks and argues that the signs differ sufficiently and that the EUTM registration cannot be considered visually, phonetically or conceptually similar to the trade mark of the applicant. The EUTM proprietor also provides detailed arguments as to why the signs are sufficiently different (which will be listed and analyzed by the Cancellation Division further in the decision, only if necessary.
In reply, the applicant disagrees with the arguments of the EUTM proprietor. It analyses the evidence and argues that the documents provided clearly show the genuine and intensive use of the earlier trade marks.
The EUTM proprietor states that part of the documentation submitted as evidence falls outside the relevant time periods, including various articles submitted with their brief of 12/04/2017 and therefore they should not be taken into account. It also states that the applicant in its observations simply reproduced the documents that were already submitted before. Contrary to the applicant's assertion, it is clear that the documents filed do not offer any information whatsoever as to the commercial volume, duration or frequency of use of the marks. Therefore, in view of the absence of use of the other party’s marks, the application for a declaration of invalidity should be rejected in full. Finally, it repeats its observations with regards to the likelihood of confusion between the marks in conflict.
PROOF OF USE
According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.
The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.
The EUTM proprietor requested the applicant to submit proof of use of the trade marks on which the application is based.
The request has been filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the date of the application for a declaration of invalidity.
The application for a declaration of invalidity was filed on 12/04/2017. The applicant was, therefore, required to prove that the trade marks on which the application is based were genuinely used in Spain from 12/04/2012 to 11/04/2017 inclusive. The date of filing of the contested trade mark is 29/10/2013. Since the earlier marks were registered more than five years prior to the date of filing of the contested mark, use of the earlier marks had to be shown also for the period from 29/10/2008 to 28/10/2013 inclusive.
Furthermore, the evidence must show use of the trade marks for the goods and services on which the application is based, namely:
Spanish trade mark registration No 1 984 450(6)
Class 41: education, training, Instruction, recreation services, sport promotion and editing.
Spanish trade mark registration No 1 984 449(2)
Class 25: clothes, footwear (except orthopaedic), headwear.
Spanish trade mark registration No 1 984 448(4)
Class 24: textiles and textile goods, not included in other classes; bed covers; table covers.
Spanish trade mark registration No 1 984 447(6)
Class 16: paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paints brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks.
According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.
On 05/06/2017, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 10/09/2017 to submit evidence of use of the earlier trade marks.
On 12/04/2017, the opponent submitted evidence to support its claim of enhanced distinctiveness which will also be taken into account in the assessment of the proof of use. The evidence consists of the following documents:
Document 1: A print-screen from Google search for the word ‘Numancia’, showing references, most of them relating to C.D. Numancia.
Document 2: Press articles from sport publications such as Marca and As, covering the time period from 2008 until 2013 and referring to C.D. NUMANCIA. The articles all mention different football matches in which club Numancia was participating.
Document 3: Press articles including comments about Numancia in English, French and Italian newspapers, such as The Daily Mirror, L’Equipe and La Gazzetta dello Sport.
Document 4: SITADEX of the Spanish Trademarks No. 1 984 447, No. 1 984 448, No. 1 984 449 and No. 1 984 450 with their respective translations into the language of the proceedings.
Following the applicant’s request for proof of use of the trade marks on which the application is based, on 07/09/2017 the opponent submitted also, the following evidence:
Document 1a: Front page of a Sticker album of ‘C. D. Numancia de Soria’ and a poster showing the football players of Club Deportivo Numancia de Soriaq, Temporada 2016-17’.
Document 2a: A copy of ‘Numamcia de Soria’ membership cards (season 2017/18).
Document 3a: A picture of two different plastic bags on which the applicant’s logo or its earlier marks appear.
Document 4a: First page of four different books (‘El Encuentro de Fútbol más importante en la Historia Del Club Deportivo Numancia’, ‘Una Copa para la Historia, La Hazaña del Numancia’, ‘C.D. Numancia 10 Años de Gloria’, Club Deportivo Numancia, Qué Historia’).
Document 5a: Examples of blank papers, envelopes, pencils and folders on which the applicant’s earlier marks appear.
Document 6a: Articles from newspapers Heraldo de Soria and Diario de Soria published on 02/08/2016, 13/10/2010, 16/08/2011, 04/08/2012, 09/09/2012 and 12/07/2016. The articles all refer to the football club Numancia de Soria but provide no other information on the extent of use of the earlier marks.
Document 7a: Front pages of magazines of the football team ‘Numancia’ (December 2010 and June 2012) and magazines CDN (covering the period 2013/14).
Document 8a: Examples of clothing items such as sports T-shirts, caps, bottles, jackets, scarfs, bags, football socks, football jerseys, cups, all bearing the applicant’s trade marks besides the mark ‘errea’.
Document 9a: pictures of DVDs, referring to the club Numancia.
The indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the applicant’s trade mark for the relevant goods and services. These requirements for proof of use are cumulative (05/10/2010, T-92/09, Strategi, EU:T:2010:424, § 43). This means that the applicant is obliged, not only to indicate, but also to prove each of these requirements.
Concerning the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. Furthermore, the Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C 40/01, Minimax, EU:C:2003:145, § 39).
The assessment of genuine use entails therefore 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.
According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.
The Cancellation Division cannot share the applicant’s view that it is indisputable that the earlier marks were used in Spain for a large range of goods and services for the following reasons:
Most of the documents are undated (i.e. Document 1a, 3a, 4a, 5a, 9a) and simply contain reference to the Spanish football club Numancia, without mentioning any of the goods and services covered by the earlier marks. As the proprietor rightly points out, the document that shows articles of clothing bearing the earlier signs together with the manufacturer’s mark (Document 8a), originates from the applicant itself and contains no information about the extent of use, for example the quantity of goods sold, the prices of the goods, the possibility to purchase those items and the way in which they were marketed, if they were.
The evidence that is dated and covers the first relevant period (from 12/04/2012 to 11/04/2017 inclusive), consists of some press articles, copies of membership cards and sticker album and front pages of the football club Numancia. The articles from the newspapers (Documents 2 and 3 and Document 6a) and examples of front pages (Document 7a) taken from Spanish local newspapers Heraldo de Soria and Diario de Soria and other online newspapers such as Marca, do not help to determine the extent of the use. They do not refer to any actual sales of goods or offering of services registered by the earlier marks but simply mention the football club Numancia in relation to their football matches and their success as a football team. However, this cannot prove that the applicant’s earlier mark has been used for the services in Class 41. The fact that ‘Numancia’ is recognised as a football team could eventually mean that the trade mark has been used for football entertainment and events (services that are not registered by any of the earlier marks), but there is no information or at least, no solid, clear and conclusive indications, that the mark is used in conjunction with providing services education, training, Instruction, recreation services, sport promotion and editing.
There are no other relevant documents on the file that could give further details on the extent of the use or nature of use of the earlier marks for any of the goods and services in Classes 16, 24, 25 and 41 during the first time frame. In the absence of any other documents, the Cancellation Division concludes that there is not sufficient evidence of the extent of use of the goods and services under the earlier trade marks within the territory of Spain from 12/04/2012 to 11/04/2017 inclusive.
As regards the period from 29/10/2008 to 28/10/2013, the applicant did not submit any evidence at all. The assessment of genuine use entails a degree of interdependence between the factors taken into account.
When assessing whether use of the trade mark is genuine, regard must be taken of all the facts and circumstances relevant to establishing whether 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 market share for the goods or services protected by the mark (11/03/2003, C40/01, Minimax, EU:C:2003:145, § 38).
Taking into consideration the above and recalling that the requirements for proof of use are cumulative, the Cancellation Division concludes that the evidence furnished by the applicant is insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during the relevant periods concerned.
Therefore, the application must be rejected pursuant to Article 64(2) and (3) EUTMR EUTMR.
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.