OPPOSITION No B 2 365 495

Corporacion de Radio y Television Española, S.A., Avenida de Radio Televisión, 4, Edificio Prado del Rey, 28223 Pozuelo de Alarcón (Madrid), Spain (opponent), represented by Ernesto Real Millán, Ente Público Radiotelevisión Española trading as RTVE, Avda. Radiotelevisión, 4 - Edificio Prado del Rey, 28223 Pozuelo de Alarcón (Madrid), Spain (employee representative)

a g a i n s t

Mattel Inc., 333 Continental Boulevard, El Segundo, California 90245-5012, United States of America (applicant), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).

On 03/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 365 495 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 547 121 ‘UNO’, namely all goods in Class 9. The opposition is based on Spanish trade mark registration No 2 791 902 ‘LA UNO’. The opponent invoked Article 8(1)(b) CTMR.

PRELIMINARY REMARKS

Goods against which the opposition is directed

According to the notice of opposition, the opposition is directed against part of the goods for which registration is sought. However, the list that specifies the contested goods, covers all of the goods for which registration is sought.

Therefore, although the opponent has indicated in its arguments that the opposition is directed against only some of the contested goods, it is considered that it is directed against all of them, since all of them are specified.

Goods on which the opposition is based

According to the notice of opposition, the opposition is based on part of the goods and services for which the earlier mark is registered, namely those in Class 9, listed as follows:

Class 9: Photographic, cinematographic and teaching apparatus; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recoding and optical discs, compact discs (audio-video).

The notice of opposition does not contain any annex with a continuation of this list.

Although the opponent later referred to other classes in its arguments, the opposition is not considered to be based on any goods or services other than those herein listed.

PROOF OF USE

In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark registration No 2 791 902 ‘LA UNO’ (word mark).

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 10/03/2014. 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 10/03/2009 to 09/03/2014, inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based. According to the preliminary remark above, those goods are the following:

Class 9: Photographic, cinematographic and teaching apparatus; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recoding and optical discs, compact discs (audio-video).

According to Rule 22(3) CTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 05/02/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 10/04/2015 to submit evidence of use of the earlier trade mark. On 10/04/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Item 1: two DVDs of video recordings in Spanish of advertisements by the opponent promoting television series or sports events that are to be broadcast on the opponent’s television channel. The videos end with a voice-over indicating that the television series or sports event in question will be broadcast soon on ‘La Uno’, which is the name of the television channel. The number ‘1’ appears before and/or after some of the videos. Lastly, there are also some videos consisting of advertisements for software or apps for mobile phones that are related or connected to the television channel.

There is no indication of the dates on which the videos were broadcast, of the number of times they were transmitted or of the territories in which they could have been viewed. The only indications with regard to time are those provided in relation to a sport event, namely ‘Eurocopa 2016’.

• Item 2: eight pages of printouts of screenshots from the rtve.es website. These screenshots contain ‘La 1’ in various positions, and the number ‘1’ appears against a blue background. They are in Spanish and relate to television series or programmes, including sports events. ‘La 1’ also appears as part of the name of a television programme, namely ‘Las mañanas de La 1’. There is no reference to the earlier mark, ‘UNO’.

With regard to the time to which the screenshots refer, some of the pages do not contain any indication of the dates of printing. Only one of them contains a printing date, at the bottom of the page, namely 11/03/2015. One of the pages refers to ‘temporada 2012’ (i.e. ‘season 2012’) in relation to one of the television series. However, this is only a reference to the year in which that specific season of the television series was created or broadcast, but not a reference to the date of printing of the document. One of the screenshots shows the date ‘29 ago 2014’, which is the date on which an advertisement about a television series that will be broadcast on ‘La 1’ was posted. There is no reference to the earlier mark, ‘UNO’.

Item 2 also contains one page from the same website consisting of a press article. It is dated 13/03/2015. This document contains no reference to ‘La 1’, number ‘1’, or ‘La uno’.

• Item 3: printouts from specialised online television magazines.

• Printout from the website Ecoteuve.es. The date of printing the document is 31/03/2015, and the date on which the report was published online appears to be ‘30 marzo 2015’ (30 March 2015). The document indicates that ‘La 1’ is the channel with the third highest share (percentage). The number ‘1’ against a blue background appears next to ‘La 1’ and also in the upper part of the page. There is no reference to the earlier mark, ‘UNO’.

• Printout from ‘vertele!’. The date of printing the document is 31/03/2015. However, it seems that the information contained in this printout was updated on 30/03/2015. The document shows ‘La 1’, together with the number ‘1’, against a blue background, and indicates that ‘La 1’ is the third most viewed television channel. There is no reference to the earlier mark, ‘UNO’.

• Printout from ‘formulatv’. This document shows the results of a search carried out for ‘la 1’. Some of the results are articles related to ‘La 1’ and television shows of that channel. The results related to ‘La 1’ are dated 30/03/2015 and 29/03/2015. This document also shows, on the right-hand side, a reference to the television programme ‘La mañana de la 1’, together with the number ‘1’ against a blue background, and a number of videos, the titles of some of which refer to ‘La 1’. The video titles that refer to ‘La 1’ had received between 9 396 and 18 620 reproductions at the time of printing this document. At the end of the document, the year of copyright, namely 2014-2015, is shown. There is no reference to the earlier mark, ‘UNO’.

• Printout from ‘formulatv’, printed on 31/03/2015. This document shows information about the ‘La 1’ television channel, and shows a list of news items regarding different television series and programmes of that channel. These are dated between 27/03/2015 and 30/03/2015. The printout has references to ‘La 1’ in the text (e.g. ‘programación La1’, ‘La mañana de La 1’ and ‘Vídeos La 1’) and the number ‘1’, against a blue background, is also shown several times on the right-hand side of the page. There is no reference to the earlier mark, ‘UNO’.

• Item 4: two press releases and promotional material (on DVD) for mobile phone apps.

• The first page is a printout from www.rtve.es, dated 31/03/2015. It relates to a mobile phone app that allows users to view, inter alia, the ‘La 1’ television channel. The number ‘1’ appears on the right-hand side of the page, against a blue background. There is no reference to the earlier mark, ‘UNO’.

• The second page shows a screenshot from www.rtve.es. It relates to another app. ‘La 1’ appears on the upper part of the page, and the article shown is dated 22/11/2013. There is no reference to the earlier mark, ‘UNO’.

• Item 5: DVD covers and a certificate showing income figures.

• The printed covers submitted correspond to various DVDs of series that, according to the abovementioned documents submitted (including the videos), have been broadcasted on ‘La 1’. However, none of these DVD covers contains any reference to the earlier mark, or to the television channel’s names, namely ‘La 1’ or ‘1’, to which references have been made in the previous documents. There is no reference to the earlier mark, ‘UNO’. There is no indication of the number, if any, of DVDs sold, the places in which any sales took place or the dates on which they were available for sale.

• Certificate from the head of marketing at RTVE showing the income obtained from the sales of different products. The goods to which the table of figures refers are not specified (e.g. it is not clear if they are DVDs, books, merchandising, clothing, etc.), but, instead, they are classified by the name of the television programme or series to which they relate. Some of the product names include ‘La 1’. The income figures are specified by year from 2012 to 2014, and a figure for the total income is also given. There is no reference to the earlier mark, ‘UNO’.

• Item 6: a document related to computer games.

• The first page shows a screenshot from rtve.es about the game ‘Aguila Roja’. This document is undated. It contains no references to the earlier mark, or to ‘La 1’ or ‘1’.

• The second page shows a screenshot from rtve.es about the game ‘Los misterios de laura’. This document is undated. There is a small number ‘1’ against a blue background on the upper right-hand side. There is no reference to the earlier mark, ‘UNO’.

• The third and fourth pages were printed on 30/03/2015. They refer to a new app (namely a game) and do not contain any references to the earlier mark, or to ‘La 1’ or ‘1’.

With regard to the analysis of the abovementioned evidence, the following must be noted:

In the context of Rule 22(3) CTMIR, 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) CTMR, and of its use for the goods and services for which it is registered.

The proof of use was meant to demonstrate use of the mark in question in relation to photographic, cinematographic and teaching apparatus; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recoding and optical discs, compact discs (audio-video).

However, there is no evidence at all regarding the use of the mark in relation to these goods. There are no images of packaging, brochures, catalogues, advertising materials or any other documents showing use of the mark in question in relation to the goods.

Although some of the goods to which the evidence refers (i.e. Item 5) are DVDs of different television series and television programmes, the mark in question does not appear in any of them. In addition, there is no evidence about the sales of these goods in particular, despite the income figures shown (i.e. the certificate in Item 5), which do not give detailed information about the products they refer to (e.g. DVDs, books, etc.). Furthermore, there are no invoices for the sales of any of the goods in relation to which the proof of use was requested.

Therefore, there is no evidence of use for the mark in relation to the goods in question.

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 (judgment of 11/03/2003, C‑40/01, ‘Ansul’; and judgment of 12/03/2003, T‑174/01, ‘Silk Cocoon’).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) CTMR and Rule 22(2) CTMIR.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 CTMR and therefore did not incur representation costs.

The Opposition Division

Vita VORONECKAITE

Alexandra APOSTOLAKIS

Gailė SAKALAITĖ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.