OPPOSITION No B 2 412 479
Time Inc., 225 Liberty Street, 10281 New York, United States of America (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)
a g a i n s t
TI Editions di Frasca Cristina, Via Savona 123, 20144, Milano, Italy (applicant), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative).
On 24/07/2018, the Opposition Division takes the following
1. Opposition No B 2 412 479 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 937 108 for the figurative mark , namely against all the goods and services in Classes 16, 35 and 41. The opposition is based on European Union trade mark registration No 4 070 306 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, 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.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.
The contested application was published on 27/06/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 27/06/2009 to 26/06/2014 inclusive.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:
Class 9: Audio tapes and video tapes, films and motion pictures, all featuring content associated with TIME INC publications intended for general circulation.
Class 16: Printed matter; publications, books, periodicals, magazines, newsletters, directories, pamphlets, catalogues, bulletins, guides, manuscripts, photographs, calendars, prints and posters.
Class 42: Interactive online computer services for accessing information via a global computer network, featuring content associated with TIME INC publications intended for general circulation.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), 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.
On 11/05/2017, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 16/07/2017 to submit evidence of use of the earlier trade mark. After an extension of the time limit requested by the opponent, the final deadline was 16/09/2017. On 14/09/2017 within the time limit, the opponent submitted evidence of use. The opponent had already submitted evidence of use on 13/02/2017 that have to be taken into account.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
Annex 1: printout from Wikipedia dated 13/02/2017 on the magazine ‘Life’. This extract indicates the evolution of the magazine. From 1883 to 1936, the magazine was a humoristic and of general interest magazine, published every week. From 1936 to 1972, the magazine was still published weekly and increased its focus on news and photography. In March 1967, ‘Life’ won the National Magazine award, chosen by the Columbia University Graduate school of Journalism, but kept decreasing its circulation. From 1972 to 1978, Time Inc. published ten Life Special reports. From 1978 to 2000, ‘Life’ was published as a monthly magazine. The excerpt indicates that the magazine was suffering financially. In March 2000, Time Inc. announced it would cease regular publication of ‘Life’ with the May issue. Finally, from 2004-2007, Life was revived for a second time. It resumed weekly publications as a free supplement. As regards the website, it is also mentioned that the ‘Life’ website was closed in 2012 and is now a redirect to a small photo channel on Time.com.
Annex 2: a 20 pages document consisting of depictions of various front pages of the LIFE magazine in English, extracted from the website coverbrowser.com. The document is dated 13/02/2017 (date of the screenshot) but various dates are depicted on the front pages (most of them being from 1937-1938).
Annex 3: printouts from the website www.amazon.de and depictions of various books as sold within the European Union. The excerpt from www.amazon.de shows seven magazines, entitled ‘the Great LIFE Photographers’ (dated 21/10/2016), ‘Life: The Classic Collection’ (dated 21/10/2008), ‘Life the First Fifty Year, 1936-1986: The First Fifty Years, 1936-86’ (dated October 1986), ‘Life Bob Dylan: Forever Young (Life (Life Books))’, (dated 24/07/2012), ‘LIFE The Day Kennedy Died: Fifty Years Later: LIFE Remembers the Man and the Moment’ (dated 15 October 2013), ‘Time life Poster Cover To the moon and back Special Edition (undated), ‘LIFE One Nation: America Remembers September 11, 2001, 10 Years Later’ (dated 1/10/2011). Annex 3 also contains various front pages of the LIFE magazine. The dates which are depicted encompass a period of two years (2012-2014). The prices are in dollars (US and Canadian).
Opponent’s observations: in its observations, the opponent points out that the opponent’s mark was used for a well-known magazine that was published in many different formats. In particular, Time Inc. distributes since 2002 under the trade mark LIFE, books and so called bookazines. The opponent gave turnovers from 2009-2012, in European countries. It provides also figures of visitors from the EU on the Life section of Time Inc.’s website.
Annex 4: affidavit of Ms Jennifer Chung, Assistant General Counsel & Assistant Secretary of Time Inc. In this affidavit, Ms. Chung describes the evolution of the magazine (from weekly to monthly etc., corroborating Annex 1). The affidavit also indicates that since 2002 until today the trade mark is attached to several publications (six front pages are depicted). Finally, the affidavit contains various tables indicating the publications of magazines, the net units and the turnovers in the European Union as well as acceptance and traffic of http://time.com./section/life/.
This affidavit contains also the following enclosure 1
About 20 front pages. The prices are in dollars (US and Canadian). On some front pages, dates are legible (mainly 2013 and 2014).
Annex 5: a 67 pages document consisting of website excerpts of www.amazon.de, www.amazon.co.uk, and www.amazon.it. The document is dated 27/06/2017 and shows that many magazines under the trade mark “LIFE” are offered for sale and have been published from 2008 to 2015.
Annex 6: Website excerpts of www.time.com, LIFE section. It consists of a three pages dated 09/08/2017.
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.
These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements.
Extent of use
In assessing the extent of the use 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).
Moreover, the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 36-38, and the case-law cited therein).
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.
In this case, the documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use, as explained in detail below.
As far as the affidavit is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all.
The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence. In the present case, the evidence is mainly supported by means of proof that should be interpreted with caution. For instance, it is settled case-law that an extract from Wikipedia lacks certainty as a source of information, since it is drawn from a collective encyclopaedia established on the internet, the content of which may be amended at any time and, in certain cases, by any visitor, even anonymously (09/04/2014, T‑501/12, Octasa, EU:T:2014:194, § 48). The opponent also provided many excerpts from the website of ‘amazon’. It has to be kept in mind that the mere fact that the opponent’s goods are offered for sale on various websites of ‘amazon’ which, as it is well-known, lets almost anyone sell almost anything using its platform, does not give any indication about the quantity of sales made (3/12/2015, R 3223/2014-2, IPAZZPORT (fig.) / IPAZZPORT §36), and to that extent, these extracts are not able to corroborate the figures provided in the affidavit.
Indeed, the documents submitted do not contain any information about the commercial volume achieved under the earlier mark. Furthermore, as none of the front pages are set in euros but in dollars (US or Canadian), it is not possible to ascertain that the mark was indeed used in the European Union. Furthermore, in the document extracted from Wikipedia, it is mentioned that the magazine Life was not published after 2007, except in the form of event supplements. As far as the website is concerned, it is also mentioned that the ‘Life’ website was closed in 2012 and is now only a redirect to a small photo channel on Time.com. Moreover, the opponent only provided a screenshot from this website dated 09/08/2017 which is well outside the relevant period. Therefore, the Opposition Division also has doubts that there has been genuine use of the mark, in any case, after 2012.
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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).
Since the conditions for proof of use are cumulative and the extent of use of the earlier mark has not been proven, the place, period and nature of use need not be analysed.
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.
Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017). Consequently, the opposition is rejected in its entirety.
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Julie, Marie-Charlotte HAMEL
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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.