OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 417 080
IGT Germany Gaming GmbH, Ravensberger Straße 41, 32312 Lübbecke, Germany (opponent), represented by Gtech Austria GmbH, Armin Herlitz, Seering 13-14, 8141 Unterpremstätten, Austria (employee representative)
a g a i n s t
Zitro IP S.àr.l, 16, avenue Pasteur, 2310 Luxembourg, Luxembourg (applicant), represented by Canela Patentes y Marcas, S.L., Girona, 148 1-2, 08037 Barcelona, Spain (professional representative).
On 19/02/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods and services of
Community trade mark application No
PROOF OF USE
According to 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 he cites as justification for his 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. If the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
Genuine use of a trade mark exists where the mark 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 requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C‑40/01, ‘Ansul’, EU:C:2003:145, § 35‑37 and 43).
When assessing whether use of the trade mark is genuine, regard must be had to 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, C‑40/01, ‘Ansul’, EU:C:2003:145, § 38).
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Community trade mark registration No 2 960 284 of the word mark ‘Big Blue Bucks’. 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 23/07/2014. 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 23/07/2009 to 22/07/2014 inclusive. 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: Electrotechnical and electronic apparatus, equipment, instruments and machines (included in class 9); automatic machines providing services requiring payment; automatic machines, operated by coins, banknotes, tokens of value, magnetic cards, and/or apparatus operated by inserting microchips and/or tokens; mechanisms for coin-operated apparatus, including coin-operated switching apparatus, including the aforesaid goods in connection with coin and token-operated entertainment machines; accounting apparatus for automatic coin-operated machines, automatic data recording machines, data printers; printed electronic circuits; change machines, token and counter-operated machines and game card distribution machines, automatic; machine-readable data carriers containing programs for the aforesaid machines, equipment and apparatus.
Class 28: Electric and electronic machines and apparatus for games, amusement or entertainment purposes or automatic sports machines; coin-operated gaming machines and entertainment machines; automatic gaming machines; the aforesaid automatic machines, machines and apparatus operating in networks; automatic slot machines and automatic sports machines; Automatic coin-operated compact sports machines, sports equipment for confined spaces, in particular electronic darts, table football, pool-billiards, snooker, shooting ranges; hand-held units for playing electronic games; memory cartridges or memory cards for electronic pocket games; video games apparatus and instruments, not adapted for use with television receivers.
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 19/05/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 24/07/2015 to submit evidence of use of the earlier trade mark. On 02/07/2015, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Exhibit 1: Leaflet showing the following relevant indications: .
Exhibits 2-7 and 9-10: Invoices issued to different clients in Greece, Germany, the Netherlands and Portugal dated between 07/01/2010 and 24/06/2014 showing sales of inter alia ‘Big Blue Bucks Classic’ units under the description ‘GCK’ for prices ranging from EUR 1.350 to EUR 3.000 per unit.
Exhibit 8: Invoice issued to BBVA Renting in Spain dated 14/04/2010 showing sales of two units of Big Blue Bucks Classic under the description ‘EGM’ for EUR‑21.120.
Exhibit 11: Print out from a Wikipedia article about slot machines dated 30/06/2015 mentioning that the term EGM is used as a shorthand for ‘Electronic Gaming Machine’.
Assessment of genuine use – factors
As the invoices do not contain clear indications as to the nature of the sold goods, the opponent in its observations explains that Exhibit 11 shows that ‘EGM’ is an abbreviation for ‘Electronic Gaming Machine’ and that the less widely known abbreviation ‘GCK’ refers to so-called ‘Game Conversion Kits’. Thus, according to the opponent, the invoice of Exhibit 8 referring to ‘EGM’ would show that ‘BIG BLUE BUCKS’ was sold as a complete slot machine (i.e. hard- and software), whereas the other invoices referring to ‘GCK’ would demonstrate that Conversion Kits - software packages which can be used to exchange the game on an existing slot machine - with the game ‘BIG BLUE BUCKS’ were sold.
However, the earlier mark is not registered for software packages. It is registered for machine-readable data carriers containing programs for the aforesaid machines, equipment and apparatus in Class 9, but these data carriers are intended for use with the machines, equipment and apparatus listed in Class 9 which are not slot machines but machines with other purposes than gaming. Self-contained gaming machines, such as slot machine, solely pertain to Class 28.
At the time of filing of the earlier mark, that is, under the eighth edition of the Nice Classification, only amusement and game apparatus adapted for use with an external display screen or monitor were classified in Class 9. Amusement and game apparatus other than those adapted for use with an external screen monitor (i.e. the game and amusement apparatus that had a self-contained screen or monitor), such as the slot machines referred to by the opponent, belonged to Class 28. This is because the goods are, basically, for amusement and playing games (see International Trademark Classification, a guide to the Nice Agreement, Jessie N. Roberts, fourth edition Oxford University Press, p. 176). Therefore, the invoices showing sales of ‘GCK’s, i.e. the alleged ‘game conversion kits’ are irrelevant, as they show use of goods for which the earlier mark is not registered.
It follows from this that the only invoice that shows sales of goods for which the earlier mark is registered, is the invoice of Exhibit 8. In light of the Wikipedia article the invoiced ‘EGM’s are likely to be perceived by the relevant consumers as referring to electronic gaming machines which are covered by the specification electric and electronic machines and apparatus for games, amusement or entertainment purposes; coin-operated gaming machines and entertainment machines; automatic gaming machines; automatic slot machines of the earlier mark in Class 28.
As regards the place, time, extent and nature of use, it must be observed that the invoice and leaflet are dated 14/04/2010 and 2009 and contain the indication ‘BIG BLUE BUCKS’ in standard letters and as respectively and that the invoice shows the extent of sales in the territory of Spain. The question is, however, if the single sale of two gaming machines to one company in Madrid is use which can be considered sufficient for the mark to maintain or create market share in that market for the goods covered by the mark and whether it contributes to a commercially relevant presence of the goods in that market.
In terms of place of use, the use is limited to one particular location in Spain, as the invoice is addressed to BBVA Renting in Madrid. As it is not clear if this rental company rents gaming machines or cars or houses etc., or if its clients, if any, are locals or come from far, it cannot be established if this particular sale had a geographical significance or importance. Therefore, in the absence of any such information, the company to which the gaming machines were sold must be assumed to be a normal company attracting local and perhaps occasional visiting customers. Further, considering that the rest of the evidence does not provide any concrete information as to the place of use, this invoice to one single location is deemed to merely prove a reduced territorial use of the mark at issue.
Having said that, in accordance with settled case-law, the territorial scope of the use is not a separate condition for genuine use but only one of several factors to be taken into account in the determination of whether use is genuine or not (11/05/2006, C‑416/04, ‘Vitafruit’, EU:C:2006:310, § 76). Consequently, the assessment of the genuine use will depend on the fulfilment of the other criteria laid down by Rule 22(2) CTMIR, in particular the extent of the use.
Indeed, in order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account all the relevant factors in the particular case. 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 regard, the one-time sale of merely two electronic gaming machines over a period of five years to one company in Madrid with a limited geographical use of the mark, is quantitatively insignificant, taking into account that slot machines are used by millions of consumers on a daily basis in bars, restaurants etc. and, therefore, cannot be considered to belong to a very specific market segment that justifies the sale of only two machines on one single occasion to one particular client over a period of five years in a territory, as big as the European Union, with many potential clients for the goods concerned.
Although it is apparent from the case-law that the proprietor of an earlier mark cannot be required to furnish evidence of each transaction carried out under that mark in the relevant five-year period referred to in Article 42(2) CTMR, it has also been established that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, §‑22).
Therefore, given the circumstances of the case, a single invoice showing sales of gaming machines is insufficient to give a clear indication of the commercial volume, the duration and the frequency of use of the earlier mark in the European Union and to discount the possibility of token use. Consequently, it must be held that the evidence furnished by the CTM proprietor is insufficient to prove that the earlier Community 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) CTMR and Rule 22(2) CTMIR.
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.
The Opposition Division
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.
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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.