OPPOSITION No B 2 460 478
Fernando Bagulho Guerra, Av. Guerra Junqueiro, 5 - 3º Esq., 1000-166 Lisboa, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados - Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisboa, Portugal (professional representative)
a g a i n s t
Epilady 2000 L.L.C., P.O. Box 227, Industrial Zone, Hazor Haglilit 10351, Israel (applicant), represented by Elzaburu, S.L.P., Miguel Angel 21, 28010 Madrid, Spain (employee representative).
On 08/03/2017, the Opposition Division takes the following
1. Opposition No B 2 460 478 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods in Classes 8 and 9 of European Union trade mark application No 13 265 806 . The opposition is based on Portuguese trade mark registration No 407 401 . 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), if the applicant so requests, the opponent shall 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 shall be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.
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.
The contested application was published on 21/10/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Portugal from 21/10/2009 to 20/10/2014 inclusive.
Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:
Class 44: Medical services and dermatology services.
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 01/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 06/06/2016 to submit evidence of use of the earlier trade mark. On 06/06/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Invoices: 11 invoices addressed to clients in Portugal. The invoiced amount ranges from EUR 30 to 1207. The opponent’s company name is on the invoices, the opponent’s trade mark is not. The invoices are for ‘services rendered’, ‘consultation’, ‘3’, ‘20’, ‘EP4’ ‘dermatological consultation’ (five invoices), ‘skin tumour extraction’ (one invoice’).
Seven invoices addressed to the opponent’s company for website maintenance fees. Invoices are issued by a company InAccount. The opponent’s mark nor services are mentioned.
Three invoices addressed to the opponent’s company for reprographic services. The opponent’s mark nor services are mentioned.
Eleven invoices addressed to the opponent’s company for services titled as ‘listas’. Allegedly these are advertisement services. The opponent’s mark nor services are mentioned.
One undated booklet, in Portuguese, about the opponent’s company and services offered under the mark .
Copies of articles of stationery (business cards, envelopes, writing paper) bearing the opponent’s mark. There is no information about the services.
Two undated screenshots of the website www.epilaser.pt, in Portuguese. The opposing mark, as registered, is not present.
Extract of the Portuguese commercial registry regarding the opponent’s company.
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.
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.
Use of the mark need not be quantitatively significant for it to be deemed genuine. Out of the eleven invoices issued by the opponent, only six concerned services that can be considered medical or dermatological services. However, the invoiced amounts, EUR 30-90, are extremely small. The opponent’s mark is not present, as registered, on the invoices. The mere use of the business/company name is not sufficient.
The few other invoices presented are in fact invoices from a provider of website maintenance or advertising company to the opponent for their services. This, however, does not prove that the opponent later actually provided any medical or dermatological services. There are no examples of the advertising nor the use and visits to the opponent’s website. The stationary articles are for in-house use, and can not be considered as a sufficient to show the use of the mark for the services registered.
There is no independent evidence given about the advertising, as mentioned, of the earlier mark in connection with all the services it is registered for. There are no press articles provided. There is no evidence placing the earlier mark in a relevant market situation in relation to the services for which the mark is registered. There is no evidence or photos about the presence of the mark in trade shows or third party retail or wholesale establishments.
The printout from the opponent’s own website bears no dates. The opponent’s mark, as registered, is not present, not are there any statistics given about the visitor numbers and visitor origins to this website.
Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier mark.
In the context of Rule 22(3) EUTMIR, 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) EUTMR, and of its use for the goods and services for which it is registered.
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 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.
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) EUTMR and Rule 22(2) EUTMIR.
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
Francesca CANGERI SERRANO
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.