OPPOSITION No B 2 476 318

The A.R.T. Company B&S, S.A., Polígono de Moreta, s/n, 26570 Quel (La Rioja), Spain (opponent), represented by P.E. Enterprise, S.L., Gran Via 81, planta 5°, Dpto. 9, 48011 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

ArtRabbit, c/o Jamieson Stone Windsor House, 40-41 Great Castle Street, London, W1W 8LU, United Kingdom (applicant), represented by Waterfront Solicitors LLP, 14 Weller Street, London SE1 1QU, United Kingdom (professional representative).

On 10/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 476 318 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 552 419, namely against some of the services in Class 35. The opposition is based on, European Union trade mark registration No 3 256 435. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	Contested sign

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, 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 European Union trade mark registration No 3 256 435.

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 17/12/2014. 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 17/12/2009 to 16/12/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 35: Import-export agencies, advertising, commercial business, commercial agencies, retailing via global computer networks, retailing of clothing, footwear, headgear, of leather and imitations of leather, goods made from these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, portfolios, bags, rucksacks and wallets.

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 09/10/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 21/12/2015 to submit evidence of use of the earlier trade mark. On 03/12/2015, within the time limit, the opponent submitted evidence of use, as follows:

• Annex 1: Press clips

• France: 1 press clip for the year 2010 and 3 for the year 2015.

• Germany: 11 press clips for the year 2010, 13 for the year 2011 and 5 for the year 2015.

• Italy: 4 press clips for the year 2010.

• Netherlands: 2 press clip for the year 2010.

• Spain: 4 press clips for the year 2010, 2 for the year 2011 and 13 for the year 2015.

• United Kingdom: 6 press clips for the year 2010.

Most of the press clips refer to the opponent’s line of shoes under the sign . Only few references are made to the sign .

• Annex 2: Invoices

• France: 10 invoices dated within the period 14/01/2010 and 22/03/2012.

• Belgium: 9 invoices dated within the period 15/02/2010 and 03/11/2011.

• Greece: 5 invoices dated within the period 24/02/2010 and 02/08/2011.

• Portugal: 8 invoices dated within the period 06/04/2010 and 09/05/2012.

• Germany: 3 invoices dated within the period 10/02/2010 and 11/07/2012.

• United Kingdom: 2 invoices dated within the period 18/03/10 and 09/05/2011.

• Netherlands: 1 invoice dated 21/07/2010.

• Italy: 3 invoices dated within the period 26/08/2010 and 19/06/2012.

• Sweden: 2 invoices dated 10/09/2010 and 06/09/2011.

• Ireland: 2 invoices dated 18/10/2010 and 29/02/2012.

• Denmark: 2 invoices dated 02/11/2010 and 16/06/2011.

• Austria: 2 invoices dated 14/07/2011 and 01/08/2012.

• Finland: 1 invoice dated 08/02/2012.

• Lithuania: 1 invoice dated 29/08/2012.

The invoices are in English and include the trade mark in the header, reference number, quantity of goods sold, etc. The goods itemised include a description and some of them are advertised with the same reference and description in the catalogues provided.

• Annex 3: Promotional material for the year 2010 including press clips, a list of fairs and different kind of advertising material, all referring to the opponent’s line of shoes with the sign .

• Annex 4: Brochures for the years 2010, 2011 and 2012, all referring to the opponent’s line of shoes with the above asterisk sign.

• Annex 5: Promotional material including promotional texts in several languages, catalogues and websites extracts, all dated between 2010 and 2014 and referring to the opponent’s line of shoes.

• Annex 6: Material dated between 2012 and 2015 making reference to a competition organized by the opponent to promote its brand and its line of shoes.

• Annex 7: 8 catalogues dated between 2010 and 2014 and making reference to the opponent’s line of shoes.

• Annex 8: advertising material including extracts from the facebook of the opponent’s company and different kind of campaigns dated between 2012 and 2014 and making reference to the opponent’s line of shoes. The opponent also makes reference to a printout of its website provided by the applicant under Annex C on 29/09/2015.

On 28/06/2016, after expiry of the time limit, the opponent submitted additional evidence, as follows:

• Promotional material dated within 2009 and 2014 for countries such as Spain, Croatia, Germany, etc and making reference to the opponent’s line of shoes either using the sign or only . Part of the content of this material overlaps with the evidence provided in the first round.

• An extract from the opponent website showing some models of shoes that can be purchased online and the terms of use.

Even though, according to Rule 22(2) EUTMIR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C 621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 76(2) EUTMR (18/07/2013, C 621/11 P, Fishbone, EU:C:2013:484, § 30).

The factors to be evaluated when exercising this discretion are, first, that the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, that the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C 621/11 P, Fishbone, EU:C:2013:484, § 33).

In this regard, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

The fact that the applicant disputed the initial evidence submitted by the opponent justifies the submission of additional evidence in reply to the objection (29/09/2011, T 415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C 621/11 P, Fishbone, EU:C:2013:484, § 36).

For the above reasons, and in exercise of its discretion pursuant to Article 76(2) EUTMR, the Office therefore decides to take into account the additional evidence submitted on 28/06/2016.

For reasons of procedural economy, at this point the Opposition Division will first examine the proof of use with a view to the opponent´s import-export agencies, advertising, commercial business, commercial agencies and will proceed with the examination of the proof of use in relation to the other services listed above, at a later stage, if necessary.

The catalogues, the promotional material and the invoices show that the place of use is the European Union. This can be inferred from the language of the documents (French, German, Italian, etc.) and the invoices with addresses in France, Portugal, Greece, Germany, Belgium, etc. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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 evidence of use shows that the mark has been used for footwear and sale of footwear which do not fall within any of the categories of import-export agencies, advertising, commercial business, commercial agencies. Therefore, the opponent has not shown use for import-export agencies, advertising, commercial business, commercial agencies for which the mark is registered and on which the opposition is, inter alia, based.

Furthermore, as mentioned by the applicant, the mere fact of advertising its own goods does not mean that the opponent’s is providing these services to third parties. Indeed, an advertising agency renders services for the benefit of others and a company that wants to advertise its goods or services will hire the services of a specialized company.

Therefore, 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 with respect to the import-export agencies, advertising, commercial business, commercial agencies.

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).

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR, as far as it is based on import-export agencies, advertising, commercial business, commercial agencies.

The examination of the opposition will proceed as if genuine use had been proven for retailing via global computer networks, retailing of clothing, footwear, headgear, of leather and imitations of leather, goods made from these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, portfolios, bags, rucksacks and wallets, which is the best light in which the opponent’s case can be considered.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The services

In view of the above assessment of proof of use, the remaining services on which the opposition is based are the following:

Class 35 : Retailing via global computer networks, retailing of clothing, footwear, headgear, of leather and imitations of leather, goods made from these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, portfolios, bags, rucksacks and wallets.

The contested services are the following:

Class 35: Advertising, marketing and promotional services; business assistance, management and administrative services; advisory services relating to the purchase of goods on behalf of business; advisory services relating to the purchase of goods on behalf of others; arranging business introductions relating to the buying and selling of products.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

All the contested services in Class 35 are aimed at supporting or helping other individuals or companies to conduct or improve their business through advertising, marketing, promotional activities, business assistance and advisory services.

In principle, the contested advertising, marketing and promotional services; arranging business introductions relating to the buying and selling of products consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc..

The contested business assistance, management and administrative services; advisory services relating to the purchase of goods on behalf of business; advisory services relating to the purchase of goods on behalf of others are usually rendered by specialist companies. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

Therefore, the contested services in Class 35 are dissimilar to any of the opponent’s services since they have different nature. Indeed, the latter rather consist in providing retailing services, namely the bringing together and the offering for sale of a wide variety of different goods, allowing consumers to conveniently satisfy different shopping needs at one stop. Furthermore, the services at issue have different purposes and providers. Finally, the target public also differs because the contested services are address to business undertakings while the opponent’s services are addressed to the end consumer.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent in relation to retailing via global computer networks, retailing of clothing, footwear, headgear, of leather and imitations of leather, goods made from these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, portfolios, bags, rucksacks and wallets.

COSTS

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

Denitza STOYANOVA-VALCHANOVA

Sandra IBAÑEZ

Martina GALLE

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.