OPPOSITION No B 2 685 058

Centrale Europeenne de Distribution - C10, 37/39 rue de Neuilly, 92110 Clichy, France (opponent), represented by Godin Associes A.A.R.P.I., 69, rue de Richelieu, 75002 Paris, France (professional representative)

a g a i n s t

Bodegas Cooperativas de Alicante Coop. V. Bocopa, Autovía Alicante-Madrid, km. 39, 03610 Petrer (Alicante) España (applicant), represented by Wolke Patentes y Marcas, Calle Alejandro Ferrant 9, 28045 Madrid, Spain, (professional representative).

On 23/10/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 685 058 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 14 579 122 ‘FUEGO LENTO’ (word mark), namely against all the goods in Class 33 and some of the services in Classes 35 and 39. The opposition is based on French trade mark registration No 1 390 588 ‘FUEGO’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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, French trade mark ‘FUEGO’, No 1 390 588.

The date of filing of the contested application is 29/12/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 29/12/2010 to 28/12/2015 inclusive.

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 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 33: wines; spirits (beverages); liqueurs.

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.

On 07/12/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 19/02/2017 to submit evidence of use of the earlier trade mark. On 20/02/2017, within the time limit, the opponent submitted evidence of use.

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:

• Copies of five catalogues ‘C10 Avantages’ and ‘C10’, dated between August 2011 and April 2015, showing several types of liqueurs being offered under the trade mark ‘FUEGO’.

• Copies of five advertisements for ‘Crème de Cassis FUEGO’ in ‘C10 magazine’, dated between 2011 and 2015.

• Affidavit from Mr. Jean-Charles François, chartered accountant, dated February 17, 2017, and translation of the attestation. The accountant states that four types of liqueurs under the trade mark ‘FUEGO’ were in the opponent’s stock for the period 2012/2015 and were sold to its customers.

• Copies of 23 invoices from Pages Vedrenne S.A.S. to the opponent from February 7, 2013 to December 8, 2015, for “FUEGO” liqueurs.

• Copies of 7 invoices from Briottet S.A.S And Briottet S.A.R.L. to the opponent, from July 31, 2013 to December 3, 2015, for “FUEGO” liqueurs.

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, and 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.

The documents filed, namely copies of a catalogue and advertisements from a magazine from a single distributor, the affidavit from an accountant and the invoices from two suppliers, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. In particular, there is no information about the amounts actually sold during the period. The affidavit from the accountant just mentions that goods carrying the mark were sold without specifying how many or where they were sold. The invoices come from suppliers of the opponent and there are no invoices to clients. The advertisements were published in the opponent’s own magazine and there is no information about the circulation of the opponent’s catalogues or magazines that could enable the Opposition Division to extract some indications about the extent of use.

Even if it could be argued that the invoices from suppliers furnish an indirect indication of extent, given that the goods bought by the opponent were probably sold afterwards to clients, it should be noted 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, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the earlier mark.

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 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 47(2) and (3) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).

COSTS

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

Sandra KASPERIŪNAITÉ

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Begoña URIARTE VALIENTE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.