OPPOSITION No B 2 696 964

Adis Higiene, S.L., Avda. Europa, 19, bloque 3, pta. baja A, 28224 Pozuelo de Alarcón (Madrid), Spain (opponent), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative)

a g a i n s t

Farecla Products Limited, Broadmeads, Ware, Hertfordshire SG12 9HS, United Kingdom (applicant), represented by Marks & Clerk Llp, Alpha Tower, Suffolk Street Queensway, Birmingham B1 1TT, United Kingdom (professional representative).

On 03/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 696 964 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 064 207 for the word mark ‘G3 EXTRA PLUS’, namely against all the goods in Class 3. The opposition is based on Spanish trade mark registration No 15 064 207 for the figurative mark .The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(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, namely Spanish trade mark registration No 15 064 207.

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.

The date of filing of the contested application is 01/02/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 01/02/2011 to 31/01/2016 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Degreasers (other than manufacturing process); detergents (non-manufacturing process); soaps; shampoo; cleaning products; strippers solutions; fabric softeners; fresheners.

According to Rule 22(3) EUTMIR, 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 and services in respect of which it is registered and on which the opposition is based.

On 05/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/12/2016 to submit evidence of use of the earlier trade mark. On 01/12/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Data sheet for the product G3 surface disinfectant. The sign is displayed as follows: . The document states that the product is for disinfecting and cleaning any washable surface.

• Label used for the product G3 surface disinfectant. The sign is displayed as

• follows: .

• Design of the packaging (carton box) used for the product G3 surface disinfectant. The sign is displayed as follows: .

• Decision of registration from the Spanish Pesticides Registry, dated 27/12/2012, of the commercial name of the product G3 surface disinfectant. It states that the purpose of the product is to be a bactericide and a fungicide.

• Publication in Spanish, partially translated into English, related to the company Adis Higiene, S.L., from the magazine Alimarket, which includes the following picture: . It is dated 03/03/2014.

• Safety data sheet for the product G3 surface disinfectant No 250161, in Spanish.

• Seven invoices from Adis Higiene, S.L., issued to different clients in Spain, of which only four are dated during the relevant period (from 01/02/2011 to 31/01/2016 inclusive), amounting to approximately EUR 190 for different products identified as ‘G3’.

The requirements for proof of use, that the place, time, extent and nature of use must be indicated, are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). Therefore, the opponent is obliged to prove use with reference to each of these requirements.

The Opposition Division will focus the present assessment on the extent of use.

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.

Four invoices dated within the relevant period were submitted. However, they do not refer to the product that appears in the remaining documents (the data sheet, the safety data sheet, the label and packaging, the magazine publication or the decision of registration from the Spanish Pesticides Registry). In these documents, the product (a cleaning product with disinfectant properties) bearing the figurative trade mark ‘G3’ is identified with the code LI303. However, this code or reference does not appear in any of the invoices. Therefore, a link between the invoices and the remaining documents cannot be made, nor can it be ascertained whether the goods in the invoices were marketed under the earlier mark.

The four invoices showing that 22 units of different products identified as ‘G3’ were sold in Spain between 01/02/2011 and 31/01/2016 for a total of EUR 190.09 are deemed to be insufficient proof of use of the sign. Account has been taken of the fact that the goods were intended for daily use and available at a very affordable price.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the 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).

Taking all the above into account and recalling that the requirements for proof of use are cumulative, 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.

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

Frédérique SULPICE

Alexandra APOSTOLAKIS

Boyana NAYDENOVA

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.