OPPOSITION No B 2 776 360

Joy Shop Aktiebolag, Falkenbergsgatan 3, 412 85 Gothenburg, Sweden (opponent), represented by Kanter Advokatbyrå KB, Box 1435, 111 84 Stockholm, Sweden (professional representative)

a g a i n s t

Joy Direct, S.L, C/ Joan d'Austria nº 70, 08005 Barcelona, Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).

On 27/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 776 360 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 440 721 for the figurative mark . The opposition is based on Swedish trade mark registration No 325 345 for the word mark ‘JOY’, Swedish trade mark registration No 364 706 for the figurative mark and the company name ‘Joy Shop Aktiebolag’. The opponent invoked Articles 8(1)(a) and (b), Article 8(4) EUTMR.

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 Swedish trade mark registration No 325 345 for the word mark ‘JOY’ and the Swedish trade mark No 364 706 for the figurative mark on which the opposition is based.

The date of filing of the contested application is 13/05/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Sweden from 13/05/2011 to 12/05/2016 inclusive.

The request was submitted in due time and is admissible, given that the earlier trade mark is registered more than five years prior to the relevant date mentioned above.

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

Class 25: Clothing articles except articles of headwear and footwear as well as sports clothing for golf in relation to the trade mark No 325 345

Class 25: Clothing in relation to the trade mark No 364 706.

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 28/06/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 03/09/2017 to submit evidence of use of the earlier trade mark. At request of the opponent, this time limit was extended until 03/11/2017. On 03/11/2017, 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:

• Annual accounts for the financial years 01/09/2011 – 31/08/2012, 01/09/2012 – 31/08/2013, 01/09/2013 – 31/12/2014 and 01/01/2015 – 31/12/2015. These documents are in Swedish. The only part translated into English relates to the Opponent’s business and reads ‘Joy designs and develops products which are sold under own trade marks’. However, there is no reference to the territories where these products have been designed and/or developed. The opponent in its observations explains that an indication of the annual turnovers is shown in these documents, specifying the pages where this information can be found. However, on the pages indicated by the opponent, there is no link with the products, the marks and the territories to which these annual turnovers refer (DOC 1).

• Affidavit of the chief financial officer (CFO) of the opponent (DOC 2).

• Copy of the certificate of registration of the Opponent regarding ‘Joy Shop AB’ registered with the Swedish Companies Registration Office; (DOC. 3)

• Printouts from the opponent’s Facebook official website, where the trade mark ‘Joy’ is shown, but without any reference to articles of clothing. Moreover, the labels of these articles are not visible in the most of the cases and in those few cases where they are barely visible, they seem to refer to trade marks other than the mark ‘Joy’ (DOC.  4).

• Printouts from the opponent’s website www.joyshop.se showing the location of the opponent’s ‘Joy’ stores in Sweden and photo of the shops where the sign ‘JOY’ appears as a shop sign. (DOC 5)

• Samples of receipts from purchases made by customers during the relevant period in ‘JOY’ shops, showing the trademark ‘JOY’ at the top part but without any reference to the products. Sample of receipts/order confirmation of purchases made by customers showing the trade mark ‘JOY’. However also in this case, it is not possible to find any link between the mark and the articles of clothing. A document in Swedish, whose source is unknown, that according to the opponent’s explanation, refers to the ‘total number of item sold and the total sale value for the purchase of each ‘JOY’ store during the years 2013-2016, and the total number of purchases, items and sales value of purchases made by costumers on www.joystore.se during the years 2013-2016 (DOC. 6).

• Photographs of hangers, hang tags showing the trade mark ‘JOY’ on articles of clothing, which clearly are labelled with other trade marks, such as and . Photograph of only one item of clothing (i.e. a jacket) on which the trade mark ‘JOY since 1971’ is attached and of one item of clothing (i.e. a pullover) on which the trademark ‘A feeling of joy’ is affixed. Invoices relating to the purchase of different kinds of hangers (DOC. 7).

• Photographs of gifts cards, coupons, punch cards, goodie bags, plastic bags showing the trade mark ‘JOY’ and invoices related to the opponent’s purchases of goods such as plastic bags, tags for store clerks, cashier receipt rolls and paper used for wrapping goods (DOC 8).

• Extracts from the opponent’s website www.joyshop.se. Even though the mark ‘JOY’ is shown at the top of these web pages, it is not related to any article of clothing, actually the printouts clearly show that other trade marks are advertised on the opponent’s website in relation to clothes such as ‘Esprit’, ‘Lee’, ‘Alice bizous’. The trade mark ‘Joy of Love’ appears only once in relation to a shirt (DOC. 9). From the structure of the webpages shown by the opponent, it is clear that the website www.joyshop.se is an online retailer of articles of clothing of various marks, but not of ‘JOY’ articles.

• Photographs of two clothing items (i.e. one jacket and one pullover). Only the jacket (the same jacket shown in the DOC. 7) bears the trade mark ‘JOY since 1971’, while the pullover (the same pullover shown in the DOC. 7) bears the mark ‘A feeling of joy’ (DOC.  10). There is also a piece of cloth on which the mark ‘Joy (XL48)’ is attached but it is not clear to which item of clothing this piece of cloth refers.

.

• Extracts of advertisements made in magazines, newspapers and Internet showing the trade mark ‘JOY’. In these articles photos of women wearing various kinds of clothes are displayed. The trade mark ‘JOY’ never appears on the clothes, but always appears in the wording next to the clothing photos. In some advertising the wording ‘the joy of being a woman’ is shown below photos of items of clothing and above the reference to the domain ‘joyshop.se’ (DOC. 11).

• Samples of customer registrations for membership in the opponent’s membership club ‘Joy Club’ (DOC. 12).

• Two documents in Swedish, that according to the opponent’s explanation refer to ‘financial statements showing payments of invoices for the manufacture of clothing from some of the Opponent’s suppliers’. In any case, the trademark ‘JOY’ is not displayed on any of these documents. Invoices addressed to JOY SHOP AB, as a buyer, from manufacturing companies, as sellers (some of them are in English, others in Swedish). These invoices are not useful to demonstrate that the opponent sold articles of clothing bearing the mark ‘JOY’, as the latter is indicated as a buyer and not as a seller. Moreover, these documents show other model names/marks in relation to articles of clothing such as ‘LINDA DENIM SKIRT’, ‘ALICE CORD’, ‘AGNES JEANS’, ‘JULY TOP’, ‘SARAH KNITTED SCARF’. On some of the invoices, the mark ‘JOY’ is indicated as ‘JOY order number’ ‘Joy article number’, ‘JOY assortment order’, but never in relation to items of clothing (DOC. 13). In this document, photographs of sample tags from the suppliers and samples of clothing are also shown. However, these articles are clearly labelled with marks other than the mark ‘JOY’ as it is shown below,

Having examined the material listed above, the Opposition Division finds that the evidence filed by the opponent shows use of the marks ‘JOY’ for retail services of clothing articles which themselves bear trade marks other than ‘JOY’. However, it is not possible to determine from the evidence with any certainty if the marks ‘JOY’ have been also used on the clothing itself. In fact, the evidence shows only one article of clothing bearing the trade mark ‘JOY since 1971’ (i.e. a jacket) and two articles with ‘a feeling of Joy’ and ‘Joy of Love’. The addition of the element ‘since 1971’ to the trade mark ‘JOY’ does not alter the distinctive character of the earlier marks being only a descriptive indication. On the other hand the use of these last two marks (i.e. ‘a feeling of Joy’ and ‘Joy of Love’) cannot be considered use of ‘JOY’, as they differ in distinctive verbal elements (i.e. ‘a feeling of’ and ‘of love’), that clearly alter the distinctive character of marks ‘JOY’ in the form in which they were registered. However this single item on which the trade mark ‘JOY since 1971’ is affixed is not sufficient to demonstrate the use of the mark for the relevant goods (i.e. clothing) as there is no other indication showing that articles of clothing bearing the marks ‘JOY’ have been sold by the opponent and/or further documents showing the time of use or indications concerning the extent of use the marks ‘JOY’ for clothing. It is also noted that in the documents where the labels of the items are visible, they always refer to signs other than ‘Joy’, as shown above (DOC. 4, 7 and 13). Moreover, the extracts from the opponent’s website www.joyshop.se clearly show that trade marks, such as ‘Esprit’, ‘Lee’, Alice bizous’, are advertised in relation to clothing.

Other documents filed by the opponent refer to items such as gifts cards, coupons, punch cards, goodie bags, plastic bags (DOC. 8) hangers, hang tags (DOC. 9) displaying the mark ‘JOY’. Without the support of additional documents, these items cannot demonstrate use of ‘JOY’ in relation to the goods covered by the earlier trademarks (i.e. clothing), and they only reinforce the finding that ‘JOY’ is used in connection to retail of clothing items. In fact, it is a common practice for retail services to sell products of several marks which bear hand tags and hangers displaying the name of the retailer, or to sell these items in shop bags also displaying the name of the retailer. In the same way, it is common practice that retailers distribute coupons or gift cards to their customers showing the name of the shop.

The customer receipts displaying the mark ‘JOY’ (DOC. 6) do not indicate that clothing items showing ‘JOY’ have been sold, but rather refer to the retail activity of the opponent’s company. Also, the fact that ‘JOY’ appears in photos in points of sale as a shop sign is a further indication that the mark is used in relation to retail services.

As far as ‘the affidavit’ (DOC. 2) is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. Even if this does not mean that such statements do not have any probative value at all, the final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. In the case at issue, bearing in mind the above stated and that the affidavit has been drawn up by the chief financial officer of the interested party, it is concluded that its weight is minimal in the evaluation of the proof of use.

The opponent claims that in order to demonstrate the genuine use of a mark, it is not necessary that a trademark is affixed to the goods themselves (c. CFI, decision of 12^th December 2004, T-105/13, Ludwig Schokolade GmbH & Co. KG/OHIM § 28) and that according to the EUIPO Guidelines ‘a representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use’.

However, the situation is different when a trade mark is used, for example, on advertisements, bags or invoices to designate the retailer of the goods and not the goods themselves. The GC found that the use of the sign ‘Schuhpark’ for footwear on advertisements, bags and invoices was not meant to identify the origin of the shoes (which bore their own mark or no mark at all), but rather the company name or trade name of the shoe retailer. This was considered insufficient to establish a link between the sign ‘Schuhpark’ and the shoes. In other words, ‘Schuhpark’ may well be a mark for the retail of shoes, but it was not used as a trade mark for goods (13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156, § 31-32).

In the case at issue, an evaluation of the evidence as a whole leads to the conclusion that these marks have been used in relation to retail services of clothing articles which themselves bear trade marks other than the opponent’s. Therefore the opponent’s observations have to be dismissed as not relevant to the case at issue.

Genuine use of a trade mark cannot be proven 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).

The services of ‘retail of clothing’ do not fall within ‘clothing’ or ‘clothing articles except articles of headwear and footwear as well as sports clothing for golf’ in Class 25, for which the earlier marks are registered. Therefore, the opponent has not shown use for the goods for which the marks are registered; consequently, 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) insofar as it is based on the Articles 8(1)(a) and (b) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opposition is also based on the company name ‘Joy Shop Aktiebolag’ used in the course of trade in Sweden. The opponent invoked Article 8(4) EUTMR.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 95(1) EUTMR, in proceedings before, it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part)], within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 08/12/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 13/04/2017.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

As this is a matter of substantiation, the evidence of use in the course of trade of the earlier sign (i.e. the company name ‘Joy Shop Aktiebolag’) should have been provided within the time limit given by the Office, as mentioned before. It is true that the opponent, within said time limit, filed the registration certificate of the company ‘Joy Shop Aktiebolag’. In any case no evidence of use in the course of trade of this company name was provided within that time limit. The proof of use of the marks ‘JOY’ and the extract of relevant law filed by the opponent on 21/06/2017 cannot be accepted for the substantiation of the company name ‘Joy Shop Aktiebolag’ according to the art. 8(4) EUTMR as they were filed after the deadline mentioned above.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

María Belén IBARRA DE DIEGO

Angela DI BLASIO

Riccardo RAPONI

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.