OPPOSITION No B 2 796 731

Optovision Gesellschaft für moderne Brillenglastechnik mbH, Heinrich-Hertz-Straße 17, 63225 Langen/Hessen, Germany (opponent), represented by Sandra Kerstin Kütterer, Am Pfingstbrunnen 6, 65719 Hofheim am Taunus, Germany (professional representative)

a g a i n s t

Huawei Technologies Co. Ltd., Administration Building Huawei Technologies Co. Ltd., Bantian, Longgang District, 518129 Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Forresters IP LLP, Sherborne House, 119-121 Cannon Street, EC4N 5AT London, United Kingdom (professional representative).

On 28/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 796 731 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. 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 15 671 316 ‘VISION’ (word mark), namely against all the goods in Class 9. The opposition is based on German trade mark registration No 30 720 012 (word mark) ‘I’VISION’ and European Union trade mark registration No 9 110 198 ‘optovision’ (word mark). The opponent invoked Article 8(1)(b) 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 both trade marks on which the opposition is based.

The date of filing of the contested application is 18/07/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Germany and the European Union, respectively, from 18/07/2011 to 17/07/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were 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:

German trade mark registration No 30 720 012

Class 9: Eyeglass lenses, namely eyeglass lenses, produced in free-form technology.

European Union trade mark registration No 9 110 198

Class 5: Solutions for use with contact lenses; cleaning preparations for contact lenses; preparations for the care of contact lenses.

Class 9: Scientific and measuring apparatus and instruments, in particular weather stations and thermometers, not for medical purposes; optical apparatus and instruments, in particular spectacles, sunglasses, reading glasses, spectacle lenses, correction frames, contact lenses, contact lens accessories, in particular containers for contact lenses and cases for contact lenses; computer software (recorded);computer software (downloadable).

Class 10: Thermometers for medical use.

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 16/05/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 21/07/2017 to submit evidence of use of the earlier trade marks. On 13/09/2017, within the time limit extended until 21/09/2017, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Exhibit 1: several print-outs from the opponent’s website www.optovision.de, undated. They show modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’, used in relation to spectacle lenses.

 Exhibit 2: a print-out from the opponent’s website www.optovision.de obtained from the internet archive The Wayback Machine, dated in May 2015. It shows modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’.

 Exhibit 3: print-outs from several different websites, mentioning modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’. Most of the print-outs are undated and one page is dated in 2017 which is outside the relevant period. The opponent states that the print-outs are from the websites of different opticians selling ‘I’VISION’ lenses. However, it is not possible to know the source of these documents, since the print-outs do not have any URL link or a similar reference.

 Exhibit 4: opponent’s brochure referring to various lens types, dated 2013. It shows modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’.

 Exhibit 5: two press releases from 2013, mentioning modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’ in relation to spectacle lenses.

 Exhibit 6: table listing various trade marks of lenses, including ‘I’VISION’ (or a modified version thereof), dated in 2013. The opponent states that this is a copy of an article from the trade magazine ‘Focus’. However, this cannot be inferred from the documents. There is no text of an article as such, only the table. The documents bear the inscription ‘FOCUS’ at the bottom but there is no further information what this means (the front page of the alleged magazine was not submitted).

 Exhibit 7: several opponent’s product flyers showing modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’ in relation to spectacle lenses. One flyer is dated in 2013 and on other flyers no date can be found. There is no information as to how many of the flyers were distributed and where.

 Exhibit 8: further opponent’s product flyers showing modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’ in relation to spectacle lenses, dated in 2015. There is no information as to how many of the flyers were distributed and where.

 Exhibit 9: order forms showing modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’. Some of the documents are dated within the relevant period, but others are dated outside the relevant period (2010, 2017).

 Exhibit 10: excerpt from the opponent’s catalogues mentioning modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’ in relation to spectacle lenses, dated 2016 or undated.

 Exhibit 11: several print-outs from the opponent’s website www.optovision.com obtained from the internet archive The Wayback Machine, falling in the period between 2012 and 2017. They show a modified version of the earlier trade mark ‘optovision’ in relation to spectacle lenses.

 Exhibit 12: print-outs of several welcome pages from the opponent’s website for various countries. The opponent states that the print-outs are from the website www.optovision.com but there is no indication (e.g. an URL link) in the documents to prove that.

 Exhibit 13: brochures and flyers in German mentioning a modified version of the earlier trade mark ‘optovision’ in relation to spectacle lenses, dated between 2012 and 2016. There is no information as to how many of the flyers were distributed and where.

 Exhibit 14: brochures and flyers in French mentioning modified versions of the trade marks ‘I’VISION’ and ‘optovision’ in relation to spectacle lenses, dated between 2014 and 2016. There is no information as to how many of the flyers were distributed and where.

 Exhibit 15: brochures and flyers in Italian mentioning modified versions of the trade marks ‘I’VISION’ and ‘optovision’ in relation to spectacle lenses, dated between 2011 and 2015. There is no information as to how many of the flyers were distributed and where.

 Exhibit 16: excerpt from the opponent’s catalogue in German mentioning modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’ in relation to spectacle lenses, dated 2016.

 Exhibit 17: excerpt from the opponent’s catalogue in French mentioning modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’ in relation to spectacle lenses, dated 2014-2015.

 Exhibit 18: excerpt from the opponent’s catalogue in Italian mentioning modified versions of the earlier trade marks ‘I’VISION’ and ‘optovision’ in relation to spectacle lenses, dated 2015.

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.

Although the evidence submitted by the opponent is quite voluminous (more than 200 pages), the documents filed do not provide the Opposition Division with sufficient information concerning the extent of use of the earlier marks, namely the commercial volume and intensity of use.

There is no proper evidence of actual sales of the goods under the earlier trade marks. As correctly pointed out by the applicant, the opponent did not file any invoices to prove sales. The evidence listed above in essence proves the existence of websites, brochures, flyers or catalogues with information on the opponent’s spectacle lenses but there is no proof of the extent of distribution of those materials or of the traffic on the websites. The content of exhibits 3 and 6 (alleged offers of the opponent’s goods by third parties (opticians) and the list of trade marks for lenses allegedly published in a trade magazine) is quite vague and unclear and in the absence of any additional proof or information does not shed any more light on the extent of use of the marks.

Contrary to the opponent’s opinion, the extent of advertising proven by the evidence on file is considered insufficient to prove genuine use on large markets such as Germany (for the earlier German trade mark) and the European Union (for the earlier EUTM). Although the opponent did prove some use of the earlier trade marks, this use is considered to be not more than token use. In this context it must be recalled 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 (judgment of 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 both earlier marks.

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; 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 marks were genuinely used in the relevant territories 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).

In view of the above outcome, it is redundant to examine the issues of admissibility and substantiation of the earlier German trade mark and to tackle the issue of translation of the proof of use.

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

Saida CRABBE

Vít MAHELKA

María del Carmen SUCH SÁNCHEZ

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.