OPPOSITION No B 2 874 520

Olsen Spółka Cywilna Katarzyna Czernek, Jerzy Czernek, Ul. Relaksowa 6, 05 600 Grójec, Poland (opponent), represented by Kancelaria Patentowa Tadeusz Wilczarski, ul. Norwida 12, 83-110 Tczew, Poland (professional representative)

a g a i n s t

Wael Elhalwani, 20155 Ellipse, 92610 Foothill Ranch, United States of America (applicant), represented by Kuhnen & Wacker Patent- und Rechtsanwaltsbüro Partg mbB, Prinz-Ludwig-Str. 40A, 85354 Freising, Germany (professional representative)

On 09/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 874 520 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 of European Union trade mark application No 16 178 006, namely against all the goods in Class 34. The opposition is based on international trade mark registration No 948 465 designating the European Union and on Polish trade mark registration No 175 243. The opponent invoked Article 8(1)(a) and (b) EUTMR.

The signs in dispute are the following:

STING	Sting
Earlier trade marks	Contested sign

NON-SUBSTANTIATION OF EARLIER MARK

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 is 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 to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit 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 Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence 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 particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, insofar as the earlier Polish trade mark registration No 175 243 is concerned, the evidence submitted by the opponent consists of a copy of the registration certificate as well as a copy of the Polish Patent Office’s confirmation of a total transfer of this earlier mark to its current owner (the opponent) dated in July 2016 together with English translations thereof.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier Polish trade mark registration No 175 243 because Polish trade mark registrations have a duration of 10 years from their filing date and the earlier mark in question was applied for on 25/03/2005. Therefore, it was due to expire before the expiry of the opponent’s time limit for substantiation on 03/01/2019 but the opponent did not submit any evidence of the renewal of the mark (e.g. a copy of the renewal certificate or an extract from the national authority’s official on-line database showing the term and scope of protection of the earlier mark beyond the time limit referred to above).

For the sake of clarity, even if the transfer of the earlier mark as confirmed by the Polish Patent Office in July 2016 suggests that it was renewed before it was due to expire in 2015 and that the term of protection of the earlier mark thus extends beyond the relevant time limit in January 2019, this is still insufficient since that document does not confirm the scope of protection of the earlier mark following its renewal, i.e. whether or not it continues to cover all goods for which it was initially registered in Class 34 and on which the opposition is based.

According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

Since the opponent did not sufficiently prove the scope of protection of the earlier mark for the reasons set out above, the opposition must be rejected as unfounded, as far as it is based on Polish trade mark registration No 175 243.

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 marks on which the opposition is based, namely international trade mark registration No 948 465 designating the European Union and Polish trade mark registration No 175 243.

The date of filing of the contested application is 19/12/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Poland respectively from 19/12/2011 to 18/12/2016 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. However, since the opposition has already been rejected as unfounded insofar as it is based on Polish trade mark registration No 175 243 for the reasons set out above, the proof of use will only be assessed in relation to the other earlier mark invoked, namely international trade mark registration No 948 465 designating the European Union.

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

Class 34: Cigarettes, tobacco, smokers' articles, cigarette tubes, cigarette paper, cigarettes filters, accessories for smokers (included in this class), matches.

According to Article 10(3) EUTMDR, 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 29/03/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 03/06/2019 to submit evidence of use of the earlier trade mark(s). On 03/06/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• License Agreement (Enclosure 1): Copy of a license agreement in Polish dated 01/08/2014 between the opponent and Orion Tobacco Poland Spółka z Ograniczoną Odpwoiedzialnością together with an English translation of the most important parts. The licensee is granted a licence to use, inter alia, the trade mark 'STING' for the goods for which it has protection without territorial restrictions and for an unlimited period starting from the day following the day of concluding the contract.

• Advertisement artwork (Evidence 1): Screenshot of an e-mail from a German company to the licensee dated 21/09/2011 together with a PDF-file containing draft artwork of 'STING' branded pipe tobacco packaging for Spain; screenshot of an e-mail from a Polish company to the licensee dated 01/09/2014 together with a PDF-file containing draft artwork of 'STING' branded cigar packaging for Poland.

• Invoices within the relevant time period (Evidence 2, 3 and 6):

• 1 invoice from the licensee to a Polish company dated 17/07/2013 concerning the sales of 480 packages of cigarette filter tubes described as 'STING 550';

• 1 invoice from the licensee to a Polish company dated 28/10/2014 concerning the sales of 25 units of electronic cigarettes described as 'STING'; and

• 1 invoice from the licensee to a Polish company dated 21/01/2016 concerning the sales of 10.000 units of lighters described as 'STING'.

• Sales statement (Evidence 4): Copy of a sales statement made by the licensee in Polish concerning the period 01/11/2014-30/11/2014 including a table with, inter alia, the sales of cigars described as 'STING' without a currency indication but presumably in Polish Zloty and, in that case, amounting to a total of approximately EUR 450 in net sales.

• Product catalogues (Evidence 5 and 7-9): Two pages from a product catalogue dated 2015 showing, inter alia, 'STING' branded cigars; three pages from a product catalogue dated 2016 showing 'STING' branded cigars and lighters; a few pages from a product catalogue dated 2017, submitted both in English and in Polish, showing 'STING' branded cigars, smoking tobacco and lighters. All catalogues make reference to the licensee in Poland.

• In-store pictures (Evidence 11-14): A range of undated in-store pictures of shelves and packaging showing 'STING' branded cigars, smoking tobacco and lighters which, according to the opponent’s observations, have been taken in shops in Slovakia in 2012, 2018 and 2019 respectively as well as in a shop in Poland in 2019.

• Website screenshots (Evidence 15-18): Screenshots which are either undated or dated in April or June 2019 from different websites, namely www.eshop.lauko.sk, www.orion-orion.pl, www.tobaccospirits.ro, www.e-tutungerie.ro, www.tobacco-online.ro and www.tuburipentrutigarete.ro showing offers for sale of 'STING' branded cigars, smoking tobacco, cigarette paper and/or lighters.

• Invoices after the relevant time period (Evidence 10, 19-20, 23-24 and 26):

• 1 invoice from the licensee to a Polish company dated 02/10/2017 concerning the sales of smoking tobacco described as 'STING 15';

• 2 invoices from the licensee to a Romanian company dated 17/12/2018 and 19/03/2019 respectively concerning the sales of cigars and tobacco described as 'STING';

• 1 invoice from the licensee to a Polish company dated 18/12/2018 concerning the sales of smoking tobacco described as 'STING 15';

• 2 invoices from the licensee to a Spanish company dated 31/01/2019 and 28/02/2019 respectively concerning the sales of smoking tobacco, cigars and lighters described as 'STING';

• 1 invoice from the licensee to a Polish company dated 29/05/2019 concerning the sales of smoking tobacco described as 'STING 15';

• Product catalogues (Evidence 21-22): A few pages from an undated product catalogue in English (which the opponent indicates is from 2018) as well as a few pages of a product catalogue in Polish with the same cover page dated 2018 showing 'STING' branded cigars, smoking tobacco and/or lighters.

• Sales statement (Evidence 25): Copy of a sales statement made by the licensee in Polish concerning the period 01/03/2019-31/03/2019 including a table with, inter alia, the sales of electronic cigarettes and smoking tobacco described as 'STING'.

Assessment of the evidence – factors

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).

As mentioned above, according to Article 10(3) EUTMDR, 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. These requirements are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43) and the opponent must thus prove each of these requirements. However, the sufficiency of the evidence as to the place, time, extent and nature of use has to be determined by considering the evidence submitted in its entirety.

Extent

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.

As mentioned above, the opponent was required to prove that the earlier mark was put to genuine use in the European Union from 19/12/2011 to 18/12/2016 inclusive.

In this respect, the opponent submitted one invoice dated in July 2013 concerning the sales of 480 packages of cigarette filter tubes, one invoice dated in October 2014 concerning the sales of 25 units of electronic cigarettes and one invoice dated in January 2016 concerning the sales of 10.000 units of lighters, all three to different companies in Poland. In addition, the opponent submitted a copy of two e-mails containing draft advertising artwork related to pipe tobacco in Spain and cigars in Poland dated in September 2011 and September 2014 respectively as well as a sales statement for the month of November in 2014 listing net sales of cigars, presumably in a total amount of around EUR 450. The opponent also submitted a license agreement dated in August 2014 by which the opponent granted the licensee use of, inter alia, the earlier mark in relation to the goods for which it is registered as well as copies of a few pages from product catalogues dated 2015 and 2016 showing cigars and lighters.

As a preliminary remark, the Opposition Division notes that, according to the applicant, neither cigars nor electronic cigarettes are covered by the earlier mark. However, the Opposition Division notes that the term tobacco of the earlier mark is broad enough to include cigars and the term smokers' articles include goods such as electronic cigarettes. Therefore, these arguments of the applicant must be set aside as unfounded.

However, while the documents described above show some use of the earlier mark for 'STING' within the relevant time period and within the relevant territory, at least in relation some of the relevant goods in Class 34, they provide little information about the commercial volume, duration and frequency of use in relation to the same during the relevant period. The e-mails containing draft artwork do not confirm if, or to what extent, such artwork was effectively used in the market to promote any sales of the earlier mark in relation to the goods concerned, the license agreement does not in itself give any information about the extent of use of the earlier mark by the licensee and there are no indications or evidence as to how the product catalogues dated in 2015 and 2016 were distributed, or to what extent and frequency they were disseminated, to end consumers. The invoices submitted show some sales of cigarette filter tubes (once in 2013), sales of a few electronic cigarettes (once in 2014) and sales of a larger shipment of lighters (once in 2016). Furthermore, the sales statement, apart from deriving directly from the licensee of the opponent, only indicates some sales of cigars during one month in 2014. Furthermore, the in-store picture submitted showing a shelf including 'STING' branded cigars which, according to the opponent was taken in a shop in Slovakia in 2012, apart from being undated and not clearly showing that it originates from a shop in Slovakia, again, provides little information about the extent of use of the earlier mark in relation to such goods.

It is true that the requirement of genuine use does not seek to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where largescale commercial use has been made of the marks (16/06/2015, T-660/11, EI du Pont de Nemours (POLYTETRAFLON), EU:T:2015:387, § 44).

Nevertheless, the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opposing party to produce additional evidence to dispel possible doubts as to its genuineness (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 37).

In response to the applicant’s criticism of the evidence, the opponent claims that the invoices submitted from July 2013 and January 2016 undeniably confirm use of the earlier mark 'STING' for goods protected by this mark since they did not concern only one item but 480 packages of cigarette filter tubes and 10.000 lighters respectively. While the Opposition Division agrees that these invoices confirm some use of the earlier mark in relation to volumes which are not in themselves insignificant, they still only show one-off sales of cigarette filter tubes and lighters respectively and cannot therefore be considered to confirm that the use made of the earlier mark in relation to those goods was not merely sporadic or token. As regards the substantial part of the evidence submitted which relates to the years 2017-2019, the opponent argues that it shows continuous use of the earlier mark on the EU market. However, while it is true that events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50), the evidence related to the relevant period is manifestly insufficient to prove genuine use of the mark and the evidence related to the subsequent years, even if a couple of the invoices submitted show larger quantities, again there are only a few invoices and all but one of them are dated either in December 2018 or in 2019 which is thus at least two years after the relevant time period ended. Therefore, in the present case, the Opposition Division does not consider that the evidence related to the years 2017-2019 makes it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period from 19/12/2011 to 18/12/2016 inclusive.

The opponent puts forward that according to the applicable Polish tax laws, taxpayers are only obliged to keep accounting records until the tax period expires, which is five years from the end of the calendar year in which the tax payment deadline expired. Therefore, the opponent claims that the licensee’s latest accounting documents only date back to 2013, which is why there is no evidence prior to that year.

It is true that the requirement for the extent of use does not mean that the proprietor has to submit a copy of all invoices issued during all the relevant years or to reveal the entire volume of sales. It is sufficient to submit evidence which proves that the minimum threshold for a finding of genuine use has been passed (11/05/2006, C-416/04 P, Vitafruit, EU:C:2006:310,§ 72).

However, the fact remains that since the opponent did not, despite the applicant’s criticism of the evidence, provide any information or evidence concerning the total turnover or sales figures in relation to any goods at all or any accounting documents, such as annual financial reports, that could assist to corroborate the same and put the very few invoices in context, it cannot be inferred only from the invoices submitted that they merely show some examples of the actual sales made under the earlier mark and its situation on the market. Moreover, the opponent chose not to submit any additional invoices, even if only for the years 2013-2016, to better assess the commercial volume, duration and frequency of use of the earlier mark in relation to the different goods concerned. Taking into account the characteristics of the goods concerned and the fact that the invoices submitted only show one-off sales of different goods during different years, the commercial volume shown by the invoices submitted must be considered (very) low and only suggest sporadic or token use of the earlier mark in a rather limited geographical territory, bearing in mind that the relevant territory is the European Union. In any proof of use case, the opponent is in the best position to provide sufficient and objective evidence of genuine use of its mark and the opponent could easily have submitted accounting documents, such as annual financial reports, and/or a more representative sample of invoices for the relevant years together with indications and evidence concerning the distribution of the product catalogues submitted, including for example the number of issues disseminated, in what way and with what frequency as well as information on the advertising expenditure related to the same.

While it is true that the proprietor (or opponent) has a free choice as to the means of proving extent of use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 37), it nevertheless has to show the reality of the commercial use of the mark at least to dispel any possible doubt that this use might be merely sporadic or token.

In this respect, even if the evidence submitted suggests that the earlier mark may have been used at least to some extent in relation to some tobacco products and smokers’ articles, 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 (12/12/2002, T-39/01, HIWATT, EU:T:2002:316, § 47; 06/10/2004, T-356/02, VITAKRAFT, EU:T:2004:292, § 28).

In view of all the above and an overall assessment of the evidence submitted, in the absence of further supporting material, the opponent cannot be deemed to have proven, to the requisite legal standard, the extent of the use of the earlier mark in relation to any goods on which the opposition is based. The evidence, in its entirety, does not allow the Opposition Division, without resorting to probabilities, speculations or presumptions, to establish that there was genuine use of the earlier mark in the European Union within the relevant period for the relevant goods (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43).

Conclusion

Since the opponent did not submit sufficient evidence concerning the extent of use of the trade mark for the registered goods in Class 34 for the reasons outlined in detail above, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to objectively prove, without probabilities or suppositions, that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time, i.e. from 19/12/2011 to 18/12/2016 inclusive.

The methods and means of proving genuine use of a mark are unlimited. The above finding that genuine use has not been proven in the present case is due, not to an excessively high standard of proof, but to the fact that the opponent chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

As stated above, the factors of time, place, extent and nature of use are cumulative, and the evidence must provide sufficient indications of all these factors to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as the extent of use has not been established for the earlier mark, it is not necessary to determine exactly for which goods the trade mark would have been deemed to have been genuinely used, had the extent of use been sufficiently proven.

As the proof of use submitted for the earlier mark on which the opposition is based is insufficient as a whole, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR.

For the sake of completeness, for the same reasons as those set out above the same would apply to the earlier Polish trade mark registration No 175 243, i.e. the extent of use has not been established for the earlier mark 'STING' in Poland during the relevant time period. Therefore, even assuming that this earlier mark has been substantiated, the outcome would be the same and the opposition would still have to be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR.

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 del Carmen COBOS PALOMO

Sam GYLLING

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.