OPPOSITION No B 2 968 603

VVIG Inc, 572 NW 23rd St, 33127 Miami, United States (opponent), represented by Lunati & Mazzoni S.R.L., Via Carlo Pisacane, 36, 20129 Milano, Italy (professional representative)

a g a i n s t

Henry Alvarez and Mariano Cuesta, 8011 NW 14th St., 33126 Doral FL, United States (applicants), represented by PGA S.P.A., Via Mascheroni, 31, 20145 Milano, Italy (professional representative).

On 30/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 968 298 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 16 751 612 ‘THE RAGING DONUT’ (word), namely against all the goods in Class 34. The opposition is based on United States trade mark registration No 5 222 667 ‘THE RAGING DONUT’ (word) and non-registered trade marks ‘THE RAGING DONUT’ (word) protected in Italy and the United Kingdom. The opponent invoked Article 8(3) and 8(4) EUTMR.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER — ARTICLE 8(3) EUTMR

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or a representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

 the signs are identical or only differ in elements that do not substantially affect their distinctiveness;

 the goods and services are identical or equivalent in commercial terms;

 the applicant is an agent or a representative of the owner of the earlier mark;

 the application was filed without the consent of the owner of the earlier mark;

 the agent or representative fails to justify its acts.

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) EUTMR cannot succeed.

The Opposition Division will first examine the requirement regarding the nature of the relationship between the parties involved.

Agent or representative relationship

The opponent claims that it is the owner of the earlier trade mark No 5 222 667 ‘THE RAGING DONUT’ registered in the United States for the following goods: chemical flavorings in liquid form used to refill electronic cigarette cartridges; electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; electronic cigarette liquid (e-liquid) comprised of propylene glycol; electronic cigarette liquid (e-liquid) comprised of vegetable glycerin (a copy of the extract from the United States Patent and Trademark Office has been submitted). According to the opponent, Mr Henry Alvarez and Mr Mariano Cuesta (the applicants) are ex-employees of VVIG Inc (the opponent). The evidence submitted by the opponent shows that Mr Henry Alvarez and Mr Mariano Cuesta were employed in the opponent’s company in 2015-2016 as Sales Manager and Marketing Manager, respectively.

As correctly stated by the opponent in its submissions, the terms ‘agent’ and ‘representative’ should be interpreted broadly to cover all kinds of relationships based on any business arrangement (governed by written or oral contract) where one party is representing the interests of another, regardless of the nomen juris of the contractual relationship between the principal-proprietor and the EUTM applicant (confirmed by judgment of 13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64). This is because the purpose of the provisions of Article 8(3) EUTMR is to safeguard the legal interests of trade mark proprietors against the misappropriation of their trade marks by their commercial associates.

In addition, the agreement between the parties does not have to be technically still in force when the application is filed. The reference to a filing made by an ‘agent or representative’ should not be understood as a formal requirement that must be present at the time the EUTM application is filed. Article 8(3) EUTMR also applies to agreements that expired before the filing date of the EUTM application, provided that the time that has lapsed is of such duration that it can be reasonably assumed that the obligation of trust and confidentiality was still present when the EUTM application was filed (confirmed by judgment of 13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 65).

Therefore, it is sufficient for the purposes of Article 8(3) EUTMR that there is some agreement of commercial cooperation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the trade mark proprietor. It follows that Article 8(3) EUTMR may also extend, for example, to licensees of the proprietor, or to authorised distributors of the goods for which the mark in question is used.

Article 8(3) EUTMR also applies to analogous forms of business relationships that give rise to an obligation of trust and confidentiality between the trade mark proprietor and the professional, as is the case with legal practitioners and attorneys, consultants, trade mark agents, etc.

However, contrary to what the opponent claims, Article 8(3) EUTMR does not apply in case of employee-employer relationship.

This is because Article 8(3) EUTMR presumes the existence of a commercial or business relationship between the parties. Sales or marketing managers of the opponent’s company were its employees and cannot be considered agents or representatives within the meaning of Article 8(3) EUTMR, as explained above, given that such persons are not business associates of the opponent. They were employees hired under the contract of employment to perform a service under the control of the opponent.

In its submissions, the opponent argues that the dishonest intentions of the applicants can be inferred from the fact that the Court of Genova ordered a prohibitory injunction of the use of the trade mark at hand by the applicants. However, the findings of the Court of Genova cannot undermine the findings of the Opposition Division because the purpose of Article 8(3) EUTMR is not to protect the proprietor from infringing acts coming from within its company. It may well be that such acts can be sanctioned under the general bad faith provision in Article 59(1)(b) EUTMR. Thus, the fact that the opponent did actually enforce its trade mark rights in Italy does not demonstrate the agent/representative relationship within the meaning of Article 8(3) EUTMR which is one of the necessary requirements for the opposition (based on this article) to succeed.

Consequently, on the basis of the above, the Opposition Division concludes that the evidence submitted is insufficient to prove that the applicant is an agent or a representative of the opponent within the meaning of Article 8(3) EUTMR.

As one of the necessary requirements is not met, the opposition must be rejected as not well founded under Article 8(3) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — 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.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Prior use in the course of trade of more than mere local significance

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. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 18/05/2017. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Italy and in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for chemical flavorings in liquid form used to refill electronic cigarette cartridges; electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; electronic cigarette liquid (e-liquid) comprised of propylene glycol; electronic cigarette liquid (e-liquid) comprised of vegetable glycerine.

On 24/04/2018 the opponent filed the following evidence:

In relation to the territory of Italy:

 Documents 14 and 18: Letters of Authorisation dated 30/05/2017 where the opponent appoints and authorises Vapour International Doo, represented by Mattia Sparaciano, as exclusive authorised sales manager and distributor for the sales promotion of, amongst others, the following e-liquid lines in the territory of Italy: ‘RAGING DONUT’, ‘POUND IT’, ‘CRACK PIE’, ‘2 PUFT’, ‘TOO PUFT’ as well as the Letter of Authorisation of 24/08/2017 extending the duration of authorisation (Document 21) together with declaration from Catalina Velasquez Jimenez certifying the validity of these letters (Document 19).

 Document 15: Invoices showing sales of the opponent’s goods; some with packing slips and delivery receipts. Various invoices are issued to the opponent’s distributor in Italy and only 25 invoices show sales by that distributor. However, only 4 invoices make reference to the trade mark at hand.

 Document 16: E-mail dated 05/05/2017 between Marco Cirincione and Catalina Velasquez related to a purchase invoice issued by Awesome Flavors LLC to the opponent’s agent and distributor Vapor International Doo dated 03/05/2017 for, amongst others, the following e-liquids: ‘2 PUFT’, ‘POUND IT’, ‘CRACK PIE’, ‘RAGING DONUT’.

 Document 17: Screenshots of news in online magazine Sigmagazine of 17/02/2017, 16/06/2017 and 13/07/2017 and the corresponding translations.

 Document 20: Declaration from Paul Kettlewell dated 30/08/2017 related to the creation of the marks ‘CRACK PIE’, ‘POUND IT’, ‘RAGING DONUT’, ‘TOO PUFT’.

 Document 22: Screenshots from Twitter showing a photo of ‘POUND IT’ e-liquid and dated 05/06/2015-10/07/2015.

 Document 23: Confirmation of payment to Paul Kettlewell for creation of ‘THE RAGING DONUT’ trade mark.

In relation to the territory of the United Kingdom:

 Documents 24 and 25: Eight invoices issued by the opponent and dated between 09/11/2015 and 16/05/2016, however only one invoice makes reference to the trade mark at hand.

 Document 26: Order made in October 2015 from One Step Above to David O'Brien (partner of VVIG Inc.) related to ‘THE RAGING DONUT’ and ‘POUND IT’ products.

The remaining evidence refers to Article 8(3) EUTMR invoked by the opponent, and does not contain any information regarding the use of the mark at hand in the territory of Italy or the United Kingdom.

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business or press cuttings showing the degree of recognition on the part of the public of the sign relied on, or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 to T-321/06, General Optica, EU:T:2009:77, § 43).

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say, of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgments of 24/03/2009, T-318/06 to T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

Non-registered trade mark in Italy

As regards the use of the mark in Italy, the opponent provided numerous invoices.

Some of these invoices (dated between 08/03/2017 and 15/05/2017) are issued by the opponent and the American company Maenk LLC to New Generation Vape in Italy. This company seems to be a distributor of the opponent’s goods in this country because it can be seen from other invoices (discussed in the next paragraph) that the goods were resold to other customers in Italy. In any case, some of these invoices refer to sales of essential oils, so it is not conclusive that they relate to ‘THE RAGING DONUT’ products. Some other invoices, namely those issued by Maenk LLC to New Generation Vape, show sales of only 40 ‘THE RAGING DONUT’ items and it is not clear if, and/or how they were further distributed and what were the actual sales in the market. Likewise, the email submitted as Document 16 only shows that there was an order made by New Generation Vape but does not demonstrate that these goods reached end consumers and to what extent.

The opponent also submitted twenty five invoices dated between 29/03/2017 and 31/05/2017 issued by New Generation Vape to various customers in Italy. Five of the invoices are dated outside the relevant period, although only by a few days. Nevertheless, only four invoices list ‘THE RAGING DONUT’ e-liquid. Further, the invoices show sales of only 37 items amounting to a total of less than EUR 350. As such, the sales shown are rather low and, additionally, they refer to a period of time of only 2-3 months, therefore, on the whole, they do not demonstrate that the trade mark was put in the market to a sufficient extent.

Although the opponent also provided screenshots of online magazine Sigmagazine of 17/02/2017, 16/06/2017 and 13/07/2017 with some articles regarding ‘THE RAGING DONUT’ trade mark, there is no indication of how popular the magazine is, and/or how many readers it reaches, which is essential information in case of evidence of this nature that could help the Opposition Division to determine whether prior use in the course of trade can be considered of more than mere local significance.

Likewise, the remaining documents, namely the Letters of Authorisation and the declaration certifying their validity, as well as the declaration from Paul Kettlewell related to the creation of the mark ‘THE RAGING DONUT’ or the screenshot from Twitter do not indicate whether use of the sign in question is of more than mere local significance.

Bearing in mind the evidence in its entirety and the combination of all the relevant factors in all the items of evidence, the Opposition Division considers that it does not meet the minimum threshold of use in the course of trade of more than mere local significance set out in Article 8(4) EUTMR and in relation to the territory of Italy. As the evidence reflects sales over a period of time of only 2-3 months, the sales figures are minor, and other evidence showing use is very scarce, the evidence as a whole cannot be deemed sufficient to prove that the use of the sign is of more than mere local significance. The evidence falls short in terms of documents from independent sources showing that the sign in question had established itself in the marketplace to such an extent as to justify the acquisition of exclusive rights.

Non-registered trade mark in the United Kingdom

The opponent submitted even less evidence in relation to the territory of the United Kingdom.

The opponent submitted eight invoices but only one, issued to One Step Above (which also made a purchase order submitted as Document 26), makes reference to the trade mark at hand and shows sales of 1100 items for a total of EUR 9900. However, under Article 8(4) EUTMR, the sign must be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory (emphasis added) (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 158-159).

In the present case, one invoice does not meet requirement for use in the course of trade of more than mere local significance in the meaning of Article 8(4) EUTMR.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the goods on which the opposition was based before the relevant date and in the relevant territory, i.e. in Italy and in the United Kingdom.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

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

Begoña URIARTE VALIENTE

Anna BAKALARZ

Helen Louise MOSBACK

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.