OPPOSITION No B 3 002 998

Accell Nederland B.V., Industrieweg 4, 8444 AR Heerenveen, Netherlands (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative)

a g a i n s t

Cool Bikes S.L., Onze de Setembre 88, 17244 Cassà de la Selva, Spain (applicant), represented by Ingenias, Av. Diagonal 421, 2º, 08008 Barcelona, Spain (professional representative).

On 27/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 002 998 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 17 136 805 for the figurative mark , namely against all the goods in Class 12. The opposition is based on European Union trade mark registration No 3 756 467 for the word mark ‘SPARTA’ in Classes 12 and 16, in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

For the sake of completeness, it should be pointed out that, although the opposition was initially also based on another earlier right on the grounds of Article 8(4) EUTMR, the opponent withdrew this right and basis in its observations dated 27/08/2018.

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 mark on which the opposition is based, namely European Union trade mark registration No 3 756 467 for the word mark ‘SPARTA’.

The date of filing of the contested application is 22/08/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 22/08/2012 to 21/08/2017 inclusive.

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.

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

Class 12: Bicycles, tandems, motor-assisted pedal cycles, mopeds and motorcycles, three and four wheel motor vehicles, carrier tricycles, whether or not with mechanical locomotion, containers for carrier tricycles, sidecars, as well as parts thereof and accessories therefor (not included in other classes), including frames, pipes and tubes, fittings, axles, hubs, rims, wheels, cones, chains, chain-wheels, chain guards, free wheels, brakes, coaster brakes, spokes, handlebars, pedals, bells, pumps, saddles, bags, children's seats, direction indicators, handlebar grips, repair kits, tube repair tapes, luggage carriers, inner tubes, outer tubes, horns, mirrors, motors and engines, including electric motors, knee grips, footrest rubbers, petrol tanks and duo seat frames, crash guards, windshields, sprung front and rear forks (non-metal).

Class 16: Books and magazines; certificates of guarantee, repair manuals and other printed matter.

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 12/11/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 17/01/2019 to submit evidence of use of the earlier trade mark. On 18/12/2018, within the time limit, the opponent submitted evidence of use.

As stated by the opponent, the evidence of use submitted consists of exactly the same documents previously submitted in order to substantiate the claim of reputation. In this regard, although the evidence submitted in the stage of proof of use is not accompanied by any explanation in the form of observations, it is noted that the previously submitted documents and, particularly, the accompanying observations dated 01/08/2018, are to be taken into account in the analysis of the proof of use since they were submitted before the expiry of the time limit to do so.

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:

 Attachment 1: Undated document in English, according to the opponent from Wikipedia, regarding the history of the company Sparta, Dutch manufacturer of, inter alia, bicycles, founded in 1917. The last time reference in this document is to 2003 when ‘Sparta launched ION, a series of systems for E-bikes’.

 Attachments 2.1-2: Copy of an article in the Stad & Streek newspaper of 02/08/2017, in Dutch, according to the opponent concerning the celebration of the 100 years of Sparta with the idea for a Guinness Book of Records Challenge and copy of a Guinness World Records Certificate for the ‘largest parade of electric bicycles’ achieved by Sparta in the Netherlands on 01/09/2017.

 Attachment 3.1-2: Award report in Dutch with partial translation into English, dated in 2015, regarding the election of the ‘bicycle of the year’ by the professional jury of RAI, a Dutch association in the field of the bicycle industry. In particular, the Sparta ION E-Speed was awarded Speed E-Bike of the year 2015. In the document there are also other Sparta models awarded titles in other categories and years (Sparta Aspen and Sparta ION Comfort bicycles for the years 1993 and 2004, and Sparta ION RXS+ e-bike of the year 2014).

 Attachment 4.1-2: Market research report in Dutch, dated June 2017, by the company R2 Research, with partial translation into English. According to the report, the companies Sparta and Batavus, both part of the opponent, Acell Netherlands, commissioned the report in order to measure the effect of an advertising campaign, carried out in the Netherlands in June 2017, in terms of brand awareness, consideration, purchase intention and image. The research was done by means of an online questionnaire with approximately 520 respondents aged between 18 and 75 years. According to the report, Sparta attained either the third or fourth position, out of 11 brands, in name recognition, familiarity or previously owned brands.

 Attachment 5: Article in Dutch, dated June 2013, according to the opponent published in the Dutch Consumer Association magazine, regarding a test of the best electric bikes in 2013. According to the opponent, Sparta attained the 3rd position. However, from the list displayed it seems that there are four Sparta bicycle models in 2nd, 3rd, 6th and 9^th positions.

 Attachment 6: Undated article in Dutch from the website www.electrischfietsen.com, according to the opponent regarding the election of a SPARTA bicycle as the best e-bike in 2014 (in the RAI awards).

 Attachment 7: Undated article in Dutch from the website www.fietsen123.nl, according to the opponent regarding the election of a SPARTA bicycle as the best e-bike in 2015 (in the Plus magazine ebike test).

 Attachment 8: Undated article in Dutch from the website www.fietserbond.nl, according to the opponent regarding the election of a SPARTA bicycle as the best e-bike in 2017.

 Attachment 9: Undated article in Dutch, without indication of source, according to the opponent regarding the election of a SPARTA bicycle as the best e-bike in 2018.

 Attachment 10: Survey results in Dutch dated 2013 (period from 22/02/2013 to 29/11/2013) by elektrischefietsen.com, regarding electric bicycles. The survey received 1 708 responses and, according to the opponent, question 5 asked whether ‘you always choose a specific bicycle brand’, SPARTA appearing in the fourth and fifth positions in the affirmative responses (395 affirmative responses -23.13 %- and 1 313 negative responses -76.87 %-).

 Attachment 11: Report on web performance by the company WUA!, dated 09/01/2014. The article is in Dutch and is partly translated in the opponent’s observations, namely some information from page 17. According to this translation, sparta.nl achieved number 1 in web performance for the second time in a row, the websites in the top three remaining the same (as the previous year).

 Attachment 12: Extracts in German from the website www.spartabikes.de concerning the awards received by SPARTA in Germany from 2004 to 2018.

 Attachment 13: Undated chart, without indication of source, containing data regarding sale numbers of SPARTA bicycles in eight countries of the European Union between 2013 and 2017 (per country and year). Although it is not indicated whether the numbers refer to units sold or to turnover, from the amounts shown it can be inferred that they refer to units. The majority of sales originate in the Netherlands, followed by Belgium and Germany.

 Attachment 14: Catalogue in Dutch dated in November 2013 containing bicycles under the trade mark SPARTA and references to the website sparta.nl.

 Attachments 15 to 20: Six reports from Google (dated in 2018), with the information mainly in Dutch, regarding the visits to the websites sparta.nl (Dutch website) and spartabikes.de (German website), from 01/06/2014 to 14/06/2015, from 01/06/2015 to 14/06/2016 and from 01/06/2016 to 14/06/2017. It can be seen that a high percentage of visits to the Dutch website come from the Netherlands. Although the opponent refers, as regards one of the reports, to more than 1 million visitors from the Netherlands and 98 479 from Belgium, these figures refer to started sessions. Indeed, it can be seen that there are high percentages of sessions from returning visitors.

 Attachments 21 to 23: two pictures showing SPARTA bicycles, according to the opponent dating back to 1925 and 1931, together with what the opponent refers to as the front page of a SPARTA brochure from 1934, showing motorcycles, mopeds and bicycles.

 Attachment 24: picture of an undated chart, without indication of source, according to the opponent containing data regarding sale numbers (of bicycles) in the Netherlands (and export) from 1976 to 1984. The sales are indicated in the form of bars and the units are measured in thousands. The trade mark SPARTA appears in the title of the document.

The opponent also submitted, in its observations of 27/08/2018, a link to a video on YouTube (published on 23/05/2013) about the history of Sparta (in Dutch).

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.

Article 47 EUTMR requires proof of genuine use of the earlier mark. 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 (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

The Office does not necessarily require a high threshold of proof of genuine use. The Court has indicated that it is not possible to prescribe, in the abstract, what quantitative threshold should be chosen in order to determine whether use was genuine or not, and accordingly there can be no objective de minimis rule to establish a priori the level of use needed in order for it to be ‘genuine’. So, whilst a minimum extent of use must be shown, what exactly constitutes this minimum extent depends on the circumstances of each case. The general rule is that, when it serves a real commercial purpose, even minimal use of the trade mark could be sufficient to establish genuine use, depending on the goods and services, and the relevant market (23/09/2009, T-409/07, acopat, EU:T:2009:354, § 35; 02/02/2012, T-387/10, Arantax, EU:T:2012:51, § 42).

In other words, it will be sufficient if the evidence of use proves that the trade mark owner has seriously tried to acquire or maintain a commercial position in the relevant market as opposed to having solely used the mark with the intention of preserving the rights conferred by the mark (token use). For instance, in some cases, relatively few sales might be sufficient to conclude that the use is not merely token, in particular with regard to expensive goods (04/09/2007, R-35/2007-2, DINKY, § 22). Nonetheless, even if, inter alia, a very modest amount of use can suffice in certain circumstances, proprietors should adduce comprehensive evidence of use.

The documents submitted, namely the chart corresponding to the relevant period containing sale numbers, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Firstly, it is well established in case-law that statements from the owner of the earlier mark (drawn up by the interested party itself or its employees), even if sworn or affirmed in accordance with the law under which it is rendered, must be corroborated by independent evidence, taking into account that its probative value is rather low. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (11/01/2011, R 490/2010-4, BOTODERM / BOTOX, § 34; 27/10/2009, B 1 086 240 and 31/08/2010, B 1 568 610).

Such a statement cannot in itself sufficiently prove genuine use (9/12/2014, T-278/12, PROFLEX, EU:T:2014:1045, § 54). However, this does not mean that such statements are totally devoid of all probative value (28/03/2012, T-214/08, Outburst, EU:T:2012:161, § 30). Generalisation should be avoided, since the exact value of such statements always depends on its concrete form and content. Statements including detailed and concrete information have a higher probative value than very general and abstractly drafted statements.

However, the probative strength of the further material submitted is very important. An assessment should be made of whether the content of the affidavit is sufficiently supported by the further material (or vice versa).

The data provided regarding sales figures is not even in the form of a sworn declaration or signed affidavit, since it merely consists of an undated and unsigned chart drawn up ad hoc by the opponent, with no particularly detailed information. Therefore, its probative value is very low.

Furthermore, no conclusive evidence was submitted to prove the sales figures given in the chart. The opponent did not submit any invoices, even as samples to demonstrate actual sales, annual reports giving a general overview of its overall commercial and financial activities, or any other independent evidence able to prove, for example, the market share enjoyed by the products bearing the opponent’s mark in the relevant market.

In this regard, the remaining documents submitted by the opponent can hardly be considered corroborative evidence of actual sales during the relevant period.

Some of these documents have also been drawn up, or commissioned, by the opponent itself and, therefore, have also less probative value. This is the case of the marketing report which is, however, not particularly relevant in order to provide some light as far as the extent of use during the relevant period is concerned since it only measures the brand awareness and purchase intention, and only takes into account a very low number of respondents. The same can be said about the survey results and the catalogue in which, even if dated within the relevant period, there is no information about distribution figures of the catalogue or where it was distributed. Therefore, it cannot be seen from this evidence whether the goods were actually sold during the relevant period and, if so, the quantities involved.

In this regard, there are no special circumstances which might justify a finding that the catalogue submitted by the opponent, on its own or in combination with other documents, proves the extent of use of the earlier mark for the goods involved. Although the evidence submitted demonstrates the earlier sign in connection with bicycles, the opponent did not produce any reliable evidence indicating the commercial volume of the exploitation of this sign to demonstrate that such use during the relevant period was genuine.

The data about web performance is not conclusive either, since the reports only measure visits, but there is no evidence of any online commercial activity through the respective websites in Germany or the Netherlands.

In connection with the documents indicating awards to SPARTA bicycles, there is no reference in the sense that these awards refer to the commercial position in the marketplace but they rather concern technical or mechanical attributes of the bicycles as such, like speed or other qualities of the electric bicycles, not proving actual sales in the market.

In connection with the document (from Wikipedia) and the video published on YouTube concerning the history of SPARTA, the vintage pictures and historical sales numbers or the Guinness World Records certificate, these are obviously irrelevant in terms of proving use of the mark during the relevant period of time.

Use of the mark need not be quantitatively significant for it to be deemed genuine. However, mere presumptions and suppositions cannot replace solid evidence.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of 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; 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 mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 47(2) 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, 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

Alicia BLAYA ALGARRA

Eva Inés PÉREZ SANTONJA

Vít MAHELKA

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.