OPPOSITION No B 3 041 228

Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Shenzhen Xinshengfeng Trading Company, 301, Building 47, Fengherili, Longhua District, Shenzhen 518109, People's Republic of China (applicant), represented by Colbert Innovation Toulouse, 2 ter rue Gustave de Clausade, 81800 Rabastens, France (professional representative).

On 04/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 041 228 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 (in Class 12) of European Union trade mark application No 17 426 611 (word mark:
‘autoxel’). The opposition is based on European Union trade mark registrations
No 8 414 922 (word mark: ‘AUTO XS’) and No 8 734 601 (figurative 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 the trade marks on which the opposition is based, namely the two above cited European Union trade marks.

The date of filing the contested application was 02/11/2017. 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 from 02/11/2012 to 01/11/2017 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 - which are the same for both marks - on which the opposition is based, namely the following:

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry.

Class 2: Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants; Mordants; Raw natural resins; Metals in foil and powder form for painters, decorators, printers and artists.

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices; Polishing paper.

Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting.

Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic substances adapted for medical use, food for babies; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides; Deodorants, other than for personal use.

Class 6: Common metals and their alloys; Metal building materials; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Safes; Goods of common metal not included in other classes; Ores.

Class 7: Machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs.

Class 8: Hand tools and implements (hand-operated); Cutlery; Side arms; Razors.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines and data-processing equipment; Fire-extinguishing apparatus; Peripherals adapted for use with computers; Protection devices for personal use against accidents.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12: Vehicles; Apparatus for locomotion by land, air or water; Except tyres for vehicle wheels and treads for recapping tyres.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes not of metal.

Class 20: Furniture, mirrors picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother of pearl, meerschaum and substitutes for all these materials or of plastics; Pet cushions.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); Padding and stuffing materials (except of rubber or plastics); Raw fibrous textile materials.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Wall hangings (non-textile).

Class 28: Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees.

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 06/11/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 11/01/2019 to submit evidence of use of the earlier trade marks. On 08/01/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Affidavit of Ms. Anja Baumgart, the opponent’s Buying director, dated 21/12/2018. It gives, in particular, information concerning for which goods the signs have been used, to which extent and the places in Germany, including advertisements from between 2012 and 2017 (A 1);

• Various examples of advertising and invoicing of the opponent (A 2-A 7);

• Sample copies of goods packaging bearing the earlier trade marks (A 8);

• Four pictures showing an example of a retail store (in Düsseldorf) (A 9);

• Online advertising for the earlier trade marks on the homepage www.aldi-sued.de (A 10);

• 60 copies of invoices dated between 2012 and 2017 from two suppliers to the opponent for the goods lambskin seat cover and wheel trims with the confirmations that these articles had been labelled with ‘AUTO XS’ (A 11, A 12);

• 100 copies of sales receipts issued by several of the opponent’s sales companies, showing examples of sales of the goods ‘Radzierblenden’ (wheel trim) and ‘gelenkfreie Wischblätter’ (joint-free wiper blades) bearing both of the signs (A 13);

• Around 40 copies of customer inquiries for different car accessories as regards ‘AUTO XS’ between 2012 and 2017 (A 14);

• Copies of extracts showing the goods of the earlier trade marks from advertisement magazines in the United Kingdom (B 1);

• 11 copies of example packaging for the goods in the United Kingdom (B 2);

• Six copies of invoices from suppliers to the opponent’s company in the United Kingdom (B 3);

• Six copies of internet extracts from the homepage www.aldi.co.uk showing the online advertising in the United Kingdom between 2012 and 2017 (B 4).

As far as the affidavit 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. However, 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. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

In addition, the comparatively high number of documents submitted cannot obscure the fact that the opponent has provided only very limited meaningful material. As already stated, the affidavit (A 1) can only be considered significant in connection with meaningful documents. This does not include, for example, the information in Annexes A 2 to A 7, A 10, B 1 and B 4 because it concerns, in particular, different advertising measures taken by the opponent, which do not say anything about the extent of use of the earlier marks. This also applies to the opponent’s packaging used, namely A 8 and B 2. Pictures of an example of a retail store in A 9 in Dusseldorf only show the place of use but give no indication as to the extent of use of the marks. Invoices to the opponent in A 11, A 12 and B 3 also do not provide this information, which also applies to the customer inquiries for different car accessories in A 14. Only A 13 gives the relevant information as regards time, place and extent of use of the earlier trade marks. However, it should be noted that only a few car accessories are listed. In addition, invoices addressed to the opponent cannot in themselves be taken into account because they do not make clear how and if the opponent has (further) used these goods. Nevertheless, on the basis of the comments made by those suppliers/manufacturers, the Office considers that material in favour of the opponent, because the mark ‘AUTO XS’ was affixed thereto. However, the very small number of invoices from the United Kingdom (6) in Annex B 3, which is already very limited, cannot be taken into account as they are outside the period to be assessed (end of 2017/2018). From the overall picture of the circumstances, including the information provided in the affidavit, it can be seen that the earlier marks were used for different vehicle/car accessories, as the opponent states above in its observations of 10/01/2019. The Office accepts this as a best‑case scenario for the opponent. Therefore, the opponent has shown proof of use for vehicle/car accessories.

However, this category, as put forward by the opponent itself, does not fall within any of those of the above goods, even those in Class 12, which would be most obvious. There are vehicles; apparatus for locomotion by land, air or water; except tyres for vehicle wheels and treads for recapping tyres, however vehicle/car accessories are neither included in nor overlap with them. There is not even a category with relevant similarity criteria, such as parts and/or components of vehicles. Thus, although the opponent has provided proof of use for vehicle/car accessories, the opponent has not shown proof of use for the goods in Class 12 or for the goods in any of the cited classes.

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 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

Claudia MARTINI

Peter QUAY

Gonzalo BILBAO TEJADA

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.