OPPOSITION No B 3 051 827

Funline International, 149 East 36th Street, 10016 New York, United States of America (opponent), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Beiersdorf AG, Unnastr. 48, 20253 Hamburg, Germany (applicant), represented by Bomhard IP S.L., C/Bilbao 1, 5º, 03001 Alicante, Spain (professional representative).

On 17/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 827 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 17 875 711 for the word mark ‘ENERGY RUSH’, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 8 633 893 for the word mark ‘RUSH’. 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 European Union trade mark registration No 8 633 893 on which the opposition is based.

The date of filing of the contested application is 15/03/2018. 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 15/03/2013 to 14/03/2018 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 1 Chemicals for use in the manufacture of aphrodisiacs; chemical preparations for stimulating sexual activity; these goods not for medical or pharmaceutical use.

Class 3 Soaps; perfumery; cosmetics.

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 16/08/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 21/10/2018 to submit evidence of use of the earlier trade mark. On 10/10/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Exhibit 1: 30 invoices dated from 15/01/2016 to 30/07/2018 (10 invoices from each year) issued to various entities in France for products named ‘DISPLAY x 18 RUSH ORIGINAL FR — 10 ML’, ‘PLV A4 JUNGLE/RUSH/AMSTERDAM/BRONX — POPPERS’, ‘CARTON X 24 DISPLAYS DE 18 RUSH ORIGINAL FR — 10 ML’ etc.

 Exhibit 2: 51 invoices authenticated by Mr Hervé Delage, their expert accountant, dated from 23/06/2009 to 13/01/2016 (10 from 2009, 10 from 2011, 12 from 2012, six from 2013, three from 2014, nine from 2015 and one from 2016) issued to various entities in France for products named ‘BOX OF 42 RUSH UK — 13 ML’, ‘RUSH UK’, ‘RUSH FR’, ‘BOX OF 42 RUSH FR — 13 ML’, ‘LOT DE 3 RUSH ORIGINAL UK’, ‘DISPLAY OF 18 RUSH ORIGINAL UK’, ‘MEGA RUSH FR — 25 ML’, ‘GOLD RUSH PENTYL 9 ML’ etc.

 Exhibit 3: a sales table of ‘RUSH’ products from their expert accountant, Mr Hervé Delage, entitled ‘Historique des ventes du 01/01/2009 au 31/12/2015’.

 Exhibit 4: a sales table of ‘Rush’ products from the opponent, entitled ‘Historique des ventes du 01/01/2016 au 02/10/2018’.

 Exhibit 5: a leaflet in English from ‘Losangexpo 2018’, with various products such as energisers (poppers), lubricants (intimate gels), air fresheners, essential oils for aromatherapy and dietary supplements (oral solutions). The product bearing the trade mark ‘RUSH’, , appears in the category of energisers (poppers) as a product for recreational use by inhalation, with the following explanation: ‘Poppers are vasodilators, initially used in medicine for the treatment of certain heart diseases. ... previously marketed for medical purposes for some cardiac affections, the ampoules containing these substances produce at the opening a noise (pop) which gave the name to the product. The main side effects observed were euphoria and a feeling of relaxation, which were diverted to be used during sexual intercourse between individuals. Given their vasodilatory qualities, poppers have the reputation of helping to relax the individual, give short dizziness, sensations of internal warmth and exacerbated sensuality’.

 Exhibit 6: a leaflet in French from ‘Losangexpo 2015’. The products bearing the trade mark ‘RUSH’, namely and appear in the category of poppers.

 Exhibit 7: a leaflet, entitled ‘LE CHOC DES PLASIRS’ from ‘Losangexpo 2017’, bearing the trade mark ‘RUSH’, , appears above the inscription ‘LABORATOIRE FUNLINE No 1 FRANÇAIS DES POPPERS’.

 Exhibit 8: is not legible. According to the opponent it is an advert that appeared in various marketing campaigns in May 2018, advertising the opponent’s products, among them the products bearing the trade mark ‘RUSH’.

 Exhibit 9: an article in French from ‘La Tribune du Réseau Presse’ dated October 2018, entitled ‘Funline a de l’énergie à revendre’.

 Exhibit 10: image of a personal lubricant bottle bearing the mark ‘RUSH’ .

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence of use shows that the mark has been used for stimulating inhalants (poppers). There is also one document showing its use for personal lubricants. These goods are personal, final products directed at the general consumer, which are classified in Class 5 of the Nice Classification.

The earlier mark is registered for goods in Classes 1 and 3 as listed above. According to the ‘Explanatory Note’ to the ninth edition of the Nice Classification, applicable at the moment of filing of this earlier right, ‘Class 1 includes mainly chemical products for use in industry, science and agriculture, including those which go to the making of products belonging to other classes’¹.

Therefore, the goods in Class 1 for which the earlier mark is registered, namely chemicals for use in the manufacture of aphrodisiacs; chemical preparations for stimulating sexual activity; these goods not for medical or pharmaceutical use, are essentially chemicals used in the industry, ingredients sold to manufacturers, and not the final goods that target the end consumers. Consequently, the goods for which evidence of use was submitted do not fall within any of the categories for which the earlier mark is registered.

Therefore, the opponent has not shown use for the goods for which the mark is registered, but for other goods for which it has no registered protection.

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 (former Rule 22(2) EUTMIR, in force before 01/10/2017).

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

Catherine MEDINA

Anna ZIOŁKOWSKA

Alexandra APOSTOLAKIS

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.