T-633/18; TON JONES / Jones (fig.); Rose Gesellschaft v EUIPO; Judgment of 17 January 2019; EU:C:2019:608; Language of the case: DE.
RESULT: Action dismissed
KEYWORDS: Proof of use
The applicant sought to register the mark TON JONES as an EUTM for goods in Class 25. An opposition based on the earlier figurative marks ‘Jones’, registered for goods in Class 25, was filed pursuant to Article 8(1)(b) CTMR.
The Opposition Division (OD) dismissed the opposition, finding that no genuine use of earlier marks had been proved. The opponent filed an appeal. The Board of Appeal (BoA) dismissed the appeal. Its final overall assessment was that the evidence of use submitted did not establish sufficient use of the earlier marks for the relevant goods during the relevant period.
The opponent filed an action with the General Court (GC), relying on one plea in law: (i) infringement of Article 18 EUTMR. The GC dismissed the action.
Use of the sign ‘Jones’ to designate shops located in Austria is relevant for determining the place of use, but does not meet the requirements of nature of use for the relevant goods (para. 86). Although evidence providing indications of the time of use of the sign ‘Jones’ was submitted, this use does not meet the relevant requirements as to the nature either since, in the catalogues and magazine submitted, the sign does not appear on the clothing, but in the page margins (para. 70), and is therefore open to multiple interpretations (para. 87).
The picture submitted by the opponent establishes use as a trade mark designating the commercial origin of clothing and thus meeting the requirements of nature of use, but does not provide any indication of the extent of use required to be relevant for the overall assessment of genuine use (para. 88).