OPPOSITION No B 2 639 790

 

Jose Cambronero Garcia, Bernardas 14, 13270 Almagro, Ciudad Real, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

 

a g a i n s t

 

Primatech Metallverarbeitung GmbH, Gewerbestraße 5, 4774 St. Marienkirchen / Schärding, Austria (applicant), represented by Prof. Hintermayr & Partner, Landstr. 12 / Arkade, 4020 Linz, Austria (professional representative).

 

On 26/09/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 639 790 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 and services of European Union trade mark application No 14 525 448 for the word mark ‘ENERQ’, which are included in Classes 9, 11 and 37. The opposition is based on Spanish trade mark registration No 2 661 862 for the figurative trade mark which is registered for goods in Class 9. The opponent invoked Article 8(1)(b) EUTMR.

 

 

PROOF OF USE

 

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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 Spanish earlier mark on which the opposition is based namely Spanish trade mark registration No 2 661 862 for the figurative trade mark .

 

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

 

The contested application was published on 23/10/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 23/10/2010 to 22/10/2015 inclusive.

 

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

 

Class 9:        Transformers. Apparatus and instruments for the conduction, distribution, accumulation, regulation or control of electricity.

 

 

According to Rule 22(3) EUTMIR, 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 and services in respect of which it is registered and on which the opposition is based.

 

On 07/12/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/02/2017 to submit evidence of use of the earlier trade mark. This time limit was extended until 12/04/2017. On 10/04/2017, within the time limit, the opponent submitted evidence of use.

 

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 is the following:

 

Annex 1

 

Six delivery notes dated within the relevant period. The header is as follows:

 

The notes are addressed to four different companies with addresses in two towns in Spain (Almagro and Terrassa). One of the six notes does not indicate the address of the recipient but only its name. One of the four companies is ‘Torytrans S.L.’ whose name also appears in the header. No amounts are indicated. On three of the notes, no goods are mentioned and they just refer to a number of ‘packages’ (‘1 package’, ‘2 packages)’. The descriptions of the goods are as follows on the remaining notes:

 

• ‘’XX fans’ (where ‘XX’ is a trade mark other than the earlier mark, which is not divulged here for confidentiality purposes, no quantities being indicated),
• ‘YY transformer’ where YY is also another trade mark not related at all to the earlier mark,
• ‘Harmonics measurement equipment’ (quant. 1), and
• ‘ZZ Transformer’ (quant. 1) where ‘ZZ’ is again a trade mark other than the earlier mark.

 

ANNEX 2

 

Letters with the same header as the delivery notes of Annex 1:

 

• The first one is titled ‘we communicate our new address and fax No from the next 12 April 2010’ and it includes a list of names of employees from the company ‘ENERQ’ and their contact details.

 

• The second one, dated 10/05/2011, whose recipient is not indicated, starts with the sentence ‘I send you the following information’  which is followed by a list of documents such as ‘Endesa invoice from 19 March to 18 April 2011’, ‘ADSL portable invoice from 18 February to 17 march’, ‘Local insurance MAPFRE’, ‘UPS invoice,’ ‘landline invoice’, etc). The next three letters dated 2012, 2013 and 2014 are of the same type. Therefore, these letters include a list of invoices corresponding to the company’s operating costs.

 

• The last document is a page, still with the same header, titled ‘STOCK EN ENERQ TERRASSA’. It contains a list of equipment (various transformers) with their characteristics and photographs. It is difficult to see any trade mark on the photographs of goods. By magnifying the photographs,  can be seen on some, never  .

 

 

ANNEX 3

 

• Undated letter with the header  containing a list of names and contacts;

 

• Letter entitled ‘STOCK EN ENERQ TERRASSA’ (same as previously mentioned in Annex 2);

 

• Catalogue, undated, with the following cover page:

 

. ‘ENERQ’ is not mentioned on this cover page and only appears on page 7 entitled ‘COMMERCIAL NETWORK’ as the name of the representative of ‘Torytrans’ for the Northern area of Spain whereas the names of other companies are indicated for the central part, the Southern part and the Eastern part of Spain. The goods are transformers, resistors, filters, voltage regulators. No trade mark can be seen on the photographs of the goods.

 

• A document, undated, in Spanish, which the opponent describes as a ‘triptych with products and services of ENERQ.’  The cover page shows the previously mentioned ‘ENERQ’ and ‘TORYTRANS S.L’. logotypes. The inside pages mention that ‘ENERQ’ offers technical, commercial and logistical services to manufacturers whose head office is outside the region of Catalonia that look forward to providing the best attention to distributors of electrical equipment and to consumers’ (the document is in Spanish, the above is an approximate translation for the sake of the present decision).

 

• Printouts from the website www.enerq.es, in Spanish. There are photographs of some electrical goods not bearing any trade mark. The activities of ‘ENERQ’ are described as commercial, technical and logistics services (visits to distributors to present catalogues, follow-up of orders, studies of energetic efficiency, assistance for installation and problem solving, design of products, reception and sending of products).

 

• Certificate from the Internet Service Provider of the company ‘Torytrans’ dated 31/01/2016 concerning the domain name ‘enerq.es’.

 

 

ANNEX 4

 

Several invoices (dated 2012, 2013, 2015) for the attention of the company ‘ENERQ’ (for instance for the rental of a car, for stationery (sheets of paper, toner), for cleaning products, and in relation to a flight).

 

 

ANNEX 5

Three sales invoices with the header :

 

• One dated 22/11/2010, for the attention of a company in Barcelona concerning 1 item designated as ‘Complement to variable load’ and 3 ‘Transformers’.
• One dated 25/05/2011, for the attention of a company in Barcelona for a service of ‘measurement and analysis of quality and energy efficiency of the Farga Lacambra’.
• One dated 01/10/2011, for the attention of a company in the region of Catalonia for 3 services of ‘calculation and study modular harmonic filter 250 kW’.

 

ANNEX 6

 

Documents described by the opponent as ‘offers’ of various ‘ENERQ’ products. They seem to be estimates sent to customers in the years 2010, 2011, 2012, 2013, 2014 and 2015.  The header is the same as above. No trade marks are mentioned in the descriptions of the goods. No trade mark can be seen on the photographs of the goods next to their descriptions except in the case of one ‘Tsingle-phase toroidal transformer’ on which ‘TORYTRANS’ can be seen. The last offer does not concern goods but a service of analysis of electrical energy quality.

 

ANNEX 7

 

The opponent’s list of evidence indicates that the document in this annex is an order placed by ‘ENERQ’ with a provider. It is dated 31/03/2011. The goods are described as being 4 capacitors, 4 extractors, 1 adjustable thermostat.

 

ANNEX 8

 

The opponent indicates that this annex contains various documents related with the use of the trade mark ‘ENERQ’. It further describes these documents as:

 

• An invoice for maintenance services dated 20/12/2016 provided by ‘ENERQ’ to a company in the region of Catalonia. In this document, ‘ENERQ’ is only mentioned in the header which is the same as in other documents. The service is described as ‘autotrap preventive maintenance service’.
• The second document dated 09/01/2017 contains a list of titles of documents (‘ENDESA invoice, ORANGE mobil invoice’, VISA December) (same type of documents as in Annexes 2 and 3).
• Offer (estimate) for a ‘single phase transformer’ (no trade mark indicated) dated 12/01/2017.
• Copy of the business card of the Technical and Commercial Director of ‘ENERQ’ and copies of the current and new logotypes of ‘ENERQ’.
• Copy of a shipping label with the indication that the sender is ‘Enerq’ .

 

 

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

 

 

According to the Opposition Division, the signs     and ‘ENERQ’ are not used in the evidence as trade marks in relation to the goods for which the mark is registered namely transformers; apparatus for the conduction, distribution, accumulation, regulation or control of electricity in Class 9.

 

In relation to the goods mentioned (transformers and other electric apparatus), the ‘ENERQ’ signs are consistently used as a company name or a company logotype.

 

‘The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services … The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive’, i.e. it cannot be considered to be used as a trade mark (11/09/2007, C-17/06, Céline, EU:C:2007:497, and 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156).

 

In the present case, some of the documents in Annex 3 explicitly establish that the company ‘ENERQ’ takes care of the distribution and commercial representation of transformers and other electrical goods whose manufacturer is the company ‘TORYTRANS’. The names of both companies appear in the header of the delivery notes (Annex 1), the offers for the goods (Annexes 6 and 8) and the order placed by ENERQ (Annex 7) but there is no indication that such goods are marketed under a trade mark ‘ENERQ’. On the contrary, it can rather be gathered from the documents that at least some of the goods are marketed under the trade mark ‘TORYTRANS’. Indeed, the goods are never referred to as ‘ENERQ’ and the only instances of a trade mark in relation to such goods are the trade mark ‘TORYTRANS’ on one of the transformers presented in an offer (Annex 6) and in the ‘STOCK’ document (Annexes 2 and 3), and other trade marks (designated as ‘XX’, ‘YY’, ‘ZZ’ above for the sake of confidentiality) in relation to fans/transformers. Furthermore, the catalogue of the goods is titled ‘TORYTRANS’ not ‘ENERQ’ and just briefly mentions the company ‘ENERQ’ as one of the commercial representatives of the former which is not a party to these proceedings, for the Northern part of Spain, whereas other companies are mentioned for other regions of the country.

 

The invoices to the attention of the opponent for stationery, travels, etc. (Annex 4) and the letters containing lists of documents which also seem to be invoices related to the operating costs of the company ‘ENERQ’ (Annexes 2 and 8) just allow inference that the company ‘ENERQ’ is operating but not that goods bearing the trade mark ‘ENERQ’ are available on the market. The business card, the document concerning the domain name, and the copies of logotypes on blank pages are obviously not more revealing. Finally, the fact that the company ‘ENERQ’ orders transformers from another company (Annex 7) does not indicate that it subsequently markets such goods under the trade mark ‘ENERQ’.

 

In view of the above, the Opposition Division considers that the evidence does not show use of the sign as a trade mark, at least not in relation to the goods for which the earlier mark is registered and, consequently, that the opponent has not provided sufficient indications concerning the nature of the use of the earlier mark.

 

 

 

At most, the evidence only contains some indications of use of a trade mark ‘ENERQ’ in relation to representation and procurement services and of other logistical and engineering services in relation to goods in the field of electricity. It is not necessary to assess whether such use could qualify as being genuine because the earlier trade mark is not registered for such services, but exclusively for the previously mentioned goods in Class 9. The scope of the protection of the earlier trade mark cannot be extended to goods other than those for which it is registered and on which the opposition is based.

 

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, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

 

In view of the above, 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 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

 

 

COSTS

 

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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

 

 

Boyana NAYDENOVA

Catherine MEDINA

Adriana VAN ROODEN

 

 

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

 

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.