OPPOSITION DIVISION
OPPOSITION No B 2 802 471
Avery Dennison Materials Nederland B.V., 140, Lammenschansweg, 2321 JX
Leiden, Netherlands (opponent), represented by Baker & McKenzie LLP, 100 New
Bridge Street, London EC4V 6JA, United Kingdom (professional representative)
a g a i n s t
PT. Purinusa Ekapersada, Sinar Mas Land Plaza Tower II 9th floor, Jalan M.H.
Thamrin no 51, Jakarta 10350, Indonesia, PT. Pabrik Kertas Tjiwi Kimia TBK,
Plaza BII, Tower 2, 7th Foor Jl. M. H. Thamrin No. 51, Jakarta 10350, Indonesia
(applicants), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213
Düsseldorf, Germany (professional representative).
On 28/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 802 471 is partially upheld, namely for the following
contested goods:
Class 16: Paper, cardboard; bookbinding material; stationery; adhesives for
stationery or household purposes; office requisites (except
furniture); plastic materials for packaging (not included in other
classes); printers’ type; printing blocks, stockform.
2. European Union trade mark application No 15 574 882 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 574 882 . The opposition is based on
international registration No 393 902 ‘ZigZag’ designating Spain, Portugal, Austria,
Italy and France and German trade mark registration No 2 906 556 ‘ZIGZAG’ in
Decision on Opposition No B 2 802 471 page: 2 of 13
regards to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR. The
opposition is also based on the non-registered trade mark ‘ZigZag’, used throughout
Austria, France, Germany, Italy, Spain, Portugal and the United Kingdom, in regards
to which the opponent invoked Article 8(4) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a) The goods
The goods on which the opposition is based are the following:
International registration No 393 902 designating Spain, Portugal, Austria, Italy and
France (earlier mark 1):
Class 16: Printable structures on paper specifically developed for cash registers.
German trade mark registration No 2 906 556 (earlier mark 2):
Class 16: Selfadhesive labels and selfadhesive supplied semifinished stock, in
particular in the form of multiple film laminates, especially out of paper and/or
synthetic foli materal, for the manufacture of self adhesive products, labels and the
like.
The contested goods are the following:
Class 16: Paper, cardboard; printed matter; bookbinding material; photographs;
stationery; adhesives for stationery or household purposes; artists’ materials; paint
brushes; typewriters and office requisites (except furniture); instructional and
teaching material (except apparatus); plastic materials for packaging (not included in
other classes); printers’ type; printing blocks, stockform.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The terms ‘in particular’ and ‘especially’, used in the opponent’s list of goods,
indicates that the specific goods are only examples of items included in the category
and that protection is not restricted to them. In other words, it introduces a non-
exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
Decision on Opposition No B 2 802 471 page: 3 of 13
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Contested goods in Class 16
The contested stationery and office requisites (except furniture) overlap with
selfadhesive labels of the opponent’s earlier mark 2 as far as they are self adhesive
labels for stationery purposes. Since the Opposition Division cannot dissect ex officio
the broad category of the contested goods, they are considered identical to the
opponent’s goods.
The contested printing blocks include as a broader category the printable structures
on paper specifically developed for cash registers of the opponent’s earlier mark 1.
Therefore, they are identical.
The contested adhesives for stationery or household purposes and the opponent’s
selfadhesive labels of the opponent’s earlier mark 2 coincide in producer, end user
and distribution channels. Therefore, they are similar.
The contested bookbinding material and the selfadhesive labels of earlier mark 2
coincide in purpose, nature, producer and distribution channels. Therefore, they are
similar to a high degree.
The contested paper, cardboard and plastic materials for packaging (not included in
other classes) are similar to a low degree to the selfadhesive labels of earlier mark 2
as they coincide in end user and distribution channels.
The contested printers’ type and the printable structures on paper specifically
developed for cash registers can coincide in nature and method of use. Therefore,
they are, at least, similar to a low degree.
The contested stockform and the opponent’s selfadhesive labels of the opponent’s
earlier mark 2 coincide in producer, end user and distribution channels. Therefore,
they are, at least, similar to a low degree
The contested printed matter; photographs; artists’ materials; paint brushes;
typewriters; instructional and teaching material (except apparatus) and all the goods
of the opponent’s marks differ in nature and purpose and have usually different
producers. Furthermore, they are neither complementary nor in competition.
Therefore, they are dissimilar.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods found to be identical or similar (to various degrees)
are directed at the public at large and business customers with specific knowledge.
Decision on Opposition No B 2 802 471 page: 4 of 13
The degree of attention may vary from average to above average, depending on the
specialised nature of the goods, the frequency of purchase and their price.
c) The signs
ZigZag
ZIGZAG
Earlier trade marks 1 and 2 Contested sign
The relevant territories are Spain, Portugal, Austria, Italy, France and Germany.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The earlier common element ‘ZIGZAG’ refers in all relevant territories to ‘a line or
course having abrupt alternate right and left turns’. As it is not descriptive, allusive or
otherwise weak for the relevant goods, it is distinctive.
The earlier signs are the word marks ‘ZigZag’ (earlier mark 1) and ‘ZIGZAG’ (earlier
mark 2
The contested sign consists of the verbal element ‘ZigZag’, with initial part ‘Zig’
depicted in bold round blue somewhat rounded letters. The star placed of the letter ‘i’
will be perceived as replacement for the dot over the ‘i’. As a star is a symbol for
excellency and therefore of laudatory character, it is non-distinctive for the relevant
goods The other part ‘Zag’ is positioned slightly lower and depicted in bold round
orange letters. The verbal element is surrounded by a yellow swirl which is of purely
decorative nature and therefore less distinctive than the verbal element. The verbal
element ‘ZigZag’ is also the most dominant (visually eye-catching) element of the
contested mark.
When signs consist of both verbal and figurative components, in principle, the verbal
component of the sign usually has a stronger impact on the consumer than the
figurative component. This is because the public does not tend to analyse signs and
will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (judgment of 14/07/2005, T-312/03, Selenium-
Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4, Best Tone (fig.) /
BETSTONE, § 24; and 13/12/2011, R 53/2011-5, Jumbo (fig.) / Device of an elephant
(fig.), § 59).
Visually, the signs coincide in their verbal elements ‘ZigZag’/’ZIGZAG’. The marks
differ merely in the depiction of the verbal element and the yellow swirl of the
contested mark which have no counterparts in the earlier marks.
Taking into account that signs are coinciding in their verbal elements and that the
verbal elements of signs usually have a stronger impact on the consumer than the
figurative component, the signs are highly similar.
Aurally, the signs are identical.
Decision on Opposition No B 2 802 471 page: 5 of 13
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. The signs differ only in the concept of the star of the
contested sign which is non-distinctive. Therefore, the signs are identical.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier marks
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
According to the opponent, the earlier marks has been extensively used and enjoys
an enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier marks will rest on
its distinctiveness per se. In the present case, the earlier trade marks as a whole has
no meaning for any of the goods in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as
normal.
e) Global assessment, other arguments and conclusion
The signs are aurally and conceptually identical and visually highly similar. The
contested goods are partly identical, partly similar (to various degrees) and partly
dissimilar to the goods of the opponent. The earlier sign posses a normal degree of
inherent distinctiveness and the level of attention may vary from average to above
average.
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the relevant public and therefore the opposition is partly well founded
on the basis of the opponent’s international registration No 393 902 designating
Spain, Portugal, Austria, Italy and France and German trade mark registration
No 2 906 556. As the similarities between the signs are overwhelming, the opposition
is also successful for the goods which were found to be similar only to a low degree
to the goods of the opponent.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar (to various degrees) to those of the earlier trade
mark.
Since the opposition is partially successful on the basis of the inherent
distinctiveness of the earlier marks, there is no need to assess the enhanced degree
of distinctiveness of the opposing marks due to its reputation as claimed by the
Decision on Opposition No B 2 802 471 page: 6 of 13
opponent and in relation to identical and similar goods. The result would be the same
even if the earlier marks enjoyed an enhanced degree of distinctiveness.
The rest of the contested goods are dissimilar. As similarity of goods and services is
a necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this Article and directed at these goods cannot be successful.
There is also no need to assess the claimed enhanced degree of distinctiveness of
the opposing marks in relation to dissimilar goods, as the similarity of goods and
services is a sine qua non for there to be likelihood of confusion. The result would be
the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.
REPUTATION — ARTICLE 8(5) EUTMR
The opponent invoked also Article 8(5) EUTMR and claimed that
earlier trade mark 1 has a reputation in Austria, France, Italy, Portugal, Spain for:
Class 16: printable structures on paper specifically developed for cash registers
and German trade mark registration ‘ZIGZAG’ No 2 906 556 (earlier mark 2) for
Class 16: selfadhesive labels and selfadhesive supplied semifinished stock, in
particular in the form of multiple film laminates, especially out of paper and/or
synthetic foli materal, for the manufacture of self adhesive products, labels and the
like.
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when
the following conditions are met.
The signs must be either identical or similar.
The opponent’s trade mark must have a reputation. The reputation must also
be prior to the filing of the contested trade mark; it must exist in the territory
concerned and for the goods and/or services on which the opposition is
based.
Risk of injury: use of the contested trade mark would take unfair advantage
of, or be detrimental to, the distinctive character or repute of the earlier trade
mark.
The abovementioned requirements are cumulative and, therefore, the absence of
any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR
(16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).
However, the fulfilment of all the abovementioned conditions may not be sufficient.
Decision on Opposition No B 2 802 471 page: 7 of 13
The opposition may still fail if the applicant establishes due cause for the use of the
contested trade mark.
In the present case, the applicants did not claim to have due cause for using the
contested mark. Therefore, in the absence of any indications to the contrary, it must
be assumed that no due cause exists.
a) The signs
The signs have already been compared above under the grounds of Article 8(1)
(b) EUTMR. Reference is made to those findings, which are equally valid for Article
8(5) EUTMR.
b) Reputation of the earlier trade marks
Reputation implies a knowledge threshold that is reached only when the earlier mark
is known by a significant part of the relevant public for the goods or services it
covers. The relevant public is, depending on the goods or services marketed, either
the public at large or a more specialised public.
In the present case, the contested trade mark was filed on 24/06/2016. Therefore,
the opponent was required to prove that the trade marks on which the opposition is
based had acquired a reputation in Austria, Italy, France, Portugal, Spain and
Germany prior to that date. The evidence must also show that the reputation was
acquired for the goods for which the opponent has claimed reputation, namely
Earlier mark 1:
Class 16: printable structures on paper specifically developed for cash registers.
Earlier mark 2:
Class 16: selfadhesive labels and selfadhesive supplied semifinished stock, in
particular in the form of multiple film laminates, especially out of paper and/or
synthetic foli materal, for the manufacture of self adhesive products, labels and the
like.
The opposition is directed against the following goods:
Class 16: printed matter; photographs; artists’ materials; paint brushes;
typewriters; instructional and teaching material (except apparatus).
In order to determine the mark’s level of reputation, all the relevant facts of the case
must be taken into consideration, including, in particular, the market share held by
the trade mark, the intensity, geographical extent and duration of its use, and the size
of the investment made by the undertaking in promoting it.
On 23/05/2017 the opponent submitted the following evidence:
Exhibit 1: Affidavit by Balthazar Martinus Nicolaas Maria Verbruggen, Director
Communication LGM-E at Avery Dennison Materials B.V. According to whom
the opponent is a worldwide leader in adhesive technologies, display graphics
and packaging materials.
Decision on Opposition No B 2 802 471 page: 8 of 13
Exhibit 2: Sale figures in of ZigZag products in thousand square meters and the
value of these sales for the years 2010-2016, concerning countries world wide
including Austria, France, Italy, Portugal, Spain and Germany. However, it is not
clear which goods are concerned.
Exhibit 3: FasRoll product data sheets promoting ZigZag products from April
1986. These sheets have been made available to the public and industry, inter
alia, in France, Italy and Spain.
Exhibit 4: Fasson product data sheet from November 2003, which provides
information on a range of self adhesive and non-adhesive products available
from the opponent’s group of companies in Europe.
Exhibit 5: Information about the domain http://label.averydennison.eu/ which
was registered on 7 April 2006 by the opponent’s Uk subsidiary Avery Dennison
UK Ltd. The website is promoting ZigZag products. Product data sheets are
available for the public and the industry for download.
Exhibit 6: Confirmation of registration of the above domain and an overview of
the activity of this website, and a selection of historical extracts showing the
opponent’s marks. A chart that the website has been active since at least as
early as 4 August 2013.
The Opposition Division finds that the evidence submitted by the opponent does not
demonstrate that the earlier trade mark acquired a reputation, as the evidence does
not provide any indication of the extent of recognition by the relevant public. The
evidence concerning sales figures consist of tables of unknown origin. The evidence
completely lacks information regarding the advertising costs or market share which
could be put into the context of the market and competitors in question. Even though
some of the evidence relates to the trade marks for which reputation is claimed, most
of the submitted evidence relates merely to the opponent as a company or as a
group. Under these circumstances, the Opposition Division concludes that the
opponent failed to prove that its trade marks have a reputation.
As seen above, it is a requirement for the opposition to be successful under
Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been
established that the earlier trade marks has a reputation, one of the necessary
conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be
rejected.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF
TRADE — ARTICLE 8(4) EUTMR
The opponent based the opposition on the following non-registered trade mark:
‘ZigZag’ used in the course of trade in Austria, France, Germany, Italy, Spain,
Portugal and the United Kingdom for the claimed goods:
Printing paper; Printing paper, for label applications; Self adhesive labels and self
adhesive supplied semi finished stock, in particular in the form of multiple film
laminates, especially out of paper and/or synthetic foli materal, for the manufacture
of self adhesive products, labels and the like; Printable structures on paper
specifically developed for cash registers.
The remaining contested goods for which the opposition is not successful are:
Decision on Opposition No B 2 802 471 page: 9 of 13
Class 16: Printed matter; photographs; artists’ materials; paint brushes;
typewriters; instructional and teaching material (except apparatus).
According to Article 95(1) EUTMR, the Office will examine the facts of its own motion
in proceedings before it; however, in proceedings relating to relative grounds for
refusal of registration, the Office will restrict this examination to the facts, evidence
and arguments submitted by the parties and the relief sought.
According to Rule 19(2)(d) EUTMIR (in the version in force at the time when the
adversarial part of the proceedings started), if the opposition is based on an earlier
right within the meaning of Article 8(4) EUTMR, the opposing party must provide
evidence of its acquisition, continued existence and scope of protection.
Therefore, the onus is on the opponent to submit all the information necessary for the
decision, including identifying the applicable law and providing all the necessary
information for its sound application. According to case-law, it is up to the opponent
‘… to provide OHIM not only with particulars showing that he satisfies the necessary
conditions, in accordance with the national law of which he is seeking application …
but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio
Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the
Opposition Division to determine safely that a particular right is provided for under the
law in question, as well as the conditions for acquisition of that right. The evidence
must further clarify whether the holder of the right is entitled to prohibit the use of a
subsequent trade mark, as well as the conditions under which the right may prevail
and be enforced vis-à-vis a subsequent trade mark.
As regards national law, the opponent must cite the provisions of the applicable law
on the conditions governing acquisition of rights and on the scope of protection of the
right. The opponent must provide a reference to the relevant legal provision (article
number, and the number and title of the law) and the content (text) of the legal
provision either as part of its submission or by highlighting it in a publication attached
to the submission (e.g. excerpts from an official journal, a legal commentary or a
court decision). As the opponent is required to prove the content of the applicable
law, it must provide the applicable law in the original language. If that language is not
the language of the proceedings, the opponent must also provide a complete
translation of the legal provisions invoked in accordance with the standard rules of
substantiation.
Where the opponent relies on national case-law to prove its case, it must also
provide the Office with the relevant case-law in sufficient detail and not merely by
reference to a publication somewhere in the legal literature.
Furthermore, the opponent must submit appropriate evidence of fulfilment of the
conditions of acquisition and of the scope of protection of the right invoked, as well as
evidence that the conditions of protection vis-à-vis the contested mark have actually
been met. In particular, it must put forward a cogent line of argument as to why use of
the contested mark would be successfully prevented under the applicable law.
In the present case, the opponent provided only information on the legal protection
granted to the type of trade sign invoked by the opponent, namely non-registered
trade mark, for the United Kingdom.
No such information was provided by the opponent in regards to Austria, France,
Germany, Italy, Spain and Portugal.
Decision on Opposition No B 2 802 471 page: 10 of 13
It follows from the above that the opponent did not succeed in proving the rights
under the applicable law as far as the non-registered trade mark on territories of
these Member States is concerned. Therefore, the opposition is not well-founded
under Article 8(4) EUTMR regarding Austria, France, Germany, Italy, Spain and
Portugal.
As information on the legal protection granted to the type of trade sign invoked by the
opponent, namely non-registered trade mark, for the United Kingdom was provided,
examination of Article 8(4) EUTMR will proceed in regards to the United Kingdom
According to Article 8(4) EUTMR, upon opposition by the proprietor of a
non-registered trade mark or of another sign used in the course of trade of more than
mere local significance, the trade mark applied for will not be registered where and to
the extent that, pursuant to the Union legislation or the law of the Member State
governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration
of the European Union trade mark, or the date of the priority claimed for the
application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent
trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following
requirements:
the earlier sign must have been used in the course of trade of more than local
significance prior to the filing of the contested trade mark;
pursuant to the law governing it, prior to the filing of the contested trade mark, the
opponent acquired rights to the sign on which the opposition is based, including
the right to prohibit the use of a subsequent trade mark;
the conditions under which the use of a subsequent trade mark may be prohibited
are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of
those conditions, the opposition based on a non-registered trade mark or other signs
used in the course of trade within the meaning of Article 8(4) EUTMR cannot
succeed.
a) Prior use in the course of trade of more than mere local significance
The condition requiring use in the course of trade is a fundamental requirement,
without which the sign in question cannot enjoy any protection against the
registration of a European Union trade mark, irrespective of the requirements to be
met under national law in order to acquire exclusive rights. Furthermore, such use
must indicate that the sign in question is of more than mere local significance.
It must be recalled that the object of the condition laid down in Article 8(4) EUTMR
relating to use in the course of trade of a sign of more than mere local significance is
to limit conflicts between signs by precluding an earlier right that is not sufficiently
definite — that is to say, important and significant in the course of trade — from
preventing registration of a new European Union trade mark. A right of opposition of
that kind must be reserved for signs with a real and actual presence on their relevant
Decision on Opposition No B 2 802 471 page: 11 of 13
market. To be capable of preventing registration of a new sign, the sign relied on in
opposition must actually be used in a sufficiently significant manner in the course of
trade, and its geographical extent must not be merely local, which implies, where the
territory in which that sign is protected may be regarded as other than local, that the
sign must be used in a substantial part of that territory.
In order to ascertain whether that is the case, account must be taken of the duration
and intensity of the use of the sign as a distinctive element for its addressees,
namely purchasers and consumers as well as suppliers and competitors. In that
regard, the use made of the sign in advertising and commercial correspondence is of
particular relevance. In addition, the condition relating to use in the course of trade
must be assessed separately for each of the territories in which the right relied on in
support of the opposition is protected. Finally, use of the sign in the course of trade
must be shown to have occurred before the date of the application for registration of
the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157,
159, 160, 163 and 166).
In the present case, the contested trade mark was filed on 24/06/2016.
Therefore, the opponent was required to prove that the sign on which the opposition
is based ‘ZigZag’ was used in the course of trade of more than local significance in
the United Kingdom prior to that date. The evidence must also show that the
opponent’s sign has been used in the course of trade for :
Printing paper; Printing paper, for label applications; Self adhesive labels and self
adhesive supplied semi finished stock, in particular in the form of multiple film
laminates, especially out of paper and/or synthetic foli materal, for the manufacture
of self adhesive products, labels and the like; Printable structures on paper
specifically developed for cash registers.
On 23/05/2017 the opponent submitted evidence consisting of:
Exhibit 1: Affidavit by Balthazar Martinus Nicolaas Maria Verbruggen, Director
Communication LGM-E at Avery Dennison Materials B.V. According to whom
the opponent is a worldwide leader in adhesive technologies, display graphics
and packaging materials.
Exhibit 2: Sale figures in of ZigZag products in thousand square meters and the
value of these sales for the years 2010-2016, concerning countries world wide
including the United Kingdom. However, it is not clear which goods are
concerned.
Exhibit 3: FasRoll product data sheets promoting ZigZag products from April
1986. These data sheets are available since 1986. These sheets have been
made available to the public and industry, inter alia, in the United Kingdom.
Exhibit 4: Fasson product data sheet from November 2003, which provides
information on a range of self adhesive and non-adhesive products available
from the opponent’s group of companies in Europe.
Exhibit 5: Information about the domain http://label.averydennison.eu/ which
was registered on 7 April 2006 by the opponent’s United Kingdom subsidiary
Avery Dennison UK Ltd. The website is promoting ZigZag products. Product
data sheets are available for the public and the industry for download.
Exhibit 6: Confirmation of registration of the above domain and an overview of
the activity of this website, and a selection of historical extracts showing the
opponent’s marks. A chart that the website has been active since at least as
early as 4 August 2013.
Decision on Opposition No B 2 802 471 page: 12 of 13
While the evidence suggests that some use of the signs have been made, it does not
meet the minimum threshold of ‘more than local significance’ set out in Article 8(4)
EUTMR.
A trade sign is of more than mere local significance in the relevant territory when its
impact is not confined to a small part of that territory, as is generally the case with a
town or a province (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77,
§ 41). The sign must be used in a substantial part of the territory of protection
(29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).
Whether or not a trade sign is of more than mere local significance may be
established by demonstrating the existence of a network of economically active
branches throughout the relevant territory, but also more simply, for example, by
producing invoices issued outside the region in which the proprietor has its principal
place of business, press cuttings showing the degree of recognition on the part of the
public of the sign relied on or by establishing that there are references to the
business establishment in travel guides (24/03/2009, T-318/06 – T-321/06, General
Optica, EU:T:2009:77, § 43).
The turnover tables, dated prior to the filing date of the contested sign, do not provide
the Opposition Division with sufficient information concerning the commercial volume,
the duration, and the frequency of use. No invoices are submitted which could point
to which regions or cities goods bearing the sign ‘ZigZag’ have been sold to.
Furthermore the submitted turnover figures are not broken down in a way that would
provide the Opposition Division with sufficient information regarding the geographical
dimension of the sign’s significance, that is to say, of the territory in which it is used to
identify it proprietor’s economic activity, namely the United Kingdom, as is apparent
from textual interpretation of Article 8(4) EUTMR.
Considering all of the above, the Opposition Division concludes that the evidence
submitted by the opponent is insufficient to prove that the earlier non-registered trade
mark was used in the course of trade in the United Kingdom of more than local
significance in connection with the goods on which the opposition was based before
the relevant date and in the relevant territory.
Following from the above, no use of more than local significance has been
demonstrated in the United Kingdom. Therefore, the opposition is not successful on
the grounds of Article 8(4) EUTMR.
b) Conclusion
The opposition is partly well-founded on the ground of Article 8(1)(b) EUTMR and is
not successful on the remaining grounds.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Decision on Opposition No B 2 802 471 page: 13 of 13
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Irina SOTIROVA André Gerd Günther
BOSSE
Plamen IVANOV
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.