OPPOSITION No B 2 705 658

James Walker Group Limited, Lion House Woking, Surrey GU22, 8AP, the United Kingdom (opponent), represented by Nucleus IP Limited, 10 St. Bride Street, London, EC4A 4AD, the United Kingdom (professional representative)

a g a i n s t

Emac Complementos, S.L., Avenida de Madrid n°6, 46930 Quart de Poblet (Valencia), Spain (applicant), represented by Adelaida Espinosa Cuartero, c/ San Cristobal, 5-5ª, 46003 Valencia, Spain (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 705 658 is upheld, for all the contested goods:

2.        European Union trade mark application No 15 000 871 is rejected entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 000 871. The opposition is based on European Union trade mark No 3 299 856 and on the United Kingdom non-registered trade mark ‘METAFLEX’. The opponent invoked Article 8(1)(b), 8(5) and 8(4) EUTMR.

PROOF OF USE

In accordance with Article 42(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 No 3 299 856 ‘METAFLEX’.

The request was submitted in due time and is admissible as the earlier trade mark was registered on 03/03/2005, that is, more than five years prior to the relevant date mentioned above.

The contested application was filed on 13/01/2016. 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 13/01/2011 to 12/01/2016 inclusive.

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

Class 7:        Mechanical seals for hydraulic seals; roller cots, pickers, anti-vibration pads and anti-vibration mountings, high draught aprons, roller coverings.

Class 17:        Synthetic rubber compounds for sealing, material for packing, for jointing and for sealing, seals, gaskets and muffs for use in manufacturing, expansion joints, synthetic rubber and articles made for synthetic rubber, muffs and gaiters and pipe connectors.

Class 40:        Gasket and seal cutting and shaping services, seal gasket and refurbishment services.

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 12/12/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 17/02/2017 to submit evidence of use of the earlier trade mark. On 05/01/2017, within the time limit, the opponent submitted evidence of use. The evidence submitted by the opponent previously on 30/11/2016 will also be taken account.

The evidence to be taken into account is the following:

• A witness statement made by Patricia Collin, secretary of James Walker Group Limited. Declaring that the company has used the mark ‘METAFLEX’ in the EU and that the mark has acquired significant reputation and goodwill in the EU and an enhanced distinctiveness in relation to sealing gaskets and sealing joints. According to the statement, the opponent’s company was founded in 1880 and the trade mark ‘METAFLEX’ was first filed on 12/08/1949. The opponent uses its mark ‘METAFLEX’ in relation to gaskets for sealing purposes.

• The total value of the goods and services provided in the EU under  ‘METAFLEX’ in the past 5 years was £6,847K. ‘METAFLEX’ products have been marketed on the opponent’s website, exhibitions and in product and industry literature. ‘METAFLEX’ products have been exhibited at a number of significant exhibitions within the EU during the past five years, for example, Valve World Expo 2012, 2014 and 2016, Offshore Europe, ONS 2012 and 2014, API Energy 2013 and 2014, International Value Summit 2015, Oil Gas Technology Roadshow 2015, World Nuclear Exhibition 2014 and 2016. The opponent’s trademark has been introduced in numerous press articles, which are available on the opponent’s company website.

• Copies of articles entitled ‘History of the James Walker Group’; ‘Gasket’ (a Wikipedia article); James Walker launches the reliable solution for weir/type valve diagrams’; ‘Joint Integrity Success at Antwerp nuclear Plant’ these publications do not contain any information about the opponents trade mark.

• A printout from opponent’s website stating that the opponents company named James Walker Moorflex has a strong reputation for high performance sealing products and problem solving in the chemical and petrochemical sectors. This undated printout refers to that the Opponent’s trade mark ‘METAFLEX’ is used in relation to gaskets.

• A printout from the opponents website stating that the opponent produces many products that are applicable to the defence and aerospace sectors. There is also a list of  products  that the opponent uses the trade mark ‘METAFLEX’ for spiral wound gaskets. This printout bears the date 22/11/2016.

• A copy of an article ‘New material for use with Environmentally Acceptable Lubricants’ published on the opponent’s website. According to the article the opponent’s products are globally recognised by marine engineers for their quality and reliability, stating that the opponent produces metallic gaskets and spiral wound gaskets under the trade mark ‘METAFLEX’. This article bears the date 22/11/2016.

• A copy of an article from opponent’s website entitled ‘Metaflex SG IR Fire/Safe Gaskets’ listing the characteristics of the products bearing the trademark ‘METAFLEX’. This article was published on 22/11/2016.

• A copy of a short article with the title ‘James Walker launches the reliable solution for weir-type valve diagrams’. This printout bears the date 08/09/2016.

• A copy of a product range manual, in this document it is stated that the opponent's company has a reputation in the sealing industry and among various other trademarks the opponent uses the mark ‘METAFLEX’ to designate its spiral wound gaskets. This document is not dated.

• A copy of an article entitled ‘Metaflex is first choice for Polish refinery’, stating that 20 000 gaskets,/mostly ‘METAFLEX’ spiral wound types, have been shipped to Poland., This article was published on 27/04/2005.

• A copy of an article entitled ‘Fugitive emission control products win T/Luft’ published on opponent’s website on 27/04/2005. In this article it is stated that ‘METAFLEX’ spiral wound gaskets are all certified under the stringent TA-Luft emission control requirements.

• A copy of an article entitled ‘New gaskets take the heat’ published on the opponents website on 08/09/2016. In this article it is stated that the opponent has launched two new multi/purpose gaskets certified as fire safe product. The products bears the name ‘METAFLEX’.

• 12 invoices (3 of them issued to clients outside of the EU) relating to sales of ‘METAFLEX’ products, between 31/10/2009-28/01/2015.

• A copy of the opponent’s catalogue entitled ‘Gaskets and Jointings Guide Issue 7.5’ the catalogue contains information about the opponent’s company history and about the specifications of the product Spiral wound gaskets. This catalogue does not bear any date.

• A printout from webpage (www…./ wind-energy-paris/exhibitiors/) showing that the opponent introduced its product bearing the mark ‘METAFLEX’ at the exhibition Europe Premier Wind Energy Event in Paris. According to the printout the event took place between 17-20 Nov 2015.

• A copy of an article entitled ‘Long service awards demonstrate experience at James Walker Moorflex’. It is stated that opponent is involved to various activities related to metallic gasket production and cooperation in this field. This article was published on 21/04/2011 on the opponent’s website.

• A copy of an article entitled ‘The next generation of material for the oil and gas industry’; the article was published on the opponent’s website on 21/12/2016 stating that the opponent has led developments of materials used in oil and gas industry. There is no reference to the opponent’s trade mark ‘METAFLEX’.

The 9 invoices, the witness statement made by Patricia Collin and the product catalogues show that the place of use is the European Union. This can be inferred from the language of the documents (English), the currency mentioned (pounds) and some addresses in the United Kingdom, Austria, Poland, Portugal. Therefore, the evidence relates to the relevant territory.

Some part of the evidence is dated outside the relevant period, for example the printouts from the opponent’s website and some articles. Some of the evidence is not dated, for example the product catalogues. On the other hand, some of the most relevant items relate to the relevant period, for example some articles, nine invoices, the attendance at the Paris fair and some printouts from the opponent’s website. These documents are sufficient to show that the opponent has used its trade mark during the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the witness statement, the articles, the invoices and the printout showing the attendance at the trade fair show in Paris provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The evidence is conclusive that the goods were produced and sold through the relevant period to consumers in Poland, Austria, Portugal and the United Kingdom. The opponent exhibited its products at a trade fair show. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark with regard some goods (see below).     

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.

The evidence, in particular the articles and invoices, shows that the earlier sign was used in such a way as to establish a clear link between the goods and the company responsible for their marketing. Therefore, the evidence demonstrates that the opponent’s mark was used to identify the commercial origin of the goods in question that is, used in a trade mark sense.

The ‘METAFLEX’ mark is registered as a word mark. The Opposition Division considers that the submitted evidence demonstrates that the mark has been used as registered within the meaning of Article 15(1) second subparagraph, point (a) EUTMR.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence (in particular the articles and printouts from catalogues) demonstrates that the opponent has produced several types of gaskets.

However, the evidence does not succeed in establishing that the trade mark was put to genuine use for the rest of the goods and services on which the opposition is based. The proof of use mainly relates to gaskets, whereas there is no or little reference to the use of the opponent’s mark, in a trade mark sense, for the remaining goods and services.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288)

Since consumers are searching primarily for a product or service to meet their specific needs, the purpose of the product or service in question is vital for determining their choice. Consequently, it is of fundamental importance when defining a subcategory of goods or services (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 29).

The earlier EUTM is registered, among other things, for material for packing, for jointing and for sealing, seals. It is clear that this category of goods is sufficiently broad for several subcategories to be identified within it. The evidence shows that the contested EUTM has been used for gaskets. On the basis of the purpose of the goods used, the Opposition Division finds that gaskets, which fall under the broad category of material for packing, for jointing and for sealing, seals, constitute a sufficiently coherent and independent subcategory of those broad categories.

Therefore, based on the results of the assessment of proof of use, the Opposition Division will consider only the following of the opponent’s goods and services in its further examination of the opposition:

Class 17:        Gaskets.        

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.

1. The goods

The goods on which the opposition is based are the following:

Class 17:        Gaskets.

The contested goods are the following:

Class 6:        Profile sections and sealing joints of metal.

Class 19:        Mouldings, not of metal and Sealing membranes.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 6

The contested profile sections and sealing joints of metal are goods that might be used in construction, as well as the opponent’s goods, therefore these goods may have the same purpose, they target the same public and they may have the same distribution channels. Therefore these goods are similar.

Contested goods in Class 19

The contested mouldings, not of metal and sealing membranes are goods that might be used in construction as well as the opponent’s goods, therefore these goods may target the same public and they may have the same distribution channels. Therefore these goods are similar.

2. 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 similar are directed at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high, depending on the frequency of their purchase, their particular characteristics and their price.

3. The signs

METAFLEX	Novojunta Metaflex
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese-speaking part of the public, since the words ‘novo’; ‘junta’ and ‘meta’ in the contested sign have a meaning for the Portuguese-speaking part of the public.

The earlier sign is a word mark composed of two conjoined elements ‘meta’ and ‘flex’. It can be reasonably assumed that the relevant public will split the verbal element into two separate terms. The word ‘meta’ has a meaning in Portuguese and it will be understood as a finishing line, the word ‘flex’ will bring to mind the concept of flexibility referring to the ability to bend easily without breaking. Therefore this element is weak. The sign as a whole has no meaning and will be seen as a fanciful term which is distinctive to an average degree in the context of the relevant goods.

The contested sign is a word mark composed of two terms ‘novojunta’ and ‘metaflex’. It can be reasonably assumed that the relevant public will split the verbal element ‘novojunta’ into two separate elements. The word ‘novo’ has a meaning in Portuguese and it will be understood as a new, recently made. The word ‘junta’ means in Portuguese to join; to connect. Given that these words have a clear connection with the kind of the goods, this element is weak.

Visually and aurally the signs coincide in the element ‘Metaflex’ which constitutes the earlier sign and is the most distinctive element in the contested sign. However, they differ in the element ‘Novojunta’, which is weak in relation to the relevant goods.

Therefore, the signs are visually and aurally highly similar.

Conceptually, the element ‘Metaflex’, included in both signs, will be associated with the meaning explained above. On the other hand, the element ‘novojunta’ conveys an additional concept, albeit lowly distinctive, in the contested sign. To that extent, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

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 mark 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 mark will rest on its distinctiveness per se. In the present case, the earlier trade mark 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 mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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).

In the present case, the goods are similar. The signs are visually and aurally highly similar. The goods found to be similar are directed at a public with specific professional knowledge or expertise. The degree of attention will vary from average to high, as explained in section b).

Having regard also to the principle of interdependence (i.e. a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods or services, and vice versa), it is considered that the significant commonalities between the signs, together with the similarity of the goods are sufficient to outweigh the difference between the signs and may induce at least part of the public to believe that the conflicting goods found to be similar come from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Portuguese- speaking parts of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested mark must be rejected for all the contested goods and the EUTM application must be rejected in its entirety.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right ‘METAFLEX’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1) (4) and (5) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Michaela SIMANDLOVA

Liina PUU

Loreto URRACA LUQUE

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.