OPPOSITION No B 2 721 945

Langenstein & Schemann GmbH, Hahnweg 139, 96450 Coburg, Germany (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Bankgasse 3, 90402 Nürnberg, Germany (professional representative)

a g a i n s t

Lasco Lubricants & Greases Trading L.L.C., Office No. 1106 Damac Business Tower, Al Abraj Street, Business Bay, Dubai, United Arab Emirates (applicant), represented by Revomark, 5 Cranwell Grove, Lightwater, Surrey GU18 5YD, United Kingdom (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 721 945 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 15 132 921 for the figurative mark ‘’, namely against all the goods and services in Classes 4, 12 and 35. The opposition is based on German trade mark registrations No 1 104 593 and 701 610, both for the figurative mark ‘’, German trade mark registration No 161 734 and European trade mark registration No 8 479 792, both for the word mark ‘Lasco’ and European trade mark registration No 8 673 121 for the figurative mark ‘’. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

German trade mark registrations No 1 104 593, 701 610 and 161 734,

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case the evidence filed by the opponent is not in the language of the proceedings.

On 20/07/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 25/01/2017 after an extension of time request filed by the opponent on 23/11/2016.

The opponent did not submit the necessary translations of the registration certificates/excerpts submitted in German. While it is true that the earlier goods were translated in its submissions of 23/01/2017, this translation is not sufficient to substantiate these earlier rights as important information is missing.

Rule 98(1) EUTMIR requires that the translation reproduces the structure and contents of the original document.

Therefore, the principle is that the entire document must be translated and follow the structure of the original document.

The Office does not consider that information already given in the language of the proceedings in the notice of opposition, or in documents attached thereto or submitted later (e.g. explanation of grounds, lists of earlier marks etc.) amounts to a valid translation of a registration document, such as a registration certificate, even where such indications have been accepted for admissibility purposes. The translation has to be on a stand-alone basis and cannot be assembled from fragments taken from other documents.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

The Opposition Division will now proceed with the examination of the opposition for the two remaining earlier rights, namely European trade mark registration No 8 479 792 for the word mark ‘Lasco’ and European trade mark registration No 8 673 121 for the figurative mark ‘’.

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 all the trade marks on which the opposition is based. The only remaining earlier rights after the substantiation are European Union trade marks No 8 479 792 and No 8 673 121.

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

The date of filing of the contested application is 22/02/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 22/02/2011 to 21/02/2016 inclusive.

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

EUTM 8 479 792  – Lasco

Class 7:        Machines; machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles);forming machines, forging machines and pressing machines, in particular for metal workpieces;pressing machines for hot forming of solid parts and warm forming of solid parts, in particular pre-forming presses, multipurpose presses, punch presses and drawing presses;pressing machines for cold forming of solid parts, in particular calibration presses and cold extrusion presses;forging hammers, in particular double-acting hammers and counter-blow hammers;screw presses;pressing machines for forming of sheet metal, in particular deep drawing presses, universal deep drawing presses and stamping presses;powder metal pressing machines;rolling machines, in particular cotter rolling machines and forge rolling machines;electric upset forming and drawing installations;machines for the production of building materials and the recycling of building materials, in particular machines for the manufacture of sandy limestone and sandy limestone facing elements, in particular pressing machines for the manufacture of sandy limestone and facing elements, locking stone installations and locking stone presses;tools (parts of machinery), sawing installations, in particular for sandy limestone;machines for mixing additives for the manufacture and recycling of building materials;stacking equipment and transporting equipment, in particular for sandy limestone;handling apparatus and handling systems for workpieces and building materials, in particular robots, handling machines and grippers;automatic tool changers;systems for packaging wall elements, in particular sandy limestone elements;hydraulic drives;control systems for the aforesaid goods;parts and replacement parts for the aforesaid goods.

Class 9:        Scientific, surveying, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity;remote maintenance and fully-automatic quality control systems for forming machines, forging machines and pressing machines, and for machines for the manufacture and recycling of building materials.

Class 16:        Printed matter.

Class 37:        Repair, servicing and modernisation and creation of turnkey factories in the field of forming machines, forging machines and pressing machines and for the manufacture and recycling of building materials.

Class 41:        Training of operating personnel and maintenance personnel, in particular in the field of forming technology and the production and recycling of building materials and automation technology.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; engineering;project management and planning of factories in the field of forming machines, forging machines and pressing machines and the manufacture and recycling of building materials;media design services;design and creation of homepages and Internet pages, webhosting;computer hardware consultancy and computer software consultancy.

EUTM 8 673 121  – 

Class 7:        Machines; machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles);forming machines, forging machines and pressing machines, in particular for metal workpieces; pressing machines for hot forming of solid parts and warm forming of solid parts, in particular pre-forming presses, multipurpose presses, punch presses and drawing presses; pressing machines for cold forming of solid parts, in particular calibration presses and cold extrusion presses; forging hammers, in particular double-acting hammers and counter-blow hammers; screw presses; pressing machines for forming of sheet metal, in particular deep drawing presses, universal deep drawing presses and stamping presses; powder metal pressing machines; rolling machines, in particular cotter rolling machines and forge rolling machines; electric upset forming and drawing installations; machines for the production of building materials and the recycling of building materials, in particular machines for the manufacture of sandy limestone and sandy limestone facing elements, in particular pressing machines for the manufacture of sandy limestone and facing elements, locking stone installations and locking stone presses; tools (parts of machinery), sawing installations, in particular for sandy limestone; machines for mixing additives for the manufacture and recycling of building materials; stacking equipment and transporting equipment, in particular for sandy limestone; handling apparatus and handling systems for workpieces and building materials, in particular robots, handling machines and grippers; automatic tool changers; systems for packaging wall elements, in particular sandy limestone elements; hydraulic drives; control systems for the aforesaid goods; parts and replacement parts for the aforesaid goods.

Class 9:        Scientific, surveying, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; remote maintenance and fully-automatic quality control systems for forming machines, forging machines and pressing machines, and for machines for the manufacture and recycling of building materials.

Class 16:        Printed matter.

Class 37:        Repair, servicing and modernisation and creation of turnkey factories in the field of forming machines, forging machines and pressing machines and for the manufacture and recycling of building materials.

Class 41:        Training of operating personnel and maintenance personnel, in particular in the field of forming technology and the production and recycling of building materials and automation technology.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; engineering;project management and planning of factories in the field of forming machines, forging machines and pressing machines and the manufacture and recycling of building materials;media design services; designing and creating homepages and Internet pages; webhosting; computer hardware consultancy; Computer software consulting.

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 04/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 25/11/2016 to submit evidence of use of the earlier trade marks. This deadline was extended, upon request by the opponent until 25/01/2017. On 25/01/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Attachment 1: Licensee agreement between Langenstein & Schemann GmbH and Lasco Umformtechnik GmbH about the use of the Lasco trade marks and confirming that the latter is the former’s daughter company.
• Attachment 2: Brochure with information about the company’s history from 1863 until 2013. The brochure contains information about hydraulic machines, hammers, screw presses, wedge rolls and other presses. The Lasco marks are shown on machines.
• Attachment 3: Brochure about hydraulic presses, dated October 2012. The addresses on the last pages refer to opponent’s seats in Germany, France, USA and the People’s Republic of China. No information about the distribution of these brochures. This also applies to the attachments 4-10 mentioned below. The Lasco marks are shown on machines.  
• Attachment 4: Brochure about forging hammers, dated October 2012. The Lasco marks are shown on machines.
• Attachment 5: Brochure about screw presses, dated October 2012. The Lasco marks are shown on machines.
• Attachment 6: Brochure about fully automatic stretching units, dated October 2012. The Lasco marks are shown on machines.
• Attachment 7: Brochure about electro-upsetters, dated October 2012. The Lasco marks are shown on machines.
• Attachment 8: Brochure about cross-wedges, dated October 2012. The Lasco marks are shown on machines.
• Attachment 9: Brochure about machines for the manufacturing of construction materials, dated April 2013. The Lasco marks are shown on machines.
• Attachment 10: brochure about block presses, dated February 2013. The Lasco marks are shown on machines.
• Attachments 11-19: Newsletters in PDF-Format from the years 2011-2015 with reports about company activities and important clients in Germany, Italy and Poland. There is additional information on the first page of the newsletters providing information about trade exhibitions in Hanover and Berlin where most likely the opponent was present; however, there is no additional information within the newsletters that would further corroborate this claim. There is no information about the distribution of these newsletters.
• Excerpts from the opponent’s website about automation and maintenance services offered by the opponent (undated).
• Information from the German company register about the opponent: annual closure 2014 and main activities (in German); dated 15/02/2016.

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 brochures and newsletters and supporting material such as company register information and website excerpts, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. It cannot be ascertained from the documents provided that machines under the name ‘Lasco’ were effectively sold to consumers in the European Union in the relevant time period. The newsletters and brochures all stem from the opponent, and are not supported by any other objective documents which would prove the extent of use of the mark, such as invoices. While it is true that the opponent claimed in its submission that annual turnover with machines in the years 2012-2016 amounted to at least 41,000,000 Euro, it was not capable to submit a single invoice or other document which would confirm the actual sales. It also did not specify where these sales were done.

While catalogues in themselves could — under certain circumstances — be conclusive evidence of sufficient extent of use (08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.), information on the sale outlets or other places of sale must be provided to give the Opposition Division conclusive data that goods were effectively sold within the relevant time period in the relevant territory. In that case it was necessary to take into account the fact that a large number of items designated by the trade mark Peer Storm were offered in the catalogues and in more than 240 shops in the United Kingdom for a significant part of the relevant period. Those factors supported the conclusion, in the context of a global assessment of whether use of the earlier mark was genuine, that the extent of such use was fairly significant.

 

The Opposition Division cannot retrieve comparable information from the documents provided by the Opponent. Contrary to the data provided in the case cited above (number of sale outlets throughout the United Kingdom), there is absolutely no direct or indirect information on whether actual sales were made. The annual turnover, which was claimed by the opponent and is also reflected in the German company register cannot remedy this, because there is no specific information on the actual sales of the precise products – only rather vague statements that 30.57% of sales amounted to the home market and the rest abroad without specifying what goods were sold under the marks in which year and in which territory. While machines were shown in the brochures, there is no or very little evidence in relation to the other earlier goods and services.

The use of the earlier mark on promotional and advertising material cannot be proved simply by producing copies of that material. It is also necessary to demonstrate that that material, regardless of its nature, has been sufficiently distributed to the relevant public in order to establish the genuine nature of the use of the mark at issue (02/02/2017, T-691/15, Cremcaffé by Julius Meinl, EU:T:2017:52, § 61),

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier marks.

Therefore, the opposition must be rejected pursuant to Article 42(2) 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

Tobias KLEE

Lars HELBERT

Sigrid DICKMANNS

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.