altecnic | Decision 2034513 – Altec Mittig und Manger GmbH v. Altecnic Limited

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OPPOSITION No B 2 034 513

Altec Mittig und Manger GmbH, Windmühlenweg 21, 07907 Schleiz, Germany (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Widenmayerstraße 47, 80538 Munich, Germany (professional representative)

a g a i n s t

Altecnic Limited, Mustang Drive, Stafford ST16 1GW, United Kingdom (applicant), represented by Swindell & Pearson Ltd, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative).

On 13/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 034 513 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 10 651 511 for the figurative mark http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=87105237&key=2a9991a10a840803398a1cf1a92438d7, namely against all the goods and services in Classes 11, 35 and 37. The opposition is based on German trade mark registration No 39 409 072 for the word mark ‘ALTEC’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of German trade mark No 39 409 072, ‘ALTEC’.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 05/04/2012. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 05/04/2007 to 04/04/2012 inclusive. Furthermore, the evidence must show use of the trade mark for the goods in Classes 7, 9 and 11 on which the opposition is based, namely the following:

Solar installations for the transformation of solar energy into heat; Solar-technology installations for the heating of service water as well as for heating, cooling and distilling, and the parts therefor; solar-powered motors (except for land vehicles); Photovoltaic installations and wind power plants and the parts therefor for obtaining electrical energy for both network supply and independent use; trackers as parts of the aforementioned installations.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 08/11/2012, according to Rule 22(2) EUTMIR, the Office gave the opponent until 13/01/2013 to submit evidence of use of the earlier trade mark. On 11/01/2013, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

  • Item 1: declaration in lieu of an oath issued on 10/01/2013 by Mr Holger Mittig, chairman of the board of directors of the opponent, declaring that the earlier mark has been used in Germany for mounting components for photovoltaic panels, complete mounting systems for all types of buildings, free-standing structures and roofing systems since 2000. The earlier mark has also been used in Germany for solar carports since 2010. A list is included of the annual turnovers achieved from 2007 to 2012 under the earlier mark in Germany. The list is not broken down into products. The declaration does not make reference to the rest of the documents submitted and the statements regarding the annual turnovers are not supported by any other document.

  • Item 2: excerpts from the website www.altec-solartechnik.de made on 07/01/2013. The excerpt entitled ‘Your specialist for solar and photovoltaic’ refers to the company ALTEC Solartechnik AG and to its business activities. The sign ‘ALTEC’ is used as a company name, except in a reference to the product ‘ALTEC Systemtechnik carport finess’. The excerpt entitled ‘ALTEC’s range of products’ lists goods such as single parts, mounting systems, systems engineering, information systems and electric mobility. It also describes ‘ALTEC mounting systems for photovoltaics’, saying that the client can choose from a wide selection of components for photovoltaic installations, as there is a core range and also newly developed products. ‘ALTEC Single Parts’, according to the excerpt, comprise ‘single-components for mounting photovoltaic-electric panels, solar-thermal units plus additional PV installation materials’. ‘ALTEC Information systems’ are high-class and well-designed media for information and presentations. The rest of the excerpts refer to the types of mounting systems for solar panels offered on the website and contain related images. These documents do not indicate the numbers of units sold or sales figures.

  • Item 3: a page on which the earlier mark ‘ALTEC’ appears twice and the verbal element ‘SOLARTECHNIK’ is also visible; images depicting solar panels and a carport are also visible. The website www.altec-solartechnik.de is visible on the left of the page. This document appears to be a front page or commercial paper of some kind and is undated.

  • Item 4: two delivery orders to two German companies dated 12/08/2010 and 03/06/2011. The earlier mark appears in the description of two items, with a quantity of zero for one item and one for the other. One unit is an insignificant quantity for a market such as Germany. The other two items that appear in the delivery orders do not bear the earlier mark and cannot be cross-referenced with a reference number in any other document. Consequently, the sign under which they were offered for sale is unknown. In addition, delivery orders without the stamp or signature of the recipient do not prove that the products described have reached the recipient or that the sale was completed. The purpose of this type of document is for the seller to indicate to the consumer the products that will be sent. Unlike invoices, the purpose of delivery orders is not to prove the sale or acquisition of a product. The prices of the items do not appear in the documents.

  • Item 5: an undated brochure with a photograph, a product description of ‘ALTEC Carport finess’ and contact information.

  • Item 6: two undated images depicting a mounting system and a photograph in which the earlier mark appears.

  • Item 7: front pages and back covers of five product catalogues and price lists of the company Altec Solartechnik for 2006, 2010/2011 and 2012/2013. Two product catalogues are undated and one of them has ‘2008/2009’ hand-written on the catalogue.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely delivery orders (Item 4), and the self-explanatory character of this item and of the rest of the evidence, as a result of the pictures they contain, the Opposition Division considers that there is no need to request a translation.

Having examined the material above, the Opposition Division finds that the evidence submitted is insufficient to establish genuine use of the trade mark.

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).

Although the evidence submitted might prove the place, nature and time of use of the earlier mark for at most some of the relevant goods, such as parts of solar-technology installations, in any event the opponent has failed to submit sufficient evidence regarding the extent of use of the earlier mark in relation to the relevant goods.

The claims regarding the annual turnovers achieved from 2007 to 2012 under the earlier mark in Germany made in the declaration in lieu of an oath (Item 1) have not been sufficiently supported with further evidence. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. Further evidence is necessary to establish use, such as evidence originating from independent sources or common commercial or corporate documents previously prepared by the opponent with another purpose than being submitted during the present opposition proceedings.

In the present case, the only documents that refer to use and could support the sales volume indicated in Item 1 are the two delivery orders (Item 4). However, as stated above, only one item bearing the earlier mark is alleged to have been delivered and its price is unknown. The quantity delivered of the other item bearing the earlier mark is shown as zero. The remaining items cannot be cross-referenced with any other documents, in particular with the product catalogues or price lists (Item 7); therefore, the trade mark they bore when allegedly delivered is not known.

The Opposition Division finds it impossible to deduce from the material submitted that the opponent has seriously tried to use the trade mark at issue in the relevant market and period. Although the opponent is not obliged to reveal the total volume of sales or turnover figures, it must show at least some evidence of the commercial volume of use, which is one of the abovementioned factors that are relevant for evaluating the extent of use. The opponent did not submit any accounting documents or any documents showing the turnover related to the mark and did not demonstrate that a certain amount of sales occurred during the relevant five-year period relating to the relevant goods. Taking into account the characteristics of the goods for which the mark is registered and the high commercial volume claimed for the German market in Item 1, the opponent should have easily been able to produce some evidence of commercial transactions during the relevant period. While it is true that the proprietor has a free choice of the means of proving extent of use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to show the reality of the commercial use of the mark, at least to dispel any possible doubt that this use might be merely internal, sporadic or token.

The evidence, taken as a whole, does not provide sufficient indications to allow the Opposition Division, without resorting to probabilities or suppositions, to conclude whether or not there were any actual sales of the goods in question on the German market or to what extent the goods have been distributed. Taking the documents as a whole, they cannot prove the extent of any distribution or the number of sales for the goods protected by the mark. The mere existence of a website (Item 2), a brochure (Item 5), one photograph in which the earlier mark is visible (Item 6), and the front page and back covers of catalogues and a price list (Item 7), at the most, make it probable or credible that the goods displayed under the earlier mark were sold or, at least, offered for sale, but this cannot be proved without any evidence regarding the extent of use of these goods. They are not supported by any other documents, which should contain the abovementioned missing information on commercial volume.

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

Andrea VALISA

Alexandra APOSTOLAKIS 

Pedro JURADO MONTEJANO

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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