OPPOSITION No B 2 428 046
Tempus Internacional – Importação de Relojoaria, S. A., Av. Infante D. Henrique, Lote 1679, r/c dto – clj, 1950 420 Lisbon, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados – Consultores, Lda., Rua Castilho, 167, 2º andar,
1070-050 Lisbon, Portugal (professional representative)
a g a i n s t
Sigel GmbH, Bäumenheimer Str. 10, 86690 Mertingen, Germany (applicant), represented by Fritzsche Patent, Naupliastr. 110, 81545 Munich, Germany (professional representative).
On 01/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 428 046 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 13 050 067 ‘ARTETEMPUS‘. The opposition is based on Portuguese trade mark registration No 375 618 ‘TEMPUS’. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition shall be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 05/08/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Portugal from 05/08/2009 to 04/08/2014 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 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; watches, horological articles and other chronometric instruments.
Class 39: Distribution services in respect of jewellery, precious stones, watches and horological material.
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 30/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/06/2016 to submit evidence of use of the earlier trade mark. On 03/06/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
- Doc. 1: catalogue ‘Tempus Internacional S.A., Corporate Gift’ showing watches of various brands (e.g. ‘Tissot’ or ‘Longines’) and information on the services provided in relation to these watches. The catalogue is undated.
- Doc. 2: invoice for the sale of one golden bracelet under the mark ‘TEMPUS’ to Tempus Distribuiçao, SA for EUR 366 in January 2010.
- Doc. 3: invoice for the sale of one pair of earrings under the mark ‘TEMPUS’ to Tempus Distribuiçao, SA for EUR 972 in July 2010.
- Doc. 4: invoice for the sale of 304 GAU (‘gold grams’) of thin gold under the mark ‘TEMPUS’ for EUR 16.047 to a client in Portugal in December 2012.
- Doc. 5: invoice for the sale of 343 GAU (‘gold grams’) of thin gold under the mark ‘TEMPUS’ for EUR 12.310 to the same client in Portugal in May 2013.
All the documents show that the place of use is Portugal. This can be inferred from the language of the documents (Portuguese), and some addresses in Portugal. Therefore, the evidence relates to the relevant territory.
The invoices (docs. 2-5) are dated within the relevant period. The catalogue (doc. 1) is undated.
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 evidence provided by the opponent shows use of the mark in three separate areas: Doc. 1 concerns the use of the mark for services consisting in obtaining, packaging and delivering of watches (bearing third parties’ brands) as gifts. Docs. 2-3 concern use of the mark for jewellery and docs. 4-5 relate to the use of the mark for gold (as raw material). These pieces of evidence are not related among each other. They concern separate fields of trade and do not provide any information concerning the use of the mark in the other fields (for example as regards the time or extent of use).
In doc. 1, there is no clear information about the extent of use of the mark for the relevant services. There is only vague information that Tempus Internacional is the main watchmaker group in Portugal and that it represents the world leaders in watchmaking in Portugal. Such unspecific information, moreover stemming from the opponent itself, is not a persuasive proof of a sufficient extent of use of the mark for the relevant services. Furthermore, the opponent submitted only one catalogue without any further proof or information about the extent of its distribution.
Regarding use of the mark for jewellery, docs. 2-3 show the sale of merely two jewellery items for a total price of EUR 1338 within a relatively short period of seven months. This is a clearly insufficient extent of use of the mark for jewellery.
The invoices for the sale of gold (as raw material) show the total sales for more than EUR 18 000. Despite the very limited frequency and length of use (two instances of sales to a single client within six months), these sales are considered to prove a sufficient extent of use of the mark for gold in view of the high sales figures and the very specific market concerned.
The evidence shows that the mark has been used as registered.
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 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, but only in relation to gold.
The use of the mark for services consisting in obtaining, packaging and delivering of watches (that partially fall under the opponent’s registered services in Class 39) has not been proven because there are not enough indications concerning the time and extent of use of the mark.
As for the use for jewellery, the evidence is deficient with regard to the extent of use of the mark. Furthermore, the invoices for the sale of jewellery (docs. 2-3) show that the buyer is the Tempus Distribuiçao, SA company with an identical address to that of the opponent. Consequently, the invoices show only an internal use of the mark and not an outward and public use that is required for a genuine use of the mark.
As mentioned above, 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 shall, 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.
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 sub-categories 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 sub-category or sub-categories 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 sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288).
In the present case, the evidence proves use only for gold. These goods can be considered to form an objective subcategory of precious metals in Class 14 based on the kind of metal concerned. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for gold in Class 14. Genuine use for all the other registered goods and services has not been proven.
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.
- The goods and services
The goods on which the opposition is based are the following:
Class 14: Gold.
The contested goods and services are the following:
Class 14: Timepieces; Dials [clock- and watchmaking]; Clock hands [clock- and watchmaking]; Clock cases; Dials [clock- and watchmaking]; Table watches; Parts for clocks; Clocks and watches; Digital clocks; Digital clocks incorporating radios; Clocks for world time zones; Clocks incorporating ceramics; Horological instruments having quartz movements; Small clocks; Watches; Watch cases; Movements for clocks and watches; Clocks and watches, electric; Clocks and watches; Time instruments; Clocks and watches, electric; Clocks and parts therefor.
Class 42: Designing of watches; Designing of watches; Designing of watches.
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 14
The opponent’s gold is a raw material used for example by jewellers for making jewellery. The contested goods are, in essence, various types of clocks and watches, and parts and accessories therefor. Clocks and watches are instruments for measuring time that can also serve as interior decoration (clocks) or for personal adornment (watches).
The goods compared have a different nature because the opponent’s goods are a basic, unprocessed raw material whereas the contested goods are finished complex products (or their parts and accessories). The purpose and method of use is, consequently, quite different as well. Furthermore, the distribution channels, sales outlets and the relevant consumers do not coincide and the goods are usually produced by different types of undertaking (companies extracting and processing precious metals as opposed to watchmakers or clockmakers).
It is true that the opponent’s gold can be used for manufacturing of, for example, luxury golden watches. However, according to case-law, the mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct; goods cannot be regarded as complementary on the ground that one is manufactured with the other (judgment of 13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). Raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (see, to that effect, judgment of 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Finally, the goods compared are not in competition because they satisfy different needs.
The goods are, therefore, dissimilar.
Contested services in Class 42
The contested services in this class are designing of watches (mentioned three times in the contested list of services). These services consist in the technical and aesthetical design of watches and are carried out by designers or engineers before a new watch is manufactured and launched on the market. The opponent’s gold is, as mentioned above, a basic raw material.
The nature of the goods and services compared is clearly different because the contested services are intangible activities whereas the opponent’s goods are tangible objects. The purpose of use of the goods and services does not coincide because the opponent’s gold is used as a raw material for further physical processing while the contested services are used with the aim of creating a functioning and aesthetically appealing watch. The method of use of the goods and services is clearly different as are their distribution channels and usual producers/providers. Although gold can be used for making watches and the contested services may consist in the design of golden watches, the goods and services at issue are not complementary because they are neither indispensable nor important for the use of each other (their use is rather optional). Finally, the goods and services are not in competition because they satisfy different needs.
Overall, the contested services in Class 42 are dissimilar to the opponent’s goods.
- Conclusion
According to Article 8(1)(b) EUTMR, the identity/similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
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
|
Richard BIANCHI
|
Vít MAHELKA |
Lucinda CARNEY
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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.