OPPOSITION No B 2 052 846
Luis Angel Moreno Garcia, Carretera de Irun, Km. 6, 31194 Arre (Navarra), Spain (opponent), represented by AB Asesores, Calle Bravo Murillo, 219 – 1º B, 28020 Madrid, Spain (professional representative)
a g a i n s t
ATP Industries Group Limited, Cannock Wood Industrial Estate, Cannock Wood Street Cannock Staffordshire WS12 0PL, United Kingdom (applicant), represented by Swindell & Pearson LTD, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative).
On 28/06/2017, the Opposition Division takes the following
1. Opposition No B 2 052 846 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 670 438. The opposition is based on European trade mark registration No 3 429 123. The opponent invoked Article 8(1)(b), EUTMR.
Earlier trade mark
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 must 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 will be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based namely European Union trade mark No 3 429 123.
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 31/05/2012. 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 31/05/2007 to 30/05/2012 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely;
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes.
Class 12: Vehicles; apparatus for locomotion on land, air and water.
Class 35: Advertising and publicity; management of business affairs; commercial administration; office work.
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 19/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 24/03/2016 to submit evidence of use of the earlier trade mark. On 18/03/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
- Approximately 140 invoices issued from 2007 to 2012.
- An automotive catalogue (undated).
- A website information including a general catalogue and LED catalogue (dated 2015).
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 of use shows that the mark has been used, on the one hand, for lighting products, such as street lamps and, on the other hand, for automotive parts including vacuum pumps, brake pumps, hydraulic cylinders, brake and clutch fluid deposits and caps, radiator overflow reservoirs, crankshaft pulleys and vacuum servos. These latter goods do not fall within any of the categories for which the earlier mark is registered and for which use is assessed. Indeed, the applicant rightly identified that in Class 12, the earlier mark is protected for vehicles and not for their parts. With the exception of apparatus for lighting in Class 11, the opponent has not submitted any evidence at all in relation to the above indicated goods in Classes 11 and services in Class 35.
Therefore, the opponent has not shown use for the goods and services indicated above for which the mark is registered, but for other goods.
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).
Even in undertaking an overall assessment, as argued by the opponent, taking into account all the circumstances of the specific case and assessing all the materials in conjunction with each other there is a complete absence of indications concerning the aforementioned goods and services, except lighting apparatus. Failure to prove this factor means it is redundant to analyse the remaining factors referred to in Rule 22(3) EUTMIR.
The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used for these goods and services, with the exception of apparatus for lighting in Class 11, in the relevant territory during the relevant period of time. Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR in so far as it is based on these goods and services.
As concerns the apparatus for lighting in Class 11, as seen above, some use has been made. However, for reasons of procedural economy, and taking into account the best case scenario for the opponent, the Opposition Division will not undertake a complete examination of the evidence in this regard but will assume that genuine use has been proven.
Therefore, the Opposition Division will only consider the earlier goods apparatus for lighting in its further examination of the opposition.
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
The goods for which genuine use is assumed and on which the opposition is based are the following:
Class 11: Apparatus for lighting.
The contested goods and services are the following:
Class 7: Propulsion transmission mechanisms; electric propulsion mechanisms; propulsion mechanisms; automatic gear boxes and other automatic gear-change apparatus; manual gear boxes and other manual gear-change apparatus; differential gear apparatus; gear transmissions; power shift transmissions; all of the aforesaid goods for vehicles other than land vehicles; gear boxes being parts of machines; electric propulsion mechanisms for machines; torque converters for machines; torque converters for vehicles other than land vehicles; transmission oil coolers; oil pumps for land vehicles; oil pumps for use in motors and engines; exhaust gas recycling valves; parts and fittings for all the aforesaid goods; none of the aforesaid goods being for use in automatic train protection systems; none of the aforesaid goods being for use in automatic train protection systems and all of the aforesaid goods being re-manufactured goods.
Class 9: Electrical and electronic control apparatus and instruments for motor vehicles; electrical and electronic control apparatus and instruments for machines; electrical and electronic control apparatus for fuel supply, fuel injection, fuel ignition, lubrication, engine management, power transmission, propulsion transmission, vehicle suspension, information display, heating, cooling, ventilation; electronic control units; air mass meters; transmission control units; dynamometers; electronic dynamometers; CD players; DVD players; MP3 players; radios; audio systems; audio apparatus; Global Positioning System (GPS) apparatus; parts and fittings for all the aforesaid goods; none of the aforesaid goods being for use in automatic train protection systems; none of the aforesaid goods being for use in automatic train protection systems and all of the aforesaid goods being re-manufactured goods.
Class 12: Automatic propulsion transmission mechanisms for land and air vehicles; electric propulsion transmission mechanisms for land and air vehicles; propulsion mechanisms for land and air vehicles; manual propulsion transmission mechanisms for land and air vehicles; propulsion mechanisms for land and air vehicles; electric propulsion mechanisms for land and air vehicles; gear boxes being parts of machines, namely land vehicles; gear boxes for land vehicles; gear boxes for hydraulic transmissions of land and air vehicles; automatic gear boxes and automatic gear-change apparatus for land and air vehicles; manual gear boxes and other manual gear-change apparatus for land and air vehicles; differential gear apparatus for land and air vehicles; torque converters for land and air vehicles; gear transmissions for land and air vehicles; power shift transmissions for land and air vehicles; transmission oil coolers for land vehicles; transmission control units for land and air vehicles; parts and fittings therefor included in Class 12 ; all of the the aforesaid goods being re-manufactured goods.
Class 37: Installation, repair, maintenance and renovation of parts and fittings for motor vehicles; installation, repair, maintenance and renovation of motor vehicles; installation, repair, maintenance and renovation of after-market parts and fittings for motor vehicles; installation, repair, maintenance and renovation of parts and fittings for machines; construction and repair of electric and electronic apparatus and instruments; supervision of the use of computer-controlled apparatus and instruments in the construction and repair of automatic transmission mechanisms; none of the aforesaid services being in relation to automatic train protection systems.
Class 42: Design services for parts and fittings of motor vehicles and machines; consultancy, advisory, design and technological services all relating to electric and electronic apparatus and instruments for machines, engines, gear boxes, vehicles, apparatus for locomotion and their parts; development and rental of data processing programmes; design services for electric and electronic apparatus and instruments and for computerised test equipment; none of the aforesaid services being in relation to automatic train protection systems.
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 Classes 7, 9 and 12
The contested goods are propulsion mechanisms, gear boxes, pumps and valves, transmission oil coolers and their parts and fittings for vehicles and machines in Classes 7 and 12; electrical and electronic control apparatus and instruments for vehicles or machines; audio apparatus in Class 9. The expertise required to produce these kinds of products is different from that required to produce the opponent's lighting goods. The nature and intended purpose of these goods is different and so is the method of use. These goods are not complementary, in the sense that one would be necessary or indispensable for the use of the other, nor are they in competition. They are not likely to be sold through the same distribution channels and the relevant public will not assume that their usual origin is the same. It follows that the contested goods in Classes 7, 9 and 12 are dissimilar to the apparatus for lighting covered by the earlier trade mark in Class 11.
Contested services in Classes 37 and 42
The contested services in classes 37 and 42 are installation, repair, maintenance, renovation and conception of motor vehicles, parts and fittings of vehicles or machines and electric and electronic apparatus and instruments; supervision of the use of computer-controlled apparatus and instruments; development and rental of data processing programmes. When comparing them to the opposing lighting goods in class 11, it is to be noted that apart from the obvious difference in nature (tangible goods vs intangible services), they are neither in competition nor are they complementary and they follow different distribution channels. They do not have the same or even a similar purpose, and the relevant public will not believe that the manufacturer of the opposing goods in Class 11 would be, at the same time, the provider of the contested services in Classes 37 and 42, which concern services different from the goods covered by the earlier trade mark. For all these reasons, the contested services in class 37 and 42 are considered to be dissimilar to the opposing goods in Class 11.
For the sake of completeness, it is worth noting that the opponent did not adduce any specific arguments or evidence that would lead to a different conclusion for any of the contested goods and services.
According to Article 8(1)(b) EUTMR, the 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. This dissimilarity also means that the previous decisions that the opponent refers to in its submissions are not relevant, as in those cases there was at least some similarity between the goods and services.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent regarding the apparatus for lighting.
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, he 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
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.
 Emphasis added by examiner