OPPOSITION DIVISION
OPPOSITION No B 2 546 029
PAFtec Technologies Pty Limited, Level 21 201 Elizabeth Street, Sydney,
NSW 2000, Australia (opponent), represented by D Young & Co LLP, 120 Holborn,
London EC1N 2DY, United Kingdom (professional representative)
a g a i n s t
Drayson Technologies (Europe) Limited, Unit 29, Chancerygate Business Centre,
Langford Lane, Kidlington, Oxfordshire OX5 1FQ, United Kingdom (applicant),
represented by J A Kemp, 14 South Square, Gray’s Inn, London WC1R 5JJ, United
Kingdom (professional representative).
On 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 546 029 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 13 758 801 for the word mark ‘CLEANSPACE’,
namely goods and services in Classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 44 and 45.
The opposition is based on international trade mark registration No 1 139 618
designating the European Union for the word mark ‘CleanSpace’, in relation to which
the opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR, and on the right
to the sign ‘CleanSpace’ under passing off in the United Kingdom, in relation to which
the opponent invoked Article 8(4) EUTMR.
SUBSTANTIATION OF EARLIER INTERNATIONAL TRADE MARK
REGISTRATION No 1 139 618 DESIGNATING THE EUROPEAN UNION
According to Article 76 (1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(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 submitted by the parties and the
relief sought.
Decision on Opposition No B 2 546 029 page: 2 of 14
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 (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit 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 (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence 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 that is not a
European Union trade mark, the opposing party must submit 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 (in the version in force at the time of commencement of the
adversarial part).
In the present case, the evidence submitted by the opponent with the notice of
opposition in relation to earlier international trade mark registration No 1 139 618
consists of an extract from the eSearch plus database of the EUIPO, concerning the
designation of the European Union of earlier international trade mark registration
No 1 139 618.
On 10/07/2015 the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the required evidence. Following a suspension based
on ongoing negotiations, the subsequent opting out of the applicant and an extension
of the time limit, this time limit expired on 05/10/2016.
On 05/10/2016, the opponent submitted additional observations in support of its
opposition. It also submitted documents in relation to other rights of the opponent not
invoked as bases of the present opposition (Exhibits 4 and 5). However, in relation to
earlier international trade mark registration No 1 139 618 designating the European
Union, the opponent did not submit any additional evidence; instead, it simply
submitted again an extract from the eSearch plus database of the EUIPO (Annex 1 of
its submissions).
The eSearch plus database extracts submitted emanate not from the administration
by which the trade mark was registered, namely the WIPO, but from the EUIPO.
The Office used to accept printouts from the eSearch plus database (previously
CTM-Online) for the purposes of substantiating international registrations designating
the EU, but it changed its practice on 01/07/2012 to the extent that no exception to
Rule 19(2)(a) EUTMIR (in the version in force at the time of commencement of the
adversarial part) is provided in Title XIII of the EUTMR.
As regards the use of database extracts for substantiation purposes concerning
international registrations, the accepted databases are the WIPO’s ROMARIN
Decision on Opposition No B 2 546 029 page: 3 of 14
database and TMview, and such extracts are acceptable as long as they contain all
the relevant data, since extracts from these databases reflect the information
obtained directly from the WIPO database.
This new practice has been confirmed by the General Court (26/11/2014, T-240/13,
Alifoods, EU:T:2014:994).
Therefore, the evidence mentioned above is not sufficient to substantiate the
opponent’s earlier international trade mark registration No 1 139 618 designating the
European Union.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), 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
earlier international trade mark registration No 1 139 618 designating the European
Union.
The examination of the opposition will continue in relation to the right to the sign
‘CleanSpace’ under passing off in the United Kingdom, in relation to which the
opponent invoked Article 8(4) EUTMR.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF
TRADE – ARTICLE 8(4) EUTMR
According to Article 8(4) EUTMR, upon opposition by the proprietor of a
non-registered trade mark or of another sign used in the course of trade of more than
mere local significance, the trade mark applied for will not be registered where and to
the extent that, pursuant to the Union legislation or the law of the Member State
governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration
of the European Union trade mark, or the date of the priority claimed for the
application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent
trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following
requirements:
the earlier sign must have been used in the course of trade of more than local
significance prior to the filing of the contested trade mark;
pursuant to the law governing it, prior to the filing of the contested trade mark, the
opponent acquired rights to the sign on which the opposition is based, including
the right to prohibit the use of a subsequent trade mark;
the conditions under which the use of a subsequent trade mark may be prohibited
are fulfilled in respect of the contested trade mark.
Decision on Opposition No B 2 546 029 page: 4 of 14
These conditions are cumulative. Therefore, where a sign does not satisfy one of
those conditions, the opposition based on a non-registered trade mark or other signs
used in the course of trade within the meaning of Article 8(4) EUTMR cannot
succeed.
a) Prior use in the course of trade of more than mere local significance
The condition requiring use in the course of trade is a fundamental requirement,
without which the sign in question cannot enjoy any protection against the
registration of a European Union trade mark, irrespective of the requirements to be
met under national law in order to acquire exclusive rights. Furthermore, such use
must indicate that the sign in question is of more than mere local significance.
It must be recalled that the object of the condition laid down in Article 8(4) EUTMR
relating to use in the course of trade of a sign of more than mere local significance is
to limit conflicts between signs by precluding an earlier right that is not sufficiently
definite — that is to say, important and significant in the course of trade — from
preventing registration of a new European Union trade mark. A right of opposition of
that kind must be reserved for signs with a real and actual presence on their relevant
market. To be capable of preventing registration of a new sign, the sign relied on in
opposition must actually be used in a sufficiently significant manner in the course of
trade, and its geographical extent must not be merely local, which implies, where the
territory in which that sign is protected may be regarded as other than local, that the
sign must be used in a substantial part of that territory. In order to ascertain whether
that is the case, account must be taken of the duration and intensity of the use of the
sign as a distinctive element for its addressees, namely purchasers and consumers
as well as suppliers and competitors. In that regard, the use made of the sign in
advertising and commercial correspondence is of particular relevance. In addition,
the condition relating to use in the course of trade must be assessed separately for
each of the territories in which the right relied on in support of the opposition is
protected. Finally, use of the sign in the course of trade must be shown to have
occurred before the date of the application for registration of the European Union
trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and
166).
In the present case, the contested trade mark was filed on 20/02/2015. Therefore,
the opponent was required to prove that the sign on which the opposition is based
was used in the course of trade of more than local significance in the United
Kingdom prior to that date. The evidence must also show that the opponent’s sign
has been used in the course of trade for breathing apparatus; self contained
breathing apparatus other than for artificial respiration; portable breathing apparatus
other than for artificial respiration; apparatus to prevent the inhalation of noxious
substances; personal pollution protection devices; breathing apparatus for protective
purposes; breathing masks other than for artificial respiration; protective breathing
masks other than for artificial respiration; breathing assistance and breathing therapy
apparatus other than for artificial respiration; apparatus other than artificial
respiration apparatus for the alleviation and treatment of breathing difficulties;
respirators other than for artificial respiration; air purifying respirators other than for
artificial respiration; parts, fittings and connections for breathing apparatus,
respirators and masks.
On 05/10/2016 the opponent submitted evidence of use in the course of trade. As the
opponent requested to keep certain commercial data contained in the evidence
confidential vis-à-vis third parties, the Opposition Division will describe the evidence
Decision on Opposition No B 2 546 029 page: 5 of 14
only in the most general terms without divulging any such data. The evidence
consists of the following documents:
Annex 1: an extract from the eSearch plus database of the EUIPO concerning the
designation of the EU of earlier international trade mark registration No 1 139 618.
Annex 2: a witness statement of Dr Alex Birrell, the CEO of PAFtec Pty Limited, the
opponent’s parent company, dated 05/10/2016, giving information about the use and
reputation of the opponent’s marks and making references to the 21 exhibits listed
below. According to the opponent, in 2015-2016, European sales constituted 75% of
the opponent’s total worldwide sales. This document also refers to trade shows and
exhibitions in several EU countries, in which the opponent allegedly exhibited its
products.
Exhibit 1: documents issued by the Australian Government and Austrade
referring to export market development grants for 2013-2014 and 2014-2015
and showing the opponent’s export earnings (in dollars) for these periods.
These documents contain no indications of the countries to which the
opponent exported its goods or indications of trade marks and particular
goods.
Exhibit 2: a copy of an undated brochure of the opponent referring to
wearable protective masks under the mark ‘CleanSpace’, containing
references to the opponent’s website www.cleanspacetechnology.com and its
contact details in Australia, and showing a map of the world with spots
marked in, inter alia, the United Kingdom.
Exhibit 3: a company overview of the opponent, dated July 2016, mentioning
that the opponent was founded in 2009 and referring to characteristics of
different wearable protective masks under the mark ‘CleanSpace’. A graph in
the document indicates that 30% of the opponent’s sales are in Europe, and
page 9 of the document lists the names of corporate customers of the
opponent in Australia, New Zealand and Europe. A page entitled ‘Award
Winning’ refers to several awards, presumably won for protective masks. It is
indicated that, in 2013, the opponent won the British Safety Industry
Federation (BSIF) Safety Award. The document was prepared by the
opponent, and the opponent indicates in its observations that it is confidential,
which suggests that it is an internal document.
Exhibit 4: database extracts and registration certificates of trade marks of the
opponent, namely an extract from the eSearch plus database of the EUIPO
concerning the designation of the EU of earlier international trade mark
registration No 1 139 618, on which the opposition is based; registration
certificates for and extracts regarding registrations for ‘CleanSpace’ trade
marks from the databases of the IP Offices of Australia and New Zealand, and
of the United Arab Emirates; an extract from the ROMARIN database of the
WIPO concerning international trade mark registration No 1 295 638,
‘CleanSpace’, dated 22/12/2015; a certificate from the Unites States Patent
and Trademark Office; and what appears to be a certificate in Chinese for the
mark ‘CleanSpace’.
Exhibit 5: certificates of Registered Community Designs of the opponent.
Decision on Opposition No B 2 546 029 page: 6 of 14
Exhibit 6: photographs of wearable protective masks and their product
packaging under the marks ‘CleanSpace’ and ‘CleanSpace2’, produced in
Australia. This exhibit also contains an extract from the opponent’s website
www.cleanspacetechnology.com, dated 03/10/2016, showing ‘CleanSpace’
masks and spare parts (e.g. batteries and battery chargers).
Exhibit 7: a set of five invoices, dated between 25/02/2016 and 20/06/2016
(i.e. after the relevant date), issued by the opponent to several customers in
France and to one customer in Denmark, as well as an order form for one of
these transactions, all for goods under the marks ‘CleanSpace’ and
‘CleanSpace2’.
Exhibit 8: a table with expenditure figures (in dollars) prepared by the
opponent for 2013-2016, containing indications of costs for travel activities in
Europe, salaries and recruitment, trade shows and exhibitions, training
material, translations and testing certification associations.
Exhibit 9: extracts from the opponent’s website
www.cleanspacetechnology.com in English, French and German, dated
28/09/2016, showing protective masks under the sign ‘CleanSpace2’ and
containing references to several awards for ‘CleanSpace’ or ‘CleanSpace2’
products won between 2013 and 2016 for excellence, innovation or design,
one of which was awarded at the British Safety Awards 2013 and others at
awards in Australia, France and Germany.
Exhibit 10: an extract showing a Google Analytics overview of the visitors to
the opponent’s website www.cleanspacetechnology.com, showing statistics
for the period 22/08/2014-21/09/2016, indicating that the website had 120 587
visitors during this period and showing the percentage of visits by language.
Exhibit 11: an extract from the opponent’s website
www.cleanspacetechnology.com containing a publication dated 30/11/2012,
entitled ‘CleanSpace officially launches in Europe at Expoprotection, Paris
France’, stating that the opponent exhibited at the trade show Expoprotection
in France in December 2012.
Exhibit 12: an extract from the opponent’s website
www.cleanspacetechnology.com containing a publication dated 31/10/2013,
entitled ‘CleanSpace exhibits at A+A Safety, Security and Health, the world’s
largest Safety Trade Fair’, stating that the opponent exhibited at the Safety
Show A+A in Germany in 2013.
Exhibit 13: extracts from social media pages of the opponent, namely
Facebook, YouTube and Twitter, dated 28/09/2016. The extracts show that
176 people like the opponent’s Facebook page, that the opponent’s YouTube
channel has 21 subscribers and that a YouTube video for ‘CleanSpace’ has
169 views and another one has 3 288 views. The extract from Twitter shows
that the opponent’s page has 87 followers.
Exhibit 14: an extract from the online health and safety magazine HSE
International, at www.hseinternational.co.uk, of an article published on
24/08/2016 containing an interview with the opponent’s CEO and referring to
the opponent’s protective masks under the mark ‘CleanSpace’. It also
Decision on Opposition No B 2 546 029 page: 7 of 14
mentions that ‘CleanSpace’ won several international innovation and design
awards between 2013 and 2016. The publication states the following:
‘Our Company is honoured to be a BSIF Registered Supplier. BSIF have
been a valuable resource and a true partner for us assisting with guidelines
and networks in occupational safety in the UK. BSIF demonstrate strong
leadership and a proactive approach to driving improvements in workplace
safety, such as asbestos and specific international standards. BSIF provide a
high level of engagement for how our products might be adopted in the UK
market (which is quite sophisticated).’
‘Our company is a member of RoSPA and the British Safety Council.
CleanSpace is also EN12942 (CE Mark) approved and ensures the
CleanSpace Respirator materials are ROHS compliant. Our business has
been built to comply with global standards and operates a lean operating and
continuous improvement program for all parts of the business.’
Exhibit 15: several online articles:
– an article published on 23/01/2013 in the online magazine Health & Safety
Matters, at www.hsmsearch.com, reporting that the product ‘CleanSpace’ is
being launched in Europe. Peter Upcott, who will take on the role of director
of business development in Europe, says: ‘I am looking forward to bringing a
new respirator concept into the European market’. The article contains no
further indications of when or where in Europe the product will be launched.
– an article entitled ‘The Aussie company that’s cleaning up in Europe’
published on 27/09/2016 on Dynamic Export at www.dynamicexport.com.au –
which the opponent has clarified is a website reporting on the international
trading of Australian companies – reporting that the opponent has achieved
100% growth year-on-year in the last three years and now has a multi-million-
euro turnover. It states that the opponent’s key customers are in France and it
is now working to replicate similar relationships in Germany. In particular, the
following is stated:
‘We enlisted the assistance of Exportia, a specialist European export
consultancy who have been developing our European relationships, including
distribution partners, customers and recruited sales agents and
representatives … Having provided initial advice on European market entry,
Exportia managed to secure early key reference customers in France
including: Vinci, Lafarge, Bayer, Michelin and the City of Paris. The company
is now working to replicate similar relationships in Germany and Exportia has
become a valuable long-term partner for PAFtec.’
– an article entitled ‘A breath of fresh air in industry’ published on 29/05/2013 on
the website www.cleaning-matters.co.uk, referring to a respirator of the
opponent under the sign ‘CleanSpace2’ and its characteristics.
– an article in Danish published on the website http://bygge-anlaegsavisen.dk in
2016, along with a translation into English, reporting that the innovative
respirator ‘CleanSpace’ was nominated for an award.
– an article in French published on the website www.preventica.com on
25/05/2015, along with a translation into English, reporting that the respirator
‘CleanSpace’ was nominated for an award in 2015.
Decision on Opposition No B 2 546 029 page: 8 of 14
Exhibit 16: a document reproducing page 9 of the opponent’s company
overview submitted as Exhibit 3, showing the names of customers of the
opponent.
Exhibit 17: a printout from the website of MacGregor Industrial Suppliers
Limited (a UK company), extracted on 28/09/2016, showing ‘CleanSpace’
products available for purchase online.
Exhibit 18: an undated table prepared by the opponent and its distributors,
located in various countries, including the United Kingdom. This exhibit also
contains several printouts from websites in different languages (none of the
extracts was originally in English), extracted in September or October 2016,
as follows:
– an extract from www.atsc.fr in French, along with a translation into English,
showing masks, filters and adaptors under the marks ‘CleanSpace’ and
‘CleanSpace2’ available for purchase online;
– an extract from www.itools.dk in Danish, along with a translation into English,
containing information about ‘CleanSpace2’ active breathing apparatus;
– an extract from http://procurator.net/nb-no in Norwegian, along with a
translation into English, containing information about ‘CleanSpace’
respirators;
– an extract from www.unimex.hr in Croatian showing ‘CleanSpace’ masks;
– an extract from http://kauppa.suojalaite.fi in Finnish showing ‘CleanSpace’
and ‘CleanSpace2’ masks;
– an extract from http://kasco.eu/shop/ in Italian, along with a translation into
English, showing ‘CleanSpace’ and ‘CleanSpace2’ respirators;
– an extract from http://kompass-arbeitsschutz.de in German showing
‘CleanSpace’ wearable protective masks and referring to the Red Dot Award
won by ‘CleanSpace’ products in 2016;
– an extract from www.galagar.com in Spanish referring to ‘CleanSpace’
respirators.
Exhibit 19: an extract from the opponent’s website
www.cleanspacetechnology.com in English, dated 03/10/2016, containing
references to several awards for ‘CleanSpace’ products won between 2013
and 2016 (already submitted in Exhibit 9). This exhibit also contains the
following documents:
– a certificate in French for an award won in Lyon in 2013 for ‘CleanSpace2’
products;
– a certificate in French for a trophy won at Expoprotection 2014 (no products,
company name or trade mark are indicated);
Decision on Opposition No B 2 546 029 page: 9 of 14
– a certificate in English for a Red Dot Award won for innovative design in 2016
in Germany;
– a photograph of a Small Business Award won by the opponent at the 2015
Premier’s NSW Export Awards;
– a certificate for winning the BSIF Product Innovation Award by a
‘CleanSpace2’ powered respirator at the BSIF Safety Awards 2013;
– a photograph bearing references to the SHP IOSH Awards 2013 and the
indications ‘shortlisted’ and ‘innovation of the year’ (no products, company
name or trade mark are indicated);
– a page from a leaflet, in Italian and English, referring to ‘Respiratory
protection CleanSpace2’ and a number of a hall and stand.
Exhibit 20: extracts from the opponent’s website
www.cleanspacetechnology.com in English, dated 28/09/2016, showing a link
to a video for the use of ‘CleanSpace’ respirators and the section of the
opponent’s website containing training resources.
Exhibit 21: a table prepared by the opponent containing 12-month statistics
produced by Vimeo for views of ‘CleanSpace’ training videos, dated
05/10/2016, and listing various countries around the world, including the
United Kingdom.
Annex 3: a printout from the opponent’s Twitter page showing that the opponent
retweeted a publication referring to the UK government and its commitment to air
pollution.
Annex 4: the judgment of 09/12/2010, T-303/08, Golden Elephant Brand,
EU:T:2010:505, to prove the conditions of the applicable UK law.
Annex 5: an extract dated 04/10/2016 from the online software application store
iTunes, at http://itunes.apple.com/us/app/cleanspace, showing the applicant’s
‘CleanSpace’ application available for download.
Annex 6: the judgment of 11/12/2014, T-480/12, MASTER, EU:T:2014:1062,
concerning the contested mark and the reputation of earlier marks of
The Coca-Cola Company.
Annex 7: an extract from the internet search engine Google showing search results
for ‘CLEANSPACE’.
While the evidence suggests that some use of the sign has been made worldwide, it
does not meet the minimum threshold of ‘more than local significance’ set out in
Article 8(4) EUTMR in relation to the relevant territory, namely the United Kingdom.
A trade sign is of more than mere local significance in the relevant territory when its
impact is not confined to a small part of that territory, as is generally the case with a
town or a province (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77,
Decision on Opposition No B 2 546 029 page: 10 of 14
§ 41). The sign must be used in a substantial part of the territory of protection
(29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).
Whether or not a trade sign is of more than mere local significance may be
established by demonstrating the existence of a network of economically active
branches throughout the relevant territory, but also more simply, for example, by
producing invoices issued outside the region in which the proprietor has its principal
place of business, press cuttings showing the degree of recognition on the part of the
public of the sign relied on or by establishing that there are references to the
business establishment in travel guides (24/03/2009, T-318/06 – T-321/06, General
Optica, EU:T:2009:77, § 43).
The General Court has held that the significance of a sign used to identify specific
business activities must be established in relation to the identifying function of that
sign. That consideration means that account must be taken, firstly, of the
geographical dimension of the sign’s significance, that is to say of the territory in
which it is used to identify its proprietor’s economic activity, as is apparent from a
textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the
economic dimension of the sign’s significance, which is assessed in view of the
length of time for which it has fulfilled its function in the course of trade and the
degree to which it has been used, of the group of addressees among which the sign
in question has become known as a distinctive element, namely consumers,
competitors or even suppliers, or even of the exposure given to the sign, for example,
through advertising or on the internet (24/03/2009, T-318/06 – T-321/06, General
Optica, EU:T:2009:77, § 37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).
Therefore, the criterion of ‘more than mere local significance’ is more than just a
geographical examination. The economic impact of the use of the sign must also be
evaluated. Consideration must be given, and the evidence must relate, to these
elements:
a) the intensity of use (sales made under the sign);
b) the length of use;
c) the spread of the goods (location of the customers);
d) the advertising under the sign and the media used for that advertising,
including the distribution of the advertising.
Moreover, it must be clear from the evidence that the use continued on the date of
the filing of the opposition. In this context, Article 7(2)(d) EUTMDR (formerly
Rule 19(2)(d) EUTMIR) expressly states that if an opposition is based on an earlier
right within the meaning of Article 8(4) EUTMR, the opponent must provide evidence
of the acquisition, continued existence and scope of protection of that right.
In the present case, the documents submitted demonstrate that the opponent is an
Australian private company producing breathing masks and apparatus under the
signs ‘CleanSpace’ and ‘CleanSpace2’. However, there are no independent
documents providing information concerning the commercial volume, the duration,
the territorial scope or the frequency of use of the sign for the goods in relation to
which the opponent has claimed that it has used the sign ‘CleanSpace’ in the United
Kingdom.
Indeed, although some of the documents refer to the export of goods by the
opponent to Europe in general, the documents submitted do not provide sufficient
indications relating to the UK market. The majority of the documents submitted are
dated after the filing date of the contested trade mark (20/02/2015) and derive from
Decision on Opposition No B 2 546 029 page: 11 of 14
the opponent itself. The witness statement makes references to European sales of
the opponent’s goods and to 21 exhibits submitted to support the opponent’s claims.
The article published in an online UK magazine in August 2016, namely after the
relevant date (Exhibit 14), makes references to international awards won by products
under the sign ‘CleanSpace’ and reports that the opponent is a BSIF Registered
Supplier. However, the opponent clarifies this in the interview in this publication:
‘BSIF provide a high level of engagement for how our products might be adopted in
the UK market’. This suggests that, by August 2016, the opponent still did not
(actively) operate on the UK market. Moreover, the article published on Dynamic
Export (submitted in Exhibit 15) states that, in September 2016, the opponent’s key
customers were in France and mentions that the opponent was working to replicate
similar relationships in Germany. This suggests that, by September 2016, the
opponent operated in Europe mostly on the French market, and there is no mention
of the UK market. The first article in this exhibit reveals the opponent’s intentions to
enter the European market, and the article entitled ‘A breath of fresh air in industry’
published in an online UK magazine dated 2013 advertises the opponent’s goods.
However, no information is given on the actual impact of this publicity. Moreover,
none of the publications refers to actual activities performed by the opponent in the
United Kingdom, such as the marketing and sale of goods to customers in the
relevant market, and none contains information about where such goods are made
available, the price point or distributor information. These articles cannot therefore
serve as conclusive proof of the extent of use of the sign in relation to the relevant
goods before the relevant date (20/02/2015). The remaining online publications
(Exhibit 18), which demonstrate the availability of the opponent’s goods online, do
not refer to the relevant territory.
Exhibits 11 and 12, namely extracts from the opponent’s website, show publications
dated before the relevant date (in 2012 or 2013) referring to ‘CleanSpace’ launches
in Europe through trade show participations. Exhibits 9, 14 and 19 also mention
awards (some of which were obtained before the relevant date) for product design
and innovation and for business excellence in the export of goods and services, two
of which were at international trade fairs in the United Kingdom. However, these
documents do not give any information about the size of the events referred to or the
public they were intended for, and do not concern facts about the performance of the
sign. A trade show or expo is an exhibition organised so that companies in a specific
industry can showcase and demonstrate their latest products and services, meet
industry partners and customers, study the activities of rivals, and examine recent
market trends and opportunities. In contrast with consumer fairs, only some trade
fairs are open to the general public, while others can be attended only by company
representatives (members of the trade, e.g. professionals) and members of the
press. Trade fairs are held on a continuing basis (often annually) and normally attract
companies from around the globe. Therefore, the fact that an international trade fair
is conducted in a particular city or country is not indicative of the territories or markets
where the participants exhibiting at this event conduct their businesses. The
information about the opponent’s participation in such events cannot be correlated to
the relevant public for the particular UK market. The trade shows in which the
opponent has taken part reveal certain quality aspects of the opponent’s products
(e.g. that its products are innovative), but they are not sufficient in themselves to
establish the extent of use of the mark or knowledge of the sign as a distinctive
element among customers in the relevant UK market.
Exhibits 2, 3, 6, 8, 9, 16, 20 and 21 and the table in Exhibit 18 derive from the
opponent or were extracted from its website. The majority of these documents are
undated or dated in 2016 (i.e. after the relevant date). The Office makes a distinction
Decision on Opposition No B 2 546 029 page: 12 of 14
between documents and statements coming from the sphere of the interested parties
themselves or their employees and statements drawn up by an independent source,
following the established case-law. The former are not in themselves sufficient to
prove use. Moreover, although some of the documents mentioned above refer to the
export of goods to Europe, they do not contain any references to trade activities in
the UK market in particular. The same applies to the document issued by the
Australian Government and Austrade (Exhibit 1), which mentions the opponent’s
European sales in general but contains no indications of the countries to which the
opponent exported its goods or indications of trade marks and particular goods. The
social media pages of the opponent (Exhibit 13) also do not contain any indications
with regard to the relevant territory. Furthermore, the number of followers/subscribers
on Facebook, YouTube and Twitter in 2016 (after the relevant date) is between 21
and 176, which is not significant in global terms.
The Google Analytics overview (Exhibit 10) of the visitors to the opponent’s website
refer to a period mostly after the relevant date and shows the percentage of visits by
language, which is not indicative of users in any particular territory, especially
considering that the relevant language (English) could be used by users in Australia,
the United Kingdom, any other English-speaking country or international users from
other countries. Moreover, the number of website visits is also not indicative of actual
trade activities in the market.
The invoices submitted as Exhibit 7 are dated after the relevant date and refer to
sales of goods to customers in France and to one customer in Denmark. There are
no indications in relation to the relevant UK market.
The printout from the website of a UK company (Exhibit 17) indicates only that some
of the opponent’s goods were made available for online purchase. Moreover, this
extract is dated 28/09/2016, long after the relevant filing date of the contested mark,
which is 20/02/2015.
Although it cannot be excluded that some sales of the opponent’s goods under the
sign ‘CleanSpace’ may have been made to consumers in the relevant market, this
cannot be established without supporting information in other documents. Moreover,
the opponent is an Australian company and the majority of the documents suggest
that a substantial part of the marketing of its goods has taken place in markets other
than the relevant one (e.g. Australia, France).
The opponent did not submit any evidence relating to the advertising and promotion
of the sign in the United Kingdom, or other material showing that the sign in question
had established itself in the marketplace to such an extent as to justify the
acquisition of exclusive rights in a non-registered sign in that market. From the
documents submitted, the volume and frequency of the provision of goods are not
clear. These materials cannot prove that goods were provided to potential clients in
the United Kingdom, nor can they prove the number of sales (if any) of the relevant
goods during the relevant period. Since, for earlier non-registered signs relied on in
opposition proceedings, use constitutes the factual premise justifying the existence of
the right, this factual premise must exist on, and be proven for, the date of filing of the
opposition. The evidence does not provide a convincing picture of use of the
opponent’s sign in the relevant market at the date of the filing of the opposition or the
date of the filing of the contested trade mark.
Therefore, considering all the above, the evidence submitted is not sufficient to
corroborate the opponent’s assertion that it offers goods under the sign ‘CleanSpace’
in the United Kingdom in the context of commercial activity with a view to an
Decision on Opposition No B 2 546 029 page: 13 of 14
economic advantage. The opponent has not demonstrated use of the mark as an
important and significant business identifier used by it in the United Kingdom. A right
of opposition of that kind must be reserved to signs with a real and actual presence
on their relevant market.
On 04/07/2017, after expiry of the time limit, the opponent submitted additional
evidence. It consists of the following documents:
Annex 1: a decision of the United States Patent and Trademark Office of
23/02/2017, concluding on the comparison of goods.
Annex 2: two invoices and one pro forma invoice, dated 15/04/2014,
28/05/2014 and 12/01/2015, issued to two customers in France and
containing indications to, inter alia, ‘CleanSpace2’.
Annex 3: two invoices for the Registered Safety Supplier Annual Fee for
Membership paid to BSIF by the opponent for 2013 and 2014.
Although these documents were filed after the relevant period, for the sake of
completeness the Opposition Division notes that they do not contain any additional
indications of trade activities or market presence of the opponent’s goods in the
relevant market and do not give any information on the possible extent of use in that
market.
Considering all the above, the Opposition Division concludes that the evidence
submitted by the opponent is insufficient to prove that the earlier sign was used in the
course of trade of more than local significance in connection with the goods on which
the opposition was based before the relevant date and in the relevant territory.
As one of the necessary requirements of Article 8(4) EUTMR is not met, the
opposition must be rejected as unfounded.
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 546 029 page: 14 of 14
The Opposition Division
Catherine MEDINA Boyana NAYDENOVA Adriana VAN ROODEN
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.