CANCELLATION DIVISION

CANCELLATION No 11813 C (INVALIDITY)

F. J. Aschwanden AG, Grenzstrasse 24, 3250 Lyss, Switzerland (applicant),

represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain

(professional representative)

a g a i n s t

H-Bau Technik GmbH, Am Güterbahnhof 20, 79771 Klettgau, Germany (EUTM

proprietor), represented by Patentanwälte Dr. Keller, Schwertfeger, Westring 17,

Class 6: Metal building materials; Formwork elements and parts therefor, of

metal, for the manufacture of concrete components; Wall forms,

Column formwork, casing pipes of metal, formwork anchors, Tie

plates, channel nuts, Formwork couplers, clamping wedges,

Studs, Consoles, Push-pull props.

Class 19: Building materials, not of metal; Formwork elements and parts

therefor, not of metal, for the manufacture of concrete

components; Column formwork, casing pipes of cardboard or

plastic, wall formwork, Shuttering boards, in particular coated with

plastic or artificial resin.

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PRELIMINARY REMARK

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 applicant filed an application for a declaration of invalidity against all the goods of

(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the goods are either identical or similar and the signs are

similar enough for confusion to be generated among the relevant public.

The EUTM proprietor requests proof of the use of the international registration basis of

the invalidity action. In relation to this proof of use, the proprietor explains that in a prior

opposition case the opposition was rejected due to the lack of proof of use.

Furthermore, according to the proprietor, the documents submitted in the present

proceedings cannot prove use either, given that, mainly, the invoices do not identify the

goods, or that it is not evident where the brochures have been distributed. Therefore,

According to Article 64(2) and (3) EUTMR (in the version in force at the time of filing of

the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish

proof that, during the five-year period preceding the date of the application for a

declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of publication of

the contested EUTM, the earlier mark had been registered for not less than five years,

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the applicant must submit proof that, in addition, the conditions set out in

Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a

declaration of invalidity shall be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark

on which the application is based, namely international registration No 486 162 ‘CRET’,

registration was registered more than five years prior to the date of the application for a

22/09/2010 to 21/09/2015.

However, not all these countries are subject to the requirement of proof of use in two

periods pursuant to Article 64(2) EUTMR in conjunction with Article 47(2) EUTMR.

Under Article 5(2)(a) and (b) of the Madrid Protocol, the Designated Offices in every

country have a period of 12 or 18 months from the date of notification of the

designation to issue provisional refusals. Where the Member State has been

designated not in the international application but in a subsequent designation, the 12

or 18 months start from the date the subsequent designation was notified to the

Designated Offices.

provisional refusal starts is 20/08/1984, and in these countries the Designated Offices

protected in these territories as from 20/08/1994. Consequently, when the contested

mark was published on 30/04/2013, the international registration had been registered in

from 30/04/2008 to 29/04/2013.

As seen above, Spain and the United Kingdom were designated subsequently and, in

principle, the relevant date from which the deadline to issue a provisional refusal starts

is 24/07/2008. The Designated Office in Spain has 12 months to issue a provisional

refusal, that is, until 24/08/2009. For the United Kingdom, the Designated Office issued

a Statement of Grant of Protection before this date, on 05/02/2009, and it is from this

date that the international registration has protection in this country. It follows that the

mark, as regards the Spanish and UK designations, had not been registered for five

years when the contested mark was published, and in relation to these territories only

the first period applies.

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According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the

evidence of use must indicate the place, time, extent and nature of use of the earlier

mark for the goods and services for which it is registered and on which the application

is based.

On 18/02/2016 the applicant was given three months to submit proof of use.

The applicant divided the evidence into the two relevant periods and explained the

regions where the company operates and sells such ‘CRET’-branded products.

The applicant refers to the evidence submitted on 14/05/2014 in the course of

Opposition Proceedings B 2 223 401. It also files further evidence.

The evidence submitted in Opposition Proceedings B 2 223 041 consists of 169

invoices (spanning 2008 to 2013) and two tables outlining the sales turnover of goods

branded with the earlier mark, spanning 2005 to 2010 for Austria, Germany and

France, and 2011 to 2013 for Austria, Germany, the United Kingdom, France and

Spain.

The further evidence submitted consists of 17 catalogues, brochures and documents

The evidence is in German, English, Spanish and French. The invoices submitted were

issued to companies in France, Germany, Austria and the United Kingdom, and there is

The proprietor argues that a decision in a prior opposition case rejected the opposition

on the basis of the earlier registration not having been used. The Cancellation Division

is aware of this fact; however, in this context it must be remembered, firstly, that the

different divisions are not bound by previous cases and, more importantly, that there is

further evidence in these proceedings, which, when examined in conjunction with the

invoices, sheds a different light from that in the opposition proceedings.

The applicant submitted tables of the sales turnover of the goods. The probative value

of the evidence originating from the party itself is generally given less weight than

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independent evidence. This is because the perception of the party involved in the

dispute may be more or less affected by personal interests in the matter (11/01/2011,

R 0490/2010-4, BOTODERM, § 34; 27/10/2009, B 1 086 240, MAISONS DU MONDE;

31/08/2010, B 1 568 610, THE RACE LEGENDS). In the case at issue, however, the

tables are supported by the figures shown in the invoices, and they are in turn

supported by the information contained in the brochures, which show codes that can be

cross-referenced with the codes seen in the invoices. As a clarification, it must be

stated that, as the applicant requested to keep the data contained in the evidence

though the proprietor doubts that the brochures have been distributed in the relevant

Switzerland because the applicant is a Swiss company, taking into account that the

Austria, Germany and France (2008-2013), and for these countries (and for the United

concerns the abovementioned countries and, therefore, the Cancellation Division is

satisfied that this requisite is complied with, too.

The evidence in the form of invoices is enough to support the information contained in

the sales turnover figures. In this regard, it must be remembered that the fact that the

extent shown in the invoices may not have been high for all the countries concerned is

offset by the fact that use of the mark was quite regular, and the evidence, when taken

as a whole, supports the fact that the goods have been on the market enough for the

use to be considered genuine.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before

a word mark, and it has been used as such or with a very slight stylisation that does not

contested European Union trade mark is used as a trade mark, that is, for identifying

origin, thus making it possible for the relevant public to distinguish between goods and

evidence points to the sign having been used as a trade mark.

The goods have different denominations in different languages (‘pasadores’ in

Spanish, ‘Dorne’ in German, ‘goujons’ in French, ‘connectors’ in English), which are all

terms that do not necessarily translate as ‘dowels’. However, there are also a couple of

brochures in English in which the goods are described as ‘dowels’, and the images

seen in them resemble the pictures that appear in the other brochures (as seen above,

the codes in the different documents can be cross-referenced). Furthermore, the

specifications refer to their strength and to the fact that they are made of stainless

steel. The Cancellation Division is therefore satisfied that the use has been proved for

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the goods at issue, namely corrosion-resistant and high strength dowels made of

stainless steel in Class 6.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION

WITH ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the

linked undertakings. Whether a likelihood of confusion exists depends on the

These factors include the similarity of the signs, the similarity of the goods and

alia, the nature and purpose of the goods or services, the distribution channels, the

The goods on which the application is based are the following:

Class 6: Corrosion-resistant and high strength dowels made of stainless steel.

The contested goods are the following:

Class 4: Separating agents for concrete formwork, included in class 4;

Class 6: Metal building materials; Formwork elements and parts therefor, of

The proprietor puts forward that the goods at issue are dissimilar (at least partially) but,

aside from the comments made in relation to Class 4, the rest of its allegations are very

broadly expressed, to the extent that the Cancellation Division cannot ascertain

properly why some goods should be considered dissimilar to others.

Contested goods in Class 4

The contested goods in this class are dissimilar to the corrosion-resistant and high

strength dowels made of stainless steel protected by the earlier mark, as the former are

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unfinished products used in the manufacture of further goods, whereas the applicant’s

goods are finished products. They have different commercial origins and are distributed

through different channels of trade, they do not have the same purpose and they are

not in competition or complementary to each other. Furthermore, they target different

publics.

Contested goods in Class 6

Cancellation Division cannot dissect ex officio the broad category of the contested

different only in the way they are made, as they are not made of metal, but the goods

are similar to a high degree in as much as they have the same purpose. In addition,

they can have the same producers, end users, distribution channels and methods of

use. Furthermore, they are in competition.

The rest of the contested goods in this class are similar to a low degree to the

applicant’s goods, as they could originate from the same undertakings and target the

same end consumers, who will use them for the same purpose.

b) Relevant public — degree of attention

exclusively and the contested goods target the general and professional public.

Therefore, the relevant public for assessing likelihood of confusion will be the

degree of attention will vary from average to high, depending on the exact nature of the

goods, their price, etc.

c) The signs

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The global appreciation of the visual, aural or conceptual similarity of the marks in

question must be based on the overall impression, bearing in mind their distinctive and

dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Both marks are word marks and, as such, lack elements that can be considered more

dominant than others.

generally tend to focus on the first element of a sign when being confronted with a

makes the part placed at the left of the sign (the initial part) the one that first catches

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in

the global assessment of likelihood of confusion.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of

intensive use or reputation.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its

According to the case-law of the Court of Justice, in determining the existence of

assessment of the visual, aural and conceptual similarities between the marks. The

comparison ‘must be based on the overall impression given by the marks, bearing in

mind, in particular, their distinctive and dominant components’ (11/11/1997, C-251/95,

Sabèl, EU:C:1997:528, § 22 et seq.). Likelihood of confusion must be assessed

globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors

and, in particular, a similarity between the trade marks and between the goods or

services. Accordingly, a lesser degree of similarity between the goods or services may

be offset by a greater degree of similarity between the marks, and vice versa.

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The public concerned is composed of professionals and the degree of attention varies

from average to high. The signs contain an identical element, which constitutes the

whole earlier mark and is placed at the beginning of the contested sign, and the

differences between the signs are restricted to the end of the contested sign.

The Cancellation Division finds that, in relation to identical or similar goods, consumers

may be led to believe that the goods at issue originate from the same undertaking or at

least economically linked undertakings. The Cancellation Division finds that there is a

public and to the goods that demand a higher degree of attention, as even consumers

based on this article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must

bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR,

where each party succeeds on some heads and fails on others, or if reasons of equity

so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties