Cretcon HD | Decision 0011813

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,
76829 Landau, Germany (professional representative).
On 10/01/2018, the Cancellation Division takes the following
DECISION
1. The application for a declaration of invalidity is partially upheld.
2. European Union trade mark No 11 652 476 is declared invalid for some of the
contested goods, namely:
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.
3. The European Union trade mark remains registered for all the remaining goods,
namely:
Class 4: Separating agents for concrete formwork, included in class 4;
separating agents containing oil for concrete formwork.
4. Each party bears its own costs.

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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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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
European Union trade mark No 11 652 476 ‘Cretcon HD’. The application is based on
international registration No 486 162 ‘CRET’ designating Bulgaria, Benelux, the Czech
Republic, Denmark, Germany, Estonia, the United Kingdom, Spain, France, Ireland,
Italy, Latvia, Lithuania, Austria, Poland, Portugal, Romania, Slovenia, Finland, Sweden
and Greece.
The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)
(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,
the documents are flawed in relation to the nature, extent and place of use. As for the
goods under comparison, not all of them are identical or similar, and the signs can be
distinguished given that there are enough differences between them for the consumers
not to be confused, especially in the case of the professional public.
The applicant rejects the arguments of the proprietor.
PROOF OF USE
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’,
for the goods for which it is registered and on which the claim is based, namely
corrosion-resistant and high strength dowels made of stainless steel in Class 6.
The request has been filed in due time and is admissible given that the earlier
registration was registered more than five years prior to the date of the application for a
declaration of invalidity.
Although the action is based on several countries designated in the earlier
international registration, the documents filed to prove use mainly concern Austria, the
United Kingdom, France, Germany and Spain. The Cancellation Division does not find
it expedient in the present case to assess use also in relation to the remaining
designations, for reasons that will become obvious from the assessment below.
In relation to all these countries, the use must be proved in the period of five years
preceding the date of filing of the application for a declaration of invalidity, that is, from
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.
The countries that were designated in the international application are Austria,
Germany and France. Spain and the United Kingdom were designated subsequently.
For Austria, Germany and France, the relevant date from which the deadline to issue a
provisional refusal starts is 20/08/1984, and in these countries the Designated Offices
have 12 months to issue provisional refusals. As none of them did, the mark is
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
these territories for five years, and the use for them must also be proved for the period
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.
On 18/05/2016 the applicant submitted evidence as proof of use.
The applicant divided the evidence into the two relevant periods and explained the
evidence as follows.
First period
Item 1: 16 catalogues/brochures of products branded with the earlier mark ‘CRET’.
They show copyright dates ranging from 2011 to 2016.
Item 2: screen shots and printouts from the applicant’s website showing use of the
earlier mark ‘CRET’.
Item 3: a company brochure identifying the ‘CRET’-branded products and the sales
regions where the company operates and sells such ‘CRET’-branded products.
Second period
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
referring to the products branded with the earlier mark ‘CRET’, for 1981-2007.
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
evidence of export in the form of invoices issued to companies in Saudi Arabia and
Norway. In this respect, it must be remembered that, according to Article 18(1)
(b) EUTMR, the affixing of the European Union trade mark to goods or to the
packaging thereof in the Union solely for export purposes also constitutes use within
the meaning of Article 18(1) EUTMR, and this applies to national and international
registrations, too.
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
confidential vis-à-vis third parties, the Cancellation Division must describe the evidence
only in the most general terms without divulging any specific data. In addition, even
though the proprietor doubts that the brochures have been distributed in the relevant
countries, there is no reason to assume that they have been distributed only in
Switzerland because the applicant is a Swiss company, taking into account that the
invoices have been issued to companies in several of the countries at issue and
therefore it is feasible to assume that the companies that purchased the goods in the
United Kingdom, France and Germany would have seen some brochures or leaflets
before ordering the goods.
In relation to the time of use, the evidence in the form of brochures and invoices clearly
spans several years, covering the period for which use had to be proved in relation to
Austria, Germany and France (2008-2013), and for these countries (and for the United
Kingdom and Spain) there is also enough evidence for the second period (2010-2015).
As for the place, it is evident from the comments made above that the evidence
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
01/10/2017), the expressionnature 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 18(1), second subparagraph, point (a) EUTMR,
and of its use for the goods and services for which it is registered. The mark at issue is
a word mark, and it has been used as such or with a very slight stylisation that does not
affect its distinctive character. Furthermore, nature of use requires, inter alia, that the
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
services of different providers, and the Cancellation Division is satisfied that the
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
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.
a) The goods
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.
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;
separating agents containing oil for concrete formwork.
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.
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
The contested metal building materials include, as a broader category, the applicant’s
corrosion-resistant and high strength dowels made of stainless steel. Since the
Cancellation Division cannot dissect ex officio the broad category of the contested
goods, they are considered identical to the applicant’s goods.
The rest of the contested goods in this class are either identical or similar to various
degrees to the applicant’s goods. They are identical because they can overlap, or they
are similar because they have in common a number of criteria for a finding of similarity,
such as the facts that they originate from the same undertakings, are distributed
through the same commercial channels and can be used for the same purposes.
Contested goods in Class 19
As seen above, corrosion-resistant and high strength dowels made of stainless steel
are building materials made of metal. The contested building materials in Class 19 are
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
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also be
borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods of the earlier mark target the professional public
exclusively and the contested goods target the general and professional public.
Therefore, the relevant public for assessing likelihood of confusion will be the
professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81). The
degree of attention will vary from average to high, depending on the exact nature of the
goods, their price, etc.
c) The signs
CRET Cretcon HD
Earlier trade mark Contested trade mark

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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.
The marks have in common four letters, namely ‘CRET*’, which constitute the whole of
the earlier mark and appear at the beginning of the contested mark. Consumers
generally tend to focus on the first element of a sign when being confronted with a
trade mark. This is justified by the fact that the public reads from left to right, which
makes the part placed at the left of the sign (the initial part) the one that first catches
the attention of the reader. Neither CRET’ nor ‘CRETCON’ means anything.
Consumers will see no immediate meaning in the letters ‘HD’.
For all the reasons given above, the marks can be deemed visually and aurally similar
to a high degree. Conceptually, neither of the signs has a meaning for the public in the
relevant territory. Since a conceptual comparison is not possible, the conceptual aspect
does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
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
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods from the perspective of the public in the relevant territory.
Therefore, the distinctiveness of the earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
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
likelihood of confusion on the part of the relevant public and therefore the opposition is
partly well founded on the basis of the applicant’s international registration.
For clarification, (a) the likelihood of confusion also exists in relation to the professional
public and to the goods that demand a higher degree of attention, as even consumers
who pay a high degree of attention need to rely on their imperfect recollection of trade
marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54), and (b) it also exists in
relation to the goods that are similar to a low degree, as the signs are identical in their
distinctive element.
It follows from the above that the contested trade mark must be rejected for the goods
found to be identical or similar (to all degrees) to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a
necessary condition for the application of Article 8(1) EUTMR, the invalidity action
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
have succeeded on some heads and failed on others. Consequently, each party has to
bear its own costs.
The Cancellation Division
Carmen SÁNCHEZ
PALOMARES
María Belén IBARRA
DE DIEGO
Michaela SIMANDLOVA

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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 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.

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