OPPOSITION No B 2 213 976

CTI Systems S.A., 2, rue Cleveland, 9707 Clervaux, Luxembourg (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative)

a g a i n s t

Gestion y Proyectos Ganaderos S.L., Ctra. de Churra 232, 30110 Murcia, Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 213 976 is partly upheld, namely for the following    contested goods in Class 7 Machines; agricultural implements other than hand-operated; all the mentioned goods in the fields of agriculture and livestock only.
   

2.        European Union trade mark application No 11 566 874 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 11 566 874 (figurative mark:
“”), namely against all the goods in Classes 7 and 9. The opposition is based on European Union trade mark registration No 679 936 (figurative mark: “”). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent 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 679 936.

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 (16/07/1999).

The contested application was published on 09/04/2013. 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 09/04/2008 to 08/04/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following goods in Class 7:

Machine and machine-tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); lifting and hoisting apparatus; cranes; pulleys (parts of machines); agricultural implements; incubators for eggs; their parts and fittings comprised in this class.

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 04/05/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 18/07/2015 to submit evidence of use of the earlier trade mark. This time limit was extended until 18/09/2015 (see the Office´s letter of 02/07/2015). On 18/09/2015, within the time limit, the opponent submitted evidence of use.

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 only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Annual reports on the years 2008-2013 (Exhibit 1).
• Various invoices dated between 2008 and 2013 to various undertakings for goods and related services (Exhibits 2-12).
• Offer for a teleplatform and crane system dated 21/04/2009 (Exhibit 13).
• Airbus technical specification dated 18/01/2013 (Exhibit 14).
• Offer for Dürr platform elevators dated 14/04/2009 (Exhibit 15).
• Offer for an ‘FCC Construcion’ teleplatform system dated 22/11/2011 (Exhibit 16).
• Exhibition booths dating from the period 2008-2013 (Exhibit 17).
• Material flow dating from June 2010 (Exhibit 18).
• List of airport suppliers, aircraft paints, manufacturing solutions, etc. (Exhibits 19 and 20).
• Reference letter from Luxair dated 01/10/2010 (Exhibit 21).

The annual reports in Exhibit 1 give general information about the company, its key figures and its activities, such as exhibitions, but also include, in particular, a visual depiction of the undertaking’s specialised products. However, these documents will be taken into account as additional information, as concrete data about the relevant goods are missing. Therefore, the extent of use of the mark cannot be examined on the basis of these documents. The same applies to Exhibits 13-21, because offers, technical details about products, information on exhibitions held in various years and other additional information (e.g. about material flow) have limited in value as proof of use, because the extent of use cannot be evaluated from such documents. However, this is not true of the various invoices filed as Exhibits 2-12. Contrary to the applicant’s opinion, the sign has not been used in these invoices exclusively as a company name, because its use as a trade mark for the relevant goods can be seen in the invoices when they are considered in conjunction with the other material mentioned above. The invoices demonstrate that the opponent offered very specialised products in the area of heavy loads during the relevant period in sufficient quantity to various undertakings in various territories.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely the invoices, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

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).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following goods: automated lifting platforms for material flow and storage systems for heavy loads, Heavy-duty cranes, Driverless transport systems, movable platforms.

Therefore, the Opposition Division will only consider the abovementioned goods 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.

1. The goods

The goods in Class 7 on which the opposition is based are the following:

Automated lifting platforms for material flow and storage systems for heavy loads, Heavy-duty cranes, Driverless transport systems, movable platforms.

The contested goods in Classes 7 and 9 are the following:

Class 7: Machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Automatic vending machines; all the mentioned goods in the fields of agriculture and livestock only.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 7

The contested Machines; agricultural implements other than hand-operated; all the mentioned goods in the fields of agriculture and livestock only overlap with the opponent’s automated lifting platforms for material flow and storage systems for heavy loads, Driverless transport systems, because these all are different types of machines or systems that can be used for the same purpose. Therefore, they are identical.

The remaining contested machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); incubators for eggs; automatic vending machines; all the mentioned goods in the fields of agriculture and livestock only have a different nature and purpose from the opponent’s goods. They are made by different producers, have different distribution channels and target publics with different interests. Furthermore, they are neither complementary nor in competition with each other. Consumers would not think that these goods came from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 9

This class contains, in particular, apparatus and instruments for scientific research in laboratories; apparatus and instruments for the control of ships, such as apparatus and instruments for manning and transmitting commands; protractors; punched card office machines; and computer programs and software. These goods have a different nature and purpose from the opponent’s goods in Class 7, which are rather specialised. They are made by different producers, have different distribution channels and target publics with different interests. Furthermore, they are neither complementary nor in competition with each other. Consumers would not think that these goods came from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

2. 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 found to be identical are specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention is high, because they are very expensive goods, which are, furthermore, highly specialised.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question 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, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘SYSTEMS’ and ‘CONTROL’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in the United Kingdom.

Both signs are figurative marks. In the earlier trade mark, the letter combination ‘CTI’ is in upper case letters, with a small triangle forming the dot of the ‘I’. A depiction of a globe is situated within the letter ‘C’ and the words ‘SYSTEMS S.A.’ appear underneath the letters against a rectangular background that curves to a point around the letter ‘C’. The contested sign is composed of two words: ‘CTI’ in navy blue upper case letters and ‘control’ in smaller lime-green letters. The figurative element of the contested sign is an oval outline, half in navy blue and half in lime green, encircling the words ‘CTIcontrol’.

The letter combination ‘S.A.’ of the earlier trade mark will be associated by a part of the public with ‘Société Anonyme’, a legal form for stock corporations in France. Therefore, these elements are non-distinctive for the public that understands the meaning of this letter combination.

The element ‘SYSTEMS’ of the earlier sign will be associated with ‘a set of connected things or parts forming a complex whole, in particular’ (Oxford Dictionary). Bearing in mind that the relevant goods are or consist of systems, this element is non-distinctive for all the goods.

The depiction of the globe in the earlier sign will be associated with ‘worldwide’. Bearing in mind that the relevant goods are or can be offered worldwide, this element is weak for these goods.

The element ‘CONTROL’ of the contested sign will be associated with ‘determine the behaviour or supervise the running of’ (Oxford Dictionary). Bearing in mind that the relevant goods are ‘machines’, this element is non-distinctive for these goods, as it describes one of their characteristics.

The contested sign has no elements that could be considered clearly more dominant than other elements.

The element ‘CTI’ in the earlier sign is the dominant element as it is the most eye-catching.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the dominant element of the earlier trade mark, ‘CTI’, appears at the beginning of the contested sign, although depicted slightly differently. The words ‘CONTROL’, ‘SYSTEMS’ and ‘S.A.’ cannot influence the visual comparison in a significant manner, because they are non-distinctive or at least weak. The signs differ in their figurative elements, described above, and in the additional colours of the contested sign. Therefore, they are visually similar to a higher than average degree.

Aurally, the figurative elements will not be pronounced. The words ‘CONTROL’, ‘SYSTEMS’ and ‘S.A.’ cannot influence the aural comparison in a significant manner, because they are non-distinctive or at least weak. The letters ‘CTI’, included in both signs, will be pronounced identically. The signs have the same rhythm, pronunciation and intonation. Therefore, they are aurally similar to a high degree.

Conceptually, the coinciding letter combination ‘CTI’ is meaningless and therefore cannot influence the conceptual comparison. The words ‘CONTROL’, ‘SYSTEMS’ and ‘S.A.’, because they are non-distinctive or at least weak, cannot influence the conceptual comparison in a significant manner either. The same applies to the depiction of the globe.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive/weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly identical and partly dissimilar to the opponent’s goods. The signs are visually similar to a higher than average degree and aurally highly similar.

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 some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the visual and, in particular, aural similarities between the signs, the average degree of distinctiveness of the earlier trade mark and the identity between the goods, there is, even for the public with a high degree of attention, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Contrary to the applicant’s opinion, the differences between the signs are not sufficient to distinguish them clearly from each other. The relevant consumers could believe that goods in question came from the same undertaking or economically linked undertakings.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

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COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition 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 Opposition Division

Magnus ABRAMSSON

Peter QUAY

Martin EBERL

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.