OPPOSITION No B 2 475 211

Prefabricados Delta, S.A., Acanto 22, 28045 Madrid, Spain (opponent), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative)

a g a i n s t

Delta-X GmbH Ingenieurgesellschaft, Schützenstraße 13, 70182 Stuttgart, Germany (applicant), represented by Dreiss Patentanwälte Partg MBB, Friedrichstraße 6, 70174 Stuttgart, Germany (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 475 211 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services (in classes 37 and 42) of European Union trade mark application No 13 307 863.

The opposition is based on:

1. Spanish trade mark registration No 2 030 792.
2. Commercial name No 206 236, used in the course of trade in Spain.

The opponent invoked Article 8(1)(b) EUTMR.

ADMISSIBILITY

According to Rule 15(2)(b) EUTMIR, the notice of opposition must contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

iii) where the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, an indication of its kind or nature, a representation of the earlier right, and an indication of whether this earlier right exists in the whole Union or in one or more Member States, and if so, an indication of the Member States.

According to Rule 17(2) EUTMIR, if the notice of opposition does not clearly identify the earlier mark or the earlier right on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

On 12/02/2015 the opponent filed notice of opposition against the contested application invoking Article 8(1)(b) EUTMR  and stating that the basis of the opposition were two Spanish national trade mark registrations, one with registration No 2 030 792 and the other one with registration No 206 236.

Article 8(1)(b) EUTMR states that ‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’.

Article 8(2) EUTMR states that ‘For the purposes of paragraph 1, ‘earlier trade marks’ means:

1. trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

(i) EU trade marks;

(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;

(iii) trade marks registered under international arrangements which have effect in a Member State;

(iv) trade marks registered under international arrangements which have effect in the Union;

(b) applications for the trade marks referred to in subparagraph (a), subject to their registration;

(c) trade marks which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention’.

It is obvious that the only earlier rights that can be invoked under Article 8(1)(b) EUTMR are trade marks, and well known marks in the sense of Article 6bis of the Paris Convention. From the attached official extract that accompanies the notice of opposition in relation to earlier right No 206 236 it becomes clear, however, that the right is not a trade mark but a commercial name. In its observations of 28/12/2015 the opponent mentions for the first time this right in connection with Article 8(4) EUTMR which is, indeed, the only provision which can be invoked in connection with the Spanish commercial name. This new ground of opposition cannot be taken into account as it had not been claimed within the three month opposition period (Article 41(1) EUTMR and, therefore, the opposition must be rejected as inadmissible as far as it is based on the Spanish commercial name No 206 236.  

The evaluation of the opposition will continue on the basis of Spanish trade mark registration No 2 030 792, which is admissible and has been properly substantiated by the opponent within the time limit allocated for this purpose.

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, Spanish trade mark registration No 2 030 792.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 12/11/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 12/11/2009 to 11/11/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely transportation; packaging and storage of goods; travel organization in Class 39.  

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 25/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/07/2016 to submit evidence of use of the earlier trade mark. Within the time limit, the opponent submitted evidence of use.

The evidence submitted by the opponent consists of 5 exhibits with the following information:

Exhibit No. 1: contains information about the opponent’s company and its activities, services and products.

Exhibit No. 2: provides details regarding turnover figures and the place held by the opponent’s company in a ranking of companies regarding turnover both in general in Spain, and in its specific sector.

Exhibit No. 3: contains several ISO certificates.

Exhibit No. 4: includes several press notes concerning the activities of the opponent’s company in the years 2010-2015.

Exhibit No. 5: contains a brochure with information about the activities of the opponent’s company.

From the evaluation of the evidence it becomes clear that the trade mark is used in connection with prefabricated goods which, according to the translation submitted, are items such as ‘reinforced concrete cylinder pipes, pre-stressed concrete cylinder pipes, GFRP pipes, ring segments for tunnels, pre-stressed concrete railway sleepers, etc.’. There is, however, no evidence whatsoever that proves that the opponent offers services of transportation; packaging and storage of goods; travel organization in Class 39 under the earlier trade mark. It is therefore irrelevant whether the opponent has indeed proved the use of the mark as registered (and therefore complied with the requisites of Article 15 EUTMR), or whether the documents are dated and allude to the relevant period, or if the references to the extent of the use are sufficient. The relevant issue is that the evidence shows that the mark has been used for goods in relation to which the earlier mark has no protection, and not for the services for which it is registered.

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).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time. Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

José Antonio GARRIDO OTAOLA

María Belén IBARRA DE DIEGO

Ana MUÑIZ RODRÍGUEZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.