OPPOSITION No B 2 572 900

Eicher Landmaschinen-Vertriebs GmbH, Raiffeisenstr. 5, 94431 Ganacker, Germany (opponent), represented by Patentanwaltskanzlei Dr. Riebling, Rennerle 10, 88131 Lindau, Germany (professional representative)

a g a i n s t

Sator Central Services B.V., ‘s-Gravelandseweg 379, 3125 BJ Schiedam, Netherlands (applicant), represented by Chiever BV, Barbara Strozzilaan 201, 1083 HN Amsterdam, Netherlands (professional representative).

On 24/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 572 900 is upheld for all the contested goods.

2.        European Union trade mark application No 14 193 841 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 193 841. The opposition is based on European Union trade mark registration No 1 169 887. The opponent invoked Article 8(1)(a) and (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, European Union trade mark No 1 169 887.

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 21/07/2015. 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 21/07/2010 to 20/07/2015 inclusive.

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

Class 12:        Land vehicles, in particular for use in agriculture, mainly tractors; gear boxes for land vehicles; motors and engines for land vehicles; cabins for land vehicles.

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 31/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/08/2016 to submit evidence of use of the earlier trade mark. On 29/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Exhibit 1: a letter from Schönwetter, Striedacher & Partner (tax consultants for the opponent), giving the opponent’s sales turnover in the years 2010-2015.

Exhibits 2 to 11: a selection of sales offers, dated 2010, 2013 and 2014, addressed to clients in Germany and concerning different motor parts and brake parts for tractors. The sales offers include the sign  and were issued by Eicher Vertriebs GmbH.

The set also includes a sales offer dated outside the relevant period, namely 13/01/2016, and concerning various tractor parts. The quantities vary between 1 and 50 items with wholesale prices between EUR 2 and several hundred euros.

Exhibits 12 to 59: a selection of invoices, dated 2010, 2012, 2013, 2014 and 2015, addressed to clients in Germany, Austria, Portugal, Luxembourg and Italy and concerning tractors (see, for example, Exhibit 34), gear parts (see, for example, Exhibits 15-16), brake parts, motor parts and motors for tractors (see, for example, Exhibit 36 concerning a motor for a Type EDK-4 Motor tractor), etc. The invoices include the sign  and were issued by Eicher Vertriebs GmbH.

The set also includes invoices dated outside the relevant period, namely one dated 18/02/2010 and one dated 30/07/2015, both of which concern tractor parts.

Exhibit 60: a printout of the home page of the website www.eicher-ersatzteile.eu. The printout shows the use of the sign ‘EICHER’ in several places, but is dated outside the relevant period, namely 21/07/2016.

Exhibit 61: a printout of the front page of the opponent’s Facebook page. The sign ‘EICHER’ is depicted in several places (e.g. ‘Original Ersatzteile für EICHER Traktoren’) and the printout shows promotional material (‘Info-Post’) that has been posted. The printout is dated outside the relevant period, namely 21/07/2016.

Exhibits 62 to 75: a selection of promotional material, named ‘EICHER Info-Post’, dated 2010-2015, concerning information about motors for tractors, cabins for tractors, etc., and the company. Exhibit 63 is dedicated to ‘EICHER’ motors. The printed material contains the sign  at the top and mentions the mark ‘EICHER’ several times in relation to tractors, motors for tractors and different parts for them.

The set also includes promotional printed material dated outside the relevant period, namely one dated March/April 2010 and one dated November/December 2015.

Exhibits 76 to 80: a selection of promotional printed material, named ‘Info-Post’, that is not dated. The printed material contains the sign  at the top and mentions the mark ‘EICHER’ several times in relation to motors for tractors and different parts for them (such as parts for gearboxes).

Exhibit 81: photographs of packaging bearing the words ‘EICHER Original-Ersatzteile’.

Exhibits 82 to 84: photographs of different ‘EICHER’ tractors.

The applicant argues that the opponent did not submit translations of Exhibits 62-80, namely the promotional printed material named ‘Info-Post’, 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). Furthermore, it must be pointed out that, in its submissions (the ‘List of Contents’), the opponent provided translations of the relevant items in the invoices and the titles of the ‘Info-Post’ material. The Opposition Division points out, in particular, that the materials submitted as Exhibit 79 (‘EICHER Info-Post’ concerning replacement motors) and Exhibit 80 (‘EICHER Info-Post’ gearboxes and spare parts for gearboxes) mention the relevant goods and, from the translations provided by the opponent, the subject matter and the use of the sign  in relation to the goods are evident. Therefore, the Opposition Division considers that there is no need to request a translation.

The applicant also argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The Opposition Division considers further that the arguments that, until 2011, ‘EICHER’ tractors were manufactured by a third party and that it is unclear whether or not there was a relationship between the opponent and this third party that would justify the opponent’s ‘claim’ on the earlier mark are not relevant to the present proceedings.

Place of use

According to Article 15(1) EUTMR, the evidence must show that the European Union trade mark has been genuinely used in the European Union.

In the present case, the documents submitted, in particular the sales offers in Exhibits 2-11 and the invoices in Exhibits 12-59, demonstrate that the place of use is the European Union. This can be inferred from the language of the documents (German), the currency mentioned (euros) and some addresses in Germany, Austria, Portugal, Luxembourg and Italy.

Therefore, the evidence submitted contains sufficient indications concerning the place of use.

Time of use

Most of the evidence, including the majority of the sales offers, invoices and promotional materials, is dated within the relevant period (from 21/07/2010 to 20/07/2015, inclusive).

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period (in particular Exhibits 60-61 and some invoices) confirms use of the opponent’s mark within the relevant period. This is because the use this evidence refers to is close to the relevant period.

Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the sales offers, the invoices and the promotional printed materials (in particular Exhibits 79 to 84), provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope and the duration and frequency of use.

The invoices issued by the opponent (Exhibits 12-59) relate to the full duration of the relevant period and demonstrate the frequency of use of the mark during that period. Although the evidence does not indicate a particularly high commercial volume of use, it demonstrates that goods offered under the sign  were sold to various clients in Germany, Austria, Portugal, Luxembourg and Italy. Use of the mark need not be quantitatively significant for it to be deemed genuine. Moreover, the fact that the invoices are non-consecutive and cover an extensive period, from 2010 to 2015, must also be taken into consideration. The sample of invoices provided demonstrates continuous use. Therefore, it is clear from the evidence submitted that the opponent distributed or provided goods under the sign ‘EICHER’ in the relevant market, and this gives the Opposition Division sufficient information regarding the opponent’s commercial activities throughout the relevant period. The sales offers and the invoices, together with the promotional materials, the photographs and the internet extracts, may not demonstrate high levels of use of the earlier mark, but can be considered sufficiently representative evidence of the trade mark being used publicly and outwardly with a view to creating commercial markets. In any case, the documents prove that the use of the mark has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature 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 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

In the evidence submitted by the opponent, the sign appears as a word mark, ‘EICHER’, and as a figurative mark, .

The use of the sign as a figurative mark, as depicted above, does not alter the distinctive character of the mark in the form in which it was registered because the figurative element  has a rather decorative function and is, moreover, much smaller than and placed after the distinctive word ‘EICHER’.

In view of the above, the Opposition Division considers that the evidence does show use of the sign used as a trade mark and as registered within the meaning of Article 15(1)(a) EUTMR.

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, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish 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 part only of the goods or services for which it is registered it shall, 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.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use for at least motors for tractors and gear parts and gear boxes for tractors.

These goods can be considered to form objective subcategories of gear boxes for land vehicles (gear boxes meaning both the metal casing within which a train of gears is sealed, and its contents, especially in a motor vehicle; see Collins Dictionary online) and motors and engines for land vehicles, respectively. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark for motors for tractors and gear boxes for tractors. Without prejudice to a conclusion regarding whether or not genuine use has also been proven for the other goods covered by the earlier mark, the Opposition Division considers it appropriate to continue the examination of the opposition on the basis of the abovementioned goods.

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 on which the opposition is based are the following:

Class 12:        Motors for tractors; gear boxes for tractors.

The contested goods are the following:

Class 12:        Parts and accessories for passenger car vehicles and light commercial vehicles, namely braking consumables and tools and parts and accessories for brake friction; explicitly excluding parts and accessories for land vehicles, namely agricultural vehicles such as tractors.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed 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.

Contested goods in Class 12

The contested parts and accessories for passenger car vehicles and light commercial vehicles, namely braking consumables and tools and parts and accessories for brake friction; explicitly excluding parts and accessories for land vehicles, namely agricultural vehicles such as tractors are particular parts and accessories for vehicles other than agricultural vehicles (e.g. tractors). However, manufacturers of light commercial vehicles often also manufacture agricultural vehicles and, more importantly, parts and accessories for light commercial vehicles and agricultural vehicles. For instance, manufacturers of cars (and consequently of the parts thereof, such as braking consumables and tools and parts and accessories for brake friction) are also active in the production of scooters, tractors and trucks, and vice versa, and of parts and accessories thereof. As a result, and contrary to the applicant’s view, the contested goods may have the same producers, end users and distribution channels as the opponent’s motors for tractors and gear boxes for tractors. Therefore, they are considered to be similar to at least a low degree.

2. The signs

EICHER	EICHER
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

As concluded above, the compared goods are similar to at least a low degree. The signs are identical.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

Due to the identity between the signs, a likelihood of confusion exists.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 169 887. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR, or the proof of use in relation to the remaining goods covered by the earlier mark.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Arkadiusz GORNY

Jorge ZARAGOZA GOMEZ

Denitza STOYANOVA-VALCHANOVA

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.