OPPOSITION No B 2 502 295

HASCO Hasenclever GmbH + Co KG, Römerweg 4, 58513 Lüdenscheid, Germany (opponent), represented by Roche, von Westernhagen & Ehresmann, Friedrich-Engels-Allee 430-432, 42283 Wuppertal, Germany (professional representative)

a g a i n s t

Huayu Automotive Systems Co. Ltd., No. 489 Wei Hai Road, Shanghai 200041, People's Republic of China (applicant), represented by Taylor Wessing, Thurn-und-Taxis-Platz 6, 60313 Frankfurt am Main, Germany (professional representative).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 502 295 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 465 695. The opposition is based on European Union trade mark registration No 1 037 357. The opponent invoked Article 8(1)(b) EUTMR.

Hasco
Earlier trade mark	Contested sign

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.

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 08/01/2015. 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 08/01/2010 to 07/01/2015 inclusive.

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

Class 6:        Injection, compression and die casting moulds of metal; unit die holders of metal for injection, compression and die casting moulds and for machine tools, in particular for blanking, stamping, embossing and deep-drawing tools; parts for the aforesaid goods; flow and closure components of metal for tempering systems, in particular junctions, connection pieces, coupling nipples, flexible tubes; sleeves, bushes, casting bushes, ejector pins, springs; screws, set screws, bolts, eyes and hooks, wedges, sliding and carrier blocks, thrust pads and other fastening and connecting pieces of metal; positioning and guiding elements and plates, profiles, angles and strips of metal for the construction of tools and appliances.

Class 7:        Blanking, stamping, cutting and deep-drawing tools being machine tools; gears and parts for gears and guiding and positioning devices being components for machine tools for removing work pieces from the mould, in particular from injection, compression and die casting moulds; valves (parts of machines) for controlling the flow in injection, compression and die casting moulds; marking and labelling devices, in particular so-called date stamps, for machine tools; parts for the aforesaid goods.

Class 8:        Clamping tools and devices for the construction of tools and appliances; parts for the aforesaid goods; control elements of metal, in particular handles, handlebars, handwheels, knurled nuts, levers and cranks.

Class 9:        Electronic control apparatus, in particular for the temperature control of casting bushes and hot runners; pressure measuring and control apparatus; infrared measuring and testing apparatus; magnetic field sensors, proximity switches; parts for the aforesaid goods.

Class 11:        Hot runners, cartridge-type heaters and guard plates for tempering for injection and die casting machines; parts for the aforesaid goods.

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 26/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 02/05/2016 to submit evidence of use of the earlier trade mark, and on 15/04/2016 the Office extended the time limit until 02/07/2016. The opponent submitted evidence of use within the time limit.

The evidence to be taken into account is the following:

• Affidavit in which Andre Brandt, authorized manager of HASCO Hasenclever GmbH + Co KG, claims that EUTM 1 037 357 had been used in the European Union on a constant and extensive basis for the identification of the goods listed in annex 1 “Product Turnover”. A total turnover in the range of a three digit million Euro amount had been made annually between 2011 and 2014. Invoices: Every single sold good had been marked itself or at least its packaging with the trade mark ‘Hasco’. The trade marked goods are sold typically to the automobile industry or tool makers.
• Annex 1: Table, containing the turnover of the opponent´s goods for the years 2010-2015.
• Annex 2: 9 photographs which are showing the trade mark ‘Hasco’ being affixed to goods made of steel or being affixed on packaging. Three of the pictures are dated 2013 and therefore within the relevant time frame, the remaining pictures are either undated or fall outside the relevant time frame.

The sign was shown affixed to goods made of steel or affixed on packaging as followed:

• Annex 3: Four photographs which are showing the front pages of HASCO catalogues for the years 2010, 2011, 2013, 2014, 2015. According to the affidavit the catalogues were distributed within Europe between 2011 and 2014 in a quantity of 3000 to 5000 physical pieces each year and in the form of an online catalogue and downloadable PDFs.
• Annex 4: Copies of catalogue pages from the 2011 catalogue. The product numbers listed on the catalogue pages correspond to the product numbers listed in the turnover table (annex 1). The sign was shown on and in the above mentioned catalogues, the photographs and packaging and letter heads, as follows:
• 
• Annex 5: 24 invoices. The seller on the invoices is HASCO Hasenclever GmbH. According to the opponent all invoices, when mailed, were printed on a letter head containing the trade mark ‘Hasco’ (such as the letter head of annex 6). The submitted invoices do not show such a letter head. The currency of two invoices is Polish Zloty. The remaining invoices’ currency is Euros. All invoices date from the relevant time frame.
• Annex 6: Two different letter heads containing the trade mark ‘Hasco’ which are used, according to the opponent, since the beginning of 2014.

As far as the Affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the affidavit are supported by the other items of evidence.

The above considerations apply equally to turn over figures which were annexed to the affidavit as these are not attested by an independent source.

The other evidence consists in particular of invoices. Even though the invoices do not contain addresses of recipients, most invoices contain the recipient’s country, all of those being EU member states. The invoices are issued in Dutch, French, German, Polish and Spanish and the currencies of the invoices are either Euro or Polish Zloty. The product names and thereto related information, to be found in the copied pages of the 2011 catalogue, are written in English, French and German. Taking into account all the above, it is considered that the evidence relates to the relevant territory, the European Union.

Most of the submitted documents, in particular all the invoices and the copied pages of the 2011 catalogue refer to the relevant period of time.

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.

Special circumstances, for example lower sales figures during the initial marketing phase of a product, could be of relevance when assessing the genuineness of the use (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 53).

As stated above the turnover figures which are annexed to the affidavit are not attested by any independent source. Moreover, there is no information that the turnovers have been actually generated by goods sold under this particular mark.

The invoices show that a variety of goods, listed with specific product codes, were sold within the European Union throughout the relevant period of time. The invoices merely indicate that the invoices are issued by the company of the opponent and do not show that the goods were sold under the mark. The catalogue pages are indicating, inter alia, their product codes and names of the listed products. The mark  is shown on top of every page of the catalogue. Some of the product names and product codes of the invoices can be linked to the submitted catalogue pages whilst some of the invoiced product coded goods do not match with any of the product codes of the catalogue pages. In regards to the invoiced goods product codes which match with the catalogue, the combination of these two must be considered to be sufficient to qualify as being sold under the mark.

However, it is unclear whether the invoiced goods that can be linked to the catalogues are actually goods that the mark is registered for. In the absence of any further objective evidence, the Opposition Division cannot conclude on the basis of the product names, product codes, the product descriptions and drawings that the invoiced goods are actually goods for which the mark is registered (or subcategories thereof).  

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications that the mark has been used for the goods for which it is registered.

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) 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

Natascha GALPERIN

André Gerd Günther BOSSE

Plamen IVANOV

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.