KERA-BOND | Decision 2607474

OPPOSITION No B 2 607 474

Mapei S.P.A., Via Cafiero, 22, 20158 Milano, Italy (opponent), represented by Dott. Franco Cicogna & C. SRL, Via Visconti di Modrone, 14/A, 20122 Milano, Italy (professional representative)

a g a i n s t

Henkel AG & Co. KgaA, Henkelstr. 67, 40589 Düsseldorf, Germany (applicant), represented by Joachim Renner, Henkel AG & Co. KgaA, Henkelstr. 67, 40589 Düsseldorf, Germany (employee representative).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 607 474 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 397 426 ‘KERA-BOND’. The opposition is based on Italian trade mark registrations No 271 756 ‘KERABOND’ and No 876 719 ‘MAPEI KERABOND’; European Union trade mark registration No 4 754 685Image representing the Markand International trade mark registrations No 800 251 and No 759 200 ‘KERABOND’, both designating the Netherlands, Estonia, the Czech Republic, the European Union, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland. The opponent invoked Article 8(1)(a) and (b), and Article 8(5) EUTMR.

SUBSTANTIATION – Italian trade mark registration No 271 756 and International trade mark registrations No 800 251 and No 759 200

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

International trade mark registrations No 800 251 and No 759 200

In the present case the notice of opposition was not accompanied by any evidence as regards the international trade marks on which the opposition is based.

On 19/11/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 19/03/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier international trade marks.

Italian trade mark registration No 271 756

The evidence filed by the opponent consists of some extracts from the Italian official database, together with their translations into English.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because there is no indication of the goods covered by the earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on the abovementioned earlier marks.

The opposition continues on the basis of the remaining earlier rights, namely European Union trade mark registration No 4 754 685 and Italian trade mark registration No 876 719.

PROOF OF USE

The Opposition Division finds it appropriate to first examine the proof of use in relation to the opponent’s European Union trade mark registration No 4 754 685.

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 earlier European Union trade mark No 4 754 685 Image representing the Markon 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 12/08/2015. 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 12/08/2010 to 11/08/2015 inclusive.

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

Class 1: Adhesives for ceramic tile applications; chemical products for use in industry; unprocessed artificial resins; unprocessed plastics, adhesives used in industry; preparations for the preservation or waterproofing of cement; fireproofing preparations; adhesives for wall tiles and floorings.

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 01/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 01/08/2016 to submit evidence of use of the earlier trade mark.

On 27/07/2016, within the time limit, the opponent submitted evidence of use.

On 11/11/2015, in support of the opposition, the opponent had already submitted documents in relation to the alleged reputation and enhanced distinctiveness of its earlier marks. These documents will also be taken into account for the assessment of the proof of use.

On 15/03/2017, after expiry of the time limit, the opponent submitted additional evidence.

The applicant argues that the evidence submitted by the opponent on 15/03/2017 was late and, therefore, it should not be taken into account.

Even though, according to Rule 22(2) EUTMIR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 76(2) EUTMR (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 30).

The factors to be evaluated when exercising this discretion are, first, whether the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, whether the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 36).

In the present case, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional. The fact that the applicant disputed the initial evidence submitted by the opponent justifies the submission of additional evidence in reply to the objection (29/09/2011, T-415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 36). Furthermore, the additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit.

For the above reasons, and in the exercise of its discretion pursuant to Article 76(2) EUTMR, the Office therefore decides to take into account the additional evidence submitted on 15/03/2017. However, although these documents are considered admissible and are taken into account by the Opposition Division, they do not alter the conclusions based on the assessment of the evidence submitted within the time limit. Therefore, the Opposition Division considers that it was not necessary to specifically invite the applicant to submit its observations with regard to the second batch of documents.

The evidence to be taken into account is the following:

Evidence submitted on 11/11/2015 (first batch)

  • Extract from the Chamber of Commerce of Milano, in relation to the company name ‘Mapei S.P.A.’ established on 17/07/1961.

  • Extracts from the opponent’s website www.mapei.com, in English and Italian, presenting the company ‘Mapei S.P.A.’ and the ‘KERABOND’ and ‘KERABOND T’ products.

Evidence submitted on 27/07/2016 (second batch)

  • Annex 1: Packaging. The sign ‘KERABOND’ together with ‘MAPEI’ is displayed on the packaging of a product described as a ‘cementitious adhesive for ceramic tiles’.

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  • Annex 2: Technical details of the product called ‘cementitious adhesive for ceramic tiles’, written in several languages (English, Portuguese, Italian, Spanish, French). The sign is displayed as follows: .

  • Annex 3: Advertisements, in several languages (Italian, English).

  • Annex 4: Pictures of exhibitions where the ‘Mapei’ products have been presented, inter alia, the ‘KERABOND’ adhesive.

  • Annex 5: Very high number of invoices dated 2011-2016. They are issued by the opponent and are addressed to clients located in several countries within and outside the European Union, such as Italy, Slovenia, Germany, United Kingdom and Malta. They show sales of ‘KERABOND’ and ‘KERABOND T’ products. The amounts and quantities sold are significant, all over the relevant period. The sign is depicted on the top of the invoices and ‘KERABOND’ and ‘KERABOND T’ are listed in the description of the products sold.

  • Annex 6: Invoices sent to the opponent in relation to marketing services.

  • Annex 7: Packaging, technical details of the product in several languages (French, German, English, Portuguese, Romanian, Spanish, Hungarian), advertisements, publications and extracts from catalogues; all showing the followings signs for a cementitious adhesive for ceramic tiles:

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