OPPOSITION No B 2 641 069

Robert Gammisch, Neue Siedlung 27, 95339 Neuenmarkt, Germany (opponent), represented by Rau, Schneck & Hübner Patentanwälte Rechtsanwälte PartGmbB, Königstraße 2, 90402 Nürnberg, Germany (professional representative)

a g a i n s t

La Poste, 9 rue du Colonel Pierre Avia, 75015 Paris, France (applicant), represented by Marchais Associes, 4 avenue Hoche, 75008 Paris, France (professional representative).

On 22/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 641 069 is partially upheld, namely for the following contested services:

Class 39:         Freighting; Delivery of parcels and goods; Packaging of goods; Delivery of messages, newspapers, parcels, goods; Packaging of goods; Transportation information; Storage information; Freight forwarding; Delivery of goods by mail order; Courier services for messages and merchandise; Transport, packaging and storage of goods, storage of goods, address changing services, namely redirection of mail; Express delivery and collection of parcels, post and goods.

2.        European Union trade mark application No 14 687 966 is rejected for all the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 687 966, namely against all the services in Class 39. The opposition is based on European Union trade mark registrations No 8 700 171 and No 5 831 755. 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 marks on which the opposition is based, namely European Union trade marks No 8 700 171 and No 5 831 755. 

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

The contested application was published on 27/11/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 27/11/2010 to 26/11/2015 inclusive.

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

1. EUTM No 8 700 171  – LOG-IN

Class 39:        Freight forwarding, in particular returns management, transport control, transport monitoring; services for the storage of goods; logistics in the transport sector.  

2. EUTM No  5 831 755  –

Class 39:        Freight forwarding, in particular returns management, transport control, transport monitoring; storage of goods; logistics in the transport sector.  

As a preliminary remark, the services services for the storage of goods and storage of goods are identical. Thus, it does not make a difference in the analysis of the proof of use as regards the services which mark is selected.

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 12/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 24/11/2016 to submit evidence of use of the earlier trade marks. On 14/11/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Photographs showing use of the trade marks on buildings and lorries.

• Example of a letterhead with the Log-In trade mark on top.

• Screenshots of the opponent’s website, dated 17/10/2016, the trade mark is displayed.

• Screenshots obtained from the Wayback machine (a database which archives old websites) from within the use period showing the website of the opponent with the logo.
• 31 Invoices to customers in Italy, Germany, France, the UK for many hundred thousand Euro for the packing, transportation, shuttling of transport, renting of freezing trailers, management of returned goods, cutting of tobacco and storing of goods. These invoices cover the period 25/10/2011 until 28/10/2014. The invoices which include the letterhead of the company clearly indicate that the services mentioned before are provided by Log-In Logistikpark GmbH and Log In International Spedition GmbH.

• Affidavit by Mr. Robert Gammisch, who states that he is the proprietor of the trade marks and sole director and sole shareholder of the companies Log In International Spedition GmbH and Log-In Logistikpark GmbH. He claims that the marks have been used since 2007 by two sister companies, Log In International Spedition GmbH and Log In Logistikpark GmbH. He explains that the logo has been used on the building, on letterheads, websites. According to Mr. Gammisch, a turnover of several millions of Euro was achieved in the years 2011-2015.

The invoices show that the place of use is mostly Germany but also Italy, France and the United Kingdom. This can be inferred from the language of the documents (German and English), the currency mentioned (‘Euro’) and some addresses in Germany, Italy, France and the UK. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period.

The documents filed, namely ‘invoices’, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the marks have been used as registered for all the services for which the mark is registered. Mostly the figurative mark  which is also registered has been used; but the use requirement is also correctly fulfilled in relation to the word mark ‘LOG-IN’ as a little representation of a circle left to the verbal element does not alter the distinctive character of the sign.

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 marks during the relevant period in the relevant territory.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 700 171.

1. The services

The services on which the opposition is based are the following:

Class 39:         Freight forwarding, in particular returns management, transport control, transport monitoring; services for the storage of goods; logistics in the transport sector.  

The contested services are the following:

Class 39:         Data storage (security services); Freighting; Delivery of parcels and goods; Packaging of goods; Delivery of messages, newspapers, parcels, goods; Packaging of goods; Transportation information; Storage information; Freight forwarding; Delivery of goods by mail order; Courier services for messages and merchandise; Transport, packaging and storage of goods, storage of goods, address changing services, namely redirection of mail; Express delivery and collection of parcels, post and goods.

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

The term ‘in particular’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

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.

The contested delivery of parcels and goods; packaging of goods; delivery of messages, newspapers, parcels, goods; packaging of goods; transportation information; storage information; delivery of goods by mail order; courier services for messages and merchandise; transport, packaging and storage of goods, storage of goods, address changing services, namely redirection of mail; express delivery and collection of parcels, post and goods are included in the broad category of, or overlap with, the opponent’s logistics in the transport sector. Therefore, they are identical.

The contested freight forwarding and freighting include, as broader categories the opponent’s freight forwarding, in particular returns management, transport control, transport monitoring. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested services data storage (security services) are IT-services and are offered by companies which can offer secure storage of data in huge servers. These are very specialised IT-companies as the establishment of secure servers is a very complicated business in order to avoid data loss due to power cuts, natural disasters, etc. These services are not provided by companies who forward goods, control transport of goods or store goods. They are directed at different consumers and are neither in competition nor complementary. For the reasons set out above, these services are considered to be dissimilar to all earlier services.

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 services found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high as certain freight services may include the transportation of dangerous goods where high attention in the selection of the shipping company is needed or they can also be quite expensive.

3. The signs

LOG-IN	LOGGIN
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 element ‘LOGGIN’ of the contested mark has no meaning for the relevant public and is, therefore, distinctive.

The element ‘LOG-IN’ of the earlier mark will be understood by the great majority of the relevant public as ‘the action or an act of logging in’ (see Oxford English Dictionary), as this word either exists as such or without the hyphen (Login) in many of the official languages of the Union. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive. A part of the public, for example the Polish-speaking public does not understand log-in as the Polish word is either zalogować or logować’.

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 signs coincide in ‘LOG*IN’. However, they differ in the additional letter ‘G’ in the contested mark and in the use of the hyphen in the earlier mark.

Therefore, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛LOGIN’, present identically in both signs. The only difference is the repetition of the letter ‘G’ in the contested sign, the hyphen will neither be pronounced nor will it aurally set the signs apart. In some languages such as German the signs are aurally identical; in others like Polish the signs are highly similar because the letter combination ‘gg’ is uncommon in Polish.

Therefore, the signs are aurally either identical or highly similar.

Conceptually, for some parts of the public, such as the Polish-speaking public neither of the signs has a meaning in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. However, the vast majority of the public in the relevant territory will perceive the meaning of the earlier mark, as explained above, while the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for the vast majority of the public, excluding at least the Polish-speaking parts.

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion at least on the part of the Polish-speaking part of the public due to the high similarities both aurally and visually and therefore the opposition is partly wellfounded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• EUTM No  5831755  –

Since this mark does not cover a broader scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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 will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tobias KLEE

Lars HELBERT

Swetlana BRAUN

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.