OPPOSITION No B 2 452 681

Mecatherm (Société Anonyme), Route du maréchal de Lattre de Tassigny, Barembach, 67130 Schirmeck, France (opponent), represented by Cabinet Bleger-Rhein-Poupon, 4a, rue de l'Industrie, 67450 Mundolsheim, France (professional representative)

a g a i n s t

Medewo Holding AG, Bahnhofstr. 7, 5616 Meisterschwanden, Switzerland (applicant), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative).

On 02/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 452 681 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 13 155 809 ‘MECATHERM’. The opposition is based on European Union trade mark registration No 255 471 ‘MECATHERM’ and French trade mark registration No 1 424 122 . The opponent invoked Articles 8(1)(b) and 8(5) 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 shall 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 shall 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 mark registration No 255 471 and French trade mark registration No 1 424 122.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the contested application’s publication.

The contested application was published on 23/09/2014. 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 and France from 23/09/2009 to 22/09/2014 inclusive.

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

European Union trade mark registration No 255 471:

Class 7:        Machines for the production of bakery products, kneading machines, dividing machines, shaping machines, drawing machines, portioning machines, conveying equipment, de-moulding machines, wrapping machines.

Class 11:        Ovens.

French trade mark registration No 1 424 122:

Class 11:        Machines for bakery. Non electric cooking and heating apparatus namely tunnel ovens.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 05/05/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/07/2015 to submit evidence of use of the earlier trade marks. This was later extended to 07/07/2016. On 07/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Attachment 1 – One page English extract dated 06/07/2016 from the opponent’s website showing the trade mark ‘MECATHERM’ on an industrial bakery machine (FTM oven) for making speciality breads.
• Attachment 2 – Two page extract in French from a French magazine Valeurs Boulangères dated December 2005.
• Attachment 3 – Four pages of an information sheet in English and dated 03/2007 describing the technical features of two ‘MECATHERM’ automated bakery production lines.
• Attachment 4 – Four page extract in English of the opponent’s internal magazine ‘MECA news’ from December 2014 featuring an article of a visit to a customer’s recently opened factory in Dubai where they ‘host two MECATHERM lines, one for the production of buns (round and long shapes), one for the production of Tin Bread and/or baguette’.
• Attachment 5 – Twenty three page company presentation made by Olivier Sergent, the opponent’s CEO, made to investors and dated 04/12/2014. The document states that Mecatherm is the world leader in industrial bakery equipment and that it has three lines – a high capacity line for “convenience” baguettes and crusty bread, a premium line for “artisan” quality bread and baguettes and a “varietee” line for buns, brioches, tin bread, pastries, etc. It also states that sales were EUR 96.1 million in 2013 and that 92 lines had been sold in Germany, 110 in France and 272 in the rest of Europe.
• Attachment 6 – One page English extract dated 06/07/2016 from the opponent’s website showing the trade mark ‘MECATHERM’ on industrial bakery machine (FTC oven) for making standard bread.
• Attachment 7 – Two page press release dated 01/2016 regarding the opponent’s presence at the trade fair Europain 2016 from 05/02/2016 to 09/02/2016 where they were presenting their new generation stone oven FTP II.
• Attachment 8 – Two page French information sheet which via the images can be understood as describing the technical features of an industrial bakery oven, bearing the date 10/2016.

In addition, the opponent’s evidence to prove reputation filed on 07/05/2015 was also submitted before the time limit set by the Office and therefore this evidence can also be analysed here.

• Two page undated extract from a document entitled Company Reports in which it is stated that the opponent is among the world’s leading suppliers of automated production plant for the baking industry.
• Eight articles from trade magazines, namely Backtechnik 01/2013, Baking Biscuit issues 04/2012, 05/2013, 04/2014, Kennedy's Bakery Production Summer 2014, European Baker issue 6 2014, lemag.imaginalsace.com 12/05/2014 and L’usine nouvelle 23/01/2015. The articles make reference to the opponent being one of the leading suppliers of industrial bakery production lines.

The articles from trade magazines show that the marks have been used at least in France and the United Kingdom, and therefore, the evidence relates to the relevant territory. Whilst most of the attachments come from outside the relevant period (items 1 through to 8), the articles from trade magazines are almost entirely within the relevant period, therefore, the evidence relates to the relevant time period.

The same articles provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. They show that the opponent, based in Alsace, has sold over 700 industrial bakery production lines to various countries including some of those in the relevant territory. Therefore, whilst no actual evidence of sales, such as invoices or published company records, is provided there are indications of the commercial volume. Likewise, the articles cover nearly half the required period and contain references to events predating their publication. Consequently there are sufficient indications of duration and frequency of use.

However, the articles refer often to ‘MECATHERM’ not as a trade mark but rather as the company or group name [e.g. “The Mecatherm Group’s success…”, “…Mecatherm’s CEO…”, “…Mecatherm’s view of the regional and global markets…”]. Likewise, the articles do not include clear and unambiguous statements regarding the use of the trade mark, for example as might be understood by statements such as “A ‘MECATHERM’ was sold …” or “A ‘MECATHERM’ was installed …”. Against this, though, it must be stated that the articles (as well as the other evidence) clearly show images of the goods bearing the name ‘MECATHERM’ mostly as a word in bold, red letters. Consequently, the evidence shows that the earlier European Union trade mark registration No 255 471 has been used as registered in the European Union. For the other earlier mark, namely French trade mark registration No 1 424 122, the evidence shows use of the verbal element ‘MECATHERM’, but not in conjunction with this mark’s figurative element. However, the Opposition Division finds that the lack of the figurative element is an acceptable alteration as the verbal element ‘MECATHERM’ remains the same and the loss of the figurative element does not alter the distinctive character of the mark. Therefore, the use shown is considered valid use of the French trade mark registration.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

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 the relevant case-law, when applying the above mentioned provision the following should be considered (14/07/2005, T-126/03, ‘ALADIN/ALADDIN’). 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 relating to which the goods or services for which the trade mark has actually been used actually 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.

In the present case the evidence shows genuine use of the trade marks for some of the goods and for a subcategory of some of the goods. The evidence all relates to industrial scale production line bakery machines. It cannot be claimed that the opponent has shown sufficient evidence for the broader categories of ovens or machines for bakery products, as these would protect all forms of such devices including those for home use, and no evidence of any use other than industrial scale devices was filed. Consequently, as the evidence shows use for some of the goods only in the context of industrial scale operations and that this is capable of being viewed as an independent sub-category this must be reflected in the goods shown to be used.

Consequently, the evidence shows use for the following goods:

European Union trade mark registration No 255 471:

Class 7:        Industrial scale machines for the production of bakery products, kneading machines, dividing machines.

Class 11:        Industrial scale ovens.

French trade mark registration No 1 424 122:

Class 11:        Industrial scale machines for bakery; non electric cooking and heating apparatus namely tunnel ovens.

The other goods, namely shaping machines, drawing machines, portioning machines, conveying equipment, de-moulding machines, wrapping machines from European Union trade mark registration No 255 471 are never mentioned in any of the evidence that has been provided. As no mention is made of such machines the use of the marks has not been proved for these goods.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

1. The goods

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

European Union trade mark registration No 255 471:

Class 7:        Industrial scale machines for the production of bakery products, kneading machines, dividing machines.

Class 11:        Industrial scale ovens.

French trade mark registration No 1 424 122:

Class 11:        Industrial scale machines for bakery; non electric cooking and heating apparatus namely tunnel ovens.

The contested goods are the following:

Class 16: Packaging containers and bags; Plastic film for packaging, including stretch films, shrinkable films, self-adhesive films, textured films and bubble wrap; Envelopes, bags and pouches of paper or plastics, for packaging; Antistatic bags; Packaging aids; Packaging accessories and shipping aids (included in class 16); Pocket squares; Bags of paper and plastic; Cardboard articles, plastic materials for packaging (not included in other classes); Packaging material made of starches; Wrapping paper; Food packaging; Bottle envelopes of cardboard or paper; Sheets of reclaimed cellulose for wrapping; Plastic cling film, extensible, for palletisation; Absorbent sheets of paper or plastic for foodstuff packaging; Viscose sheets for wrapping; Wax paper, tissue paper, padding and wrapping paper, corrugated cardboard; Wrapping paper, Packaging silk, edge protectors of paper and cardboard; Envelopes (stationery), Mailing bags, Envelopes; Envelopes for floppy discs, files, books; Specimen bags; Padded bags; Packaging tubes, Mailing tubes, all of cardboard, Cases, Collapsible boxes, telescope boxes, Folding boxes, Folding boxes with integrated pallets; carrier bags made of paper; Stationery; Adhesives tapes of all kinds, masking tape, self-adhesive tapes (single-sided and double-sided self-adhesive tapes), adhesive tapes for unrolling, labels of all kinds (included in class 16), including tags (labels), self-adhesive labels, signalling labels, wet-adhesive rolls, label dispensers, non-electric filling devices for padding and stuffing materials, reels of all kinds, reels for adhesive tapes and strapping tapes; Hand-operated winding devices for films, stapling apparatus, cardboard staplers, transparent sleeves; Leaflet sleeves; Hand-held apparatus for dispensing and/or attaching adhesive tapes, strapping, stretch films or labels; Instructional and teaching material (except apparatus); Passport holders and slip-in cases of paper/cardboard or plastic, bags and sacks of all kinds, of plastic, star-sealed bottom bags, flat bags, document envelopes of plastic, self-adhesive envelopes of plastic, protective pallet covers of paper/cardboard or plastic, plastic film for packaging, in particular bubble wrap, bubble film, rolls of air-cushion films, reel films, protective films for labels; Anti-static air-cushion films, reel films for packaging loose goods, including for winding machines; Elastic mesh films for packaging fresh goods, protective mesh tubes, bottle packaging of paper/cardboard or plastic, profile foam packaging, flat foam, profile foam, air cushions, carrier bags of plastic; Pallet supports and intermediate pallet bearings of paper/cardboard or plastic; Filling, padding and stuffing material of paper/cardboard; Mailing tubes of plastic, padded envelopes of plastic, shrink packaging, pallet packaging; Humidity control sheets of paper or plastic for foodstuff packaging.

Class 17: Bags, envelopes, pouches of rubber for packaging; Packing, stopping and insulating materials; Flexible pipes, not of metal; Packaging material of rubber or gum; Rings of rubber; Filling, padding and stuffing material of plastic.

Class 20: Bottle casings of wood; Packaging containers of plastic.

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 Classes 16, 17 and 20

The opponent’s goods are industrial machines for the production of bakery products, kneading machines, dividing machines in Classes 7 and 11 and industrial ovens in Class 11.

The contested goods are packing materials (in Classes 16, 17 and 20), some devices and goods for use in packing (for example masking tape and stapling apparatus), stationery and instructional and teaching material (in Class 16) and flexible pipes and rings of rubber (in Class 20 although these could be intended for use as packing materials).

The opponent argues that the goods of the prior trade marks are used for the preparation and cooking of food goods and the contested goods are used to package and convey the goods. They argue that all these goods are used in the food goods distribution process and that the goods are necessarily stored and transported in packaging. Moreover, according to the opponent, they are complementary and have a close and necessary relation in that they apply to food goods and especially bakery products and that it is common, in supermarkets for example, to see the heating and cooking bakery ovens at the customer’s disposal and nearby the bread product and packaging containers or bags for the customer’s self-service.

The Opposition Division does not agree with this line of argument. The logical conclusion of the opponent’s arguments that goods are necessarily stored and transported in packaging, therefore they are similar would be that packaging is similar to all and any good. This is clearly not a reflection of market reality. Furthermore, the opponent’s goods are not those likely to be found in supermarkets at the disposal of shoppers. The opponent’s goods are industrial production line items for mass producing bakery goods. They are expensive items, purchased after long deliberation, planning and calculation. They are complex multifunctional products created by specialised engineering companies for the food industry.

The contested goods, and even those which can be assumed to be closest to the opponent’s goods and therefore offer the best case for the opponent, namely the contested food packaging, are goods where the nature, the intended purpose, the pertinent distribution channels and the targeted consumers of the goods at issue are completely different. The goods are not in competition with each other, nor are they complementary. Therefore, these goods are dissimilar.

The other contested goods are either subject to the very same analysis or are more remote (for example bottle casings of wood or envelopes for floppy discs, files, books stationery, flexible pipes, not of metal) and are also found dissimilar to the opponent’s goods.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade marks the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested marks. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in France and the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 08/08/2014. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in France and the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

European Union trade mark registration No 255 471:

Class 7:        Industrial scale machines for the production of bakery products, kneading machines, dividing machines.

Class 11:        Industrial scale ovens.

French trade mark registration No 1 424 122:

Class 11:        Industrial scale machines for bakery; non electric cooking and heating apparatus namely tunnel ovens.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent filed evidence to substantiate the opposition. Furthermore, the evidence filed to support proof of use was also filed before this deadline. Consequently, both sets of evidence can be taken into account. As the evidence has been listed above it will not be repeated again here.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Of the first eight attachments listed above six come from after the filing date of the contested sign (items 1, 4, 5, 6, 7 and 8). Of the eight articles from trade magazines seven are within the relevant time period.

Consequently, the evidence for reputation is based on eight magazine articles (one from 2005 (attachment 2) and seven others running between 2012 and 2014) and one information sheet. These items are good at showing the presence of the ‘MECATHERM’ brand on the market in connection with industrial scale bakery machines and ovens. Furthermore, in some of these the opponent is referred to as a leading supplier to the bakery industry. However, whilst they refer to the position of the opponent’s company within the market place saying that the company ‘MECATHERM’ is for example “one of the world leaders”, they do not assist in demonstrating that the brand has achieved such a level of recognition on the market as to conclude that it has a reputation for the goods for which it has protection. This is because the articles often refer to the opponent and the opponent’s position as a world leader. However, with the exception of the images which show the trade mark on the goods, they article hardly ever use the trade marks ‘MECATHERM’ when referring to the goods. Therefore, whilst it is reasonable to assume that if the goods are sold with the company name there is a link, this is insufficient by itself to show that the trade marks are reputed. This must be shown or supported by other evidence, and it is here that the opponent’s evidence is lacking in depth and breadth. The evidence shows little or no information regarding the degree of the relevant public’s recognition of the trade marks for the actual goods. There is no advertising or promotional material appearing in third party publications or indications of the amounts spent on such activities. There are no documents such as opinion polls or market surveys, and no indication of the market share attained by the trade marks in the relevant territory.

The evidence, therefore, as a whole does not provide sufficient indication of the degree of recognition of the trade marks by the relevant public. As a result, the evidence does not show the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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

Chantal VAN RIEL

Ric WASLEY

Vita VORONECKAITĖ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.