OPPOSITION No B 2 494 428

Respirex International Limited, Unit F, Kingsfield Business Centre, Philanthropic Road, Redhill, Surrey RH1 4DP, United Kingdom (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom (professional representative)

a g a i n s t

Ansell Microgard Limited, 9 Saltmarsh Court, Priory Park East, Hull, East Yorkshire HU4 7DZ, United Kingdom (applicant), represented by Haseltine Lake LLP, Redcliff Quay 120 Redcliff Street, Bristol BS1 6HU, United Kingdom (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 494 428 is upheld for all the contested goods.

2.        European Union trade mark application No 13 406 111 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 13 406 111. The opposition is based on non-registered trade mark ‘GTB’ used in the course of trade in all the Member States of the European Union. The opponent invoked Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The examination of the opposition will begin with the non-registered trade mark used in the course of trade in the United Kingdom. The use of the non-registered marks in the remaining Member States of the European Union will be assessed only if required.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

The rationale behind the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to prevent earlier rights which have only been used in a small geographical area, or for which only token use can be demonstrated, from blocking the registration of a new EUTM throughout the European Union. Therefore, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to the following elements:  

1. Intensity of use (sales made under the sign);

2. Length of use;

3. Spread of the goods (location of the customers); and

4. Advertising under the sign and the media used for that advertising, including the distribution of the advertising (see 24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 36-37 and 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 27/10/2014. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date for:

Protective clothing, footwear and headgear for use in chemical, biochemical, radioactive and hazardous environments; personal and respiratory protective apparatus and equipment, parts and fittings for the aforesaid goods. Repair and evaluation services relating to protective clothing, footwear and headgear and personal and respiratory protective apparatus and equipment. Education and training services relating to protective clothing, footwear and headgear and personal and respiratory protective apparatus and equipment.

On 23/09/2015 the opponent submitted evidence of use in the course of trade. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Witness statement by Mr. Tony Farrant, Technical Support Manager of the London Fire Brigade. The witness statement is dated 01/09/2015 and covers the following main points:

The London Fire Brigade was founded in 1866. He has worked in the industry of protective solutions and clothing for 30 years. He has known the opponent and its product ranges for 25 years. He is also aware of the reputation of the brand ‘GTB’ in the field of personal protective clothing.

• Witness statement by Mr. Juan Molina, footwear purchaser of the Iturri Group in Spain. The witness statement is dated 09/09/2015 and covers the following main points:

The company Iturri Group was founded in 1947 and specialises in Industrial safety and Personal Protective Equipment. He has known the opponent’s company and its products for 10 years. He is familiar with the reputation of the opponent in relation to the GTB products in the field of protective clothing.

• Witness statement by Mr. Yves Cluytmans, Portfolio Manager of the Vandeputte company in Belgium. The witness statement is dated 09/09/2015 and covers the following main points:

The company was founded in 1947 and specialises in Personal Protective Equipment. The company’s markets are Benelux and France. He has known the opponent’s company and its products for 15 years. He is familiar with the reputation of the opponent in relation to the GTB products in the field of protective clothing.

• Witness statement by Mr. Mark Simpson, Managing Director of the opponent. The witness statement is dated 22/09/2015 and covers the following main points:

He has been connected with the opponent for 29 years and has worked in the current position since 1990. The opponent is a world leading supplier of personal protective solutions and specialist footwear. He claims that one of the key products of the opponent is a reusable gas-tight suit promoted under the brand ‘GTB’. The mark was adopted in the early 1980’s and the mark has been used since.  

Numerous exhibits are attached to this witness statement to demonstrate use. These documents may be summarised as follows:

• Turnover figures for ‘GTB’ protective suits for several countries of the EU. The figures (in Euro) for the United Kingdom are also mentioned, which are considerable, however they are confidential and there is no independent source to back this up.

• A sample of invoices for sales made, inter alia, in the United Kingdom. The invoices for sales made to consumers throughout the United Kingdom cover the period 28/02/2001 to 28/03/2014. They contain information about the products sold (GTB Gas Tight Suits) and exceed tens of thousands of pounds.

 

• A SGS certificate dated 22/02/1996 stating that the opponent’s goods which are mentioned as gas tight suits and are branded GTB are in accordance with the requirements of the European Directive 89/686/EEC.

• Brochures, a further SGS Certificate (mostly unreadable) and a print out from the opponent’s website which state that GTB are gas-tight suits. Only the print-out from the website is dated (10/11/2005).

• Instructions for the use of GTB Gas Tight Suits: undated. 

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgments of 24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

It should be noted that the evidence relating to use should be analysed as a whole rather than a piece by piece assessment and all the circumstances of the specific case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with other documentation and information. This is contrary to the rather piece by piece assessment as undertaken by the applicant.

The opponent has demonstrated considerable sales in the United Kingdom before the applicant filed to register the contested mark. The amounts included in the invoices are significant, amounting to several tens of thousands of pounds. There is also supporting evidence in the form of witness statements and endorsements issued by clients and professionals of the opponent’s gas tight suits, screenshots of websites and brochures. The earlier mark is clearly present throughout the evidence.

The invoices show that the place of use is the United Kingdom. This can be inferred from the language of the documents (English), the currency mentioned (pounds) and addresses throughout the United Kingdom.

Most of the evidence is dated before the relevant date.

The evidence, such as the invoices and brochures shows that the opponent’s sign has been used over a long period as a trade mark for protective gear, namely gas tight suits. These are protective suits which can be worn in environments where persons have to enter areas where dangerous or even deadly gases are present.

Furthermore, the invoices provide sufficient information concerning the commercial volume of use, the length of time of use and the frequency of use. It is clear from the evidence that the opponent’s trade under the sign at issue was of more than mere local significance as can be seen from the addresses indicated in the invoices and the amount of sales.

However, the evidence does not succeed in establishing that the sign has been used in the course of trade of more than local significance for all the goods and services on which the opposition is based. The evidence mainly relates to gas tight suits which is a subcategory of the broad category Protective clothing, footwear and headgear for use in chemical, biochemical, radioactive and hazardous environments, whereas there is no or little reference to the remaining goods and services. This is clear, for example, from the sales figures and brochures, where only the former are mentioned. There is absolutely no evidence provided that the opponent used the mark in relation to Repair and evaluation services relating to protective clothing, footwear and headgear and personal and respiratory protective apparatus and equipment. Education and training services relating to protective clothing, footwear and headgear and personal and respiratory protective apparatus and equipment.

The Opposition Division concludes, therefore, that the opponent’s sign was used in the course of trade of more than local significance in the United Kingdom for gas-tight suits before the filing date of the contested trade mark.

The applicant’s argument that the term GTB is entirely descriptive

In its defence, the applicant has submitted the argument that the acronym GTB merely stands for gas tight suits.

The Opposition Division cannot find proof in this assertion in the documents provided by the applicant. It might seem logical that the first two letters (GT) could stand for gas tight, however the third letter should thus be the letter ‘S’ and this is not the case. Also, it does not seem to be a common abbreviation for gas tight suits but rather an invented term by the opponent. The applicant mentioned its submissions of 17/02/2016 (page 9) and annex 6 that the opponent uses the mark in a descriptive manner, because its GBT suits are gas tight suits with breathable apparatus. However, even if the opponent decided to name the suits after this combination, it is clear that in the market the sign is not immediately understood as referring to such suits as the applicant pointed out itself when stating in the same submission that it uses the acronym ‘GTB’ to refer to gas tight suits with boots. There is no further evidence submitted which would show that other parties use the acronym GTB in a descriptive manner.

The applicant’s argument that the term GTB is always used in conjunction with the Respirex trade mark and its heraldic lion device

In its defence, the applicant has submitted the argument that the opponent never uses the acronym on its own but always in conjunction with the opponent’s name and a heraldic device of a lion.  

The Opposition Division cannot find proof in this assertion. It is common for companies to use trade marks as a house mark (in this case Respirex) and different trade marks for the series or products offered, in the case at hand GTB. Thus, the sign was used in the course of trade as a trade mark.

2. The right under the applicable law

Non-registered marks are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

The opposition is based on a non-registered trade mark used in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

Passing off

Passing off is a common law tort developed by English case law. In order to successfully rely on it the opponent must prove that: (i) it has acquired a goodwill or reputation in the market under the non-registered mark and its goods are known by some distinguishing feature; (ii) there is a misrepresentation by the applicant (whether or not intentional) leading or likely to lead the public to believe that goods offered by the applicant are goods of the opponent; (iii) the opponent has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the applicant’s misrepresentation. The principle is commonly referred to as the ‘classical trinity’ of goodwill, misrepresentation and damage to goodwill (see Reckitt & Colman Products Ltd v Borden [1990] R.P.C. 341, HL). Goodwill

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods claimed under its mark.

Goodwill is what can accrue to a business or sign used in the course of trade as a result of the positive reputation that it has acquired. It has been referred to as ‘the attractive force which brings in custom’ (see IRC v Muller’s Margarine [1901] A. A. 217 at 233) and is ‘what adds value to a business by reason of situation, name and reputation, connection, introduction to old customers, and agreed absence from competition, or any other things’ (Lord Lindley cited by Byrne J. in Rickersby v Reay [1903] 20 R.P.C. 380). An assertion of this property right does not require establishing a reputation for a brand name or get-up, but goodwill attached to the goods and services which are supplied by association with the identifying name or get-up: ‘It is well settled that (unless registered as a trade mark) no one has a monopoly in his brand name or get up, however familiar these may be. Passing off is a wrongful invasion of a right of property vested in the plaintiff; but the property which is protected by an action for passing off is not the plaintiff’s proprietary right in the name or get up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant’s misrepresentation’ (Harrods Limited v. Harrodian School Limited [1996] RPC 679).

Goodwill is normally proved by evidence of trading activities, advertising, consumers’ accounts, etc. Genuine trading activities, which result in acquiring reputation and gaining customers, are usually sufficient to establish goodwill.

The ‘reputation’ often referred to in relation to passing off does not necessarily have the same content as ‘reputation’ within the meaning of Article 8(5) EUTMR. The English Courts are very unwilling to assume that a business can have no customers and, thus, no goodwill. Even small businesses can have goodwill. The level of goodwill is low only where the nature of the business is transient as for example in the case of a mobile fish and chip shop (Stannard v Reay [1967] R.P.C. 589; The Law of Passing Of, Wadlow, Sweet & Maxwell 2004). The standard of proof under English law is not the same as in the case of, e.g. acquired distinctiveness (Phones 4U Ltd v Phones4u.co.United Kingdom Internet Ltd [2007] R.P.C. 5).

In the case at hand, the opponent has demonstrated use of the non-registered mark ‘GTB’ in relation to gas tight suits (protective gear). The promotional materials and invoices clearly show the use of the sign. The ‘GTB’ sign is clearly the sign under which the goods are provided and to which goodwill attaches.

3. The opponent’s right vis-à-vis the contested trade mark

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent

The contested trade mark must be likely to lead the public to believe that goods to be offered by the applicant are the opponent’s goods. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods in the belief that they are the opponent’s.

Therefore, a comparison of the signs is required.

Furthermore, the public is unlikely to be misled where the contested goods are dissimilar to those upon which the opponent’s goodwill has been built. Therefore, the contested goods must be compared to the goods for which the opponent has shown that it has acquired goodwill through use.

1.        The goods

The opposition is directed against the following goods of the contested trade mark:

Class 9:        Protective clothing, headgear, footwear, gloves, visors, masks and eyewear; overalls, coveralls, suits, aprons, overshoes, and hoods for protection against chemicals, infective agents and other hazardous substances; apparel for protection against chemicals, infective agents and other hazardous substances, namely gas-tight suits, gas-tight suits with attached boots, suits for protection against radiation, radioactive particles or radioactive gases, suits for protection against infective agents, suits for protection against chemical exposure; protective and safety equipment; breathing apparatus; parts and fittings for all the aforesaid goods.

Class 25:        Vented clothing and clothing for temperature regulation.

The opponent’s non-registered trade mark is used for: gas tight suits.

Contested goods in Class 9

The contested Protective clothing; overalls, coveralls, suits for protection against chemicals, infective agents and other hazardous substances; apparel for protection against chemicals, infective agents and other hazardous substances, namely gas-tight suits, gas-tight suits with attached boots, suits for protection against radiation, radioactive particles or radioactive gases, suits for protection against infective agents, suits for protection against chemical exposure; protective and safety equipment include, as broader categories, or overlap with, the opponent’s gas tight suits. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested breathing apparatus are highly similar to the opponent’s gas tight suits as they are being offered through the same distribution channels, may be produced by the same companies, are complementary as a gas tight suits has to be used with a breathing apparatus or else the user would suffocate. They also share the same consumers. 

Protective headgear, footwear, gloves, visors, masks and eyewear; aprons, overshoes, and hoods for protection against chemicals, infective agents and other hazardous substances are highly similar to the opponent’s gas tight suits as they are being offered through the same distribution channels, may be produced by the same companies and are also complementary. They also share the same consumers.

The contested parts and fittings for all the aforesaid goods [Protective clothing, headgear, footwear, gloves, visors, masks and eyewear; overalls, coveralls, suits, aprons, overshoes, and hoods for protection against chemicals, infective agents and other hazardous substances; apparel for protection against chemicals, infective agents and other hazardous substances, namely gas-tight suits, gas-tight suits with attached boots, suits for protection against radiation, radioactive particles or radioactive gases, suits for protection against infective agents, suits for protection against chemical exposure; protective and safety equipment; breathing apparatus] are similar to a low degree to the opponent’s gas tight suits as they may originate from the same companies. They can also coincide in end user and distribution channels.

Contested goods in Class 25

The contested goods in Class 25 are similar to a low degree to the opponent’s gas tight suits as they have the same nature. They can coincide in end user and method of use.

2.        The signs

GTB	MICROCHEM 6000 GTB
Earlier sign	Contested sign

The relevant territory is the United Kingdom. 

The signs are visually and aurally similar to the extent that they coincide in the verbal element ‘GTB’ which constitutes the earlier sign and is included at the end of the contested mark. However, they differ in the verbal element ‘MICROCHEM’ which is likely to be dissected by the relevant English-speaking public as the verbal elements ‘Micro’ and ‘Chem’ as both have a meaning. Micro means the following: Forming terms in which micro- indicates small (often microscopic) or relatively small size, frequently in contrast with related terms beginning with macro- or mega- (see Oxford English Dictionary). The second verbal element is ‘Chem’ which will be understood colloquially as referring to chemistry (see Oxford English Dictionary). The number 6000 in the centre of the contested sign is likely to be understood as referring to a certain series of goods, a model number or as the applicant states himself as the level of protection of the protective wear and the consumer will not pay a particular high attention to this figure.

For the reasons set out above, and due to the fact that the earlier mark appears as a whole and independent distinctive element, the signs are considered to be aurally and visually similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the verbal elements ‘MICRO’ and ‘CHEM’ included in the contested sign will be associated with the meanings set out above. To that regard the signs are conceptually dissimilar.  

For the reasons set out above, the Opposition Division considers the marks to be similar.

3.        Global assessment of the conditions under the applicable law

It follows from the above that the goods applied for are identical or similar to the opponent’s goods. The signs also have some relevant similarities, in particular they coincide in the only fully distinctive verbal element which constitutes the earlier sign and is included in the contested sign at the end of the mark, preceded by verbal elements and numbers which are either non-distinctive or weak. Under these circumstances, the Opposition Division finds that there is a risk that the applicant’s goods will be taken to be the opponent’s.

The applicant states that the witness statements are highly formulaic and also relate to non-UK territories. While it is true that some of the statements are not really useful as they are issued by companies in Belgium and Spain, others are. Besides, the invoices and brochures provided give the Opposition Division enough evidence to conclude that the opponent had used and acquired goodwill for the mark GTB on the market for gas tight suits in the United Kingdom.

The applicant further states that the verbal element ‘MICROCHEM’ is the dominant and only distinctive element in its sign because of the alleged descriptiveness of the word ‘GTB’ and the number ‘6000’; the applicant claimed itself that the number 6000 refers to level of protection. The Opposition Division agrees with regard to the number ‘6000’, however there is no independent proof anywhere found in the submissions that ‘GTB’ stands for gas tight suits. The verbal element ‘MICROCHEM’ can also not be ‘the dominant element’ as the contested sign is a word mark.

The applicant further argues that protective suits are bought with the highest level of care excluding the possibility that the relevant consumers could be deceived. However, even consumers with a high level of attention can be deceived with regard to the possible origin of the goods as they may perceive MCROCHEM 6000 being a product line of the provider using the GTB trade mark.

The opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark

It has been concluded that, given the similarities between the signs in dispute and the identity/similarity of the goods in question, the opponent’s customers are likely to perceive the goods to be marketed under the contested trade mark as originating from the opponent.

While this does not necessarily lead to damage being caused in all possible cases, damage is the most likely result whenever, as in the present case, the opponent has demonstrated that it enjoys goodwill in the earlier sign and the contested sign is similar to the opponent’s mark, thus leading consumers to attribute the contested sign to the applicant. The opponent is not obliged to prove that it has suffered actual damage. It is sufficient that damage is likely. A misrepresentation which leads the relevant public to believe that the applicant’s goods are the opponent’s is intrinsically likely to damage the opponent if the fields of business of the parties are reasonably close. In the present case, it has been concluded that the goods in question are similar and that a significant number of the opponent’s customers would consider the goods offered by the applicant under the contested trade mark as originating from the opponent.

Under those circumstances, it is likely that the opponent would lose sales because its customers – who intend to buy its goods – would erroneously buy the applicant’s goods.

As said by Warrington J in Ewing v Buttercup Margarine Co Ltd [1917] 2 CH 1

1. To induce the belief that my business is a branch of another man’s business may do that other man damage in all kinds of ways. The quality of goods I sell; the kind of business I do; the credit or otherwise which I might enjoy – all those things may immensely injure the other man who is assumed wrongly to be associated with me.

The Opposition Division considers that, in the absence of any indications to the contrary, the opponent is likely to suffer damage.

4. Conclusion

Considering all the above, the Opposition Division finds the opposition is well-founded on the basis of the opponent’s earlier sign, pursuant to Article 8(4) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the opponent’s non-registered trade mark used in the United Kingdom, there is no need to examine any of the other unregistered rights upon which the opposition was based.

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

Ric WASLEY

Lars HELBERT

Janja FELC

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.