OPPOSITION No B 2 585 696

Rehateam srl, Vicolo Negrelli, 4 – Fraz. Castagnole, 31038 Paese (TV), Italy (opponent), represented by D'Agostini Group, Rivale Castelvecchio 6, 31100 Treviso, Italy (professional representative)

a g a i n s t

Rose Bikes GmbH, Schersweide 4, 46395 Bocholt, Germany (applicant), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 585 696 is upheld for all the contested goods.

2.        European Union trade mark application No 14 229 215 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 14 229 215 “PROGEO”. The opposition is based on, inter alia, European trade mark registration No 549 550 “PROGEO”.  The opponent invoked Article 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 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, European trade mark registration No 549 550 “PROGEO”.

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 30/06/2015. 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 30/06/2010 to 29/06/2015 inclusive.

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

Class 10:         Orthopaedic articles.

Class 12:        Wheelchairs.

 

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 11/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/12/2016 to submit evidence of use of the earlier trade mark. On 15/12/2016, within the time limit, the opponent submitted evidence of use.

Before the date mentioned above, the opponent submitted evidence to show the reputation of its trade mark through use, which will be also evaluated below.

Evidence filed to prove reputation

• Documents 1 to 5 contain catalogues and pictures.
• Documents 6, 7, 8, 9, 9A and 10 are various invoices showing sales in Belgium, the Netherlands, Estonia, Germany, Latvia, Czech Republic, Portugal, Denmark, United Kingdom, Poland, Slovenia, Finland, Italy, Greece, Croatia, Romania, Spain, Sweden, Luxembourg, France, Ireland, Slovakia, and Austria in the period 2011 to 2015.
• Documents 11 and 12 show evidence of trade fairs where the mark has been present.
• Documents 13, 13A, 13B, 13C, 13D, 13E and 13F concern publicity and promotion in the mass media of the trade mark.
• Document 14 concerns a search in the search machine Google which, according to the opponent, refers to its company “in one way or another”.
• Document 15 contains information extracted from Google image, where most of the information contained refers to the opponent’s company.

Evidence to prove the use of the mark

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.

• Document 7R contains a summary report of turnover in the European Union.
• Documents 8R, 9R, 10R, 11R, 12R and 13R are sample invoices (the document identified by tthe opponent in its observations as 8R appears as “7R” in the actual proof).
• Documents 14R, 15R, 16R and 17R are catalogues for the years 2010, 2011, 2014 and 2016.
• Document 18R contains information regarding the certification for various products marketed under the Progeo brand by TUV Rheinland to Rehateam and Progeo for UNI ISO 9001:2008. Certificate of conformity no. 04/058-B to Progeo products models (exelle vario, joker, ego, joker energy), from French National Institute for Invalidity. Test report ISO 7176-1 from TUV Rheiland.
• Document 19R contains a list of Distributors in European Union showing business details and internet addresses of distributors for Austria, Belgium, Czech Republic, Estonia, France, Germany, United Kingdom, the Netherlands, Poland, Portugal, Romania, Slovakia. It is important to highlight that, in particular these distributors are not only channels for the sales of Progeo products, but they also act in their respective territories to enhance the reputation of the earlier trademarks through direct promotion and advertisement in various media including their internet sites.
• Document 20R contains products’ labels.
• Document 21R contains products’ packaging. 
• Document 22R contains distributors sample promotional materials.
• Documents 23R to 26R refer to trade fairs and exhibitions, for example Bologna (Italy) in 2014 and 2016; Dusseldorf (Germany) in 2012, and some other events in Spain, Germany and Italy between 2010 and 2015.
• Document 27R contains information about promotional gadgets.
• Documents 28R to 31R contain price lists for 2011, 2012, 2014 and 2016.
• Documents 35R to 85R contain press materials.

As a clarification it must be noted that some of the documents were submitted twice, first as a proof of the reputation, and then as a proof of the use.

The applicant argues that part of the evidence is not in the language of proceedings, some are outside the relevant period of time, the documents are not clear and precise, the evidence originates in the opponent itself, some documents do not show links with the goods, etc.  

The applicant’s argument is based on an individual assessment of each item of evidence. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use. Specifically, in relation to the issue of the translations it must be noted that as regards the documents provided for the proof of the use the opponent is not under any obligation to provide translations, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). The Opposition Division considers that there is no need to request a translation of the documents as their character is, mostly, self-explanatory.

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).

The Opposition Division notes from the outset that indeed, as the applicant contends, there is no use for part of the goods for which the earlier mark is registered, namely orthopaedic articles in Class 10.

   

In relation to the goods in Class 12 wheelchairs the documents submitted, when taken in combination with each other, indeed prove that the mark has been on the market to the extent that its use can be considered genuine.

Part of the catalogues submitted are dated within the relevant time frame and show wheelchairs that bear the earlier trade mark. These goods can be cross referenced with the many invoices that fall within the relevant period and spread across the European Union, and with the price lists provided. There is, furthermore, subsidiary evidence of the mark having been advertised, aside from samples from labels, packaging, etc.

Just as a way of example, the catalogue for 2014 entitled “Express your soul” contains the picture of wheelchairs called “joker”, “tekkna”, “junior” “exelle”, “physio” where the mark is visible, as does the catalogue entitled ”a  life performance collection 2010” (document 1 of the evidence filed to prove reputation). Then, several of the invoices issued to customers in different countries between 2011 and 2014 (documents 6-10 of the evidence to prove reputation) show the same models mentioned before for relevant amounts.  

As mentioned above, the evidence filed to prove the reputation of the mark contains relevant information in relation to the promotion activities of the opponent. Even though part of this information is not in English, it is obvious from the pictures that, for example, the cars that took part in some of the sponsored events showed the mark at issue. Then, though the applicant is right in asserting that in itself this document does not prove much, the information regarding ISO certification and test reports (part of which are in English) add to the certainty that the mark has genuinely been used in the market (document 18R of the evidence filed to prove the use).    

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory, and for a sufficient extent. As for the nature of the use the mark that appears is mostly . The addition “active design” is neither dominant nor distinctive, and therefore the use is in accordance with Article 15 EUTMR.

Finally, the goods for which the documents prove use are wheelchairs in Class 12.

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.

1. The goods

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

Class 12:         Wheelchairs.

The contested goods are the following:

Class 12:        Frames for bicycles and parts therefor, namely damping and geometry setting systems, included in class 12.

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 goods are frames for bicycles and specific parts for them, namely damping and geometry setting systems. In principle, it is true that the goods of the opponent do not seem to have anything in common with the contested goods, as the applicant contends. The opponent has, however, submitted several pictures of goods which are a combination of wheelchairs and bicycles, for example , and which obviously contain frames and damping and geometry setting systems, a fact that points to the same commercial origin of the goods, and to the fact that they are distributed through the same channels. Consequently, the goods have a low degree of similarity.  

2. The signs

PROGEO	PROGEO
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and the goods have, at least, a low degree of similarity. Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 549 550 “PROGEO”. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European trade mark registration No 549 550 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article (5) EUTMR.

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

Ioana MOISESCU

María Belén IBARRA DE DIEGO

Angela DI BLASIO

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.