OPPOSITION No B 2 535 212

Ratioparts-Ersatzteile-Vertriebs GmbH, Barentsstr. 17, 53881 Euskirchen, Germany (opponent), represented by Freshfields Bruckhaus Deringer LLP, Im Zollhafen 24, 50678, Cologne, Germany (professional representative)

a g a i n s t

Ehlis, S.A., Calle Sevilla s/n, Zona Industrial Noreste, 08007 Sant Andreu de la Barca, Spain (applicant), represented by J.D. Núñez Patentes y marcas, S.L., Rambla de Cataluña 120, 8008 Barcelona, Spain (professional representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 535 212 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 13 639 497. The opposition is based on German trade mark registration No 1 101 723. 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 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 mark on which the opposition is based, namely German trade mark No 1 101 723.

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 09/03/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 09/03/2010 to 08/03/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely for all the following goods in Classes 1, 4, 5, 6, 7, 8, 9, 11, 12, 17, 19, 20 and 21:

Hand tools for gardening, namely shovels, spades, rakes, trans planters, forks, saws (incl. chain saws) fork hoes (in. rotary thrillers), hand cultivators (incl., hoes dibbles, scarping tools, brooms, brushes, hand brushes, extension handles for tools, cultivators, aerators, grubbers, weeders, hand speeders, row makers, secateurs, snow removers (incl. electric snow ploughs), fruit pickers, spreaders, hand and electric scarifies, hand and electric lawn movers, electric shredder, floor squeegees, electric lawn trimmers; rotary cultivators.

Mechanical and manual fertilizer feeders, fertilizer dosimeters (mechanical and manual), switches and time switches, humidity and light sensors, vaporizers and sprayers for gardening, aforementioned goods made of metal and non-metallic materials.

Gardening equipment, namely planting bowls, flower pots and cache pots for flowers, compost silos, cold frames, mini cold frames, fruit baskets, watering cans, water butts, aforementioned goods made of plastic, wood and metal.

Watering tools, namely hoses (non – metallic), in particular garden hoses, pipes and conduits, namely taps, valves, washers, tap connectors and adapters, extension and repair connectors elbow/swivel connectors, end connectors, connectors and manifolds, distributors, hose clips, filters, nozzles, pressure regulators and pressure reducers, pressure spray guns, water stop connectors, nozzles and shower heads, water plugs, suction filters.

Garden pumps, in particular fountain pumps; Fountain nozzles; Fountain lighting, wall hose brackets, hose boxes, hose carts, Spare parts for manual and electric tools for gardening and watering, namely Bowden cables, plastic wheels, ball bearing wheels, switches, plugs, starter cables, vibration insulators, spark plugs, spark plug connectors, knife blades and knives, clutch disks, fiction linings, blade couplings, blade flanges, pressure plates, pressure springs, washers, clutch actuators, friction disks, nylon blades, nylon grass cutting blades, blade bolts, screws, hose parts.

Chemical products for agricultural, gardening and forestry purposes, namely products for accelerating plant growth and seed treatment products, products for conserving flowers, bactericides for ground inoculation, products for treating plants to prevent plant diseases, nutrient solutions for hydro cultures.

Garden soil, humus and fertilizers (natural and chemical).

Herbicides and pesticides, compost additives, tree care products; Oils and greases for maintaining forestry and gardening apparatus; Decorative garden accessories, namely bird houses and nest boxes, greenhouses, pergolas, garden pavilions (aforementioned goods made of plastic, wood, metal).

Pond liner, plastic ponds; Garden benches, trellises, fences, the aforementioned goods made of plastic, wood and metal.

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 23/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 23/05/2016 to submit evidence of use of the earlier trade mark. On 05/05/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• A declaration in German and English, dated 29/04/2016, issued by Hermann Gerardts, the founder and managing director of the opponent’s company ratioparts-Ersatzteile-Vertiebs GmbH. It is stated in this declaration that the company ratioparts-Ersatzteile-Vertriebs GmbH was established in 1986. The company sells and distributes a wide range of technical spare parts for equipment and machinery for garden and landscape maintenance and the forestry and agricultural sector. The trade mark  was initially registered as a national trade mark in Germany on 23/01/1987 and has been in continuous use since then. During 2010-2015, ratioparts-Ersatzteile-Vertriebs GmbH generated 8 digit sale volumes.
• A printout from the opponent’s website ratioparts.de showing various goods offered for sale and giving a general overview of the opponent’s company history.
• A printout from the opponent’s online shop at the internet address www.ratioparts.com.
• Printouts from various catalogues (‘Catalogue 2014/2015’, ‘Winter Spezial 2015’ and ‘Geräte-Aktion 01-2012’) showing various goods offered for sale.
• A printout from the website m-en.simaonline.com showing that the opponent attended the ‘SIMA’ trade fair in Paris (France) as an exhibitor. According to the printout, the trade fair took place between 26/02/2017 and 02/03/2017.
• A printout from the website gardentool.ru showing that the opponent attended a trade fair in Moscow, Russia (the trade fair took place between 18/04/2016 and 21/04/ 2016).
• A printout from the website sopogafa.com showing that the opponent attended a trade fair in Cologne, Germany. This printout is not dated.
• A printout from the website eima.it showing that the opponent attended a trade fair in Bologna (Italy) as an exhibitor. The exhibition took place between 09/11/2016 and 13/11/2016.
• A printout from website galabau.messe.com showing that the opponent attended the Galabau trade fair at in Nuremberg, Germany. According to the printout, the trade fair took place in 2014.
• Photographs of the opponent’s stands at trade fairs in Russia, Germany and Italy, showing that the opponent attended these trade fairs. The photographs show that the mark was used at the trade fairs to designate retail, wholesale and distribution services. The opponent deals with retail and wholesale services and sells a wide range of technical spare parts and accessories, which are mainly produced and marketed under the trade marks of other companies.
• Packaging of various products that are for sale under the trade mark. The packaging is not dated.
• Plastic bags marked with the trade mark .
• Photographs showing some of the opponent’s products labelled with a sticker displaying the trade mark . The photographs are not dated.
• Photographs of various sporting events showing use of the trade mark  in relation to various sporting events.
• Photographs of promotional products.
• Copies of catalogues entitled ‘top Promo’, ‘rp top promo’ and ‘top promo by ratioparts’, dated between 2009 and 2015. These catalogues show that the mark has been used to designate retail, wholesale and distribution services. However, the vast majority of the products are offered under marks that are different from the earlier mark (such as Ballistol, Brunox, Hylomar, Gedore, Walbro, Tillotson and many others).

A significant part of the evidence is dated outside the relevant period, for example the printouts from the opponent’s websites and from websites showing attendance at the following trade fairs: ‘SIMA’ in France in 2017, ‘eima’ in Italy in 2016 and ‘Gardentool’ in Russia in 2016.

Some of the evidence is not dated, for example two catalogues entitled ‘top promo’, photographs showing the opponent’s trade mark used in relation to ‘moto sport’ competitions and the photographs of packaging, plastic bags, stickers and promotional products. In addition, the photographs showing attendance at various trade fairs and the printout from the website sopogafa.com showing attendance at the trade fair in Cologne, Germany are also not dated.

Only a few items of evidence are dated within the relevant period, namely nine catalogues entitled ‘top promo’, issued by the opponent and dated between 2010 and 2013 and catalogue entitled Catalogue 2014/2015; a printout from the catalogue entitled ‘Geräte –Action’, issued by the opponent and dated 2012; and a printout from the website galabau.messe.com showing attendance at the Galabau trade fair in Nuremberg, Germany, in 2014.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents submitted, namely the declaration, the catalogues and printouts from the opponent’s website and the printout from the website galabau.messe.com showing attendance at the Galabau trade fair in Nuremberg, Germany, in 2014, do not provide the Opposition Division with sufficient information concerning the earlier mark’s extent of use regarding its commercial volume. There is no indication of the number of goods produced and/or sold in any of the documents submitted by the opponent.

Furthermore, there is no indication regarding how much of the revenue comes from the products for which the trade mark  has been used in the market, rather than from distribution and retail services for products sold under different marks (see below).

In addition, it is unclear whether or not the submitted advertising materials and catalogues were ever distributed to consumers, retailers and/or wholesalers and, if so, how and in what quantity.

The opponent did not submit any other evidence, such as sale figures or invoices that could prove the commercial volume of the use of the trade mark. The general information about the company provided in the declaration is not sufficient as, first, it originates not from an independent entity but from the director of the opponent’s company and, second, it is not sufficiently specific to enable the Opposition Division to evaluate whether or not the earlier mark has been genuinely used in relation to the goods in question.

Although the use of the trade mark does not need to be quantitatively significant for it to be deemed genuine, in the absence of any evidence, such as invoices or sales figures, concerning the trade mark in question, the documents submitted do not provide the Opposition Division with sufficient information to demonstrate the commercialisation of goods bearing the trade mark .

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The relevant evidence shows that the mark has been used in catalogues, at trade fairs and on the opponent’s website to designate retail, wholesale and distribution services. However, it is evident, in particular from the catalogues, that the vast majority of the products are offered under marks that are different from the earlier mark (such as Ballistol, Brunox, Hylomar, Gedore, Walbro, Tillotson and many others). The relevant evidence indicates that the opponent deals with retail and wholesale services and sells a wide range of technical spare parts and accessories that are mainly produced and marketed under the trade marks of other companies. The opponent’s trade mark appears in the evidence mainly as the name of a retailer or online shop. Even if, in the absence of another mark in connection with some particular products, it could be assumed that the mark is used for the products themselves (as suggested by the photographs of the products bearing the mark), as explained above, there is no indication in the evidence of the extent of use of the mark in relation to those products.

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 concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time for the goods on which the opposition is based.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

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

Michaela SIMANDLOVA

Liina PUU

Loreto URRACA LUQUE

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.