OPPOSITION No B 2 590 639
Robusta B.V., Sasdijk 4, 8281 BM Genemuiden, The Netherlands (opponent), represented by Inaday, Hengelosestraat 141, 7521 AA Enschede, The Netherlands (professional representative)
a g a i n s t
Surf & Turf Instant Shelters Ltd, Unit 7, Tatton Court, Woolston Grange, Birchwood WA1 4RR, United Kingdom (applicant), represented by Wilson Gunn, 5th Floor Blackfriars House The Parsonage, Manchester M3 2JA, United Kingdom (professional representative).
On 18/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 590 639 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 and services of European Union trade mark application No 14 251 318 for the word mark ROBUSTA. The opposition is based on Benelux trade mark registration No 341 486, duly renewed, for the word mark ROBUSTA. The opponent invoked Article 8(1)(a) and (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 period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
After a joint request for extension of the cooling-off period filed on 23/12/2015, the applicant opted out on 02/02/2016 and requested that the opponent submit proof of use of the trade mark on which the opposition is based.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
The contested application was published on 07/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Benelux from 07/07/2010 to 06/07/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 17: Semi-finished plastics, closing, packing and insulation materials; seals made of natural and synthetic products.
Class 19: Polypropylene filter fabrics for engineering, woven mats of plastic (building material) such as polypropylene, polyethylene, polyester and polyamide, fabrics for soil stabilization of roads, fabrics for zinc and collar pieces, revetment, soil and shore facilities, fabrics for reinforcement of bituminous coatings and seals, fleece fabrics, woven fabrics with reed mats, where included in this class.
Class 20: Reed, cane, wicker, and substitutes for these materials or plastic materials where not included in other classes.
Class 22: Ropes, string, nets, tarpaulins.
Class 24: Tissues, both natural and synthetic products, fabrics for reinforcement of bituminous coatings, fabrics, fleece; all aforementioned goods, not included in other classes.
Class 27: Carpets and floorcovering of natural and synthetic products; cocos and sisalmats, woven mats of plastic.
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 03/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 22/04/2016 to submit evidence of use of the earlier trade mark. On 22/04/2016, within the time limit, the opponent submitted evidence of use.
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 confidentiality does not apply to the evidence which consists of information that is already available to the public either on the website of the opponent and/or in the mass media (including the internet).
The evidence to be taken into account is the following:
- Invoices issued by the opponent:
- Thirty one invoices dated between 30/01/2004 to 15/12/2017 issued to clients located in several Member States of the European Union (Exhibits 8, 10, 23).
Despite the fact that these invoices do not refer to the earlier mark in the description of the goods sold, they contain product names matching items of carpets and woven and technical fabrics, rugs, outdoor and technical floorcovering (including concrete matrasses, sisal mats) displayed in the submitted brochures and collection books showing the earlier mark as detailed herein under. The sign ‘ROBUSTA’ is also displayed on the invoices in one of the following representations:
The invoices relate to sufficient, although not overly extensive, quantities of products sold and demonstrate a certain commercial volume marketed in several Member States of the European Union, during, and beyond, the relevant period.
- Invitations to the trade fair for floorcoverings Domotex in the years 2009-2015, as well as pictures of the opponent’s exhibition spaces in the years 2012-2016, showing the opponent as an exhibitor and showing the earlier mark in relation to woven carpets, wool carpets, rugs and outdoor floorcoverings, sisal mats, as depicted herein under below (Exhibit 11):
;
- Internal document showing over three thousand invoices issued in the years 2011-2015 to clients located in the European Union (Exhibit 14);
- Collection of books, brochures, images and product sheets, some undated and others dated between 2001 and 2008, showing the mark in relation to woven fabrics, carpets as well as technical fabrics and portable roads to be used for road- and waterworks (Exhibits 1- 7, 17-20);
- Undated collection of books, brochure, images and product sheets, showing the mark (in standard typeface and in the representations depicted above) in relation to woven fabrics, carpets as well as technical fabrics to be used for road- and waterworks (Exhibits 12-13; 15-16, 22, 27);
- Email correspondence outside the relevant period of the opponent related to sales of synthetic woven cricket pitches (Exhibit 9);
- Extract of a French magazine dated September 2015 showing the ROBUSTA sign in relation to a technical floor covering, in particular concrete matrasses (Exhibit 24);
- Extracts of the opponent’s website printed in 2016, showing the earlier mark in relation to technical floor coverings, including sisal mats and carpets (Exhibit 25) and on the Dutch national cricket team sport outfits in 2015 (Exhibits 25 and 26).
Assessment of the evidence
The applicant has argued that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered. However, the applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. Nevertheless, 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.
The documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. However, this conclusion applies only in relation to some of the goods for which the earlier mark is registered (as will be explained in detail further in the decision under ‘Nature of use – use in relation to the registered goods’).
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods 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. Moreover, use of the mark need not be quantitatively significant for it to be deemed genuine.
Although the evidence does not indicate a particularly high volume, it shows use of the earlier mark in several Member States of the European Union to an extent which is such as to create or preserve an outlet for the some of the products concerned and which entails a volume of sales which, in relation to the period and frequency of use, is not so low that it may be concluded that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.
The evidence shows that the goods were manufactured, sold and exported from The Netherlands. Therefore, it clearly shows that the goods were exported from the relevant territory.
In this regard, the applicant argues that since none of the invoices issued are addressed to any of the Benelux countries, they cannot be taken into account as proof of use. However, according to Article 15(1), second subparagraph, point (b) EUTMR, the following shall also constitute use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes. The same principle applies to national marks. Consequently, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.
As regards the time of use, a relevant part of the evidence is dated within the period of reference. While it is acknowledged that part of the evidence is referring to use made outside the relevant timeframe, nevertheless, it may be taken into account as it may constitute conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).
In the case at hand, the evidence referring to use outside the relevant period partly refers to evidence that is very close in time to the relevant period; as a whole it confirms and completes the evidence of use of the opponent’s mark for specific goods within the relevant period. Consequently, the Opposition Division considers that the evidence filed provide for sufficient information concerning the time of use.
Furthermore, 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).
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 evidence filed by the opponent shows that the earlier mark has been represented on catalogues, advertising material and invoices in relation to the goods and thus has been used as a trade mark on the market relating to the goods in question.
Furthermore, the evidence shows that the mark has been used in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. Accordingly, the evidence shows that the mark has been used as registered.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods 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.
According to case-law, when applying the abovementioned provision the following should be considered:
…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 to which the goods or services for which the trade mark has actually been used 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.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288).
As shown above, the evidence shows use for carpets and woven and technical fabrics, rugs, outdoor and technical floorcovering (including concrete matrasses, sisal mats), woven carpets, wool carpets, rugs and outdoor floorcoverings, sisal mats, portable roads to be used for road- and waterworks; technical fabrics to be used for road- and waterworks; synthetic woven cricket pitches.
Consequently, the Opposition Division considers that in the present case the evidence shows genuine use of the trade mark for the following goods covered by the earlier mark of the opponent:
Class 19: Fabrics for reinforcement of bituminous coatings.
Class 24: Fabrics for reinforcement of bituminous coatings; all aforementioned goods, not included in other classes.
Class 27: Carpets and floorcovering of natural and synthetic products; sisalmats.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
DOUBLE IDENTITY – ARTICLE 8(1)(a) EUTMR and LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
Article 8(1)(a) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, an EUTM application shall not be registered if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.
Article 8(1)(b) EUTMR provides that a likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods on which the opposition is based, and for which genuine use has been proven, are the following:
Class 19: Fabrics for reinforcement of bituminous coatings.
Class 24: Fabrics for reinforcement of bituminous coatings all aforementioned goods, not included in other classes.
Class 27: Carpets and floorcovering of natural and synthetic products; sisalmats.
After the limitation by the applicant on 21/06/2016, the contested goods and services are the following:
Class 19: Signs, and information and advertising displays; structures and portable buildings, not of metal; shelters; gazebos; canopies [structures] of non-metallic materials; arches of non-metallic materials; inflatable arches; domes (non-metallic); parts and fittings for all the aforesaid.
Class 22: Ropes; tents; awnings; marquees; canopies; inflatable tents; parts and fittings for all the aforesaid.
Class 35: Retail and wholesale services connected with the sale of ropes, tents, awnings, marquees, canopies, inflatable tents, inflatable arches, inflatable domes, inflatable shelters, gazebos, weights for tents, marquees and awnings, flags, banners, table covers, signs, information and advertising displays, furniture, tables, and benches; advertising services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 Class 19
The contested goods are all dissimilar to the opponent’s goods in Classes 19, 24 and 27.
The closest goods to those covered by the opponent’s earlier mark in Class 19, namely the contested parts and fittings for structures and portable buildings, not of metal are parts and fittings for respectively ‘any framework or fabric of assembled material parts; a (typically large) man-made construction’ (see online Oxford English Dictionary), not of metal (e.g. kiosks or tree guards) and edifices that are capable of being transported (e.g. transportable houses or transportable greenhouses), not of metal. They do not have the same purpose as the opponent’s goods fabrics for reinforcement of bituminous coatings; carpets and floorcovering of natural and synthetic products; sisalmats in Classes 19, 24 and 27. Moreover, they do not have the same commercial origin, as the goods under comparison will be produced by specific specialised assemblers; they will not be distributed through the same channels and they will not target the same relevant public. Therefore, they are dissimilar.
The same reasoning applies to the contested shelters; gazebos; canopies [structures] of non-metallic materials; arches of non-metallic materials; inflatable arches; domes (non-metallic); parts and fittings for all the aforesaid. These goods do not have the same purpose as the opponent’s fabrics for reinforcement of bituminous coatings; carpets and floorcovering of natural and synthetic products; sisalmats in Classes 19, 24 and 27. Furthermore, they do not coincide in producer, distribution channels and relevant public; nor are they complementary or in competition with each other. Therefore, they are dissimilar.
The remaining contested signs, and information and advertising displays; parts and fittings for all the aforesaid all relate to signs, panels and columns used for signalling, signposting or advertisement. Although some of these goods may be used together, under certain circumstances, e.g. in construction, this fact alone is
insufficient to establish similarity between them. The goods have different purposes, trade channels and commercial origins.
Contested goods in Class 22
The contested ropes; tents; awnings; marquees; canopies; inflatable tents; parts and fittings for all the aforesaid are all dissimilar to the opponent’s fabrics for reinforcement of bituminous coatings; carpets and floorcovering of natural and synthetic products; sisalmats in Classes 19, 24 and 27. They do not coincide in purpose, method of use and distribution channels; they are not complementary nor in competition with each other. Moreover, they do not have the same commercial origin and they will not target the same relevant public.
Contested services in Class 35
The contested retail and wholesale services connected with the sale of ropes, tents, awnings, marquees, canopies, inflatable tents, inflatable arches, inflatable domes, inflatable shelters, gazebos, weights for tents, marquees and awnings, flags, banners, table covers, signs, information and advertising displays, furniture, tables, and benches are not similar to any of the earlier goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.
The same reasoning as above applies to the contested wholesale services, which refer to the sale of goods or commodities in large quantities, usually for resale.
The contested advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.
Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised, let alone the opponent’s goods covered by the earlier mark in Classes 19, 24 and 27. Consequently, these goods and services are considered dissimilar.
- 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 and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods and services are obviously not identical.
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
|
Oana-Alina STURZA
|
Edith Elisabeth VAN DEN EEDE |
Michele M. BENEDETTI-ALOISI |
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.