OPPOSITION No B 2 599 887
Friedrich Drayer, Ahlenbachweg 19a, 79286 Glottertal, Germany (opponent), represented by Pfiz/Gauss Patentanwälte Partmbb, Tübinger Str. 26, 70178 Stuttgart, Germany (professional representative)
a g a i n s t
Safe Trees, s.r.o., Na Štěpnici 945, 66501 Rosice u Brna, Czech Republic (applicant), represented by Lukáš Dlabáček, Bolzanova 5, 618 00 Brno, Czech Republic (professional representative).
On 13/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 599 887 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 361 786 for the sign , namely against some of the services in Class 35 and all the services in Class 44. The opposition is based on German trade mark registration No 30 463 186 for the word mark ‘Tree Save’. 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 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.
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 21/08/2015. 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 21/08/2010 to 20/08/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:
Class 6: Cables and wires of metal (not for electrical purposes); ironmongery and small ironmongery.
Class 22: Ropes, nettings, belt webbings.
Class 44: Services in the fields of agriculture, horticulture and forestry.
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 08/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 08/09/2016 to submit evidence of use of the earlier trade mark. On 08/09/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
- 9 invoices from 11/05/2011 to 07/01/2015 to the same client in Germany for ‘tree save’ products translated as ‘tree holding strap’, ‘hollow rope, ’year designation’ and ‘strap with overload signal’.
- 3 information sheets of ‘tree save’ products, in German with no translation into English, but showing photos of ropes, drawings of trees, steel cables, thimbles, clamps and shackles, and describing how to proceed to install cabling systems for securing tree branches.
- A catalogue of ‘tree save’ products dated 2015/16, in German with no translation into English, but with photos of cables and wires of metal; items of small ironmongery; ropes, nettings, belt webbings, an arborist suspended from a tree and a directions map with locations in Germany, France and Switzerland.
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 invoices, the information sheets and the catalogue show that the place of use is Germany. This can be inferred from the language of the documents (German) and the directions map in the catalogue. Therefore, the evidence relates to the relevant territory.
All the evidence is dated within the relevant period. 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 filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Although the 9 invoices prove sales to the same client in Germany, use of the mark need not be quantitatively significant for it to be deemed genuine.
The evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates exclusively to Germany. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.
Therefore, the Opposition Division considers that the opponent has 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.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the earlier word mark ‘Tree Save’ is represented in italics in the information sheets, but this does not alter its distinctive character.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.
In the present case, the documents submitted show that the opponent sells ironmongery products and ropes, but they do not provide evidence of the opponent having rendered services in the fields of agriculture, horticulture and forestry. It is not possible for the Opposition Division to assume that these services were provided at all, as the documents only show use of the sign in relation to these products.
Consequently, the evidence shows genuine use of the trade mark for the following goods:
Class 6: Cables and wires of metal (not for electrical purposes); ironmongery and small ironmongery.
Class 22: Ropes, nettings, belt webbings.
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 will, 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.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
- The goods and services
The goods on which the opposition is based are the following:
Class 6: Cables and wires of metal (not for electrical purposes); ironmongery and small ironmongery.
Class 22: Ropes, nettings, belt webbings.
The contested services are the following:
Class 35: Evaluation of trees and shrubs.
Class 44: Horticultural and forestry services, including consultancy and certification associated therewith, in particular services in the field of landscape architecture; Assessing the condition of trees; Stocktaking of trees; Ensuring, monitoring and assessing the safety of trees; Tree surgery; Technical supervision of the treatment and planting of trees.
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 services consists in evaluating trees and shrubs (Class 35) and are related to horticultural and forestry evaluations (Class 44). The opponent’s goods are cables and wires of common metal and small items of metal hardware (Class 6) and ropes, nets and strings (Class 22).
Services, by their nature are generally dissimilar to goods. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist of the provision of intangible activities. These contested services have nothing in common with any of the opponent’s goods. They have a different nature, intended purpose and method of use. Their producers or providers, distribution channels and relevant public are also different. Furthermore, they are neither complementary nor in competition. Consequently, they are dissimilar.
Furthermore, the argument of the opponent that the services covered by the contested application make use of the goods protected under Classes 6 and 22 of the earlier mark is a too tenuous link to determine any degree of similarity. Therefore, the opponent’s claim must be set aside as unfounded.
- 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.
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
|
Fabian GARCIA QUINTO |
Loreto URRACA LUQUE |
Gueorgui IVANOV |
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.