ALLPLEX | Decision 2555590 - ALLFLEX EUROPE v. Alltech, Inc.

Date Published: Oct 1, 2017

OPPOSITION No B 2 555 590

Allflex Europe, ZI de Plague - Route des Eaux, 35500 Vitre, France (opponent), represented by Cabinet Vidon Marques & Juridique PI, 16 B, rue Jouanet - B.P. 90333, Technopôle Atalante, 35703 Rennes Cedex 7, France (professional representative)

a g a i n s t

Alltech, Inc., 3031 Catnip Hill Road, Nicholasville Kentucky 40356, United States of America (applicant), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative).

On 04/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 555 590 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 13 795 695 for the word mark ALLPLEX. The opposition is based on the following earlier rights:

1. European Union trade mark registration No 3 425 543 for the word mark ALLFLEX;

2. European Union trade mark registration No 3 425 527 for the figurative sign ;

3. French company name ALLFLEX EUROPE.

In relation to earlier rights 1 and 2 the opponent invoked Article 8(1)(b) EUTMR; in relation to earlier right 3 the opponent invoked Article 8(4) EUTMR.

Proof of use of earlier rights 1 and 2 was requested by the applicant. However, at this point the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of earlier marks 1 and 2 had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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

In relation to both earlier marks, the goods on which the opposition is based are the following:

Class 8:        Hand tools for applying animal identification tags, marks, indicia bearing panels, buttons and like identification products and parts and fittings therefor, including needles, pins and cutters; hand tools for animal farming and management purposes.

Class 9:        Remote electronic identification systems; electronic identification devices; electronic identification tags, subcutaneous implants, boli, scanners, readers and antennae for electronic identification of animals, livestock and fish; computer software and computer hardware for use in conjunction with the aforementioned goods.

Class 20:        Identification tags, marks, indicia bearing panels, buttons and like identification products; animal identification ear tags; parts and fittings for the aforementioned goods.

The contested goods are the following:

Class 5:        Non-medicated additives for animal feed for use as nutritional supplements; Nutritional additives for animal and livestock feed.

Class 31:        Animal foodstuffs; Animal feed.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.

Before proceeding to the comparison, it is useful to describe the opponent’s goods. According to the opponent, its company specialises in electronic identification devices and ear tags for animals. These devices serve for the identification of animals, guarantee animal product reliability and register information concerning any given animal and notably the foodstuffs it was fed with. The devices are linked with a database where the captured information is centralised.

Indeed, in Class 8, the earlier marks have protection for hand tools for applying such animal identification tags, and also hand tools for animal farming and handling purposes. In Class 9, the earlier marks are registered for electronic identification systems and devices in general, electronic devices (tags, implants, scanners, readers, antennae) used with animals, livestock or fish, and computer equipment for use in conjunction with these electronic goods. In Class 20, the earlier marks essentially cover non-electronic identification products in general and also ear tags especially for animal identification. Insofar as these goods are expressly intended for animal identification, they are directed at livestock owners, animal breeders, farmers, and move through specialised channels dealing with professional equipment for cattle-breeding etc. Since some of the goods are defined in a broad manner and refer to electronic identification in general, they can have other fields of application wherein tracking and inventory management is required (for instance in managing stocks in stores, manufacture etc.). Be that as it may, they are mainly intended for business customers.

Contested goods in Class 5

The contested goods in this class are nutritional additives and supplements used for farm animals that cannot get enough nutrients from regular meals, so the farmers provide such feed additives that include vitamins, amino acids, fatty acids and minerals. That facilitates proper growth of the animals and increased zootechnical performance. Such goods are produced and marketed by specialised undertakings from the nutritional supplements industry which is regulated by authorities in the field of food and feed safety.

The contested goods have no relevant commonalities with the opponent’s goods. Contrary to what the opponent argues, the mere fact that the goods are used in relation to animals does not lead to the conclusion that they are similar. Admittedly, they can be directed at the same public. However, that factor in itself is insufficient for a finding of similarity, given that the natures and purposes of the goods are clearly different. The manufacture of those goods entails entirely different materials, technical know-how and regulatory/marketing frameworks. Whilst feed additives can be offered in veterinary supplies stores or sales outlets, the opponent’s goods are not distributed over the same commercial channels. Furthermore, they are neither complementary nor in competition.

Therefore, the contested non-medicated additives for animal feed for use as nutritional supplements; nutritional additives for animal and livestock feed are dissimilar to all of the opponent’s goods in Classes 8, 9 and 20.

Contested goods in Class 31

The contested goods in this class provide nutrition to animals. They originate from the agricultural industry and are distributed through channels dealing with livestock feed products, pet shops and veterinary supplies stores.

Similar considerations apply to these contested goods as in relation to the ones in Class 5. They have no commonalities with any of the opponent’s goods. They are clearly different by natures and purposes. They do not originate from the same industries and are not distributed via the same channels. The mere fact that the goods can be of interest to the same public does not lead to a finding of similarity between them. They are neither complementary nor in competition.

Therefore, the contested animal foodstuffs; animal feed are dissimilar to all of the opponent’s goods in Classes 8, 9 and 20.

2. 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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected, insofar as this ground is concerned.

Given that the opposition is not well founded under Article 8(1)(b) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

Based on Article 8(4) EUTMR, the opponent invokes the French company name ALLFLEX EUROPE.

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.

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.

It must be recalled that the object of 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 limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. 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 05/03/2015. 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 France prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for manufacturing, import export of any material designed to livestock farming and especially for identification and disease prevention.

On 02/12/2015, the opponent filed the following evidence:

• Extracts, dated 23/11/2015, from the opponent’s website, www.allflex-europe.com. ALLFLEX is referred to as the ‘number 1 worldwide’ in animal identification, producing over 350 million items annually.

• Extract from the applicant’s website, aimed at demonstrating the similarity between the goods as claimed under Article 8(1)(b) EUTMR.

• K-bis extract, dated 14/07/2015, from the French Companies Register providing registration details of the company ALLFLEX EUROPE. Its operation started on 01/06/1978.

• Blank invoice form with contact information and logotype of the opponent.

• Undated product brochure, providing some information on the opponent and the ALLFLEX animal identification systems. It is mentioned in the editorial that the goods had been used for several years in the United Kingdom and for a shorter time in Denmark. In addition, the brochure features the flags of 15 countries (Germany, Belgium, Spain, France, Greece, Italy, Luxembourg,  Sweden, Austria, Denmark, Finland, United Kingdom, Ireland, The Netherlands and Portugal) suggesting that the opponent’s products may be available in those territories.

The Opposition Division notes that, following the applicant’s request to furnish proof of use of the earlier European Union trade mark registrations on which the opposition is, inter alia, based the opponent submitted evidence of use on 21/07/2016. However, since that evidence was filed after the expiry of the time limit granted to the opponent for submitting further facts, evidence and arguments for completing its claims (of which the opponent was informed by the Office’s notification of 28/07/2015 and which expired on 03/12/2015), the subsequent submissions cannot be taken into account for substantiation purposes of the opponent’s claim under Article 8(4) EUTMR.

Having examined the admissible evidence submitted by the opponent, the Opposition Division finds that, while the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 43).

The evidence does not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use of the sign. The website extracts and the product brochure combined suggest that the French company ALLFLEX EUROPE has a presence on the marketplace for electronic identification systems for use in animals. However, the evidence does not contain convincing indications, such as documents emanating from independent sources, concerning the size of the company’s customer base, its business partners, their location or geographical distribution, the company’s sales figures or its marketing expenditure. Although the website printouts and the product brochure suggest some marketing efforts associated with the sign, those pieces of evidence are insufficient for supporting a conclusion of promotional activities of the sign to a degree that would reach the threshold of ‘more than local significance’.

The Opposition Division notes that the document from the Companies Register indicates that the company name was duly registered in France and has been in use for several decades. The opponent invokes Article L 711-4(b) of French IP Code according to which a company name is protected as a sign used in the course of trade, and it may prohibit registration of a later trade mark where there is a risk of confusion on the part of the public.

However, the fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) EUTMR. The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 156).

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the goods and business activities on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded, insofar as it is based on this ground.

Moreover, the Opposition Division notes that aside from submitting a translation of a fragment of the applicable national law, the opponent did not submit the relevant national law governing the sign in the original language.

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

Edith Elisabeth VAN DEN EEDE

Solveiga BIEZA

Julie GOUTARD

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.