LOG IN | Decision 2641077 - Robert Gammisch v. LA POSTE

Date Published: Oct 2, 2017

OPPOSITION No B 2 641 077

Robert Gammisch, Neue Siedlung 27, 95339 Neuenmarkt, Germany (opponent), represented by RAU, Schneck & Hübner Patentanwälte Rechtsanwälte PartgmbB, Königstraße 2, 90402 Nürnberg, Germany (professional representative)

a g a i n s t

La Poste, Société anonyme, 9 rue du Colonel Pierre Avia, 75015 Paris, France (applicant), represented by Marchais Associes, 4 avenue Hoche, 75008 Paris, France (professional representative).

On 21/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 641 077 is upheld for all the contested services, namely:

Class 39:        Data storage (security services); freighting; delivery of parcels and goods; packaging of goods; delivery of messages, newspapers, parcels, goods; packaging of goods; transportation information; storage information; freight forwarding; delivery of goods by mail order; courier services for messages and merchandise; transport, packing, storage of goods; storage of commodities; changes of address, namely forwarding of mail; express delivery and collection of parcels, post and goods.

2.        European Union trade mark application No 14 687 925 is rejected for all the contested services. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 687 925, namely against all the services in Class 39. The opposition is based on European Union trade mark registrations No 5 831 755 and No 8 700 171. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the request for proof of use in relation to the opponent’s European Union trade mark registration No 8 700 171 for the word mark ‘LOG-IN’.

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 his 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 24/11/2015. 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 24/11/2010 to 23/11/2015 inclusive.

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

Class 39:        Freight forwarding, in particular returns management, transport control, transport monitoring; storage of goods; logistics in the transport sector.

However, for reasons of procedural economy, the Opposition Division will focus the assessment only on the following services from the opponent’s list:

Class 39:        Freight forwarding, in particular returns management, transport control, transport monitoring; storage of goods.

For the purpose of the analysis, it is noted that the term ‘in particular’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 12/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 24/11/2016 to submit evidence of use of the earlier trade mark. On 14/11/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• An affidavit, dated 03/11/2016, by Robert Gammisch, the opponent, who is the sole shareholder of the companies Log-In Logistikpark GmbH and Log-in Int. Spedition GmbH. He declares that both companies have used the earlier mark continuously since 2007. He submits turnover figures for freight forwarding (transportation of goods), returns management, storage of goods and logistics in the transport sector. For example, the figures submitted for freight forwarding (transportation of goods) are as follows:

.

• Photographs, undated, depicting the sign  on buildings and trucks.
• Letterheads, undated, with the following sign in the top right corner: .
• Screenshots from the opponent’s website, dated 17/10/2016, showing information about the opponent’s transport business, which is provided using trucks, and the opponent’s storage business. A list of the services provided is shown on one of the pages, namely co-packing activities using the client’s own packaging systems; creation of display pallets; repackaging; return management; cleaning and disinfecting coins; and destruction of goods that are no longer saleable, under the supervision of the customs authorities. The signs  and , inter alia, appear on the screenshots above and alongside the text and in the photographs of trucks.
• Screenshots of the opponent’s website, in English and German, provided through the Wayback Machine at archive.org, dated between 16/01/2012 and 29/06/2015. The pages provide brief information about the opponent’s transport and logistics business and depict the same signs as above.
• 10 invoices, issued between 25/10/2011 and 14/10/2015 by Log-in Int. Spedition GmbH (Robert Gammisch) to companies in Italy, Germany, France and Austria for the provision of ‘freight’. The sign  is depicted in the top right corner of the invoices, along with the contact information of the issuing company, the name and address of which is shown in the top left corner of the invoice. The invoices are accompanied by consignment notes concerning the cargo carried. The amount is between EUR 654 and EUR 2 677 per invoice.
• Six invoices, issued between 30/11/2011 and 17/09/2015 by Log-In Logistikpark GmbH (Robert Gammisch) to companies in Hamburg, Germany, for the provision of ‘returns management’ of goods, mostly cigarettes. The sign  is depicted in the top right corner of the invoices, along with the contact information of the issuing company, the name and address of which are in the top left corner of the invoice. The amount is between EUR 13 728 and EUR 33 346 per invoice.
• Two invoices, issued on 30/04/2012 and 30/09/2015 by Log-In Logistikpark (Robert Gammisch) to a company in Germany for the provision of storage of goods. The sign  is depicted in the top right corner of the invoices with the contact information of the issuing company, the name and address of which are displayed in the top left corner of the invoice. The amount invoiced is above EUR 20 000 in both documents.
• 13 invoices, issued on 30/04/2011 and 30/09/2015 by Log-In Logistikpark (Robert Gammisch) to companies in Germany and the UK for the provision of the following services: ‘in- and outbound of cut tobacco’, ‘rent of freezing trailer’, ‘loading’, ‘shuttle transport’, ‘packaging of pallets’. The signs  and  are depicted in the top right corners of the invoices with the contact information of the issuing company, the name and address of which are displayed in the top left corners of the invoices. The amount is between EUR 2 759 and EUR 157 681 per invoice.

Preliminary remark

In his observations, the opponent explains that he is the sole shareholder of the companies Log-In Logistikpark GmbH and Log-in Int. Spedition GmbH and declares that both companies have used the earlier mark continuously since 2007. The evidence submitted originates from and relates to the abovementioned companies. Given the opponent’s explanation and the fact that his name also appears at the bottom of the invoices following the name of the issuing company, it can be concluded that the evidence refers to the use of the above signs with the opponent’s consent.

Furthermore, according to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor.

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by the abovementioned companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

Place of use

The submitted invoices and screenshots from the opponent’s website show that the place of use is the European Union. This can be inferred from the language of the documents (German and English), the currency mentioned (euro) and some addresses in Germany, the UK, Italy, France and Austria on the invoices. Therefore, the evidence relates to the relevant territory.

Time of use

All of the invoices and the screenshots from the opponent’s website, provided through the Wayback Machine, are dated within the relevant period.

The photographs and some of the screenshots of the opponent’s website are undated (or bear only the printing date). However, they reflect the information provided through the screenshots, which are clearly dated in the relevant timeframe. Therefore, the photographs and the undated screenshots are also considered related to the relevant timeframe.

It is concluded that the submitted evidence relates to the relevant period of time.

Extent of use

The documents listed above and, in particular, the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices demonstrate invoiced amounts that are significant and, furthermore, are dated within a continuous period of four years. The invoices refer to services provided in different Member States within the relevant territory, namely Germany, the UK, Italy, France and Austria.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the signs, ,  and  are affixed on the invoices, letterheads and trucks of the opponent.

Although the signs appear to depict the names of the companies through which the opponent operates on the market, it is also clear from the submitted evidence that there is a link between the services (explicitly described on the invoices) and the abovementioned signs. The names of the companies through which the opponent operates are clearly indicated on all the submitted invoices, as well as the signs under which the services are invoiced. Furthermore, when a sign is used in relation to services, in contrast to use on goods, it cannot be physically affixed on the services, but has to appear on documents, such as order forms and invoices.

The use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T-209/09, Alder Capital, EU:T:2011:169, § 55-56). In the present case, as explained above, there is a clear link between the signs in question and the services invoiced. The Opposition Division considers, therefore, that the evidence shows use of the signs as a trade mark.

Use of the mark as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall 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 following signs are depicted on the submitted evidence:, , ,  and . The evidence shows the earlier mark depicted in a standard typeface with an additional figurative element on the left side, namely a circle containing a smaller circle. In some of the depictions, there are additional indications, namely parts of company names and forms. The company names and the company form are depicted in a much smaller typeface and only serve to specify further the provider of the services. In some of the depictions, the signs appear in colour. These additional specifications do not alter the fact that the earlier trade mark is clearly used in the evidence submitted, as it is clearly perceptible.

It follows that the use of the signs shown above constitutes use of the mark as registered or in a form essentially the same as that registered and, therefore, constitutes use of the mark under Article 15 EUTMR.

Use in relation to the registered services

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).

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 shall, 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.

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.)

In the present case, the evidence proves use for freight, returns management, ‘in- and outbound of cut tobacco’, ‘loading’ and ‘shuttle transport’. These services are all included in the category of the opponent’s freight forwarding, as they are different activities involved in the process of freight forwarding. Therefore, they belong to the category of freight forwarding, in particular returns management, transport control, transport monitoring (as explained above, the listed services are only examples of freight forwarding). As the opponent is not required to prove all the conceivable variations of the category of services for which the earlier mark is registered and as the services for which use has been proved do not constitute a coherent subcategory within the broad category of freight forwarding in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for freight forwarding, in particular returns management, transport control, transport monitoring.

The opponent also proves use for the following services: storage of goods.

Therefore, the Opposition Division will consider freight forwarding, in particular returns management, transport control, transport monitoring; storage of goods in Class 39 in its further examination of the opposition.

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.

As noted above, the opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 700 171.

1. The services

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

Class 39:        Freight forwarding, in particular returns management, transport control, transport monitoring; services for the storage of goods.

The contested services are the following:

Class 39:        Data storage (security services); freighting; delivery of parcels and goods; packaging of goods; delivery of messages, newspapers, parcels, goods; packaging of goods; transportation information; storage information; freight forwarding; delivery of goods by mail order; courier services for messages and merchandise; transport, packing, storage of goods; storage of commodities; changes of address, namely forwarding of mail; express delivery and collection of parcels, post and goods.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

As specified above, the term ‘in particular’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

Freighting; freight forwarding; storage of goods are identically contained in both lists of services (including synonyms).

The contested transport includes, as a broader category, the opponent’s freight forwarding, in particular returns management, transport control, transport monitoring. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested transportation information overlaps with the opponent’s freight forwarding, in particular returns management, transport control, transport monitoring, as the latter are transport services and would include the provision of information related to the transport. It follows that the services are identical.

The contested data storage (security services); storage information; storage of commodities are included in the broader category of the opponent’s services for the storage of goods. It follows that these are identical.

The contested delivery of parcels and goods; delivery of messages, newspapers, parcels, goods; delivery of goods by mail order; courier services for messages and merchandise; changes of address, namely forwarding of mail; express delivery and collection of parcels, post and goods are similar to the opponent’s freight forwarding, in particular returns management, transport control, transport monitoring. These services have the same purpose, namely moving certain goods, material or immaterial, from a starting point to their final destination. They also have the same end users and distribution channels.

The contested packaging of goods (listed twice); packing refer to services whereby a company’s merchandise is packed and the opponent’s services for the storage of goods refer to services whereby a company’s merchandise is kept in a particular place for a fee. These services are complementary. Furthermore, they have the same providers, end users and distribution channels. It follows that they are similar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical and similar are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise. The degree of attention of the relevant public is likely to vary from average to higher than average depending on the purpose and the price of the particular services in question.

3. The signs

LOG-IN                                           

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements of the signs are meaningful for a part of the relevant public, for example the English-speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark, consisting of the element ‘LOG-IN’. It will be understood by the relevant part of the public as meaning ‘log in’, which is usually used in computing to mean ‘to enter (an identification number, password, etc.) from a remote terminal to gain access to a multi-access system’ (information extracted from https://www.collinsdictionary.com/dictionary/english/log-in). As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The contested sign is a figurative sign, which consists of the word ‘LOG’ depicted in slightly stylised yellow letters, a symbol depicting the mirrored letter ‘G’ and the letters ‘IN’. The sign, despite its stylisation and the mirrored letter ‘G’, is likely to be perceived by the relevant part of the public as ‘log in’, with the meaning specified above. This is because consumers tend to look for a meaning in trade marks, and marks often distort letters or replace (repeat) them with figurative elements with a shape similar to that of a letter, intentionally looking for effect or impact. As the single element of the contested sign is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived by the relevant part of the public with the meaning of ‘log in’.

Therefore, the signs are conceptually identical.

Visually and aurally, the signs coincide in the sequence (and the sounds) of the letters ‘LOG*IN’. They differ visually in the hyphen in the earlier mark and the additional mirrored depiction (and sound) of the letter ‘G’ in the contested sign. The signs also visually differ in the colour and stylisation of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are visually and aurally similar to a high degree.

As the signs have been found similar (or even identical) in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that his mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the English-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

As has been concluded above, the contested services are partly identical and partly similar to the services of the earlier mark. The degree of attention may vary from average to higher than average when choosing the relevant services.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness for the relevant part of the public. It has also been established above that the signs are visually and aurally highly similar and conceptually identical. The differences lie in the hyphen in the earlier mark and the mirrored letter ‘G’, stylisation and colour of the contested sign.

Due to the figurative depiction of the contested sign, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In the light of the foregoing, the degree of similarity between the marks is sufficient for it to be considered that a substantial part of the English-speaking public could reasonably believe that the services found to be identical and similar originate from the same undertaking or economically linked undertakings, even when the degree of attention is higher than average.

The applicant refers to previous decisions of the Office to support his argument that there is no likelihood of confusion on the part of the public. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. This is because they refer to marks that are not comparable to the marks at issue, as, due to their specific elements, they show different degrees of visual, aural and conceptual similarity from the signs in the present case. Therefore, the applicant’s argument has to be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 700 171. It follows that the contested trade mark must be rejected for all the contested services.

As earlier European Union trade mark registration No 8 700 171 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

André Gerd Günther BOSSE

Irina SOTIROVA

Erkki MÜNTER

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.