MEGAFORM | Decision 2535188 - Megaform v. SPOURLILI INVESTMENTS
Date Published: Sep 28, 2017
OPPOSITION No B 2 535 188
Megaform, Hochstrasse 177, 4700 Eupen, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)
a g a i n s t
Spourlili Investments, 61 Lordou Vyronos Street, Lumiel Building 4th Floor, 6023 Larnaca, Cyprus (applicant), represented by Maciej Marian Priebe, ul. Wielicka 43, lok. 10, 02-657 Warszawa, Poland (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 535 188 is partially upheld, namely for the following contested goods and services:
Class 28: Machines and equipment for physical exercise, including isotonic machines, barbells, dumbbells, bench, dumbbell racks and components therefor.
2. European Union trade mark application No 13 523 873 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 523 873. The opposition is based on Benelux trade mark registration No 852 761. 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 05/03/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Benelux from 05/03/2010 to 04/03/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based.
The opposition was initially based on part of the goods for which the earlier mark is registered, namely all the goods in Classes 10 and 28, but the opponent informed later that it did not wish to pursue opposition on the basis of the goods in Class 10. Therefore, the evidence must show use of the trade mark for the following goods:
Class 28: Games, toys; gymnastic and sports articles not included in other classes.
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 21/12/2015, within the time limit to submit further facts and evidence in support of the opposition, the opponent submitted evidence of use. In its first reply, the applicant challenged the evidence of use filed by the opponent. In response to those observations made by the applicant, the opponent submitted new evidence. Consequently, the issue of the genuine use of the earlier mark is to be examined (12/06/2009, T-450/07, Pickwick Colour Group, EU:T:2009:202).
On 05/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 17/07/2016 to submit evidence of use of the earlier trade mark. On 13/07/2016, within the time limit, the opponent submitted evidence of use.
On 22/12/2016, after expiry of the time limit to submit evidence of use, the opponent submitted additional evidence.
In the present case the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take into account the additional evidence submitted on 22/12/2016 can remain open, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the earlier trade mark.
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.
Therefore, the evidence to be taken into account is the following:
- Copies of 9 invoices showing sales of articles such as shuttlecocks, balls and a mat, between 2012 and 2015 in Belgium and in the Netherlands.
- Excerpts from catalogues showing articles for physical education, fitness, sport and games. The sign ‘
’ appears on the pages of the catalogues and on some products displayed in them. Copies of the invoices for the preparations of the catalogues are attached. They show dates between 2010, 2011, 2012 and 2014.
- An excerpt from the magazine CCI MAG, dated October 2012, with a picture of volleyballs with the earlier trade mark affixed on them.
- Copies of 16 invoices showing sales of articles such as soccer balls, basketballs, balls and other items for teaching, playing and physical education. They are dated between 2010 and 2015 and address clients in Belgium and in the Netherlands.
- Copies of two printers’ invoices (one dated 27/01/2014 and another one dated 30/01/2015) for brochures.
- Extracts from catalogues with products on which the opponent’s mark is displayed.
The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, for example, invoices which, moreover, are partially in the language of the proceedings, an excerpt from the magazine CCI MAG featuring the earlier mark affixed on balls, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation. The excerpts from the catalogues are in English and where, on occasions, the texts in other language appear, they are together with the English versions.
Furthermore, although the invoices are in Dutch, the goods can be identified either by the product reference corresponding to the reference in the product catalogue, or because they are described in English next to the indication ‘Megaform’. Although the catalogues contain no dates, the opponent submitted dated invoices for the preparation of the catalogues. Although these invoices are in French, it is clear that they concern catalogues, since each of them contains a reference to the catalogue under ‘description’.
The applicant argues 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 marks is registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, 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 invoices, extracts from catalogues and the excerpt from the magazine CCI MAG show that the place of use is Benelux. This can be inferred from the language of the documents (Dutch and French), the currency mentioned (EUR) and some addresses in Belgium and the Netherlands as well as the internet address on the pages of catalogues www.megaform.be. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period and, in particular, the evidence concerning the catalogues and invoices referring to the relevant products.
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 together with extracts from catalogues and from the magazine provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
Use of the mark need not be quantitatively significant for it to be deemed genuine.
Although the evidence indicates a low commercial volume of use, the attached invoices, regarding several product ranges, show that the goods were supplied to various customers in Belgium and in the Netherlands. Taking into account the period and frequency of use, also shown in further material submitted by the opponent and discussed above, it is concluded that the use was such as to create or preserve an outlet for the products concerned.
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 mark appears as registered, except for the fact that it is in black and white instead of in colour, in various pieces of evidence such as invoices, pages from catalogues, including on pictures of products that appear in the catalogues or in the excerpt from the magazine. The fact that the mark is registered in blue and orange, while it appears in black and white in the evidence, does not alter the distinctive character of the trade mark, since the colours are not the main distinctive features of the mark. The word and figurative elements are the same in the evidence as registered, as is the contrast of shades.
The applicant claims that the opponent uses the sign in a different form from the registered mark. While it is true that ‘’ appears without the word ‘MEGAFORM’ in some evidence, most of the time it is the sign ‘
’ that is displayed, often in the prominent places of the catalogues and in big size. Therefore, this argument of the applicant cannot stand.
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.
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).
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 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 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.
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 only for goods such as soccer balls, basketballs, gym balls, inflatable balls for sports, exercise balls, aerobic steps, gymnastic mats, badminton equipment belonging to the following category in the specification: gymnastic and sports articles not included in other classes. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for gymnastic and sports articles not included in other classes.
The evidence also proves use for developmental games, toys, which can be considered to form an objective subcategory of games, toys in Class 28. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for:
Class 28: Developmental games, toys; gymnastic and sports articles not included in other classes.
Therefore, the Opposition Division will only consider the abovementioned goods 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.
- The goods and services
The goods on which the opposition is based are the following:
Class 28: Developmental games, toys; gymnastic and sports articles not included in other classes.
The contested goods and services are the following:
Class 16: Posters, books, newspapers, related to sport and fitness equipment.
Class 28: Machines and equipment for physical exercise, including isotonic machines, barbells, dumbbells, bench, dumbbell racks and components therefor.
Class 41: Education, training, in the field of sports activities; organizing camps, conferences, seminars, competitions and events in the field of sports activities; publication of books, manuals, textbooks in the field of physical exercise.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, used in the applicant’s list of goods in Class 28, indicates that the specific goods 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 by analogy on the use of ‘in particular’ a reference in the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 16
The contested posters, books, newspapers, related to sport and fitness equipment have different natures and purposes from the opponent’s goods in Class 28. They do not have the same distribution channels (i.e. sports outlets versus stationery shops) or methods of use. They are produced by different undertakings and they are not in competition or complementary. Therefore, they are dissimilar.
Contested goods in Class 28
The contested machines and equipment for physical exercise, including isotonic machines, barbells, dumbbells, bench, dumbbell racks and components therefor are included in the broad category of the opponent’s gymnastic and sports articles not included in other classes. Therefore, they are identical.
Contested services in Class 41
The contested education, training, in the field of sports activities; organizing camps, conferences, seminars, competitions and events in the field of sports activities; publication of books, manuals, textbooks in the field of physical exercise are dissimilar to the opponent’s goods. Although the opponent’s goods include gymnastic and sports articles, this is not sufficient for finding a similarity between them and the contested services. Apart from being different in nature, since services are intangible whereas goods are tangible, the contested services and the opponent’s goods have different methods of use and distribution channels. In general, the producers of sports’ articles are not directly involved in the organisation of sporting activities, but are only sponsors or participate indirectly as suppliers of sports’ products, whereas the main organiser is a specialised business. The relevant public also does not expect an organiser of sporting events to develop and market sporting articles. Likewise, it is not usual for gymnasiums to sell sporting articles directly manufactured by them. This reasoning is equally applicable to the contested publication activities.
The opponent refers to previous decisions of the Office to support its arguments related to the comparison of goods and services. 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).
The Opposition Division has considered the reasoning and outcome of these decisions and came to the conclusions supported by the reasoning explained above.
- 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 goods found to be identical are directed at the public at large. The degree of attention is average.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Benelux.
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).
Although the two letters ‘M’ of the contested sign are depicted differently from the remaining letters, a significant part of the relevant public will perceive the verbal elements of the signs as the meaningful expression ‘MEGA FORM’, being ‘great shape’. This is because the word ‘MEGA’ is widely used with the meaning of ‘huge’, ‘great, ‘super’, etc. and the word ‘FORM’, which refers to ‘shape’, exists in German and has similar equivalents in the other official languages in the relevant territory, namely ‘vorm’ in Dutch and ‘forme’ in French. Furthermore, the colours of the letters also invite one to read the first ‘M’ together with ‘EGA’ and the last ‘M’ together with ‘FOR’. The Opposition Division will undertake the comparison of the signs from the perspective of the part of the relevant public that will read the contested sign as ‘MEGA FORM’ and understand that it refers to ‘great shape’.
In view of the above, the distinctiveness of the expression ‘MEGA FORM’, which appears in both signs, is lower than normal since it refers to the purpose of the goods in question.
Neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Contrary to the argumentation of the applicant, the Opposition Division considers that although the letters of the word ‘MEGAFORM’ in the earlier mark are smaller than the single letter ‘M’ placed above, the size of the entire word reduces these differences. The same is true for the contested sign as the fact that the letters ‘M’ of this sign are bigger than the remaining letters is attenuated by the size of the remaining letters taken together and of the figurative element in the shape of an arrow and serving as a background.
Furthermore, the single letter ‘M’ in the earlier mark is likely to be perceived as a reference to the word ‘MEGAFORM’ placed below as it is not uncommon for marks made up of words to be associated with single or combinations of letters or other symbols which make a reference, in a concise manner, to the mark (see the decision of 15/02/2012, R 45/2011-11 – ‘S SPALDING (Fig. Mark)/SPARRING’, § 26). With this in mind, although the letter ‘M’ will not be ignored by the consumers, its role may be perceived as a simple reference to ‘MEGAFORM’.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Visually, the signs coincide in the expression ‘MEGAFORM’. However, they differ in that this expression is written as one word in the earlier mark while, in the contested sign, the letters have different sizes, colours and are written on two lines. However, since the letters are the same, at least a part of the public will identify ‘MEGAFORM’ in the two signs, although in different configurations.
The signs differ in the additional separate letter ‘M’ in the earlier mark, the graphical representation of the letters, colours and figurative elements, namely the curved line surrounding the letter ‘M’ and the grey rectangular background in the earlier mark and the black arrow serving as a background in the contested sign. These simple figurative elements are not particularly original or striking. The letters are legible without any effort and, although the expression ‘MEGAFORM’ is weak, it will be retained in the consumer’s memory stronger than figurative elements, typography and colours which frame and decorate the letters. Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the expression ‘MEGAFORM’, which appears clearly in the earlier mark and can be identified in the contested sign. The pronunciation differs in the sound of the single letter ‛M’ of the earlier mark. As explained above, this letter is likely to be seen as a reference to the expression ‘MEGAFORM’. For this reason, as well as for economy of language, the relevant public will most likely not pronounce this single letter separately and will refer to the earlier mark as ‘MEGAFORM’. Because of the arrangements of the letters in the contested sign, the consumers may read the expression as two words ‘MEGA FORM’. Therefore, the rhythm and intonation may slightly vary.
Consequently, the signs are aurally highly similar, if not identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the expression ‘MEGAFORM’, present in both marks. The fact that it may be read as ‘MEGA FORM’ in the contested sign does not influence the concept. It has been concluded that the degree of distinctiveness of this expression is lower than normal. However, the impact of the concepts behind the additional meaningful elements of the signs, namely the reference to ‘MEGAFORM’ by the letter ‘M’ in the earlier mark and the representation of arrow in the contested sign, is also attenuated because of the reasons explained above. Therefore, the signs are conceptually similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 its 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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an element in the mark which possesses lower than normal degree of distinctiveness, as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
The limited distinctiveness of the expression ‘MEGAFORM’ for all the relevant goods in Class 28 that were found identical does not in itself preclude the possibility of confusion between the marks, as it is only one of a number of elements entering into assessment of the likelihood of confusion. As previously observed, it is mainly that expression which is likely to make an impression on consumers and be remembered by them. Therefore, the similarity of the signs in this element is likely to make the relevant consumer, displaying an average level of attention, believe that the identical goods have the same or a related commercial origin.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 852 761.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Catherine MEDINA | Justyna GBYL | Adriana VAN ROODEN |
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.