scalex | Decision 2544818 - Tamtron Systems Oy v. Messe Frankfurt Exhibition GmbH

Date Published: Sep 25, 2017

OPPOSITION No B 2 544 818

Tamtron Systems Oy, Käärmesaarentie 3 B, 02170 Espoo, Finland (opponent), represented by Berggren Oy AB, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional representative)

a g a i n s t

Messe Frankfurt Exhibition GmbH, Ludwig-Erhard-Anlage 1, 60327 Frankfurt am Main, Germany (applicant), represented by Patentanwälte Eder Schieschke & Partner mbB, Elisabethstr. 34/II, 80796 München, Germany (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 544 818 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 13 877 816 (word mark:
“scalex”), after a limitation of the scope of opposition the opposition is still directed against some of the goods and services in Classes 9 and 35 (see limitation as regards the extent of the opposition in opponent´s letter of 09/09/2016). The opposition is based on the following earlier trade marks:

• European Union trade mark registration No 1 691 096 (word mark: “SCALEX”);
• International trade mark registration No 736 826 (word mark: “SCALEX”) designating the Czech Republic, Lithuania, Latvia, Slovakia, Poland and Estonia;
• Finnish trade mark registration No 228 267 (word mark: “SCALEX”).

The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent 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 marks on which the opposition is based, namely European Union trade mark No 1 691 096, International trade mark registration No 736 826 and Finnish trade mark registration No 228 267.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 15/04/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union (including the Member States cited above) from 15/04/2010 to 14/04/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following, which are the same for all the trade marks cited above:

Class 9: Electronic weighing equipment; electronic overload guards and indicators, computer controlled weighing equipment and wireless control electrical weighing equipment as well as recorded computer programmes to these; parts and accessories to the fore mentioned goods.

Class 37: Repair and maintenance; installation services.

Class 42: Planning, maintenance and updating services of electronic weighing equipment and weighing systems related computer software.

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 06/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/09/2016 to submit evidence of use of the earlier trade marks. On 09/09/2016, within the time limit, the opponent submitted evidence of use.

On 13/04/2017, after expiry of the time limit, the opponent submitted additional evidence.

The Office is not required, when exercising its discretion under Article 76(2) EUTMR, to take late evidence into account.

In this regard, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

However, the opponent filed the additional evidence not in its next submission after the expiry of the time limit, but at a much later stage of the proceedings, on 13/04/2017, which prolonged the proceedings unduly. No justification for this very late filing has been provided, even though the late evidence was available even before the time limit had expired.

However, the opponent submitted additional evidence on several occasions after the time limit had expired, even though all of the evidence was available before then. No justification has been provided for the undue prolongation of the proceedings thus brought about.

For the above reasons, and in the exercise of its discretion pursuant to Article 76(2) EUTMR, the Office therefore decides to take into account only the evidence submitted within the time limit.

The evidence to be taken into account is the following:

• an undated Scalex Truck Weighing System brochure (Annex 1);
• an undated Scalex Wild Wheel defect detection system (Annex 2);
• an undated Scalex Wood-measuring Systems brochure (Annex 3);
• a picture of a terminal device called Scalex Driver Terminal, printed on 22/08/2016 (Annex 4);
• two pictures of Scalex 5000 and 6000 outdoor terminals, printed on 22/08/2016 (Annex 5);
• information about Scalex RDW weighing tailored solutions, printed on 06/09/2016 (Annex 6);
• Scalex at Elmia Lastbil fair 2014 (Annex 7);
• Scalex at Euroexpo fair 06/05/2015 (Annex 8);
• Scalex at Maskinexpo fair 28-30/05/2015 (Annex 9);
• a YouTube video about Scalex Wild systems with comments dating from 12/10/2010, 02/12/2012 and 08/12/2013 (Annex 10);
• periodic inspection and maintenance agreement template 2015 in Finnish (Annex 11);
• maintenance agreement template 2015 in Finnish (Annex 12);
• maintenance agreement template 2012 in Finnish (Annex 13);
• a printout of Tamtron Group web pages printed on 06/09/2016 (Annex 14).

Taking into account the above documents, it has to be considered that, regardless of whether they are dated within or (at least partly) outside the relevant time period, or undated, not one of them proves a meaningful extent of use of the above marks. Documents that could prove that, such as invoices, turnover, sales figures, advertisement, extracts from tax accounts and/or commercial balance sheets, have not been submitted. Other relevant documents, such as affidavit(s), declarations by professional associations, evidence of market share and surveys, are also missing. The documents submitted are, at best, suitable for use as supplementary material.

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 Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territories during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

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

Magnus ABRAMSSON

Peter QUAY

Julia SCHRADER

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.