STERINA | Decision 2554510 - STERIMA NV v. ITN-medical Gesellschaft für medizinische Verpackung m.b.H.
Date Published: Sep 28, 2017
OPPOSITION No B 2 554 510
Sterima NV, Zonnekestraat 13, 8501 Bissegem, Belgium (opponent), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative)
a g a i n s t
ITN-medical Gesellschaft für medizinische Verpackung m.b.H., Zum Windpark 1, 23738 Lensahn, Germany (applicant), represented by Meyer & Partner, Jungfernstieg 38, 20354 Hamburg, Germany (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 554 510 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 and services of European Union trade mark application No 13 900 444 in Classes 16 and 35. The opposition is based on Benelux trade mark registrations No 400 434 and No 150 863. The opponent invoked Article 8(1)(b) EUTMR.
STERIMA | STERINA |
Earlier trade marks | Contested sign |
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.
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 24/04/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Benelux countries from 24/04/2010 to 23/04/2015 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:
Benelux trade mark registration No 400 434:
Class 3: Bleaching preparations and other cleaning preparations.
Class 5: Pharmaceutical, veterinary and sanitary products.
Class 16: Paper, cardboard, paper and paperboard (not included in other classes); printed matter.
Benelux trade mark registration No 150 863:
Class 37: Cleaning and sterilizing garments, other textile goods and medical instruments.
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 30/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/08/2016 to submit evidence of use of the earlier trade marks. On 03/08/2016, within the time limit, the opponent submitted evidence of use.
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.
The evidence to be taken into account is the following:
- Invoices for years 2010-2015: the invoices bear the figurative mark
in the right top corner and are issued to customers in Belgium for sales regarding the following goods: scissors, compresses, gauzes, tweezers, suture sets.
- Photos of the products such as scissors, tweezers, compresses and gauzes packed in sets, as well as photos of shipping packages showing the following mark:
.
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, this is not true as the opponent provided translation of the names of the relevant products used in the invoices in the observations attached to the evidence of use. In any case, 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). In the present case, taking into account the nature of the documents which have not been fully translated, and are considered relevant for the present proceedings, namely, invoices, and the self-explanatory character of the parts that have not been translated, the Opposition Division considers that there is no need to request a translation.
The invoices show that the place of use is Belgium. This can be inferred from the language of the documents, the currency mentioned and some addresses. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
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.
The applicant indicates that the word ‘STERIMA’ appears in the evidence only as a part of a figurative sign, and in the invoices it is used as a company name and not as a trade mark.
In principle, the use of the sign as a company name or trade name, is not, of itself, intended to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive’, i.e. it cannot be considered to be used as a trade mark (11/09/2007, C-17/06, Céline, EU:C:2007:497, and 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156).
However, depending on circumstances, 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). The use of a business, company or trade name can be regarded as use in relation to goods or services where a party affixes the sign constituting its company name, trade name or shop name to the goods and services as well. For example, the presentation of the business name at the top of order forms or invoices, depending on how the sign appears on them may be suitable to support genuine use of the registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 44-45).
In the present case, even if the word ‘STERIMA’ appearing on the invoices is used as a company name, as claimed by the applicant, it is clear from the photos of the goods submitted, that the same (or very similar) sign (in black and white) appears on the packaging of goods, so there is a direct link between the goods and the sign.
As regards the argument of the applicant that the trade mark used in the evidence is different from the registered one, 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.
It must be reminded that the purpose of Article 15 EUTMR is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T 194/03, Bainbridge, EU:T:2006:65, § 50).
The Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (23/02/2006, T 194/03, Bainbridge, EU:T:2006:65, § 50).
With regard to additions, if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T 353/07, Coloris, EU:T:2009:475, § 29-33 and 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36).
Though the mark shown in the evidence is not an exact reproduction of registered marks, the word ‘STERIMA’ appears as the dominant in the marks shown in the evidence. The additional figurative elements play rather a decorative nature and, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). The word element ‘MEDICAL SERVICES’ will be descriptive for part of the public who speaks English. In any case, the element ‘MEDICAL SERVICES’ is written in a much smaller font and placed below the dominant element of the mark and is, in the view of the Opposition Division, not capable of altering the distinctiveness of the word ‘STERIMA’ as registered in the present case.
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.
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.
Although the evidence submitted by the opponent consists of invoices and photos of goods only, they provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices prove regular sales in Belgium in the relevant period of time. And although the evidence does not indicate very high commercial volume, it needs to be reminded that use of the mark need not be quantitatively significant for it to be deemed genuine.
Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.
The evidence of use shows that the marks have been used for scissors, compresses, gauzes, tweezers, suture sets. However, these goods do not fall within any of the categories for which the earlier marks are registered, in particular within pharmaceutical, veterinary and sanitary products in Class 5. Pharmaceutical and veterinary products refer to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in people and/or animals. Sanitary products classified in Class 5 of Nice Classification include sanitary washes, detergents, menstrual pads, pants, diapers etc.
As such, suture sets, scissors and tweezers for medical use fall within the broad categories of surgical, medical, dental and veterinary apparatus and instruments in Class 10 which cover devices for administering medications and preparations, or for providing diagnosis and treatment of diseases and physical conditions. Bandages, gauzes or compresses are differentiated from sanitary products by the inclusion of a separate general indication within the heading of Class 5, i.e. plasters, materials for dressings.
The task of the Opposition Division is to compare the goods and services as registered and, as in the present case, for which the genuine use is proved, and not any other goods or services for which either of the signs may be actually used. Consequently, the fact that the opponent may also offer other goods on retail under the earlier signs is irrelevant as the earlier signs do not cover such goods: this can have no bearing on the comparison of the goods and services concerned in the present proceedings or any likelihood of confusion in relation to the same.
Therefore, the opponent has not shown use for the goods and services for which the marks are registered, but for other goods for which they have no protection.
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 territory during the relevant period of time for the relevant goods and services.
Therefore, the opposition must be rejected pursuant to Article 42(2) 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
Katarzyna ZANIECKA | Anna BAKALARZ | Begoña URIARTE VALIENTE |
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.