SunCarbon | Decision 2475831 - Sunoco Overseas, Inc. v. SunCarbon AB

Date Published: Oct 2, 2017

OPPOSITION No B 2 475 831

Sunoco Overseas, Inc., 3801 West Chester Pike, NW-131, Newtown Square, Pennsylvania 19073, United States of America (opponent), represented by Shepherd and Wedderburn LLP, 1 Exchange Crescent, Conference Square, Edinburgh EH3 8UL, United Kingdom (professional representative)

a g a i n s t

SunCarbon AB, Norra Villavägen 17, 237 34 Bjärred, Sweden (applicant), represented by Awapatent AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 475 831 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 13 388 822. The opposition is based on the following earlier rights:

• European Union trade mark registration No 3 720 646 ‘SUNOCO’ (word mark);

• United Kingdom trade mark registration No 400 572 ;
  
• United Kingdom trade mark registration No 1 151 409 ‘SUN’ (word mark).

The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 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 3 720 646 and United Kingdom trade mark registration No 400 572.

1. The goods and services

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

UK TM No 400 572

Class 4:        Petroleum and petroleum products.

EUTM No 3 720 646

Class 4:        Petroleum products; industrial oils and greases; lubricants; gasoline, fuels, diesel oils, gas oils; kerosene.

The contested goods and services, after a limitation made during the opposition proceedings, are the following:

Class 4: Wood based biofuels; pulp based biofuels.

Class 40: Refinement of wood based fuel materials; processing and refining of pulp for fuel producing; refining services for wood based biofuels.

Some of the contested goods are identical to goods on which the opposition is based, and some of the contested services are similar to them. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical and all the contested services were similar to the goods of the earlier marks.

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 goods and services presumed to be identical are aimed at the public at large and (e.g. in the case of the contested refinement and processing services) an expert professional public.

The degree of attention will vary from average to high depending on the level of expertise of the relevant public and the price of the goods or services.

3. The signs

EUTM No 3 720 646 SUNOCO UK TM No 400 572	SunCarbon
Earlier trade mark	Contested sign

The relevant territories are the European Union and the United Kingdom.

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 earlier signs consist of the meaningless word ‘SUNOCO’, which is of normal distinctiveness.

The contested sign will be perceived by the English-speaking public as consisting of two words that both have a concrete meaning, namely ‘Sun’, the star at the centre of our solar system, and ‘Carbon’, a chemical element that diamonds and coal are made of. This latter meaning may also be perceived by speakers of other European languages due to close equivalents such as the Spanish carbón or the French carbone. Since fuels, including biofuels, emit carbon dioxide, this word is considered to be devoid of distinctive character for the relevant goods and services, which are biofuels and their refinement and processing.

Even though the first three letters of the earlier mark might, if depicted as a separate word, be recognised as the word ‘SUN’, the Opposition Division finds it unlikely that this concept would be artificially dissected from the six letters of which the earlier mark consists.

Undertaking such an artificial dissection in singling out certain common letters would undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).

As a general rule, marks are perceived as a whole, and it is only as an exception and under certain circumstances that consumers are likely to break them down into smaller parts. An example of such an exception is when all the parts suggest a concrete meaning known to the relevant public, as in the case of the contested mark, where, furthermore, a visual distinction is also made by capitalising the letters ‘S’ and ‘C’.

Visually and aurally, the signs coincide in their first three letters, ‘SUN’. They differ in the last three letters, ‘OCO’, of the earlier signs, the typeface of the earlier UK mark and the last six letters, ‘Carbon’, of the contested sign.

While the letter ‘C’ is present in both signs, this has no relevance given that the position of this letter is different, as it is the fifth letter of the earlier signs and the fourth letter of the contested sign. What matters in the assessment of the visual similarity of two marks is the presence, in each of them, of several letters in the same order (25/03/2009, T-402/07, ARCOL, ECLI:EU:T:2009:85, § 83).

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

Conceptually, although the public in the relevant territory will perceive the meanings explained above in the contested mark, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

According to the opponent, earlier European Union trade mark registration No 3 720 646 ‘SUNOCO’ (word mark) and United Kingdom trade mark registration No 400 572have a reputation in the European Union and in the United Kingdom, respectively. Notably, the opponent claims that ‘Sunoco’ is known worldwide as the largest manufacturer and refiner of racing fuels in the world.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 21/10/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union and the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

European Union trade mark registration No 3 720 646

Class 4: Petroleum products; industrial oils and greases; lubricants; gasoline, fuels, diesel oils, gas oils; kerosene.

United Kingdom trade mark registration No 400 572

Class 4: Petroleum and petroleum products.        

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 22/07/2015, the opponent submitted evidence to support this claim. 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 opponent submits that it is a subsidiary of ‘Sunoco Inc.’, a well-known American petroleum and petrochemical company. The opponent’s most prominent distributor, Anglo American, purchases fuels for sale in the motor sport sector in Europe, including in the United Kingdom, and the opponent gives overall sales figures for the years 2004-2014. The opponent claims to have distributors also in other EU Member States.

The evidence consists of the following documents:

• A document of unspecified origin summarising the opponent’s history, dating back to 1881. According to this document, the company, headquartered in Philadelphia, Pennsylvania, is a leading manufacturer and marketer of petroleum and petrochemical products, mainly in the United States. The only mention of the European Union relates to January 1989, when the opponent acquired a 5% interest in the Magnus Field, located in the United Kingdom sector of the North Sea.

• One invoice for USD 29 372, issued by the opponent to an address in the United Kingdom for ‘ethanol and gasoline mixture’.

• A undated advertisement for Anglo American Oil Company Ltd, relating to racing events in the United Kingdom, such as the , with the following signs:

 

• A picture of a race car with a ‘SUNOCO’ logo on the side.

• An advertisement for Anglo American Oil Company Ltd, relating to the 2005 British Rally Championship and including the ‘SUNOCO RACE FUELS’ sign shown above.

• An advertisement for the Euro V8 Series racing car event held in 2014 in Sachsenring, Germany, showing the sign .

• An undated advertisement for Anglo American Oil Company Ltd congratulating the winners of the Great & British race weekend, with the ‘SUNOCO RACE FUELS’ sign shown above, and including a reference to the website www.aaoil.co.uk.

• Undated advertisements for Anglo American Oil Company Ltd, distributor of ‘SUNOCO RACE FUELS’, with contact details in the United Kingdom, such as phone numbers and the address of the website aaoil.co.uk. Some of the advertisements refer to events such as the Autosport International Show, the 2008 Mitsubishi Ralliart Evolution Challenge, the Britcar race and the British F3&GT championships. ‘SUNOCO’ is referred to as the official fuel provider for these events.

• Undated advertisements for ‘SUNOCO RACE FUELS’, including relating to the 2009, 2010 and 2011 Rolex Daytona Driver Challenge, with the following image: .

• Screenshots from the website of Anglo American Oil Company Ltd, providing evidence of their distribution of motor fuels, including race fuels under the ‘SUNOCO’ logo, including a news item about the  in partnership with Anglo American Oil Company Ltd.

• Images of unspecified origin depicting racing cars with ‘SUNOCO’ stickers affixed to them and the ‘SUNOCO’ logo in the background at racing events.

• A ‘SUNOCO’ racing gasoline distributor agreement, dated in 2010, between Anglo American Oil Company Ltd and the opponent, concerning distribution of the company’s ‘Sunoco Racing Gasoline (“Race Fuel”)’ in several European Union Member States.

• An article, dated in 2010, published on racecar.co.uk, reporting on the opening of the first ‘SUNOCO RACE FUELS’ petrol station in Europe.

• Screenshots from the website of the British GT Championship, dated in 2015, showing the ‘SUNOCO’ logo at the bottom of the web pages, together with many other logos.

• Screenshots from the Facebook pages of ‘SUNOCO’, with over 400 000 likes, and ‘Sunoco Racing’, with over 1 700 000 likes.

• Screenshots of pages from the website www.racegas.com referring to ‘SUNOCO’ fuels.

• An affidavit by an employee of a body representing the interests of the motor sport industry in the United Kingdom, giving an account of his encounters with the ‘SUNOCO’ brand during three racing events in the United Kingdom in 2011-2013.

• Screenshots from www.sunoco.dk (dated 2015), www.sunoco.se and the Sunoco world website referring to Petronas Lubricants Belgium, active in Belgium, Luxembourg and the Netherlands.

• A screenshot of a web page showing biodegradable lubricants with the following ‘SUNOCO’ logo: .

• A 2014 Anglo American Oil product catalogue, showing, among other products, ‘SUNOCO RACE FUELS’ and listing various ‘Sunoco’ racing events in the United Kingdom, with a list of European distributors.

• In addition, in its observations, the opponent gives figures for visitors to the opponent’s website www.racegas.com, and to the Anglo American Oil website.

The opponent filed further evidence during the course of the opposition proceedings, which, however, cannot be taken into account for the purposes of proving the reputation of the earlier marks on account of its having been filed after the time limit for substantiation.

According to the opponent, the advertisements submitted appeared, inter alia, in the magazines MotorSport and Autosport, with a print and digital readership of 80 000-90 000 readers in the United Kingdom, between 2009 and 2014.

The evidence shows use of the marks with decorative or non-distinctive alterations, such as ‘race fuels’, or separate trade marks, such as ‘Rolex’ or ‘Whelen Challenge’, that do not affect the marks’ distinctive character, and therefore shows use of the marks as registered.

The opponent has demonstrated that it has undertaken sponsorship activities featuring the ‘SUNOCO’ marks in relation to quite a few motor sport events, for example Britcar, F3 and the British GT Championship. Advertisements promoting these events refer to ‘SUNOCO’ as the official fuel provider for the races. Some of them, for example the ‘Sunoco Whelen challenge’ event, appear to be organised by the opponent itself. The opponent mentions that one event, in 2014, attracted 80 000 visitors, and one exhibition held by the opponent drew over 7 000 professional visitors. Furthermore, the opponent notes that these racing events are televised and shown on various British sports channels. Overall, the evidence contains sufficient indications to conclude that the opponent is a prominent provider of race fuels to motor sport events. It should be noted that the race fuel market is a narrow and specialised segment of the fuel market, where the relevant public consists of professional race car drivers and producers, as well as followers of motor sports. Given the specialised nature of the race fuel market, the evidence filed by the opponent, and in particular the evidence of the consistent presence of the opponent’s marks at and its sponsorship using those marks at racing events in the United Kingdom is sufficient to demonstrate that the earlier trade marks enjoy a certain degree of recognition among the relevant public in the United Kingdom, as far as this market segment is concerned.

The evidence thus leads to the conclusion that the earlier trade marks enjoy some degree of reputation in the United Kingdom. As regards the earlier European Union registration, the evidence for other parts of the Union is scarce and inconclusive; however, reputation in one Member State will in general be sufficient to prove reputation for the entire European Union (06/10/2009, C-301/07, Pago, EU:C:2009:611, § 30).

However, the evidence does not succeed in establishing that the trade marks have a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence demonstrates only a certain degree of recognition among the relevant public in the United Kingdom as far as the following goods are concerned:

Class 4: Race fuels.

Within the opponent’s petroleum products, it is considered that race fuels form a sufficiently well-defined category (see, by analogy, 14/07/2005, T-126/03, Aladin, EU:T:205:2008, § 51).

Consequently, the Opposition Division is of the view that the opponent has demonstrated that the earlier marks consisting of the word ‘SUNOCO’ enjoy an enhanced degree of distinctiveness as far as race fuels are concerned.

5. Global assessment, other arguments and conclusion

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 covered are from the same or economically linked undertakings.

In the present case, the signs have in common only the string of three letters ‘SUN’, which has no independent role in the earlier signs. Although the earlier signs as a whole have a certain degree of recognition in the relevant territory, this does not apply to their components individually, especially since they will not be artificially dissected by the relevant public.

Consequently, consumers will not see the coinciding letter sequence ‘SUN’ in the earlier marks as a separate term being used to identify a particular undertaking, but will rather perceive the earlier marks’ verbal element ‘SUNOCO’ in its entirety. Moreover, despite being devoid of distinctive character, the contested sign’s differing word element, ‘CARBON’, will not be completely disregarded. As a result, the reasonably well informed and reasonably observant and circumspect consumers will be able to safely distinguish even identical or similar goods or services under the marks of the two different undertakings.

The opponent referred to a previous decision of the General Court (05/05/2015, T-423/12, Skype / SKY et al., EU:T:2015:260), where the Court held that there was a likelihood of confusion between the conflicting marks ‘SKY’ and ‘SKYPE’. However, the Court also held in that particular case that the probability must be assessed in the light of the circumstances of the case, with regard in particular to the concepts conveyed by the word elements making up the signs at issue (05/05/2015, T-423/12, Skype / SKY et al., EU:T:2015:260, § 44). Moreover, in the present case it is not the earlier mark as a whole that is included in the contested mark, and the aural differences are, in any event, more striking than those between the marks ‘SKY’ and ‘SKYPE’. The signs ‘SUN’ and ‘SUNPLUS’ were also much more similar in the other case cited by the opponent (15/11/2007, T-38/04, Sunplus, EU:T:2007:341). Consequently, these arguments of the opponent must be set aside.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on Article 8(1)(b) EUTMR.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent as far as these earlier marks are concerned.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have been compared above; reference is made to those findings.

2. Reputation of the earlier trade marks

Reference is made to the above findings regarding the enhanced distinctiveness of the earlier marks European Union trade mark registration No 3 720 646 ‘SUNOCO’ (word mark) and United Kingdom trade mark registration No 400 572on account of the evidence demonstrating a certain degree of recognition of the marks in the United Kingdom for race fuels. These findings are equally valid for the establishment of reputation.

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

3. The ‘link’ between the signs

The opponent claims that there is a link between the contested mark and the opponent’s marks.

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)

For the purpose of determining whether there is a link between the marks at issue, it is therefore necessary to take account of the nature of the goods in question. In the present case, some overlap in the public cannot be excluded between the contested wood- and pulp-based biofuels and their processing on the one hand and the opponent’s race fuels on the other, i.e. the goods for which an enhanced degree of distinctiveness has been found.

The average consumer, deemed to be reasonably well informed and reasonably observant and circumspect, is however also aware of the distinction between biofuels and petroleum-based racing fuels, especially since consumers opting for biofuels do so out of principle, to demonstrate environmentally conscious consumer behaviour.

As seen above, the earlier marks consist of a single word, ‘SUNOCO’. It should be observed in that connection that the representation of the mark applied for differs from that of the marks relied on by the opponent. In the contested mark, ‘SUN’ is clearly a separate element, and it features alongside an additional meaningful element. The word ‘SUNOCO’ is an invented term and the element ‘SUN’ is lost in the overall impression created by the mark applied for.

Although the applicant presents the earlier mark as a trade mark with a reputation, not to say a huge reputation, that does not in any way alter the finding that, in the present case, there is only a low degree of visual and phonetic similarity between that mark and the mark applied for. The criterion relating to reputation, which is well established, does not automatically imply that there is a link between the marks at issue (12/11/2009, T-438/07, SpagO, ECLI:EU:T:2009:434, § 34-36).

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

Consequently, the opposition must be rejected as far as the ground of Article 8(5) EUTMR is concerned.

The examination of the opposition will continue with the third earlier right on which the opposition is based, United Kingdom trade mark registration No 1 151 409, in connection with the ground of Article 8(1)(b) EUTMR.

PROOF OF USE

The applicant requested that the opponent submit proof of use of, inter alia, United Kingdom trade mark registration No 1 151 409 for the word mark ‘SUN’.

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 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 05/12/2014. 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 and the United Kingdom from 05/12/2009 to 04/12/2014 inclusive.

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

Class 4:        Oils and greases, all included in Class 4; lubricants.

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 12/02/2016, within the time limit given by the Office pursuant to Rule 22(2) EUTMIR, the opponent submitted evidence of use, which, in addition to the evidence already listed above, consists of the following:

• Screenshots from websites such as racingfuel.es, sunoco.dk and sunoco.be, giving details of products such as motor oils, lubricants, tractor oils, mineral oils, anti-freeze preparations, agricultural and horticultural spray oils, heavy duty oils and racing oils.

The opponent later submitted additional invoices issued from an address in Dorset, United Kingdom, to customers in territories such as Cyprus, Malta, Denmark, France, Portugal, Sweden and Spain.

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

Even though, according to Rule 22(2) EUTMIR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 76(2) EUTMR (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 30).

The advertisements submitted show that the place of use is the United Kingdom. This can be inferred from the website address aaoil.co.uk, the United Kingdom phone numbers, the language of the advertisements and the venues of some of the racing events.

Most of the evidence is dated within the relevant period.

The invoices, the sales figures and the evidence relating to various events provide the Opposition Division with some information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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 consists of the word ‘SUN’. However, the evidence refers to only the word ‘SUNOCO’ in various figurative depictions, such as  or used as a word mark. The individual word ‘SUN’ is not used anywhere in the evidence with the purpose of identifying commercial origin.

It is considered that the addition of the letters ‘OCO’ substantially alters the distinctive character of the mark in the form in which it was registered, as it adds further three letters to a three-letter mark.

In view of the above, the Opposition Division considers that the evidence does not 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).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark ‘SUN’ was genuinely used in the relevant territory during the relevant period of time. Although the indications of extent might reach the minimum threshold required for genuine use, the opponent completely failed to satisfy the nature of use requirement.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR as far as it is based on United Kingdom trade mark registration No 1 151 409.

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

Cynthia DEN DEKKER

Marianna KONDAS

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.