tec.nicum | Decision 2510090 - TECNIUM, S.A. v. K.A. Schmersal Holding GmbH & Co. KG

Date Published: Oct 1, 2017

OPPOSITION No B 2 510 090

Tecnium, S.A., Ferran Casablancas, 24, 08240 Manresa, Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

K.A. Schmersal Holding GmbH & Co. KG, Möddinghofe 30, 42279 Wuppertal, Germany (applicant), represented by Sparing Röhl Henseler, Rethelstr. 123, 40237 Düsseldorf, Germany (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 510 090 is upheld for all the contested services, namely 

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

2.        European Union trade mark application No 13 626 791 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 626 791, , namely against all the services in Class 42. The opposition is based on Spanish trade mark No 2 297 058, . 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, namely Spanish trade mark No 2 297 058.

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 20/01/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 20/01/2010 to 19/01/2015 inclusive.

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

Class 42:        Engineering services; scientific and industrial research; graphic design and industrial drawing; computer programming.

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 01/12/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 06/02/2017 to submit evidence of use of the earlier trade mark. On 31/01/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Contract: Annex 1 is an extract of a contract between the opponent and UBB (Essex) Construction JV, describing the opponent’s assignments due to the contract, for example: ‘execute and complete the air collection, ducting, acid treatment, biological treatment and associated mechanical and electrical installations, including the detailed design, design of connections and all associated supports’ and ‘engineering’ design in order to carry out the opponent’s obligations ‘in accordance with the Programme’.
• Invoices: Annex 2 contains invoices from the years 2010-2016 with nine of them being dated within the relevant period. The services described in the invoices are, for example, ‘legalization’ of various ‘facilities’ such as ‘acid deposits’, technical analysis of scrubbers’ or ‘approval of the blueprints and corresponding technical documentation’. For example, in the invoice dated on 29/01/2010 the opponent was commissioned to provide ‘detailed engineering’. As also stated by the opponent, the Opposition Division finds that the invoices are related to ‘engineering’ in the field of technical legalization of various facilities or projects.
• Presence at events and the opponent’s website: Annex 3 contains printouts from the opponent’s website, www.tecnium.es, showing the latest news from the opponent for October-November 2014 and an invitation to that year’s EXPOQUIMIA, an event held in Barcelona, Spain, in September. Moreover, the opponent has documented its presence at EXPOQUIMIA for the years 2011 and 2014 (which is within the relevant period).
• Catalogues: Annex 4 contains a total of three catalogues; one dated in 2005, one dated within the relevant period (i.e. in September 2014) and one is undated. These catalogues show and describe the nature of the opponent’s services, that is, gas and fume treatment, control of emissions of gaseous pollutants, control design and construction of tanks as well as ‘process engineering’ of such services and products. The catalogues also describe the opponent’s company history. The opponent also refers to that more catalogues can be found on its website, http://www.tecnium.es/en/technical-documents/gas-treatment-technologies.  

In accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as regards the place, time, extent and nature of use has to be considered in view of the evidence submitted in its entirety.

In the present case, in order to demonstrate genuine use of the earlier Spanish mark, the opponent submitted one extract of a contract, some invoices (some being dated within the relevant period), references to its website, documentation of its presence at events/expos and product catalogues (as described above in the list of the evidence of use).

Place of use

Although Annex 1 (the contract) and invoice FVE/20130911 (in Annex 2) are directed and billed at a customer with an address in the United Kingdom (this is also the case for invoice FVE/20120689), the remaining invoices are all billed to Spanish customers (e.g. with addresses in Zaragoza and Madrid) and are in Spanish. Although the opponent also trades with customers outside the relevant territory, the opponent’s home office is located in Barcelona, Spain, which implies that the services commissioned to be carried out by the opponent, for example, the contract and the invoice mentioned above, are provided (at least partially) in Spain. Moreover, the event EXPOQUIMIA took place in Barcelona, Spain. It is true that the catalogue dated within the relevant period is in English and that the extract from the opponent’s website is also in English. However, the opponent’s website has a Spanish domain and must, therefore, also be assumed to target Spanish customers, while the catalogue, for example, refers to that the opponent manufactures tanks in line with Spanish regulations: 

Finally, the opponent’s contact information on the last page of the catalogue refers to a Spanish address, telephone number, website and email address.

Therefore, the Opposition Division finds that evidence provided by the opponent sufficiently proves place of use.  

Time of use

The contract (dated on 21/09/2012), nine invoices, the documentation of presence at events/expos, the extract from the opponent’s website and one product catalogue are either dated within or refer to the relevant time period. Therefore, the vast majority of the evidence refers to use of the relevant services within the relevant period and is successful in showing such use throughout the relevant period.

Extent of use

The Court of Justice has held that ‘use of the mark need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C-40/01, Minimax, EU:C:2003:145).

The General Court has stated that ‘account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use’ (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

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’ (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42)

The majority of the invoices dated within the relevant period relate to ‘legalization’ of ‘facilities and projects’ and to the provision of ’technical documents’, but also to manufacture and installation of, for example, ‘scrubbers’ and tanks. The Opposition Division finds that such manufacturing processes, due to their complex nature, include engineering, which is defined as ‘[T]he branch of science and technology concerned with design, building, and use of engines machines, and structures’ (information extracted on Oxford Dictionaries online on 05/09/2017 https://en.oxforddictionaries.com/definition/engineering), and industrial (technical) drawing. In other words, engineering and technical drawing is necessary in the initial phase of ‘legalization processes’, referred to as ‘technical documentation’ in some of the invoices and also as indicated in the catalogue from 2014:

 

The applicant argues that ‘a direct link to the invoiced goods and services is missing’ in the invoices provided by the opponent. The Opposition Division cannot share the applicant’s view and notes that the earlier trade mark is found on the top left in all of the attached invoices, , appearing as an independent element and sign in the invoices. Therefore, the customers will see a link between the services described in the invoices and the earlier Spanish trade mark.

Although the opponent has not provided a large quantity of documents (e.g. invoices) showing sales or services to be commissioned in Spain, the Opposition Division finds that the invoices provided, seen in combination with the remaining evidence, is sufficient to show that the earlier trade mark has been used in Spain within the relevant time period to such an extent that the criteria extent of use is fulfilled.

Nature 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.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent’s earlier trade mark, , is shown as registered in the invoices, in a blue and white at the expo and on the opponent’s website in Annex 3, , and as a word element and/or logo in the product catalogue dated in 2014: .

The Opposition Division finds that the depiction of the same logo and font as registered in white and blue does not alter the distinctive character of the opponent’s trade mark as registered. This also applies to the fact that ‘TECNIUM’ is used as an individual word element in some of the evidence and in some cases with ®, which is merely an informative indication that the sign is purportedly registered and is not part of the trade mark as such. The Opposition Division finds that the earlier mark has protection for the word element ‘TECNIUM’, as such, since it is rendered separately from the figurative element in the sign as registered.

Therefore, the evidence provided by the opponent is sufficient to demonstrate the nature of use of the opponent’s mark.

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.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark. The Opposition Division finds that the evidence provided by the opponent only shows genuine use for engineering and industrial drawing.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following services:

Class 42:        Engineering services; industrial drawing.

The opponent has also shown use for services related to gas and fume treatment, controlling chemical emissions and tanks and chemical wet scrubbers. However, these services are not covered by the earlier mark. The evidence does not show use for the remaining services covered by the earlier trade mark in Class 42, namely scientific and industrial research, graphic design and computer programming.

Therefore, the Opposition Division will only consider the abovementioned services 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.

1. The services

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

Class 42:        Engineering services; industrial drawing.

The contested services are the following:

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

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.

The contested scientific and technological services and research and design relating thereto include, as a broader category, the opponent’s engineering services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.  

The contested industrial analysis and research services include the planned research or critical investigation as well as the analysis of data aimed at the acquisition of new knowledge and skills for developing new products, processes or services or for bringing about a significant improvement in existing products, processes or services. The contested services and the opponent’s engineering services are similar to the extent that they can all be performed by the same service providers. Moreover, all these services can be offered to the same public through the same trade channels.

The contested design and development of computer hardware and software are closely connected to the opponent’s engineering services, since the latter may be applied to several technical, industrial and scientific areas. Therefore, engineering may be an essential part of computer hardware and software development and these services may coincide in their technical nature. Furthermore, these services may be offered by the same companies and together as part of a broader set of services ordered by the same provider and target same relevant publics. Therefore, they are considered similar.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical or similar are directed at a specialised public with specific knowledge and expertise within the field of, for example, engineering and IT. Bearing in mind that the services are rather specialised, the degree of attention may be higher than average.  

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 applicant argues that ‘TECNIUM’ ‘just stands for technology since the suffix “IUM” is well-known used in chemistry technology’ and makes reference to ‘the IUPAC-Rules’ used in chemical nomenclature.

The sign’s verbal elements ‘TECNIUM’ and ‘tec.nicum’ do not have any particular meaning as a whole. However, the Opposition Division finds that at least a part of the public may perceive the prefix ‘TEC’, present in both marks, as relating to ‘technical’. This element is therefore weak for the services in question, which are all of a technical nature. Furthermore, the element ‘nicum’ of the contested mark is meaningless; therefore, distinctive. However, the vast majority of the public is likely to perceive the contested sign as one single word, namely as ‘tecnicum’. This is because the dot or the full stop, placed between ‘tec’ and ‘nicum’, is an element of little trade mark significance. Moreover, the consumers will naturally search for a meaning in the contested sign and, therefore, read and pronounce it as a whole. As stated above, ‘tecnicum’ is meaningless and, therefore, distinctive. The graphical representation of the contested sign is merely decorative and consequently, weak.  

The figurative element of the earlier mark will be perceived as a depiction of the Erlenmeyer flask with the letter ‘T’ placed inside it and, therefore, it is weak for some of the relevant services, namely engineering services. The white circle and the black squared background are basic geometrical shapes and are of a purely decorative nature (hence, they are less distinctive).

None of the elements of the earlier mark can, contrary to what the applicant claims, be considered to be more dominant than others.

Visually, the signs’ verbal elements coincide in the letters ‘TEC*NI*UM and differ in the dot and the additional ‘c’ in the contested sign. However, as stated above, the vast majority of the consumers will read the contested sign as one word (hence, as ‘tecnicum’) and, therefore, perceive the verbal element of the contested sign as highly similar to that of the earlier mark; they have the first five letters in common (‘TECNI’) and share the last two (‘UM’). The fact that the signs’ verbal elements coincide in their beginnings is particularly important, due to the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Moreover, the signs’ differing graphical representations will be perceived as less distinctive, as described above. In addition, consumers generally tend to focus on the word elements of signs, in particular on those placed at the beginning of a sign. Indeed, 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).

Therefore, the signs are visually similar to an average degree.

Aurally, taken into account that the vast majority of the relevant public will pronounce the contested sign as ‘tecnicum’, both signs will be pronounced in three syllables (‘/tec/ni/um/’ and ‘/tec/ni/cum/’), only differing in the initial letter of the contested sign’s third syllable (the consonant ‘c’). However, this difference is hardly audible given the fact that the signs’ two first syllables and two last letters will be pronounced identically. The ‘T’ placed inside the Erlenmeyer flask is unlikely to be pronounced in the earlier mark. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning with regard to the element ‘TEC’, they are conceptually similar to a low degree.

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

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 services 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 some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

In addition, the global assessment of the likelihood of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the services are partly identical and partly similar to an average degree. The signs are visually similar to an average degree, aurally highly similar and conceptually similar to a low degree. Moreover, the earlier mark is distinctive as a whole. It is true that the degree of attention in this case is higher than average. Nevertheless, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

The signs coincide in the majority of the letters in their verbal elements. The differences lie in the central part of these elements, a part which is more likely to be overlooked by the consumers. The additional (and differing) elements of the marks are less distinctive and are not sufficient to outweigh the similarities between the signs.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark No 2 297 058. It follows that the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benoit VLEMINCQ

Christian RUUD

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.