DECIBEX | Decision 2483181 - Zephyros, Inc. v. Automotive Insulations Limited
Date Published: May 16, 2018
OPPOSITION No B 2 483 181
Zephyros, Inc., 160 McLean Drive, Romeo, Michigan 48065, United States of America (opponent), represented by Kutzenberger Wolff & Partner, Theodor-Heuss-Ring 23, 50668 Köln, Germany (professional representative)
a g a i n s t
Automotive Insulations Limited, Central Point One, Central Park Drive, Rugby, Warwickshire CV23 0WE, United Kingdom (applicant), represented by Withers & Rogers LLP, 4 More London Riverside, London SE1 2AU, United Kingdom (professional representative).
On 17/01/2017, the Opposition Division takes the following
1. Opposition No B 2 483 181 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 500 939, namely those in Class 17. The opposition is based on international trade mark registration No 898 168 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.
Earlier trade mark
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must 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 given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
The contested application was published on 02/12/2014. 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 from 02/12/2009 to 01/12/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 17: Insulating materials, namely, synthetic fibre insulation for sound absorption, supplied in rolls, sheets or moulded to a shape, for use in wall linings, ceiling linings, automotive components, medical equipment, industrial equipment and machinery.
On 12/08/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/10/2015 to submit evidence of use of the earlier trade mark. At the request of the opponent, the time limit was extended until 12/12/2015. On 14/12/2015, 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:
- Lists of exhibitors attending the ‘EuroCarBody’ conference, for 2012, 2013 and 2014, held in Germany. The lists show that the company L&L Products Europe SAS participated with an exhibition booth. Some photographs of the exhibition booths for 2012 and 2013 are submitted, showing the promotional display in which the trade mark ‘DECI-TEX’ appears beside a piece of sound absorption material for use in automotive components with the text ‘Engineered Sound Absorption’.
- Product flyers on ‘DECI-TEX’ products with the headings ‘Engineered Fiber-based Sound Absorption’ and ‘Thermo-Acoustic Engine Compartment Insulator’, dated August 2013, and with the heading ‘DECI-TEX Sound Absorption’, dated August 2014. The documents include information on the purpose of these products and the different categories. The photographs displayed show that the goods are offered in rolls, in sheets and moulded to a shape. A list of the worldwide locations of the L&L Products companies is also included, mentioning L&L Products Europe in France and showing several companies operating in some Member States.
- A brochure of L&L Products with information about the company and the products offered, dated December 2013. Among them is a photograph of ‘DECI-TEX’ insulation material and a short explanation stating that ‘DECI-TEX systems provide automotive OEMs with significant enhancements in acoustic and thermal insulation within the vehicle interior, cabin system and engine bay’. Page 11 includes additional information on the ‘DECI-TEX’ range of products and photographs.
- Some pages from two offers to supply goods sent by I.N.C. Corporation Pty Ltd to a customer in Germany, dated 29/06/2010 and 17/10/2011. The offers concern some ‘DECI-TEX’ products.
- A flyer presenting some products offered by L&L Products, including ‘DECI-TEX’ products, together with the text ‘Engineered Sound Absorption’ and images of the acoustic insulation material, dated January 2013. A list of the worldwide locations of the L&L Products companies is also submitted.
- A memorandum sent by I.N.C. Corporation Pty Ltd to a customer in Germany, dated 04/10/2010. This document refers to some product samples sent to the customer, including a ‘DECI-TEX’ sample followed by a reference number, its applications and characteristics.
- A printout of some follow-up emails exchanged between I.N.C. Corporation Pty Ltd and a customer in the United Kingdom, between May and October 2012. The subject matter is ‘DECI-TEX’, a sound absorption material to be supplied on rolls.
- A photograph of the exhibition booth of L&L Products Europe SAS at the ‘Commercial Vehicle Show 2013’ trade fair, held in the United Kingdom in April 2013. The mark ‘DECI-TEX’ is shown on the main display beside an image of a piece of sound absorption material. An invoice dated 27/02/2013 and issued to L&L Products Europe SAS for the cost of attending the show is included.
- Some slides from PowerPoint presentations issued by I.N.C. Corporation Pty Ltd, dated January 2009 with the subject ‘DECI-TEX Acoustic Trim Systems’ and April 2011 with the subject ‘DECI-TEX Acoustic Materials’.
The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from other companies, namely L&L Products Europe SAS and I.N.C. Corporation Pty Ltd.
According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.
The fact that the opponent submitted evidence of use of its mark by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).
Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.
To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by the abovementioned companies was made with the opponent’s consent and thus is equivalent to use made by the opponent. Furthermore, the opponent expressly indicates in its submissions that ‘I.N.C. Corporation Pty. Ltd. was registered as a holder of the trade mark’. In addition, in response to the applicant’s argument, on 26/07/2016 the opponent submitted some additional evidence (Exhibits A-C) to demonstrate its link with the companies L&L Products Europe SAS and I.N.C. Corporation Pty Ltd, which, however, does not have to be assessed by virtue of the abovementioned disposition.
Assessment of the evidence – factors
According to Rule 22(3) EUTMIR, the evidence of use shall 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. 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 of the place, time, extent and nature of use has to be determined by considering the entirety of the evidence submitted. The Opposition Division finds it appropriate to begin the present assessment with the criteria of extent.
Extent of use
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 applicant contests that no figures are given for the number of attendees to the ‘EuroCarBody’ conferences in 2012-2014 and, therefore, this evidence should be dismissed. The Opposition Division notes that 2012 marked the 14th year of this conference, which has therefore been held annually since 2008. Furthermore, even though no attendance figures are submitted, it can be seen that there are numerous exhibitors from Austria, Belgium, the Czech Republic, France, Germany, Greece, Netherlands, Sweden, Switzerland, the United Kingdom and the United States of America. As a consequence, this material is valid as proof of use of the earlier mark within the relevant period.
The applicant also contests the capacity of the flyers submitted on ‘DECI-TEX’ products and the brochure to demonstrate genuine use of the earlier mark. The Opposition Division notes that these documents comprise product information originating from the opponent. Furthermore, the slides submitted are only extracts from two PowerPoint presentations from 2009 and 2011 in which the mark is shown, but the complete documents indicating where those presentations were held are not enclosed. Furthermore, there is no information on the circulation of the flyers and brochures (how many of them were distributed) and the results of these marketing campaigns. Therefore, these items do not show outward use of the trade mark.
The remaining documents are lists of exhibitors at the aforementioned trade fairs (the opponent has made four appearances at trade fairs in three years), the opponent’s invoice concerning the payment of a trade fair fee, and two offers to supply some ‘DECI-TEX’ products over a period of two years. There is no information regarding the commercial volume or the annual sales of the products bearing the mark ‘DECI-TEX’, nor has the opponent provided any evidence originating from independent sources.
As explained above, on 26/07/2016, after the expiry of the time limit, the opponent submitted additional evidence in response to the applicant’s observations.
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 factors to be evaluated when exercising this discretion are, first, that the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, that the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 36).
Moreover, the Office is not required, when exercising its discretion under Article 76(2) EUTMR, to examine all the criteria referred to above. One of those criteria alone is sufficient to establish that it does not have to take into account the late evidence.
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.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe this evidence only in the most general terms without divulging any such data.
The opponent submitted further items on 26/07/2016, because the applicant disputed the initial evidence submitted by the opponent. Therefore, this justifies the submission of additional evidence in reply to the objection (29/09/2011, T-415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 36). Of particular relevance is that this new evidence includes three invoices issued by L&L Products (Australia) on 10/02/2014 and 15/08/2014 to a customer in the United Kingdom, for some ‘DECI-TEX’ products, indicating the amount in Australian dollars, and on 20/06/2014 to L&L Products Europe SAS (France) with no costs. These invoices correspond to the last year of the relevant period and are not sufficient to show the extent of use of the earlier mark. Therefore, the Opposition Division concludes that, even taking into account this additional, late evidence, it has no bearing in the assessment of genuine use, as it gives no further indications regarding extent of use.
The opponent could have easily provided more invoices issued during the five-year period. However, the opponent has merely relied on some product flyers, a brochure, two offers to supply some ‘DECI-TEX’ products and participation in four trade fairs, which do not provide sufficient information concerning the commercial volume, territorial scope, duration and frequency of use.
Although the use of the trade mark does not need to be quantitatively significant for it to be deemed genuine, in the absence of any evidence concerning the trade mark in question, such as invoices or sales figures, the documents submitted do not provide the Opposition Division with sufficient information to demonstrate the commercialisation of any goods bearing the trade mark ‘DECI-TEX’.
Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier mark.
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).
In addition, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47). In other words, it is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 40).
As stated above, the factors of time, place, extent and nature of use are cumulative. This means that the evidence must provide sufficient indication of all these factors to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as extent of use has not been established, it is not necessary to assess the other requirements relating to use.
Taking all the above into account, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that earlier international trade mark registration No 898 168 designating the European Union was genuinely used in the relevant territory during the relevant time. Such evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43).
Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.
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
Cristina CRESPO MOLTÓ
Marta GARCÍA COLLADO
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.