CANCELLATION No C 39 879 (INVALIDITY) 

 

Greenlee Tools, Inc., 4455 Boeing Drive, 61109 Rockford, Illinois, United States of America (applicant), represented by Mathys & Squire LLP, The Shard 32 London Bridge Street, SE1 9SG London, United Kingdom (professional representative)

 

a g a i n s t

 

Genebre Group, S.L., Avgda. Joan Carles I, 46-48 Ed. Genebre - Pol. Ind. Pedrosa, 08908 L'Hospitalet de Llobregat (Barcelona), Spain (EUTM proprietor), represented by Ponti & Partners, S.L.P, C.Consell de Cent, 322, 08007 Barcelona, Spain (professional representative).

On 07/05/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is rejected in its entirety.

 

2.	The applicant bears the costs, fixed at EUR 450.

 

REASONS

 

On 29/11/2019, the applicant filed a request for a declaration of invalidity against European Union trade mark No 11 879 301 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM.

The application is based on:

1) Czech trade mark registration No  217 752, 2) German trade mark registration No. 399 67 273, 3) Danish trade mark registration No. VR 1987 03200, 4) Spanish trade mark registration No. 1 142 719, 5) Spanish trade mark registration No. 1 142 717, 6) Greek trade mark registration No. 82 088, 7) Greek trade mark registration No. 134 779, 8) Hungarian trade mark registration No. 165 907, 9) Polish trade mark registration No. 123 256, 10) Swedish trade mark registration No. 204 866, 11) Italian trade mark registration No. 1 214 596, 12) Italian trade mark registration No. 755 726, all of them with the following depiction: .

13) Finish trade mark registration No. 100 961, 14) Portuguese trade mark registration No. 233 105 and 15) Romanian trade mark registration No. 34 154, all of them with the following depiction: .

The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that it owns various national registrations which are identical to the contested mark, except for minor insignificant differences which do not alter the overall impression of the mark and therefore will go unnoticed by the average consumer. This, coupled with the fact that the goods are identical or similar, will give raise to confusion among the relevant consumers. The applicant cites case law that it considers analogous to these proceedings.

The EUTM proprietor requests proof of use of the earlier marks. It argues that the applicant has acquiesced in the use of the contested mark and that it does not own the earlier marks on which the application is based. Also, the documents filed by the applicant to substantiate its earlier marks are either not translated, or they do not include important details of the marks such as their renewal details.

The applicant replies that Article 61(1) EUTMR relating to acquiesce does not apply in this case. It adds that the applicant had therefore the authority to file an application for a declaration of invalidity under Article 46(1)(a) EUTMR and files in Annex A a Certificate of Amendment of Certificate of Incorporation, dated 23/07/2018, as an evidence that Greenlee Textron Inc. changed its name to Greenlee Tools, Inc., i.e. the name of the applicant, and the application is, therefore, admissible, as acknowledged by the Office. At any rate, it files further documents to provide details of the earlier marks. It also submits documents to prove the use of the earlier marks.

The EUTM proprietor states in its last observations that, even if the application was found admissible, it is not substantiated. It argues that whilst the information taken from TMView is accepted by the EUIPO, not all the relevant information is provided in the language of the proceedings. It also disputes the information provided in the documents which were filed by the applicant to prove the use of the earlier marks.

ACQUIESCENCE

 

According to Article 61(1) and (2) EUTMR, where the proprietor of an earlier mark or sign has acquiesced, for a period of five successive years, in the use of a later EUTM in the territory where the earlier mark or sign is protected while being aware of such use, it is no longer entitled on the basis of that earlier mark or sign to apply for a declaration of invalidity against the later EUTM, unless registration of the later EUTM was applied for in bad faith. 

 

The five-year period starts from the time when the proprietor of the earlier trade mark is made aware of the use of the later trade mark, after its registration (23/10/2013, T‑417/12, Aqua flow, EU:T:2013:550, § 21).

 

It is not sufficient to prove potential knowledge of the applicant or establish indications leading to a presumption of such knowledge, but it is necessary to demonstrate that the applicant had an effective knowledge of the use of the contested mark (20/04/2016, T-77/15, SkyTec, EU:T:2016:226, § 30-35).

In the present case, the  EUTM proprietor claims that the applicant has acquiesced in the use of the contested  European Union trade mark.

The burden of proof is on the proprietor of the contested EUTM to show that:

 the contested EUTM was used in the EU (or in the Member State where the earlier trade mark is protected) during a period of at least five successive years;

 the invalidity applicant was actually aware of this use (04/10/2018, T-150/17, FLÜGEL / ... VERLEIHT FLÜGEL et al., EU:T:2018:641, § 34-35);

 although the invalidity applicant could have stopped the use, it nevertheless remained inactive (22/09/2011, C-482/09, Budweiser, EU:C:2011:605, § 44).

In the case at issue, none of the requirements expressed above have been proved by the EUTM proprietor and, consequently, its claim made on the basis of Article 61(1) and (2) EUTMR must be dismissed.

SUBSTANTIATION

 

As mentioned above, the EUTM proprietor claims that, even if the application has been found admissible by the Office, it is not substantiated.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought. 

 

It follows that the Office cannot take into account any alleged rights for which the applicant does not submit appropriate evidence. 

 

According to Article 16(1) EUTMDR, the applicant will present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of the proceedings. 

 

According to Article 16(1)(b) EUTMDR in conjunction with Article 7(2) EUTMDR, within the period referred to above, the applicant must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the application. 

In particular, if the application is based on a registered trade mark that is not a European Union trade mark, the applicant must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, or equivalent documents emanating from the administration by which the trade mark was registered — Article 16(1)(b) in conjunction with Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the applicant may provide such evidence by making reference to that source — Article 16(1)(b) in conjunction with Article 7(3) EUTMDR. 

 

In the present case, the invalidity application is based, inter alia, on the following marks:

1) Portuguese trade mark registration No. 233 105 .

2) Spanish trade mark registration No. 1 142 717 .

 

In Annex C of the communication of 02/09/2020, the applicant provided a copy of the database TMView, for the Portuguese mark above mentioned and an extract of the official database of the Spanish Patent and Trade Mark Office for the earlier Spanish mark, both in the language of proceedings -English- and with all the relevant details regarding its entitlement to file the application and the existence, validity and scope of protection of its earlier marks.

Extracts generated through TMview reflect the information obtained directly from the competent registration authorities and therefore, qualify as documents equivalent to registration certificates from the competent registration authorities within the meaning of Article 7(2)(a) EUTMDR (by analogy, 06/12/2018, T-848/16, V (fig.) / V (fig.) et al., EU:T:2018:884, § 59-61, 70). As for the extract of the Spanish Patent and Trade Mark Office, the Office accepts as evidence of the filing or registration of earlier marks extracts from the official databases of the competent registration authorities; consequently, the documents submitted by the applicant are accepted.

In relation to Spanish trade mark registration No. 1 142 717 it must be stated as a clarification that the translation of the goods in the document provided is incomplete; it is however complete in the observations of the applicant. In this regard it must be stated that, according to the Guidelines for Examination in the Office, Part C Opposition (page 719), which are applicable in this case to Cancellation Proceedings: ‘it is acceptable if only the goods and services on which the opposition is based have been translated separately in the notice of opposition or in documents attached thereto or submitted later within the time limit to substantiate the opposition’.

As a further clarification it must be added that, given that the applicant relied on online substantiation, the Cancellation Division has verified that the information in the online sources corresponds to that found in the documents filed by the applicant.

Therefore, these earlier marks have been properly substantiated.

Given that the earlier Spanish and Portuguese marks protect each one of the two depictions which are moreover covered by the rest of the marks on which the application is based, the Cancellation Division will proceed to assess the case in relation to these earlier marks.

PROOF OF USE

 

The proof of use of the earlier marks was requested by the  EUTM proprietor. However, at this point, the Cancellation Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, § 72). The examination of the invalidity request will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the applicant’s case can be considered.

 

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s Portuguese and Spanish earlier marks mentioned above.

 

a) The goods

 

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

Portuguese trade mark registration No. 233 105

Class 8: Tools of all kinds, including hand tools and manual apparatus and implements.

Spanish trade mark registration No. 1 142 717

Class 7: Machines and machine tools, particularly for woodworking; countersinks, plug cutters, automatic drills, automatic screw machines, rotary tools and other power tools, such as hydraulic, electric and mechanical pipe benders, conduit benders, hydraulic pumps, hydraulic pipe pushers, knock-out punches and cutters, punching machines, joist borers, cable pulling machines, cable cutters and benders, portable power saws, threading machines, bell hangers’ drills and tools for all the aforesaid machines, such as machine bits, routing bits, drill bits, countersink bits, auger bits, expansive bits, blades and drawknives, feeding equipment for cable pullers.

 

The contested goods are the following: 

 

Class 6: Valves of metal, pipework of metal; sleeves of metal; drain traps [valves] of metal.

Class 7: Valves (machine parts); pressure pumps; centrifugal pumps; water pumps; air pumps; diaphragm pumps for pumping fluid materials; diaphragm pumps for pumping liquid materials; diaphragm pumps for pumping semi-liquid materials; distribution pumps; shower pumps; fluid pumps; reverse osmosis pumps; drain pumps; vacuum pumps; hydraulic pumps; electrically driven pumps; pneumatic pumps; pumps for heating installations; pumps for the extraction of liquids [machines]; fluid pumps; pumps (parts of machines, engines or motors); liquid traps; blenders, electric, for household purposes; dosage dispensers for soap.

Class 9: Manometers and electronic instruments used in valves for fluids.

Class 11: Irrigation hydrants, cisterns, drains, fountains; bathroom fittings, water supply installations, sprinkler nozzles, flow regulators, level controlling valves in tanks, filters for drinking water, apparatus and appliances for drying hair and hands, sanitary components, heat pumps, sink strainers, controlled mixers being parts of shower installations, shower mixers, basin mixers (taps), thermostatic mixing machines.

Class 17: Seals for pipes, hose pipes, valves of rubber, pipe muffs, not of metal.

Among other goods the earlier Spanish mark covers in Class 7 rotary tools and other power tools, such as (…) hydraulic pumps. The term ‘such as’ indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’ see reference in 09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

Some of the contested goods are identical to goods on which the application is based (for example pressure pumps in Class 7 versus hydraulic pumps). For reasons of procedural economy, the Cancellation Division will not undertake a full comparison of the goods listed above. The examination of the application will proceed as if all the contested goods were identical to those of the earlier mark. 

 

b) 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 presumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

 

c) The signs

 

Portuguese trade mark registration No. 233 105 Spanish trade mark registration No. 1 142 717
Earlier trade marks	Contested sign

The relevant territories are Spain and Portugal.  

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

All the marks are figurative. The contested trade mark is made up of a very thick grey letter ‘G’, whose upper line is prolonged over an inverted isosceles triangle that appears in blue; it cannot be disregarded that a part of the public will perceive the latter as a letter ‘V’. The earlier marks depict a letter ‘G’, in black, over a background of a circle in white which, in turn, is placed over a square in black leaning to a side. In the Portuguese mark these elements are depicted in a thicker way, whereas in the Spanish mark they appear in lighter strokes.

The Cancellation Division will focus the comparison in the part of the public that will perceive in the contested sign a triangle and not a letter ‘V’, given that this is the best case scenario for the applicant.

The marks have no dominant (visually outstanding) elements.

The letter ‘G’, contained in all marks, has no meaning for the relevant public in relation to the relevant goods; the triangle is non-distinctive given that it is a very basic geometric figure.

The depiction of the signs, including their colours and figurative elements, is of a rather decorative nature and, therefore, less distinctive. Consequently, the most distinctive element of both signs is the letter.

Visually the signs coincide as they both show a depiction of the letter ‘G’. However, they differ in the way this letter has been depicted, and in the arrangement of the rest of the elements, such as the circle and the square in the earlier marks, and in the upper line in the letter ‘G’ placed over the triangle of the contested mark. Also, while the letter ‘G’ in the earlier marks is placed in the center of the mark, in the contested mark the letter is shown on the left hand side of the image, the right hand-side being occupied by the figurative element.

In the present case account needs to be taken of the fact that the conflicting signs are short signs. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, the differing figurative elements of the signs, even when they are less distinctive than the letter ‘G’, still have an impact on the overall visual impressions the signs create. Consequently, the signs are visually similar to a low degree.

Aurally, as the figurative elements are not pronounced, the marks are identical.

Conceptually, the letter ‘G’, included in both signs, will be associated by the relevant public with the seventh letter of the Latin alphabet. The triangle also conveys a meaning but, given that the shape is very little distinctive, conceptually the marks are highly similar.

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

 

d) Distinctiveness of the earlier marks

 

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

The applicant did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

 

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

 

e) Global assessment, other arguments and conclusion 

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

It has been assumed that the goods are identical. They target the public at large as well as the professional public with a degree of attention varying from average to high. The earlier marks have a normal degree of distinctiveness.

There is no denying that the signs are identical aurally and conceptually highly similar. However, it must be recalled that the identity/similarities are limited to the presence of the letter ‘G’ and, according to the case-law of the Court, in the assessment of likelihood of confusion between signs comprising the same single letter, the visual comparison is, in principle, decisive (10/05/2011, T-187/10, EU:T:2011:202; 14/03/2017, T-276/15, EU:T:2017:163). Aural and conceptual identities may be overridden, in the assessment of likelihood of confusion, by sufficient visual differences between the signs. Consequently, the way in which the letter appears in each sign under comparison is conclusive.

In the present case, and contrary to the applicant’s claims, the letter ‘G’ is depicted in a very different manner in the signs. As mentioned above, the signs are visually similar to a low degree and, therefore, in spite of the identity of the goods in question, this is not sufficient to find a likelihood of confusion. Account must be taken of the fact that ‘(…) letters of the alphabet are limited in number, but they are capable of being represented graphically in innumerable and very different ways (as is illustrated by the Vienna International Classification of The Figurative Elements of Marks, the rich range of the existing typographical examples, and also by the great number of distinctive single letters registered as European Union and national trade marks). In this context, the relevant consumer is particularly attentive and accustomed to perceiving the differences between the different typographical characters and it will neither confuse the signs nor the origin of the goods. Therefore, the principle of imperfect recollection has less weight when assessing the existence of a likelihood of confusion in the present case’ (see 14/05/2019, R 2247/2018-5, G (fig.) / G (fig.), which involved a case with the contested mark in these proceedings).

Conclusion

 

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. This would be the case even if the goods were identical. Therefore, the cancellation application must be rejected.

 

Given that the application is not well founded under Article 8(1) EUTMR in conjunction with Article 60(1)(a) EUTMR, there is no need to examine the evidence of use submitted by the applicant.

The applicant has also based its cancellation application on thirteen further earlier trade marks, mentioned above. However, since these marks are identical to the ones already compared above, the outcome cannot be different. Therefore, there is no likelihood of confusion for those earlier rights.

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. 

 

 

The Cancellation Division

 

Carmen SÁNCHEZ PALOMARES

María Belén IBARRA DE DIEGO

Elena NICOLÁS GÓMEZ

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.