CANCELLATION No 14 546 C (INVALIDITY)

ROCHEM Water Treatment GmbH, Seegelkenkehre 3, 21107 Hamburg, Germany (applicant), represented by PGA S.P.A., Via Mascheroni, 31, 20145 Milan, Italy (professional representative)

a g a i n s t

Rochem Group AG, Bahnhofstrasse 32, 6300 Zug, Switzerland (EUTM proprietor), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative).

On 25/04/2019, 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

The applicant filed an application for a declaration of invalidity against all the goods and services, namely those in classes 1, 2, 3, 11, 37, 40 and 42 of European Union Trade Mark No 12 326 609 (the EUTM) for the figurative mark:

The application is based on German trade mark registration No 974 172 ‘ROCHEM’ (word mark), the European Union trade mark registration No 2 500 395 ‘ROCHEM FM module system’ (word mark) and the European Union trade mark registration No 2 500 429 ‘ROCHEM FM-Modulsystem’ (word mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the marks in conflict are highly similar and the goods and services are identical or similar. Therefore, it claims that there is a likelihood of confusion.

The EUTM proprietor requested the applicant to submit evidence of use of the three earlier marks on which the application is based.

The applicant submitted evidence to prove the use of the earlier marks which will be listed in detail below. It claims that this evidence is sufficient to prove the use of the earlier marks.

The EUTM proprietor contests the evidence of use and claims that it is insufficient to prove genuine use of the earlier marks. Therefore, it argues that the application for invalidity must be rejected.

PROOF OF USE

According to Article 64(2) and (3) EUTMR if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade marks on which the application is based, namely, German trade mark registration No 974 172 ‘ROCHEM’ (word mark), the European Union trade mark registration No 2 500 395 ‘ROCHEM FM module system’ (word mark) and the European Union trade mark registration No 2 500 429 ‘ROCHEM FM-Modulsystem’ (word mark).

The request has been filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 24/02/2017. The date of filing of the contested trade mark is 07/11/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union and Germany from 24/02/2012 to 23/02/2017 inclusive. Since all of the earlier marks were registered more than five years prior to the date of filing of the contested mark, use of the earlier marks had to be shown also for the period from 07/11/2008 to 06/11/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the application is based, namely:

German trade mark registration No 974 172 ‘ROCHEM’

Class 1: Industrial chemicals, chemicals for use therewith or in connection with mazut treatment, burning catalysts, cleaning, cleaning, ignition, derusting, water treating and protection covers.

Class 7: Cleaning machines for industrial purposes; pumps and pumps apparatus as well as parts for aforesaid goods and accessories, namely tubes, connecting as well as inserts.

European Union trade mark registration No 2 500 395 ‘ROCHEM FM module system’

Class 11: Separation and filtration installations for liquid and gaseous media, separation and filration devices for liquid and gaseous media and parts therefor, including pressure pipes, carrier plates, spacer plates and baffle plates and separating and filter elements.

Class 40: Disposal of polluted waste water and leakage water or other liquid and gaseous media containing pollutants, by means of separation and filtration installations and/or devices using separating and/or filter elements, and product refining of liquid and gaseous media by means of separation and filtration installations and/or devices using separating and/or filter elements.

Class 42: Providing of expertise, project planning and creating technical solutions for planned projects.

European Union trade mark registration No 2 500 429 ‘ROCHEM FM-Modulsystem’

Class 11: Separation and filtration installations for liquid and gaseous media, separation and filration devices for liquid and gaseous media and parts therefor, including pressure pipes, carrier plates, spacer plates and baffle plates and separating and filter elements.

Class 40: Disposal of polluted waste water and leakage water or other liquid and gaseous media containing pollutants, by means of separation and filtration installations and/or devices using separating and/or filter elements, and product refining of liquid and gaseous media by means of separation and filtration installations and/or devices using separating and/or filter elements.

Class 42: Providing of expertise, project planning and technical solutions for installations and devices for the disposal of polluted waste water and leakage water or other liquid and gaseous media containing pollutants, by means of separation and filtration elements, and for installations and devices for the product refining of liquid and gaseous media by means of separation and filtration elements.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 04/07/2017, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 09/10/2017 to submit evidence of use of the earlier trade marks, which was then extended until 09/12/2017.

On 30/11/2017, within the time limit, the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Exhibit 1: Change of name form from Ultura GmbH to Rochem GmbH submitted to EUIPO on 16/06/2017.

• Exhibit 2: Printout from the applicant’s website www.rochem.de/en/ in English with the options of viewing the website in English, French or German.

• Exhibit 3: 6 invoices in Italian and billed by Rochem Marine S.r.l. with an address in Italy issued to clients in Italy. They are dated in 2010, 2011, 2012, 2013 and 2016. They are billed for hundreds of thousands of euros. At the top of the invoices, the following sign appears:

• Exhibit 4: Photos of trade stands in a number of trade fairs which the applicant claims four of which were held in Rimini, Italy from 2007-2010, two in Genoa, Italy in 2002 and 2004 and one in Abu Dhabi in 2011. In all of the photos the sign below appears on the trade stands:

In some of the photos the following sign also appears:

• Exhibit 5: Undated advertising material written in English or Italian, containing the company name from the applicant’s group Rochem Marine S.r.l., and their address in Italy. The advertisements also contain the following signs:

• Exhibit 6: An extract of ERSAI 400 Tecnologie & Transporti Mare dated 2008 in Italian which mentions ‘Rochem’ and ‘Rochem Marine’.

• Exhibit 7: Technical sheets and the 2015 installation manual with the following sign on the first page:

The document is written in English and Italian, and concerns water desalination and waste water treatment. On page 2, it mentions ‘Rochem FM modules’ and on page 3 it mentions ‘Rochem-Module-System’. The document mentions the company from the applicant’s group Rochem Marine S.r.l. and their address in Italy.

• Exhibit 8: Consists of technical drawings for clients dated in 2008, 2010, 2012, 2014 and 2016. They are in German and contain the following signs:

.

German trade mark registration No 974 172 ‘ROCHEM’ (word mark)

Place of use

In relation to the earlier German mark, the Cancellation Division notes that all of the invoices are billed from Italy and to clients in Italy and therefore, do not prove any sales in Germany. Although the applicant’s website has a German domain name ‘.de’ the applicant did not provide any internet statistics to show that the site was actually visited by consumers in Germany, or that any sales were made to customers in Germany through that website. None of the trade fairs were held in Germany and there is no evidence as to whether or not the patrons of the fairs were German or whether their attendance there resulted in any sales in Germany. The advertising material is in English and Italian and only bears an address in Italy. The technical sheets are in English and Italian and bear a company address in Italy, again they make no reference to Germany. The only document in German is Exhibit 8, which contains technical drawings which the applicant claims were made for clients in Germany. However, these are only internal documents that do not contain the name and address of the clients, how much they paid, whether the goods or services were actually ordered and bought or any other evidence to prove that actual sales were made, or the goods and services were sold or provided in Germany. Therefore, the applicant has failed to prove the place of use in relation to the earlier German trade mark registration No 974 172 ‘ROCHEM’ (word mark). The factors of use are cumulative. Therefore, the failure to prove one factor results in the evidence of use being rejected in its entirety in relation to this earlier mark.

European Union trade mark registration No 2 500 395 ‘ROCHEM FM module system’ (word mark) and the European Union trade mark registration No 2 500 429 ‘ROCHEM FM-Modulsystem’ (word mark).

Nature of use as registered and time of use

In the context of Article 10(3) EUTMDR, 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 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a) EUTMR, the following also constitutes 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. When examining the use of an earlier registration for the purposes of Article 64(2) and (3) EUTMR, Article 18 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, all of the evidence of use shows variations of the sign below:

Only Exhibit 7, on page 2, mentions ‘Rochem FM modules’, and on page 3 it mentions ‘Rochem-Module-System’. However, none of the evidence shows use of either sign as registered, namely, ROCHEM FM-Modul system’ or ‘ROCHEM FM-Modulsystem’. Moreover, Exhibit 7 consists merely of technical sheets and instruction manuals, which in the absence of further evidence does not show that any sales were made under the signs or that they were actually distributed to clients (or the location of the clients). Furthermore, it is mentioned is in the middle of the document and does not include the element ‘FM’, but in its place appears the letter combination ‘PT’ or nothing at all.

Moreover, the sign at the top of the document is the following:

The letter combination ‘FM’ does not have any particular meaning (at least not without further information on the subject) and therefore is distinctive in relation to the registered goods and services. Therefore, the omission of these letters, or the insertion of a different pair (‘PT’) alter the distinctive character of the sign as registered. The elements ‘Modul system and Modulsystem’ are almost absent from the evidence submitted, but this omission is less significant, since these elements have a low level of distinctiveness for the goods and services concerned. As stated above, none of the other pieces of evidence contain either of the signs as registered. Moreover, the Cancellation Division notes that Exhibit 7 is insufficient to prove the time of use of the earlier marks as it is partially undated or dated only in 2015. Therefore, this evidence cannot prove the time of use for the second period of time, namely, between 07/11/2008 and 06/11/2013. Furthermore, it does not provide any indications in relation to extent of use. The remaining documents like the invoices, advertising material etc., do not make any reference to the signs as registered but only to variations of the sign below:

However, this sign is depicted in a highly stylised typeface which is distinctive and fanciful and contains the word MARINE and a figurative depiction of a drop in the colours of grey and white superimposed on a blue square. The drop alludes to water and MARINE refers to the sea, so these elements are rather weak in relation to the goods and services for which the earlier marks are registered. However, the striking and original typeface is fanciful and distinctive, and, as such, it changes the distinctive character of the sign as registered. Moreover, the elements ‘FM-Modulsystem’ and ‘FM module system’ are not included in any of the Exhibits. As stated above, ‘FM’ is distinctive and therefore its omission changes the distinctive character of the sign as registered.

Consequently, the evidence is insufficient to prove the nature of use within the meaning of Article 18(1), second subparagraph, point (a) EUTMR for these two earlier EUTM’s as registered.

Conclusion

Having examined the material listed above the Cancellation Division finds that the evidence is insufficient to establish genuine use of the trade marks. In relation to the earlier German trade mark registration No 974 172, the applicant did not submit sufficient indications to prove the factor of place of use, while in relation to the earlier European trade mark registrations Nos 2 500 395 and 2 500 429 it did not submit sufficient indications to prove the factor of nature of use of the signs as registered.

The Court 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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The Cancellation Division concludes that the evidence is insufficient to prove that the earlier trade marks were genuinely used in the relevant territories during the relevant period.

Therefore, the application must be rejected pursuant to Article 64(2) EUTMR in relation to the two earlier European trade mark registrations No’s 2 500 395 and 2 500 429 and the application must be rejected pursuant to Article 64(2) and (3) EUTMR in relation to the earlier German trade mark registration No 974 172.

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

Lucinda CARNEY

Rhys MORGAN

Nicole CLARKE

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.