DECISION

of the First Board of Appeal

of 15 September 2017

In Case R 219/2017-1

Mekalan, S.A.
Polig. Ind. Txindoki, Naves 1-2 Crta. Zaldibia 20240 Ordizia (Gipuzkoa) Spain	Opponent / Appellant

represented by Eurosigno Patentes y Marcas, Txakursolo n° 23, Bajo, 48992 Getxo (Vizcaya), Spain

v

Mecalan
Zone Industrielle des Trois Routes 2 rue de l'Europe 49 120 Chemille Melay France	Applicant / Respondent

represented by 3A, 2bis, rue Georges Charpak, Parc de la Vatine, BP195, 76825 Mont-Saint-Aignan Cedex, France

APPEAL relating to Opposition Proceedings No B 2 507 658 (European Union trade mark application No 13 333 703)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), M. Bra (Rapporteur) and C. Rusconi (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 6 October 2014, MECALAN (‘the applicant’) sought to register the figurative mark

for the following list of goods, as amended:

Class 7 – Machines for use in the automotive industry, and automotive workshops, garages for automotive repair and automotive technical testing centres, and machine tools; motors, other than for land vehicles, couplings and transmission belts, other than for land vehicles;

Class 8 – Hand held tools, hand implements (hand-operated) for the construction of machines, apparatus and vehicles and for technical testing of vehicles;

Class 9 – Weighing, measuring, signalling and checking (supervision) apparatus (all the aforesaid being for use in the technical testing of vehicles).

2. The application was published on 13 January 2015.

3. On 7 April 2015, MEKALAN, S.A. (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the goods, namely:

Class 7 – Machines for use in the automotive industry, and automotive workshops, garages for automotive repair and automotive technical testing centres, and machine tools;

Class 8 – Hand held tools, hand implements (hand-operated) for the construction of machines, apparatus and vehicles and for technical testing of vehicles.

The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

4. The opposition was based on the figurative mark:

1. registered in Spain under No 1 554 491 with a filing date of 9 March 1990 and a registration date of 5 April 1993, renewed on 1 February 2010, in respect of the following goods:

Class 7 – Machines and machine-tools;

2. registered in Spain under No 2 221 311 with a filing date of 17 March 1999 and a registration date of 6 March 2000, renewed on 23 September 2009, in respect of the following services:

Class 37 – Installation, repair and maintenance services.

5. Following the applicant’s request to prove the use of the earlier marks, the opponent submitted on 23 December 2015, in particular, the following:

• The opponent’s business is a small workshop for machining parts and pieces, the construction of machinery from samples or drawings, ‘EDM’ and high-speed machining.

• The business operates on individual customer requests with specific demands. Given the way the opponent conducts its business, the evidence is basically limited to invoices. The material is accompanied by translations of the necessary items on the invoices.

The following evidence was provided as proof of use:

• Over 200 invoices concerning purchases made by the opponent or services provided to the opponent in relation to the opponent's business between 2011 and 2015;

• Over 120 invoices issued by the opponent to clients in Spain between 2011 and 2015;

• Further material such as business cards, an advertisement for the opponent’s business in the ‘yellow pages’ and promotional items and material.

6. By decision of 29 November 2016 (‘the contested decision’), the Opposition Division rejected the opposition for all the contested goods on the grounds that the evidence furnished by the opponent is insufficient to prove that the earlier marks were genuinely used in the relevant period. It gave, in particular, the following grounds for its decision:

• Even if the documents submitted by the opponent confirm some of the relevant factors such as the place of use, it is clear from the outset that the evidence does not show use for the goods and services.

• Every invoice has been translated into the language of proceedings. The description of their concepts are for example: make screws and nuts, closing cap, roller for conveyor, springs, rail, tooling; or remove, erosion, modify, slice. As the opponent explains, its business is a small workshop for machining parts and pieces, construction of machinery under sample or drawing, EDM and high-speed machining that only works on request, according to customers specific demands.

• From these descriptions and the explanation of the kind of workshop the opponent runs, the evidence of use shows that the mark has been used for the production of parts and pieces of metal that would be used as components for bigger tools. The opponent produces on demand pieces of ironmongery, small items of metal hardware which pertain to Class 6, such as those mentioned above. These goods do not fall within any of the categories for which the earlier mark is registered in Class 7. As to Class 37, there is no evidence about the provision of any of these services.

• Therefore, the opponent has not shown use for the goods and services for which the mark is registered in Spain, but for other goods for which it has no protection.

• The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during the relevant period of time. Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

7. On 27 January 2017, the opponent filed an appeal against the contested decision. The statement of grounds of the appeal was received on 15 March 2017.

8. The applicant submitted observations on 3 May 2017.

Submissions and arguments of the parties

9. The opponent requests that the Board annul the contested decision and reject the EUTM applied for in respect of the contested goods. The arguments raised in the statement of grounds may be summarised as follows:

• The analysis of the evidence of use made by the Opposition Division is based on incorrect premises. While the evidence comprised a large number of invoices, the contested decision examines only a few examples. In addition, even some of the examples selected by the Opposition Division indicate use in relation to the opponent’s goods in Class 7 (e.g. ‘roller for conveyors’, ‘springs’).

• It is also noted that the descriptions on the invoices were worded at the time in a way to be understood by the recipients of those invoices. They were not intended, in particular, to follow the wording of the Nice Classification.

• Moreover, it is surprising that the Opposition Division concluded that there was no evidence regarding the services at issue. There are many invoices that specifically refer to ‘maintenance’ services or describe services which fall under the earlier mark’s specification ‘installation, repair and maintenance services’.

• Therefore, the Opposition Division was wrong in finding that the opponent did not show use of the earlier marks. The evidence furnished by the opponent does show that use is in respect of the goods and services for which the earlier marks are registered.

• There is a likelihood of confusion between the trade marks at issue. The signs are highly similar and the goods and services in comparison are identical or similar.

10. The applicant requests that the Board reject the appeal and order the opponent to bear the costs. It essentially reiterates the contested decision’s reasoning.

Reasons

11. The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR. It is, therefore, admissible.

12. The present case concerns an opposition under Articles 8(1)(b) EUTMR against the figurative mark

in respect of the following goods:

Class 7 – Machines for use in the automotive industry, and automotive workshops, garages for automotive repair and automotive technical testing centres, and machine tools;

Class 8 – Hand held tools, hand implements (hand-operated) for the construction of machines, apparatus and vehicles and for technical testing of vehicles.

on the basis of the earlier figurative mark

registered in Spain in respect of the following goods and services

Class 7 – Machines and machine-tools;

Class 37 – Installation, repair and maintenance services.

13. Following a request filed by the applicant, the opponent was required to prove the genuine use of its earlier mark in Spain in accordance with Article 42(2) and (3) EUTMR. The contested decision held that the evidence submitted by the opponent did not prove genuine use of the earlier marks because the invoices did not relate to the opponent’s goods or services in Classes 7 and 37 at all. As a consequence, the opposition was rejected.

14. The Board recalls that, according to Article 75 EUTMR, the Office must state the reasons on which decisions are based. The purpose of this requirement is, in particular, to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and interests (21/10/2004, C‑447/02 P, Orange, EU:C:2004:649, § 63-65).

15. The opponent describes its business as a small workshop for machining parts and pieces, the construction of machinery from samples or drawings, ‘EDM’ and high-speed machining, all of which is done on the basis of individual requests from customers. The Opposition Division explicitly recognized this nature of the opponent’s business when examining the evidence of use under of Article 42(2) and (3) EUTMR (see page three of the four-page contested decision). To prove use of the earlier mark in Spain, the opponent submitted over 200 invoices concerning purchases made by the opponent or services provided to the opponent in relation to its business. Furthermore, the evidence includes at least 120 invoices issued by the opponent to clients in Spain between 2011 and 2015. Many of those invoices indicate that the opponent provided services covered by the earlier Spanish mark in Class 37 (‘installation, repair and maintenance services’). Here are several examples taken from different invoices:

• ‘Change plate according to scheme’ (11 April 2012, invoice number 1128);

• ‘Remove broken drill to tool’ (11 November 2013, invoice number 2444);

• ‘Change handrail to the conveyor’ (11 November 2013, invoice number 2437);

• ‘Remove broken screw’ (9 October 2013, invoice number 2371);

• ‘Make new plate’ (11 September 2013, invoice number 2376);

• ‘Cleaning and maintenance of molds’ (26 August 2013, invoice number 2288);

• ‘Remove broken screw to plate holder’ (24 July 2013, invoice number 2267);

• ‘Enlarge diameter inside of cap’ (11 July 2013, invoice number 2204);

• ‘Modify parts’ (11 June 2013, invoice number 2125);

• ‘Remove broken bit from axis’ (11 February 2013, invoice number 1837);

• ‘Remove broken bolt’ (7 February 2013, invoice number 1826);

• ‘Reforming equipment for welding a tube’, (3 September 2014, invoice number 411);

• ‘Cleaning and maintenance of molds’ (26 August 2014, invoice number 394);

• ‘Make steel shaft and washer for machine’ (26 July 2014, invoice number 380);

• ‘Installation and repair leaks’ (8 May 2015, invoice number 307).

16. The opponent’s submission and evidence show that the opponent’s business activities belong to a specialized market and appear to include, in particular, individualized maintenance and repair services. The evidence suggests that those services may also include the production of certain individual parts for machines.

17. In view of the above, it is difficult to understand how the Opposition Division could conclude that the evidence did not relate to the opponent’s services in Class 37 (‘installation, repair and maintenance services’). The Opposition Division does not consider any alternative conclusions, disregarding the numerous invoices which contain indications relating to those services in Class 37.

18. The fact that the contested decision disregarded those invoices and relied in its reasoning only on a few documents, suggests that the examination of the proof of use carried out by the Opposition Division did not take into account the full set of evidence. Therefore, by rejecting the opposition pursuant Article 42(2) and (3) EUTMR on the conclusion that there was no evidence relating to the opponent’s goods and services in Classes 7 and 37, the Opposition Division failed to properly analyse the case in accordance with European Union trade mark law and to provide the necessary reasoning for its decision.

19. Consequently, the contested decision is annulled and the case remitted to the Opposition Division for further prosecution in light of the above considerations.

20. This decision does not constitute a final decision on the opposition proceedings (Article 58(2) EUTMR). It is, therefore, appealable only together with the final decision on the merits of the opposition.

Costs

21. Given the substantial procedural violation within the meaning of Rule 51 CTMIR, it is equitable to reimburse the appeal fee. In view of the nature of the proceedings it is appropriate that the parties should bear their own costs incurred in the appeal proceedings in accordance with Article 85(2) EUTMR.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Remits the case to the Opposition Division for further prosecution;

3. Reimburses the appeal fee;

4. Orders each party to bear its own costs in the appeal proceedings.

Signed Th. Margellos

Signed M. Bra

Signed C. Rusconi

Registrar: Signed H. Dijkema