OPPOSITION No B 2 526 971

Simosa Servicios Integrales de Mantenimiento y Operación, S.A., Avda. de La Buhaira, 2, 41018 Sevilla, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Siemens Aktiengesellschaft, Werner-von-Siemens-Str. 1, 80333 München, Germany (applicant), represented by Carsten Tobias Johne, Günther-Scharowsky-Str. 1, 91058 Erlangen, Germany (employee representative).

On 30/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 526 971 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 13 710 413 for the word mark ‘SIMOS’. The opposition is based on Spanish trade mark registration No M 2 341 602 for the figurative mark . The opponent invoked Article 8(1)(a) and (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, now Article 47(2) and (3) EUTMR), 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 Spanish trade mark on which the opposition is based.

The contested application was published on 25/02/2015. 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 25/02/2010 to 24/02/2015 inclusive.

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.

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

Class 37: Construction; repair; installation services; integral building maintenance.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), 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 or services in respect of which it is registered and on which the opposition is based.

On 24/10/2017, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 29/12/2017 to submit evidence of use of the earlier trade mark. This deadline was extended until 28/02/2018. On 27/02/2018, within the time limit, the opponent submitted evidence of use. On 15/05/2018 the Office requested the opponent to submit translation of the evidence of use in the language of the proceedings by 20/07/2018. This time limit was extended until 19/10/2018. On 19/10/2018 the opponent submitted the requested translation of the evidence of use in the language of the proceedings (i.e. English).

The evidence to be taken into account is, in particular, the following:

 Invoices, dated from 2010 to 2014, issued by ‘SIMOSA’ to various clients in Spain. The trade mark ‘SIMOSA’ is reproduced in all the invoices followed by the expression ‘Servicios Integrales de Mantenimiento y Operación, S.A’. The invoices concepts refer to, inter alia, ‘services related in section II of the contract signed by both parties dated 01/01/2000, according to detail: Rental of 10 m2 …; Common services of 10 m2 ...’, ‘Supply corresponding to the month of April 2010’ or ‘Chair Robin B6-1, metal structure … delivery services at destination and distribution in the building according to the established plan’ or ‘amount for 11 h cleaning services in the basement parking ...’; ‘IT equipment for Loyola University’; ‘Supply, replacement and removal of bacteria — building G’; ‘Improvement and maintenance of restaurant …’.

 Three contracts, dated 01/07/2014, 01/01/2015 and 01/07/2015, between ‘SIMOSA Servicios Integrales de Mantenimiento y Operación’ and two Spanish clients (a farm and a foundation) for annual/six months building maintenance services (e.g. maintenance of electric installations, air conditioning, plumbing and sanitation, maintenance of water facilities).

 A contract, dated 01/07/2015, between ‘SIMOSA Servicios Integrales de Mantenimiento y Operación’ and ‘Palmas Altas Norte Conservation Urban Entity’ for the maintenance (e.g. pavement maintenance works, road cleaning, maintenance of urban furniture, maintenance of gardens) of Palmas Altas Norte housing complex.

The abovementioned evidence demonstrates that the place of use is Spain. This can be inferred from the language of the documents (Spanish) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period (i.e. the contracts dated 01/07/2015) confirms use of the opponent’s mark within the relevant period. This is because the use it refers to is very close in time to the relevant period.

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, and its commercial volume, duration and frequency.

The evaluation of proof of use is not based on an individual assessment of each item of evidence but the Opposition Division must consider the evidence in its entirety. Therefore, the fact that the concepts of some invoices are not very clear as they refer, for example, to ‘Rental of 10 m2 …; Common services of 10 m2 ...’ or ‘Supply corresponding to the month of April 2010’ is compensated by the fact that the contracts alleged by the opponents clearly refer to ‘building maintenance services’ as explained above. Other invoices’ concepts clearly refer to ‘building maintenance services’ such as ‘Supply, replacement and removal of bacteria — building G’ or ‘Improvement and maintenance of restaurant …’.

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.

The amounts of a significant part of the invoices vary from about EUR 200 to EUR 400. There are few invoices that refer to more conspicuous amounts (e.g. EUR 25,724.16, EUR 24,194.37 and EUR 41,685.78). However, the opponent also alleged long term contracts (i.e. one year or six months) that are clearly related to ‘building maintenance services’. Therefore, taking into consideration all the above and the fact that the invoices should be taken as examples of sales made and not as the total sales made under the mark and that some invoices refer to a significant amount, this evidence is sufficient to demonstrate that the use of the trade mark at issue was not merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.

Taking into account the evidence in its entirety (the invoices in conjunction with the building maintenance contracts provided by the opponent), it is clear that the opponent offered services bearing the earlier mark in the relevant market. This gives sufficient information regarding the commercial activities of the opponent in the relevant period and, therefore, the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of 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 will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that 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 47(2) and (3) EUTMR, Article 18 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.

The earlier Spanish trade mark is registered as the figurative mark . In the invoices alleged by the opponent, the earlier trade mark ‘SIMOSA’ is reproduced as it was registered; nonetheless the expression ‘Servicios Integrales de Mantenimiento y Operación, S.A.’ is written below the verbal element ‘SIMOSA’ (i.e. ). The abovementioned expression, due to its lack of distinctiveness, does not alter the distinctive character of the earlier trade mark ‘SIMOSA’ (i.e. it clearly refers to the core business of the opponent and its legal status).

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 18(1), second subparagraph, point (a), EUTMR.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence as a whole demonstrates genuine use of the trade mark for the ‘integral building maintenance’.

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.

a) The services

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

Class 37: Integral building maintenance.

The contested services, after a limitation filed by the opponent on 07/07/2018, are the following:

Class 37: Assembly, commissioning, maintenance, repair and restoration of vehicles, systems and installations, and components therefor, in the field of railway and road traffic technology.

Class 42: Technical planning and development of installations, devices and apparatus, in particular in the field of railway technology and rail transport technology, and road traffic technology; technical consultancy in the field of rail technology and rail transport technology, and road traffic technology.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘in particular’ used in the applicant’s list of services indicates that the specific services 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 (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested services in Class 37

The contested assembly, commissioning, maintenance, repair and restoration of vehicles, systems and installations, and components therefor, in the field of railway and road traffic technology are highly specialised services in the field of railway and road traffic technology. Although they include ‘maintenance services’ as does the opponent’s integral building maintenance, they are related to ‘vehicles, systems and installations, and components therefor, in the field of railway and road traffic technology’. As they belong to completely different fields of activity, the contested services have nothing in common with the opponent’s integral building maintenance. It is clear that a completely different know-how is needed to provide these services. Therefore, contrary to the opponent’s opinion, they have different natures and intended purposes. Furthermore, these services do not have the same relevant publics or distribution channels and they will not be provided by the same undertakings. They are dissimilar.

Contested services in Class 42

The contested technical planning and development of installations, devices and apparatus, in particular in the field of railway technology and rail transport technology, and road traffic technology have nothing in common with the opponent’s integral building maintenance because they belong to completely different areas, as the contested services are technology services aimed at the development of new installations, devices and apparatus, while the opponent’s services are aimed at the maintenance of various types of buildings in their original conditions. Therefore, they have different natures and intended purposes. Furthermore, they do not have the same relevant publics or distribution channels and are not provided by the same undertakings. They are dissimilar.

The same reasoning applies to the contested technical consultancy in the field of rail technology and rail transport technology, and road traffic technology. They are dissimilar to the opponent’s integral building maintenance as they have different natures and intended purposes. Furthermore, they do not have the same relevant publics or distribution channels and are not provided by the same undertakings.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the services are obviously not identical.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Benoit VLEMINCQ

Angela DI BLASIO

Katarzyna ZANIECKA

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.