OPPOSITION No B 2 546 029

PAFtec Technologies Pty Limited, Level 21 201 Elizabeth Street, 2000, Sydney, Australia (opponent), represented by D Young & Co LLP, Theatinerstraße 11, 80333 München, Germany (professional representative)

a g a i n s t

Sensyne Health Group Limited, Schrödinger Building, Heatley Road, Oxford Science Park, OX4 4GE Oxford, United Kingdom (applicant), represented by J A Kemp, 14 South Square Gray’s Inn, WC1R 5JJ London, United Kingdom (professional representative).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 546 029 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 758 801 for the word mark ‘CLEANSPACE’. The opposition is based on international trade mark registration No 1 139 618 designating the European Union for the word mark ‘CleanSpace’, in relation to which the opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR, and on the right to the sign ‘CleanSpace’ under the tort of passing off in the United Kingdom, in relation to which the opponent invoked Article 8(4) EUTMR.

On 19/10/2017 the Opposition Division rendered a decision that resulted in the rejection of the opposition. In particular, the Opposition Division found that the opposition was unfounded insofar as it was based on earlier international trade mark registration No 1 139 618 designating the EU pursuant to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part) on the grounds that the evidence submitted by the opponent to substantiate the earlier registered trade mark was insufficient as it did not emanate from the administration by which the trade mark was registered, namely the WIPO. It also rejected the opposition as far as it was based on the tort of passing off in the United Kingdom because the necessary requirements of Article 8(4) EUTMR were not met.

The opponent filed an appeal against the Opposition Division’s decision, requesting that the decision is annulled to the extent the opposition had been rejected due to the finding that earlier international trade mark registration No 1 139 618 had been found non-substantiated and that the opposition be examined on the substance under Article 8(1)(a) and (b) EUTMR. It submitted before the Board of Appeal additional evidence emanating from the administration by which the earlier trade mark was registered, namely the WIPO.

The Board of Appeal decided in case R 2591/2017-2 (09/10/2018, R 2591/2017-2, CLEANSPACE / CleanSpace). The Board’s decision annulled the contested decision for the part appealed and remitted the case to the Opposition Division for further prosecution. The Board considered that the Opposition Division did not err in finding that the opposition had to be rejected as unfounded pursuant to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part) owing to the opponent’s failure to prove the existence, validity and scope of protection of the earlier mark. Nevertheless, the Board considered it equitable to exercise its discretion under Article 95(2) EUTMR to admit the extract from the WIPO database submitted by the opponent on appeal, as it considered it supplementary evidence. Therefore, the Board of Appeal upheld the appeal and annulled the contested decision to the extent that it rejected the opposition because of the failure of the opponent to substantiate the earlier registered trade mark. Consequently, the Board remitted the case to the Opposition Division for further prosecution namely for examination of the opposition on substance on the basis of the earlier registered trade mark.

Consequently, the Opposition Division’s decision rejecting the opposition on the ground of Article 8(4) EUTMR has not been appealed and has become final. The Opposition Division will proceed to examine the opposition on substance in relation to the grounds invoked in relation to the earlier international trade mark registration No 1 139 618 designating the European Union, namely Article 8(1)(a) and (b) and Article 8(5) EUTMR.

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.

1. The goods and services

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

Class 9: Breathing apparatus; self contained breathing apparatus other than for artificial respiration; portable breathing apparatus other than for artificial respiration; apparatus to prevent the inhalation of noxious substances; personal pollution protection devices; breathing apparatus for protective purposes; breathing masks other than for artificial respiration; protective breathing masks other than for artificial respiration; breathing assistance and breathing therapy apparatus other than for artificial respiration; apparatus other than artificial respiration apparatus for the alleviation and treatment of breathing difficulties; respirators other than for artificial respiration; air purifying respirators other than for artificial respiration; parts, fittings and connections for breathing apparatus, respirators and masks.

The contested goods and services are the following:

Class 9: Monitors, testers and systems used for measuring and/or recording and/or transmitting data; computer software and interfaces for the aforesaid goods; apparatus for recording, transmission and/or reproduction of sound or images or other data; data processing equipment; telephone-based information retrieval software and hardware; electronic communication equipment and instruments; telecommunications apparatus and instruments; magnetic, optical, and electronic data storage materials and devices; apparatus for data storage; portable digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; downloadable publications; magnetic cards; RFID tags and associated software; software for use in advertising; software relating to the organisation, operation and supervision of sales and promotional incentive schemes and promotional services; electronic apparatus for wireless reception, storage and transmission of data; wireless receivers; wireless transmitters; wireless local area network devices; wireless charging apparatus; wireless energy scavenging apparatus and devices; wireless energy transfer device; wireless device for recording and sharing real time data; computer software for customer reward and incentive programmes, databases and data related to customer reward and incentive programmes and related database management software; computers, computer terminals, and computer software used for authentication, authorization, clearing, and settlement of financial transactions; computer software for commerce over a global communications network; wearable electronic devices capable of wireless communication, namely devices worn on the body such as glasses, watches, wristbands, armbands, patches, and badges and/or integrated with wearable goods such as footwear, headwear, belts, gloves, and clothing; wireless electronic devices for monitoring the environment and collecting environmental data, namely air pollution monitoring; electronic wireless communication devices employing energy harvesting and wireless energy transfer devices enabling the provision of wireless electronic services, namely financial transactions in the field of customer reward programmes, data collection and storage, data retrieval, location and time monitoring, and promotional and advertising services in the field of customer reward programmes; computers, computer software, and wireless electronic devices integrated in a global computer network enabling customer reward programme members to accumulate reward points as a function of the distance and time travelled by the member, dependent on the emissions produced by the member’s selected mode of transportation.

Class 16: Printed matter, publications, newspapers, magazines and periodicals; promotional material, brochures and pamphlets; vouchers; cards for use in connection with sales and promotional incentive schemes and promotional services; gift cards and gift vouchers printed forms; instructional and teaching material.

Class 35: Advertising; promotion; organisation, management, operation and supervision of promotional incentive schemes; management, operation and supervision of customer reward schemes; provision of business information; conducting market surveys and issuing reports; on-line administration and supervision of a discount, special offer and gift voucher scheme; organisation, operation and supervision of reward and incentive schemes via the internet and mobile devices; reward card services; reward scheme services; business consultancy; business information; management of computer databases; compilation of information onto computer databases; organisation of exhibitions or trade fairs for commercial advertising purposes; creating indexes of online information, sites and other resources available on global computer networks for others; providing business and commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; business services, namely, dissemination of advertising for others via computer networks and global communication networks; electronic commerce services, namely providing information about products via the Internet or telecommunication networks for advertising, promotional, and sales purposes.

Class 36: Issuing tokens and vouchers of value; issuing tokens of value in relation to customer reward schemes; the issuing of vouchers including for restaurants and cafés, entertainment events, cinema, television, on-demand television, online media, online content, hotels, accommodation, flights, travel, holidays, theatre, theme parks and activity days; financial services relating to the provision of vouchers for the purchase of goods and services; payment services provided through wireless devices; currency exchange services; currency trading; currency transfer services; financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network; electronic financial transaction processing for customer reward programme members and participating merchants, namely, electronic funds transfer, electronic cash transactions, electronic debit transactions, and assisting others with the completion of financial transactions in the field of customer reward programmes.

Class 37: Installation of electronic wireless communication devices employing energy harvesting and wireless energy transfer devices enabling the provision of wireless electronic services, namely financial transactions in the field of customer reward programmes, data collection and storage, data retrieval, location and time monitoring, air pollution monitoring, and promotional and advertising services in the field of customer reward programmes.

Class 38: Telecommunications; communication and telecommunication services; telecommunication access services; communications by computer; communications by tablet computer; communication between computers; electronic sending of data and documentation via the Internet or other databases; supply of data and news by electronic transmission; providing access to websites and electronic news services online allowing the download of information and data; providing access to web sites on the Internet; serving and transmitting audio, video, multimedia, and advertising content to computers, mobile telephones, media players, wearable electronic devices capable of wireless communication, and other mobile digital devices; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; webcasting services (transmission); delivery of messages by electronic transmission; provision of connectivity services and access to electronic communications networks, for transmission or reception of audio, video or multimedia content; provision of telecommunications connections to electronic communication networks\ provision of access time to web-sites featuring multimedia materials; providing users with access time to electronic communications networks with means of identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and computer users; providing computer data bases in the nature of a bulletin board; rental of wireless communication systems; providing a platform for a customer reward programme in a computer network, especially the Internet.

Class 39: Advisory and consultancy services in relation to transport, namely low-carbon or zero-emission means of transportation.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; software as a service; maintaining websites; application service provider (ASP); application service provider (ASP) featuring software for receiving, transmitting and displaying vouchers and receiving and transmitting data for the purchase of goods and services; application service provider (ASP) featuring software for providing consumers with information regarding discounts, vouchers and special offers for the goods or services of others; application service provider services regarding social networking software; provision of an Internet platform for social networking services; hosting of digital content online; hosting (providing) a website that features technology that enables the donation of money and gifts to charitable organisations; environmental surveys; environmental advisory services; environmental research and technical consultancy information, consultancy and advisory services for all the aforesaid services; research, development, and design of an Internet platform for customer reward programmes and electronic commerce using a virtual currency for use by programme members and participating merchants of an on-line community via a global computer network.

Class 44: The provision of healthcare and wellness information services in particular, healthcare and wellness information services based upon location and environmental data; the provision of healthcare and wellness information targeted to individuals based upon their location and associated environmental data.

Class 45: Licensing of Internet platforms for customer reward programmes and electronic commerce using a virtual currency for use by programme members and participating merchants of an on-line community via a global computer network.

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

The terms ‘in particular’, ‘such as’ and ‘including’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the categories and that protection is not restricted to them. In other words, they introduce non-exhaustive lists of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The opponent argues that there is identity or similarity between all the contested goods in Class 9 and the opponent’s goods. In particular, it considers that the personal pollution protection devices covered by the opponent’s mark are identical to the contested monitors, testers and systems used for measuring and/or recording and/or transmitting data; wireless electronic devices for monitoring the environment and collecting environmental data, namely air pollution monitoring as they are all apparatus related to air pollution. It also considers that the remaining contested goods in this class are used to assist breathing since they serve to monitor air quality and pollution and are, therefore, similar to the opponent’s goods.

The Opposition Division does not share the opponent’s views. The opponent’s goods, including the opponent’s personal pollution protection devices, are all essentially breathing apparatus/respirators used for the safety and protection of the user, for example, by preventing the inhalation of noxious fumes and purifying the air that the wearer breathes, as well as parts and fittings for such goods. The purpose of these goods is to provide respirable air by filtering a contaminated atmosphere, or to provide an alternate supply of breathable air. These goods have specific natures and purposes that are not sufficiently related to those of the opponent’s goods that are monitoring devices, including apparatus for air pollution monitoring, as well as various other goods such as data processing equipment, apparatus for recording, transmission and/or reproduction of sound, images and other data, software, data carriers, downloadable publications. Even if some of the contested goods relate to air pollution, as pointed out by the opponent, this is not enough for a finding of similarity, as these contested goods are, by nature, monitoring apparatus consisting of electronics, sensors and detectors, with a different purpose, namely measuring a physical quantity and generating a figure relating to the item under study and a referenced unit of measurement.

The goods in question do not have the same methods of use and their production processes require different know-how and expertise, consequently, they do not usually coincide in their commercial origins. The fact that some of the contested goods and the opponent’s goods could be used in the same establishments and industries is not sufficient for a finding of similarity between them. Many different goods are used in sectors with air contamination, but they have different purposes and are usually produced by different companies specialised in different areas. The goods in question are neither complementary nor in competition. To claim that the connection of the goods in question to air pollution is sufficient for a finding of complementarity, as is the opponent’s opinion, would result in this factor losing its significance. In this regard, it must be recalled that complementarity has to be clearly distinguished from use in combination where goods/services are merely used together, whether by choice or convenience. This means that they are not essential for each other (16/12/2013, R 634/2013-4, ST LAB (FIG.MARK) / ST et. al, § 20).

Considering the above, it must be concluded that all the contested goods in Class 9 and the opponent’s goods are dissimilar.

Contested goods and services in Classes 16, 35, 36, 37, 38, 39, 41, 42, 44 and 45

The remaining contested goods and services are even less related to the goods of the opponent, as they do not coincide in any of the relevant factors mentioned above. The fact that some of the contested services could relate to the environment, and by extention to air pollution (e.g. environmental research in Class 42) or to healthcare (e.g. the provision of healthcare and wellness information in Class 44) is not sufficient to trigger any relevant connection between the contested goods or services and the opponent’s goods in Class 9, which are breathing apparatus and respirators, and parts and fittings thereof. The goods and services in question have different natures, serve different needs and do not usually coincide in their producers/providers or distribution channels, and they are neither complementary nor in competition.

The contested advertising and promotional services are also not similar to the opponent’s goods. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods may appear in advertisements is insufficient for finding similarity. Therefore, advertising is not similar to the goods or services being advertised.

Considering the above, the contested goods and services in Classes 16, 35, 36, 37, 38, 39, 41, 42, 44 and 45 are dissimilar to the opponent’s goods in Class 9.

2. Conclusion

Article 8(1)(b) EUTMR states that ‘the trade mark applied for shall not be registered: if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’ (emphasis added).

Therefore, 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 goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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 goods and services are obviously not identical.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union and, in particular, in the United Kingdom.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 20/02/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely all the goods for which the mark is registered:

Class 9: Breathing apparatus; self contained breathing apparatus other than for artificial respiration; portable breathing apparatus other than for artificial respiration; apparatus to prevent the inhalation of noxious substances; personal pollution protection devices; breathing apparatus for protective purposes; breathing masks other than for artificial respiration; protective breathing masks other than for artificial respiration; breathing assistance and breathing therapy apparatus other than for artificial respiration; apparatus other than artificial respiration apparatus for the alleviation and treatment of breathing difficulties; respirators other than for artificial respiration; air purifying respirators other than for artificial respiration; parts, fittings and connections for breathing apparatus, respirators and masks.

The opposition is directed against all the goods and services for which the contested mark seeks protection in Classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 44 and 45, which are also listed above in the ‘Likelihood of confusion’ section of this decision.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 05/10/2016 the opponent submitted the following evidence:

Annex 1: an extract from the eSearch plus database of the EUIPO concerning the designation of the EU of earlier international trade mark registration No 1 139 618.

Annex 2: a witness statement of Dr Alex Birrell, the CEO of PAFtec Pty Limited, the opponent’s parent company, dated 05/10/2016, giving information about the use and alleged reputation of the opponent’s marks and making references to the 21 exhibits listed below. According to the document, in 2015-2016, European sales constituted 75 % of the opponent’s total worldwide sales. This document also refers to trade shows and exhibitions in several EU countries, in which the opponent allegedly exhibited its products.

• Exhibit 1: documents issued by the Australian Government and Austrade referring to export market development grants for 2013-2014 and 2014-2015 and showing the opponent’s export earnings (in Australian dollars) for these periods. These documents contain no indications of the countries to which the opponent exported its goods or indications of trade marks and particular goods.

• Exhibit 2: a copy of an undated brochure of the opponent’s goods referring to wearable protective masks under the mark ‘CleanSpace’, containing references to the opponent’s website www.cleanspacetechnology.com, and its contact details in Australia, and showing a map of the world with places highlighted in, inter alia, the European Union: .

• Exhibit 3: an overview of the opponent’s company, dated July 2016, mentioning that the opponent’s company was founded in 2009 and referring to characteristics of different wearable protective masks under the mark ‘CleanSpace’. A graph in the document indicates that 30 % of the opponent’s sales are in Europe, and p. 9 of the document lists the names of corporate customers of the opponent in Australia, Europe and New Zealand. A page entitled ‘Award Winning’ refers to several awards, presumably won for protective masks between 2013-2016. The document was prepared by the opponent, and it is indicated in its observations that it is confidential, which suggests that it is an internal document.

• Exhibits 4-5: database extracts and registration certificates of several of the opponent’s trade marks, registered under different jurisdictions and certificates of registered Community Designs.

• Exhibit 6: photographs of wearable protective masks and their product packaging under the marks ‘CleanSpace’ and ‘CleanSpace2’ produced in Australia. This exhibit also contains an extract from the opponent’s website www.cleanspacetechnology.com, dated 03/10/2016, showing ‘CleanSpace’ masks and spare parts (e.g. batteries and battery chargers).

• Exhibit 7: a set of five invoices, dated between 25/02/2016 and 20/06/2016 (i.e. after the relevant date), issued by the opponent to several customers in France and to one customer in Denmark, as well as an order form for one of these transactions, all for goods under the marks ‘CleanSpace’ and ‘CleanSpace2’.

• Exhibit 8: a table with expenditure figures (in Australian dollars) prepared by the opponent for 2013-2016, containing indications of travel costs in Europe, salaries and recruitment, trade shows and exhibitions, training material, translations and testing certification associations.

• Exhibit 9: extracts from the opponent’s website www.cleanspacetechnology.com in English, French and German, dated 28/09/2016, showing protective masks under the sign ‘CleanSpace2’ and containing references to several awards for ‘CleanSpace’ or ‘CleanSpace2’ products won between 2013 and 2016 for excellence, innovation or design, awarded in Australia, France, Germany and the UK.

• Exhibit 10: an extract showing a Google Analytics overview of the visitors to the opponent’s website www.cleanspacetechnology.com, showing statistics for the period 22/08/2014-21/09/2016, indicating that the website had 120 587 visitors during this period and showing the percentage of visits by language.

• Exhibit 11: an extract from the opponent’s website www.cleanspacetechnology.com containing a publication dated 30/11/2012, entitled ‘CleanSpace officially launches in Europe at Expoprotection, Paris France’, stating that the opponent exhibited for the first time at the trade show Expoprotection in France in December 2012.

• Exhibit 12: an extract from the opponent’s website www.cleanspacetechnology.com containing a publication dated 31/10/2013, entitled ‘CleanSpace exhibits at A+A Safety, Security and Health, the world’s largest Safety Trade Fair’, stating that the opponent exhibited at the Safety Show A+A in Germany in 2013.

• Exhibit 13: extracts from the opponent’s social media pages, namely Facebook, YouTube and Twitter, dated 28/09/2016. The extracts show that 176 people liked the opponent’s Facebook page, that the opponent’s YouTube channel had 21 subscribers and that a YouTube video for ‘CleanSpace’ products had 169 views and another one had 3 288 views. The extract from Twitter shows that the opponent’s page had 87 followers.

• Exhibit 14: an extract from the online health and safety magazine HSE International, at www.hseinternational.co.uk, of an article published on 24/08/2016 containing an interview with the opponent’s CEO and referring to the opponent’s protective masks under the mark ‘CleanSpace’. It also mentions that ‘CleanSpace’ won several international innovation and design awards between 2013 and 2016. The publication states the following:

Our Company is honoured to be a BSIF Registered Supplier. BSIF have been a valuable resource and a true partner for us assisting with guidelines and networks in occupational safety in the UK. BSIF demonstrate strong leadership and a proactive approach to driving improvements in workplace safety, such as asbestos and specific international standards. BSIF provide a high level of engagement for how our products might be adopted in the UK market (which is quite sophisticated).

Our company is a member of RoSPA and the British Safety Council. ‘CleanSpace’ is also EN12942 (CE Mark) approved and ensures the ‘CleanSpace’ Respirator materials are ROHS compliant. Our business has been built to comply with global standards and operates a lean operating and continuous improvement program for all parts of the business.

• Exhibit 15: several online articles:

• an article published on 23/01/2013 in the online magazine HSM Health & Safety Matters, at www.hsmsearch.com, reporting that the product ‘CleanSpace’ is being launched in Europe. Peter Upcott, who was to take on the role of director of business development in Europe, says: ‘I am looking forward to bringing a new respirator concept into the European market’. The article contains no further indications of when or where in Europe the product would be launched.

• an article entitled ‘The Aussie company that’s cleaning up in Europe’ published on 27/09/2016 on www.dynamicexport.com.au – which the opponent has clarified is a website reporting on the international trading of Australian companies – reporting that the opponent has achieved 100 % growth year-on-year in the last three years and now has a multi-million-euro turnover. It states that the opponent’s key customers are in France and it is now working to replicate similar relationships in Germany. In particular, the following is stated:

We enlisted the assistance of Exportia, a specialist European export consultancy who have been developing our European relationships, including distribution partners, customers and recruited sales agents and representatives … Having provided initial advice on European market entry, Exportia managed to secure early key reference customers in France including: Vinci, Lafarge, Bayer, Michelin and the City of Paris. The company is now working to replicate similar relationships in Germany and Exportia has become a valuable long-term partner for PAFtec.

• an article entitled ‘A breath of fresh air in industry’ published on 29/05/2013 on the website www.cleaning-matters.co.uk, referring to a respirator of the opponent under the sign ‘CleanSpace2’ and its characteristics.

• an article in Danish published on the website http://bygge-anlaegsavisen.dk in 2016, along with a translation into English, reporting that the innovative respirator ‘CleanSpace’ was nominated for an award.

• an article in French published on the website www.preventica.com on 25/05/2015, along with a translation into English, reporting that the respirator ‘CleanSpace’ was nominated for an award in 2015.

• Exhibit 16: a document reproducing p. 9 of the opponent’s company overview submitted as exhibit 3, showing the names of customers of the opponent.

• Exhibit 17: a printout from the website of MacGregor Industrial Suppliers Limited (a UK company), extracted on 28/09/2016, showing ‘CleanSpace’ products available for purchase online.

• Exhibit 18: an undated table on a blank page prepared by the opponent and listing its distributors, located in various countries, including some in the European Union. This exhibit also contains several printouts from websites in different languages (none of the extracts was originally in English), extracted in September or October 2016, as follows:

• an extract from www.atsc.fr in French, along with a translation into English, showing masks, filters and adaptors under the marks ‘CleanSpace’ and ‘CleanSpace2’ available for purchase online;

• an extract from www.itools.dk in Danish, along with a translation into English, containing information about ‘CleanSpace2’ active breathing apparatus;

• an extract from http://procurator.net/nb-no in Norwegian, along with a translation into English, containing information about ‘CleanSpace’ respirators;

• an extract from www.unimex.hr in Croatian showing ‘CleanSpace’ masks;

• an extract from http://kauppa.suojalaite.fi in Finnish showing ‘CleanSpace’ and ‘CleanSpace2’ masks;

• an extract from http://kasco.eu/shop/ in Italian, along with a translation into English, showing ‘CleanSpace’ and ‘CleanSpace2’ respirators;

• an extract from http://kompass-arbeitsschutz.de in German showing ‘CleanSpace’ wearable protective masks and referring to the Red Dot Award won by ‘CleanSpace’ products in 2016;

• an extract from www.galagar.com in Spanish referring to ‘CleanSpace’ respirators.

• Exhibit 19: an extract from the opponent’s website www.cleanspacetechnology.com in English, dated 03/10/2016, containing references to several awards for ‘CleanSpace’ products won between 2013 and 2016 (already submitted in exhibit 9). This exhibit also contains the following documents:

• a certificate in French for an award won in Lyon in 2013 for ‘CleanSpace2’ products;

• a certificate in French for a trophy won at Expoprotection 2014 (no products, company name or trade mark are indicated);

• a certificate in English for a Red Dot Award won for innovative design in 2016 in Germany;

• a photograph of a Small Business Award won by the opponent at the 2015 Premier’s NSW Export Awards;

• a certificate for winning the BSIF Product Innovation Award by a ‘CleanSpace2’ powered respirator at the BSIF Safety Awards 2013;

• a photograph bearing references to the SHP IOSH Awards 2013 and the indications ‘shortlisted’ and ‘innovation of the year’ (no products, company name or trade mark are indicated);

• a page from a leaflet, in Italian and English, referring to ‘Respiratory protection CleanSpace2’ and a number of a hall and stand.

• Exhibit 20: extracts from the opponent’s website www.cleanspacetechnology.com in English, dated 28/09/2016, showing a link to a video for the use of ‘CleanSpace’ respirators and the section of the opponent’s website containing training resources.

• Exhibit 21: a table prepared by the opponent containing 12-month statistics produced by Vimeo for views of ‘CleanSpace’ training videos, dated 05/10/2016, and listing various countries around the world, including in the European Union.

Annex 3: a printout from the opponent’s Twitter page showing that the opponent retweeted a publication referring to the UK government and its commitment to air pollution.

Annex 4: judgment of 09/12/2010, T‑303/08, Golden Elephant Brand, EU:T:2010:505 (this document is related to the opponent’s claims under Article 8(4) EUTMR, not Article 8(5) EUTMR.

Annex 5: website extracts relating to the activities of the applicant and the contested mark ‘CleanSpace’ in relation to a mobile software application.

Annex 6: the judgment of 11/12/2014, T‑480/12, MASTER, EU:T:2014:1062, concerning the contested mark and the reputation of earlier marks of the Coca-Cola company.

Annex 7: an extract from the internet search engine Google showing search results for ‘CLEANSPACE’.

The material submitted suggests that the opponent has some presence in the relevant market. However, the majority of the documents referring to the European Union market are dated after the relevant date for proving reputation (i.e. 20/02/2015). Moreover, for a finding of reputation, not only does use of the mark have to be shown, but a certain threshold, in terms of the relevant public’s knowledge of the mark, must also be reached. The public’s awareness of the mark is important, rather than the availability of goods or services under it.

The evidence provides no information on the actual degree of recognition of the mark among the relevant public or the market share held by the earlier mark in relation to the goods in Class 9 for which reputation has been claimed.

The documents submitted demonstrate that the opponent is a private Australian company producing breathing masks and apparatus under the signs ‘CleanSpace’ and ‘CleanSpace2’. However, there are no independent documents providing information concerning the knowledge of the mark, its position in the relevant EU market or the advertising and promotion in relation to it.

The majority of the documents submitted are dated after the filing date of the contested trade mark (20/02/2015) and derive from the opponent itself. The witness statement makes references to European sales of the opponent’s goods in 2015-2016, essentially after the relevant date for proving reputation. The invoices submitted as exhibit 7 are also dated after the relevant date. The article published on the Dynamic export website (submitted in exhibit 15) states that, in September 2016, the opponent’s key customers were in France, but it does not give any information on the opponent’s presence in the relevant market before the relevant date. Another article in this exhibit reveals the opponent’s intentions to enter the European market in 2013. However, the publications do not refer to actual activities performed by the opponent in the relevant territory before the relevant date, and do not contain information about where its goods were made available, the price point or distributor information. None of this supports a conclusion that two years later, by the beginning of 2015, the opponent’s mark had become known by the public, and furthermore there is no information regarding the awareness of the opponent’s mark in the relevant European Union market.

The references in the opponent’s website and some independent articles to trade show participations and international awards won by products under the sign ‘CleanSpace’ are not relevant indications about the presence of the sign in the relevant market and its perception by the relevant public. A trade show is an exhibition organised so that companies in a specific industry can showcase and present their latest products and services, meet industry partners and customers, study the activities of competitors and examine recent market trends and opportunities. Trade fairs are held on a continuing basis (often annually) and normally attract companies from around the globe. Therefore, the fact that an international trade fair is conducted in a particular city or country is not indicative of the territories or markets where the participants exhibiting at this event conduct their businesses. The information about the opponent’s participation in such events cannot be correlated to the relevant public for the particular EU market. The trade shows in which the opponent has taken part reveal certain quality aspects of the opponent’s products (e.g. that its products are innovative), but they are not sufficient in themselves to establish the extent of use of the mark or knowledge of the sign among customers in the relevant market.

The social media pages of the opponent (Exhibit 13) also do not contain any indications with regard to the relevant territory. Furthermore, the number of followers/subscribers on Facebook, YouTube and Twitter in 2016 (after the relevant date) is between 21 and 176, which is clearly insignificant in global terms.

On 04/07/2017, after expiry of the time limit, the opponent submitted additional evidence. It consists of the following documents:

• Annex 1: a decision of the United States Patent and Trademark Office of 23/02/2017, concluding on the comparison of goods.

• Annex 2: two invoices and one pro forma invoice, dated 15/04/2014, 28/05/2014 and 12/01/2015, issued to two customers in France and containing indications to, inter alia, ‘CleanSpace2’.

• Annex 3: two invoices for the Registered Safety Supplier Annual Fee for Membership paid to BSIF by the opponent for 2013 and 2014.

Although these documents were filed after the relevant period, for the sake of completeness the Opposition Division notes that they do not contain any clear indications of trade mark knowledge and degree of recognition of the mark among the relevant public or the market share held by the earlier mark in the relevant territory.

The sales activities demonstrated by the opponent before the relevant date are limited to a few examples and cannot be correlated to the size of the particular market as a whole or to the total number of players in the market, since the opponent has not provided such information. Reputation is a question more of proportions than of absolute numbers. In particular, indications of sales or turnover given in percentages can be particularly helpful for completing information regarding market share and awareness, as they create a fuller picture of the market. Since the opponent did not provide any information referring to its position in the market or to the overall size of that market, the Opposition Division cannot draw solid conclusions about the performance of the opponent’s mark and its perception.

Under these circumstances and in the absence of sufficient independent and objective evidence that would enable clear conclusions to be drawn about the degree of recognition of the earlier mark by the relevant public, the Opposition Division finds that the evidence submitted by the opponent cannot be conclusive of reputation. Therefore, the Opposition Division concludes that the opponent failed to demonstrate that its trade mark acquired a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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.

The Opposition Division

Catherine MEDINA

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

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.