CANCELLATION No 15 090 C (INVALIDITY)

Remitite Co., Ltd., 109-30 Yongdeok-ro, 23 Beon-gil, Hallim-myeon, Gimhae-si, Gyeongsangnam-do 50853, Republic of Korea (applicant), represented by Vossius & Partner, Patentanwälte Rechtsanwälte mbB, Siebertstr. 3, 81675 München, Germany (professional representative)

a g a i n s t

Beele Engineering B.V., Beunkdijk 11, 7122 NZ Aalten, The Netherlands (EUTM proprietor), represented by Hoffmann Eitle Patent - und Rechtsanwälte PartmbB, Arabellastr. 30, 81925 München, Germany (professional representative).

On 27/09/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 14 279 401 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1080.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 14 279 401 ‘Bemitite’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 1: Chemicals used in industry; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; fire-retarding compositions, in particular for sealants; fire-retarding compositions, in particular for heat-expandable materials; chemical substances and materials for use in the field of fire resisting sealing devices.

Class 6: Pipes and tubes of metal; metal plates and rings for sealing systems; blocking and fastening materials of metal for sealing systems; conduits of metal, metal frames having conduits, metal blocks having conduits.

Class 9: Optical, signalling, checking (supervision), life- saving apparatus; fire-extinguishing apparatus; luminescent displays.

Class 17: Rubber; polymer material vulcanizable to rubber and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; stopping and insulating materials; flexible sleeves, not of metal; sealing plugs primarily of rubber or of polymer material vulcanizable to rubber, fire-resistant sealing plugs made primarily of rubber; sealing plugs, fire-resistant or non-fire resistant; waterproof packings in particular for sealingly surrounding pipes and/or cables; sealing packings; pipe muffs not of metal, insulating sheaths for cables; sealing material; sealing muffs made of rubber or polymer material vulcanizable to rubber; sealing gaskets; sealing sleeves made of rubber or rubber-like material, sealants made of polymer material vulcanizable to rubber.

Class 19: Building materials (non-metallic); non- metallic rigid pipes for building; non-metallic pipe and cable fill; muffs, not of metal for pipes, not included in other classes; refractory building materials that are non-metallic fireproof constructions; non-metallic conduits for pipes and/or cables; ceramic conduits for pipes and/or cables.

Class 20: Elastomeric foam with a substantially closed cell structure.

Class 37: Construction; repair of components for sealing systems; installation of components for sealing systems or of exit routes in case of fire.

The applicant invoked Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant’s first arguments:

The above-referenced EUTM has been registered in bad faith. At the time of filing of the application, the registered EUTM proprietor, hereinafter ‘Beele’, had been acting with a view of causing damage to the cancellation applicant.

‘Beele’ and the cancellation applicant are the two main competitors on the highly specialized market for fire-resistant materials and products for the use, inter alia, in ships and oil platforms. ‘Beele’ has never used the above-referenced EUTM, nor has ever had any intention to do so. The above-referenced EUTM consists of the denomination “BEMITITE” which is confusingly similar to the cancellation applicant’s company name and main product brand name “REMITITE”, which the cancellation applicant has been using for decades.

Since as early as 1975 the applicant (Remitite Co.) has been active in the research, development and manufacture of products of the fine chemicals industry. The business focus has been on fire-resistant materials and devices, in particular for use in ship building. From as early as 1983, the applicant had been using the denomination REMITITE in the course of commerce to designate its products.

Through their German lawyers, the law firm of Hoffmann Eitle, ‘Beele’ had filed with the German courts in September 2010 an application for preliminary injunction against the applicant in an attempt to obstruct the applicant’s European business activities. In this application for preliminary injunction, which was based on alleged patent infringement, ‘Beele’ already admitted that it had knowledge of the applicant’s use of the REMITITE mark in relation to fire-retardant products and materials. ‘Beele’ sought to register the subject mark (BEMITITE) specifically for those goods and services, for which the applicant had been using the REMITITE mark and has registered either in its own name or in the name of Mr Derek Jackson, a UK trade mark attorney, a number of defensive trade marks (BEMITITE and RESITITE) with the sole objective to obstruct the applicant’s business activities, including other EUTMs such as the identical mark REMITITE No 12 143 731.

‘Beele’ has been a competitor of the applicant on this highly specialized market at least since 2002 participating together in many trade fairs in Germany (2010 and 2016), Greece (2010), USA (2012-2016) and many Asian countries (2011-2016). Since the middle of the year 2003, the applicant has also been selling newly developed fire-retardant rubber sleeve products and fire-resistant sealants, all of which have been labelled with and put on the market under the trade mark REMITITE, products that were in direct competition with ‘Beele’s products.

As early as 2008/2009, the applicant has taken steps to expand its business in the field of fire resistant materials and sealing compounds into the EU market obtaining the necessary certificates to market such products in the EU. At this time, it obtained European certificates from the Lloyd’s Register, London, UK, and from the European Communities Notified Office Bureau Veritas, Paris, France, and by today the applicant has obtained all certificates which are necessary to market the applicant’s fire resistant materials and sealing compounds in the EU.

Between 2013 and 2016, the applicant further expedited its efforts to enter the EU market by engaging in negotiations with the Dutch company, T-ISS Safety Services (hereinafter ‘T-ISS’), one of the leading actors in the field of maritime industry with decades of experience in this field. T-ISS started advertising and distributing the applicant’s REMITITE products via the T-ISS website http://.t-iss.com/Remititesealingsystems.html to customers in Europe. Due to this proximity and the narrow market for the particular products, T-ISS was well informed about the activities of ‘Beele’ and vice versa.

In 2010, the applicant and ‘Beele’ were both present at the leading maritime trade fair in Hamburg, SMM, the entrance gate into the European shipbuilding. Mr. Verstegen from T-ISS confirms that ‘Beele’ was very concerned when Remitite Co. showed its competing REMITITE products at the SMM trade fair in Hamburg to a European audience. ‘Beele’ conjured up a plan to obstruct Remitite Co.’s business activities and, in particular, to prevent Remitite Co. from entering the EU market by registering as EUTMs a series of defensive trade marks for the denominations e.g. REMITITE, BEMITITE, RESITITE and REVITITE, which could be used in an aggressive manner to stop Remitite Co. from marketing its products in the EU under its long-established REMITITE trade mark.

‘Beele’ has filed in 2010 an application for preliminary injunction against the applicant based on alleged patent infringement seeking a Court Order to prohibit the latter from using the denomination REMITITE in relation to fire-resistant sleeves and sealing compounds on the German market.

The application for preliminary injunction was again filed in 2016 by the EUTM proprietor’s German lawyers, the law firm of Hoffmann Eitle. This last application for preliminary injunction was based on the proprietor’s contested mark BEMITITE and not the proprietor’s EUTM No 12 143 731 REMITITE, in an attempt to disguise Beele’s conspiracy with their UK lawyer, Mr. Derek Jackson, who was at that moment the owner of the latter mark.

The applicant’s filed evidence to support its allegations as follows:

1. An affidavit of Mr. Gwangmyeong Park, CEO and authorized representative of Remitite Co., dated 12/04/2017 giving information about the applicant’s history (annex 1 – printouts from the company’s webpage), certificates obtained (annex 2), market share, marketing budget, sales and the conflict between its company and the EUTM proprietor, brochures containing products of the company;

2. Excerpts from Remitite Co.’s company website about the company history at www.remitite.com;

3. An affidavit of Mr. Ron Verstegen, former Managing Director and Counsel of the company T-ISS, dated 06/04/2017, including a certified English translation;

4. Printout from the EUIPO register regarding the contested mark;

5. Application for preliminary injunction, filed on behalf of ‘‘Beele’’ by the law firm of Hoffmann Eitle on 07/09/2010 in German;

6. Printout from the register regarding EUTM 12 143 731 REMITITE mark;

7. Excerpt from the trade mark database Saegis for the Korean trade mark REMITITE No 4002782510000 filed on 07/10/1992 and registered on 01/11/1993 belonging to the applicant; the respective mark lapsed in 2003 allegedly by mistake.

8. Excerpts from the trade mark databases Saegis and eSearch for the aforementioned trade mark applications for REMITITE. It is shown that the applicant filed numerous other trade marks such as: Norwegian application No 201 701 484 REMITITE (Classes 1, 17, 19) filed in 2017, six Korean trade marks REMITITE filed in 2016 and EUTM application 16 701 931 REMITITE (Classes 1, 7, 17, 19), filed in 2017;

9. Excerpts from Remitite Co.’s company website at www.remitite.com showing news about its participation in trade fairs, certificates obtained and information about the company;

10. Product catalogue from Remitite Co.;

11. Excerpts from the trademark databases Saegis and eSearch for the trademark applications for REMITITE and BEMITITE by the EUTM proprietor:

Country and year of filing	Trademark	Applicant	Classes	Status
Singapore, Australia, Japan, USA, Korea and New Zeeland 2015	IR No. 1273261 BEMITITE	Beele Engineering B.V.	1,6,9,17,19,20,37
Singapore 2016	No. 40201614931Q REMITITE	Beele Engineering B.V.	1,6,9,17,19,20,37	Unpublished application
Australia 2016	No. 1796141 REMITITE	Beele Engineering B.V.	1,6,9,17,19,20,37	pending
China 2016	REMITITE No 21304549	Beele Engineering B.V.	1,6,9,17,19,20,37	pending
Japan 2016	JP 2016100888 REMITITE	Beele Engineering B.V.	1,6,9,17,19,20,37	pending
EU 2013	EUTM 12143731 REMITITE	Derek Jackson	17,19,37	registered
EU 2015	EUTM 14279401 BEMITITE	Beele Engineering B.V.	1,6,9,17,19,20,37	registered
US 2015	US 76718199 REMITITE	Derek Jackson	17,19,37	pending
Korea 2015	KR 4500542130000 REMITITE	Derek Jackson	17,19,37	registered

14. Application (in German) for a preliminary injunction filed on behalf of ‘Beele’ by the law firm of Hoffmann Eitle on 06/09/2016, and a supplemental court letter of 07/09/2016, granted by the trial court and appealed by the applicant;

15. Letter dated 04/05/2017 from Remitite Co.’s UK lawyers to ‘Beele’ dated 04/05/2017, raising claims of conspiracy.

The applicant concluded that it is against any commercial logic to adopt a confusingly similar trade mark with one used already by one’s main competitor if it was not for the sole objective to obstruct the competitor’s business activities. In light of all the above, the applicant claims that it has demonstrated that ‘Beele’ acted in bad faith when filing the application for registration of the subject mark.

The EUTM proprietor’s first arguments:

The EUTM proprietor claims that the mark was not filed in bad faith, but as a continuance of the EUTM proprietor’s trade mark portfolio, the contested mark making reference to the slogan “be my tight(ening)”. The mark was registered at a time when the cancellation applicant showed no presence on the European Market (or in fact a significant presence elsewhere). At this time the cancellation applicant also showed no intention of becoming active in Europe and indeed took no noticeable preparatory measures in this regard.

The cancellation applicant has at no point in the past and to this day had any significant market share, if any in the market for fire – retardant sleeves and sealing compounds and since 2003 and up until October 2016 it had no trade mark rights to the designation Remitite. The applicant has not shown a real interest in protecting its designations since it was sanctioned for the infringement of the EUTM proprietor’s rights to the contested EUTM in mid-2016. It also seems more than a mere coincidence that the cancellation applicant is all of a sudden not only attacking the EUTM proprietor on all fronts, but also seeking protection for the designation "Remitite" in many of the markets where the EUTM proprietor has been active and a key player for some time. In light of these facts, the allegation of bad faith against the EUTM proprietor certainly leaves a bitter aftertaste.

The proprietor claims that the market for fire-retardant sleeves and sealing compounds is not dominated by the parties in conflict and that there are other companies competing on the market. The figures presented hardly show a long-standing and consistently high turnover for fire-retardant sleeves and sealing compounds on the part of the cancellation applicant on any market whatsoever. Consequently, it hardly seems credible to attribute such a high economic importance to the cancellation applicant in the worldwide market for fire-retardant sleeves and sealing compounds.

The figures provided by the cancellation applicant seem to suggest an only marginal market share of 2% in Korea and 7% elsewhere as late as 2010. It is furthermore expressly refuted that both parties regularly attended the same trade fairs as the EUTM proprietor generally does not attend such fairs. Even if the alleged use of the designation "Remitite" by the cancellation applicant did, however, take place, this would have been limited to the Korean market only. No such use indeed occurred in Europe and this was also admitted by the applicant before the Regional Court of Hamburg stating that (the cancellation applicant) has not placed any goods on the market in the EU at any time in the past (HE15).

The trade mark proprietor filed the following evidence:

HE1 Affidavit of Johannes Alfred Beele, CEO of ‘Beele’, dated 04/12/2017 and excerpts from the trade mark owner’s website www.beele.eu; Mr Beele denies any knowledge of any activity of the applicant in Europe at the time of registration of the EUTM;

HE2 and HE3 register entries for the proprietor’s trade mark registrations including two EUTMs Resitite and Revitite and several international registrations such as Dynatite, Drifil, Controfil, Actifoam, Nofirno, Slipsil, Beebond, Beeseal or Beele;

HE4 Excerpts from the website of the EUTM proprietor sealing Valley Project www.sealingvalley.com and translation of the relevant section of the EUTM proprietor’s submissions dated 26/05/2017 to the Higher Regional Court of Hamburg in appeals proceedings concerning the preliminary proceedings against the cancellation applicant;

HE5 Translation of the relevant section of the cancellation applicant's submissions in appeals proceedings against the preliminary injunction issued by the Regional Court of Hamburg dated 09/11/2016; Affidavit (being in its majority blacked out) of Mr Gwangmyeong Park, CEO and authorised representative of the cancellation applicant, dated 05/11/2016 and submitted in preliminary proceedings between the parties before the Regional Court of Hamburg by the cancellation applicant;

HE6 Extracts from the corresponding websites of some other companies (Austrian, Swedish, Dutch, German or Chinese) active in the same field as the parties in conflict;

HE7 Excerpts from the T-ISS website (www.t-iss.com);

HE8 Excerpt from the EUTM proprietor's website (www.beele.eu);

HE9 Company profile of T-ISS B.V. from Dun & Bradstreet;

HE10 Excerpt from a Wikipedia article concerning the "maritime industry";

HE11 Information from The Netherlands Maritime Technology regarding the maritime industry in the Netherlands, from the Embassy of the Kingdom of the Netherlands stating that there are about 12.000 companies active in the Dutch maritime sector;

HE12 Affidavit of Esther Pfaff, one of the EUTM proprietor's legal representatives present at the SMM;

HE13 Excerpt from Google Maps showing the distance between the EUTM proprietor and T-ISS.

HE14 Partial translation of the Decision of the Regional Court of Hamburg dated 08/09/2010 granting the preliminary injunction to the EUTM proprietor;

HE15 Partial translation of the Decision of the Regional Court of Hamburg, dated 07/09/2016 granting a new preliminary injunction to the EUTM proprietor, this time on the basis of the infringement of EUTM No. 14 279 401 "Bemitite" filed by ‘Beele’ in 2015 and prohibiting the use of the mark REMITITE by the applicant in Germany;

HE16 Translation of relevant excerpt from the Appeal Judgment of Regional Court of Hamburg, dated 06/01/2017 in which the court confirmed the decision in Exhibit HE 15; the court could not identify sufficient reasons for a bad faith of the EUTM proprietor and stated that because of its absence from SMM for six years and “absence of any use” “no protection of a company indication could therefore arise” for the invalidity applicant as a foreign company in Germany;

Second observations from the applicant:

In its reply of 62 pages the applicant claimed that the EUTM proprietor knew about the use of the mark REMITITE by the applicant at least 3 years before the filing date of the EUTM since it filed the request for preliminary injunction in 2010. Furthermore, it stated that it was impeded by the proprietor to attend the SMM fair trade (that takes place every even year) in 2010 and 2012 since the preliminary injunction filed in 2010 was based on a patent which expired only 17 days after the fair trade of 2012. After the expiry of the respective patent the EUTM proprietor filed the EUTM and other trade marks to try to push the cancellation applicant from the EU market.

It is further claimed that the German representatives of the EUTM proprietor, the law firm HOFFMANN EITLE, in particular the patent attorney Frank van Bouwelen already worked for the British patent attorney Derek Jackson (the first proprietor of the EUTM REMITITE, subject of parallel cancellation proceedings on bad faith grounds). In 2012, Frank van Bouwelen of HOFFMANN EITLE represented Derek Jackson in an opposition (image 1 below) proceeding against a patent before the European Patent Office. The same patent attorney Frank van Bouwelen of HOFFMANN EITLE represents the EUTM proprietor in the German preliminary injunction proceedings (image 2 below) against the cancellation applicant which were at that time still on-going. Therefore, HOFFMANN EITLE is the "client other than Beele" and the "intermediary" mentioned in the letter of Derek Jackson (already submitted as Exhibit 48a).

Image 1

--------------------------------------------------------------------------------------------------------------------

Image 2

It further stated that the EUTM proprietor is indeed its main competitor and from the evidence filed by the EUTM proprietor it is not evident that they produce goods such as those of the parties in conflict. It also refers to the General Court judgment of 28/01/2016, T 335-14, DoggiS, EU:T:2016:39.

The applicant submitted additional evidence as follows:

14. Excerpt of Remitite Co. Ltd.’s website, showing the presence of the sign Remitite;

15. Entry in the Korean company register showing the change of the name to Samsung Remitite Co. in 1998 and its English translation;

16. Page 6 of the business information provided by the EUTM proprietor in the German PI proceedings, showing the change of name of the cancellation applicant in 1998 as well as in 2013;

17. Pictures of the applicant’s manufacturing site, proving the fact that Remitite Co. Ltd. runs large production facilities;

18. Samsung Remitite product catalogue of March 2013, showing the large variety of Remitite products sold by the cancellation applicant;

19-20. Remitite product catalogues of May 2016 and July 2017 further supporting the proof of the variety of Remitite products and size of the company;

21. Excerpts from the Oilfield Wiki, giving a further short summary of the field of work of the cancellation applicant;

22. Affidavit of the applicant’s CEO / Mr. Cho, confirming facts about the general circumstances;

23. Pictures of the applicant’s R&D and Design teams, delivering further proof of the size of the company;

24. Pictures of the participation of the applicant at trade fairs, showing the active outreach of the cancellation applicant to open up new markets;

25. Dun & Bradstreet information about the applicant, proving the size and sales of the company;

26 Excerpt from ‘Whois’ website regarding the domain name remitite.com, showing the creation date 22/03/2010;

27. Dutch commercial register excerpt for ‘Beele’, showing facts about this company created in 1973 in the Netherlands;

28. Page 2 of the Dun & Bradstreet Business information about the cancellation applicant, further proving the sales of the applicant in the years 2012 to 2014;

29. Dun & Bradstreet information about the ‘Beele’ company, showing the sales of the afore‐mentioned company;

30 Email correspondence between Mr. Shin (Remitite) and Mr. Scheel, showing the interest of the cancellation applicant to enter the European market as early as 2007;

31 -36. Complete summary of the products RRS‐15 & RS‐105, GME‐90, FS‐7200, HFS‐90, SI‐701, FS‐X1, delivering proof for the certifications of the products including for some EU countries (for some starting 2012) and their distribution within the EU from as early as 2007;

37. Excerpt from SMM‐Website, the leading exhibition for the maritime industry, supporting the fact of the importance of the afore‐mentioned trade fair;

38. European Community Shipowners Association (ECSA) brochure, showing the importance of the European market in the maritime industry;

39. German Navy annual report 2016, about the German shipbuilding market (in German);

40. Picture of the Samsung Remitite, allegedly, SMM 2010 booth, showing the open display of the word “Remitite”;

41. Pictures of the Remitite products at, allegedly, SMM 2010, showing the open display of the word “Remitite”;

42. Pictures taken during the confiscation of the Samsung Remitite booth on SMM trade fair in 2010, further proving the proprietor’s knowledge of the applicant’s use of the word “Remitite”;

43. Screenshot of the website t‐iss.com dated 10/02/2016, showing the company T‐ISS distributing Remitite products in Europe;

44. Commercial invoice dated 23/06/2016 from Remitite Co. Ltd. to T‐ISS, proving the collaboration of the two companies;

45-46. Advertising material of T‐ISS with respect to the Remitite products and regarding the FS 7200 products proving the collaboration of the two companies;

47. Invoice dated 24/06/2016 of T‐ISS to a Dutch company which purchased Remitite sleeves, proving the distribution of Remitite products on the European market;

48. Power of Attorney Derek Jackson / Frank van Bouwelen from 2008 and 2012, proving the previous collaboration of the EUTM proprietor’s law firm with Derek Jackson Associates;

49. Open (first) letter from the cancellation applicant’s UK attorneys to Mr. Derek Jackson dated 07/03/2017, showing the confrontation of Mr. Jackson with the allegations and (49a) the second letter to Derek Jackson dated 07/03/2017, showing the confrontation of Mr. Jackson with the allegations;

50-51. Excerpt of the EUIPO register of the trade marks Revitite and Resitite, showing the further trade mark registration made by the EUTM proprietor;

52. Excerpt of cancellation applicant’s trade marks “Remitite”, showing the countermeasures Remitite Co. Ltd. has taken to prevent further theft of IP rights.

In its reply the EUTM proprietor reiterated its arguments concerning the lack of use by the applicant in the EU before the filing date of the EUTM and the lack of knowledge by the EUTM proprietor. Furthermore, it claims to have used the BEMITITE mark for the designated goods in Germany via its distributor F.E. Schulte GmbH&Co at the SMM 2018 and, alongside with its sister trade marks RESITITE and REVITITE has been used in a brochure available at the same SMM 2018. It further stated that, ‘the cancellation applicant has after their short appearance at the SMM 2010 not used the trade mark ‘Remitite’ in the EU although he could have’ and that “due to their behaviour the trade mark owner was under the impression that they did not have interest in the EU market.’ The proprietor claims further that the cancellation applicant was free to continue the booth at SMM 2010 with products that did not infringe the patents from the EUTM proprietor using the same trade mark Remitite and that the applicant was further free to participate at SMM 2012 and other trade fairs using their trade mark but chose not to and as a consequence of their behaviour the EUTM proprietor was rightfully expecting that they would not return to the EU market.

Moreover, the EUTM proprietor reminds that it is the owner of European Patent EP 2116280 B1 effective until 2022 for ‘Fire-resistant system for passing at least one cable, tube or the like through an opening in a wall’. The cancellation applicant could have always entered the EU market with non-patent-infringing products, and further the Patent EP-2116280 B1 would have been sufficient to protect the EUTM proprietor against infringements by the cancellation applicant. The cancellation applicant simply was not present in the EU market at the time of the application of the subject trade mark and thus did not use “their” trade mark in a Member State, which is a necessary requirement of trade mark cancellation based on bad faith.

Additional evidence filed by the EUTM proprietor:

HE17 Extract from website https://www.smm-hamburg.com/en/the -fair/profile/ mentioning that it is the leading international maritime trade fair;

HE18 Affidavit of Johannes Alfred Beele, CEO of Beele Engineering B.V. as submitted in a parallel case stating that F.E. Schulte Strathaus GmbH&Co.KG (hereinafter FESS) is the distributor partner of Beele and represents it at the SMM trade fair 2018 in Hamburg. He mentions also some brochures (copies attached) and other advertising material that are distributed by FESS for Beele and that the marks BEMITITE, RESITITE and REVITITE are also used, inter alia, for Beele at the abovementioned SMM. In the brochures (undated) the mark appears as

HE19 and 20 Affidavit of Yvonne Hörmann, Key Account Manager of F.E. Schulte Strathaus as submitted in a parallel case, and translation into English stating the same as in HE 18;

HE21 Photos of the booth of F.E. Schulte Strathaus at SMM 2018 in Hamburg,

including photos of the stand on which the brochure was available

HE22 Brochure of the trade mark owner used at SMM 2018 in Hamburg

HE23 Photo of a poster, where the sister trademark "REVITITE" is used for the

product „SLIPSIL XL-120 sealing plugs" at SMM 2018 in Hamburg although the arrow points to some illegible text.

HE24-26 details for EUTM 014260137 "Resitite" and EUTM 014264212 "Revitite", IR 903779 "Dynatite"; EUTMA 016886749 "Contitite" all from the EUIPO’s database eSearch

HE27 Affidavit of Mr. Gwangmyeong Park, CEO of the applicant from parallel proceedings;

HE28, 29 Excerpts of an information sheet issued by the applicant;

HE30 European Patent EP 2116280 B1.

In its last submissions the applicant attaches the judgment of the Hanseatic Higher Regional Court of 13/09/2018 (the HHRC decision) revoking the preliminary injunction and the arrest in rem issued by the Hamburg Regional Court at 07/09/2016 in which the court considered that the contested mark BEMITITE was filed in bad faith by the EUTM proprietor.

On 13/12/2018 the EUTM proprietor surrendered the EUTM in its totality. This surrender was suspended by the Office in view of the present cancellation proceedings.

On 08/02/2019 the cancellation applicant invoked a legitimate interest in obtaining a decision on the substance in the present proceedings. It reminded that the effects of the surrender are different than those of a cancellation of the mark for being filed in bad faith and that it has a legal interest in particular with view to damage claims against the EUTM proprietor and quoted as case-law the Boards of Appeal decision of 22/10/2010, R 463/2009-4 MAGENTA §26-27 and judgment of 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 33-34.

The applicant claims that the decision of the German court in Hamburg is legally binding only in Germany and the civil court only rejected or revoked the previously issued preliminary injunction in favour of the EUTM proprietor, the national court being unable to declare the cancellation of a European Union trade mark. It further claims that it was blocked from the entire European market as its company name and product name, REMITITE, was considered highly similar to the contested EUTM. The cancellation applicant has a legitimate interest in restoring its good reputation which was damaged by the EUTM proprietor’s bad faith acts, as its customers had to experience that the cancellation applicant was not allowed to use its company and product name in Europe for more than two years. Furthermore, the applicant has the interest of bringing forth a lawsuit in Germany claiming for damages caused by the EUTM proprietor and fear further similar courses of action by the EUTM proprietor in other member states of the European Union based on the EUTM Bemitite.

ADMISSIBILITY

As shown above the EUTM proprietor notified the Office of its intention to surrender the contested mark. Its request was suspended by the Office in view of the present cancellation proceedings.

In the present case the applicant wishes to pursue his request for a declaration of invalidity regardless of the EUTM proprietor’s withdrawal. Such a wish is legitimate, considering that the effects of a surrender and those of a declaration of invalidity are not the same. As mentioned also by the applicant an EUTM which has been surrendered ceases to have effect only from the registration of that surrender, whereas a mark that has been declared invalid will be deemed not to have had any effect from the outset. Consequently, in so far as the present proceedings could procure an advantage for the applicant, it retains a legal interest in bringing the proceedings (see judgment of 24/03/2011, C-552/09 P, ‘TiMi KINDERJOGHURT’, paragraphs 42-44). Furthermore, the applicant justified its legal interest in obtaining a decision in the present case, explanations which, in the Cancellation Division’s view are reliable for the reasons exposed further in the present decision.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(b) EUTMR

General principles

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

Reference is made to the facts and evidence set out in detail above in section ‘Summary of the Parties’ Arguments’.

Assessment of bad faith

One situation which may give rise to bad faith is when a commercial entity has obtained some degree of legal protection by virtue of the use of a sign on the market, which a competitor subsequently registers with the intention of competing unfairly with the original user of the sign.

These are precisely the circumstances on which the applicant seeks to rely in the present proceedings.

In such instances, the Court of Justice of the European Union (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 48, 53) has stated that the following factors in particular should be taken into consideration:

1. the fact that the EUTM proprietor knows or must know that a third party is using an identical or similar sign for an identical or similar product capable of being confused with the contested EUTM;

2. the applicant’s intention of preventing that third party from continuing to use such a sign;

3. the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought; and

4. whether the EUTM proprietor in filing the contested EUTM was in pursuit of a legitimate objective.

The abovementioned are only examples drawn from a number of factors which can be taken into account in order to determine whether or not the applicant was acting in bad faith when filing the application; account may also be taken of other factors (14/02/2012, T‑33/11, Bigab, EU:T:2012:77, § 20-21 and 21/03/2012, T‑227/09, FS, EU:T:2012:138, § 36).

The Cancellation Division’s findings:

It is clear from the evidence and from the parties’ submissions that the two companies in conflict are acting on the same highly specialized market for fire-resistant materials and products for the use, inter alia, in ships and oil platforms.

The EUTM was filed in 2015 by the EUTM proprietor, ‘Beele’.

Although denied by the EUTM proprietor, it is clear for the Cancellation Division that ‘Beele’ had knowledge at least since 2010 about the use of the highly similar term REMITITE by the applicant as its company name and to identify some of its products. There is no question in the mind of the Cancellation Division about the veracity of this fact since ‘Beele’ was the one that filed the preliminary injunction against the applicant which led to the confiscation of their products, display panels etc. present in the 2010 SMM trade fair. These findings are also confirmed by the HHRC decision (page 20 of the English translation).

If the EUTM proprietor knows about the applicant’s rights, even though they were not yet registered in Europe, and if it becomes apparent, for example, that the EUTM proprietor filed the contested EUTM not to use it, but only to prevent a third party from entering the market, it may be an indication of bad faith (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 46-47). Such are the indications in the present case.

The EUTM proprietor extensively argued that the applicant was not present on the EU market and has not used its name REMITITE in any of the EU Member States. For the sake of clarity, it is not a necessary condition for the finding of bad faith that the cancellation applicant actually possessed concrete enforceable rights in the European Union prior to the filing of the contested application.

Bad faith relates to a subjective motivation on the part of the trade mark proprietor— a dishonest intention— which will none the less normally be established by reference to objective criteria; it involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against such standards (12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60).

In the circumstances of the present case, this can be inferred from the fact that, at the time when the contested EUTM was filed (2015), the current EUTM proprietor and the applicant were already in the middle of a dispute that started 5 years before over the attempt from the part of the applicant to enter with its Remitite products on the EU market (at least the German market). The applicant’s steadily preparations for this entrance are proved at least by the EU certificates obtained for its products and its participations in other EU trade fairs as well as from negotiations with distributors located in the EU. The claim of the EUTM proprietor that the applicant could have participated in the following years after the incident of 2010 at other SMM trade fairs but chose not to is simply unreasonable. This is because the EUTM proprietor’s withdrawal from the respective trade fairs was not voluntarily but because of judicial coercive measures, as stated also in the HHRC decision.

Furthermore, the EUTM proprietor’s patent based on which the 2010’s preliminary injunction was granted lapsed after the 2012 SMM. Before the next SMM trade fair, the one of 2014, Mr Derek Jackson applied for the registration of the EUTM REMITITE which, for some unknown reason was identical to the applicant’s earlier sign Remitite, and, strangely, subsequently transferred precisely to Beele. Meanwhile, in 2015 Beele filed in its own name for the registration of the contested mark BEMITITE, highly similar to the applicant’s sign REMITITE, both covering identical or very similar goods. Noteworthy, the EUTM REMITITE filed by Mr Jackson and transferred to Beele was invalidated by the EUIPO in parallel cancellation proceedings (decision of 03/06/2019 in case 15091 C) as being filed in bad faith, the respective decision being final.

The EUTM proprietor explained that the mark Bemitite was created as a play of word meaning “be my tight(ening)”. However such explanation is at least questionable. In the abovementioned Cancellation Decision in case 15091 it is underlined the curious fact that, from an infinity of denominations available on the market, it was selected precisely the name ‘Remitite’ to be registered as an EUTM, denomination which is exactly the company name of ‘Beele’’s direct competitor to which it had already a previous conflict and that was trying to extend its activity in the EU. The same question arise in the present case since between the marks REMITITE and BEMITITE there is just a minor visual difference between the lower part of the first letters B and R that can be clearly overlooked.

Furthermore, the Cancellation Division agrees with the findings of the Hanseatic Higher Regional Court in this respect: “The applicant's allegation that the trademark application BEMITITE reveals a pun with the meaning "Be my fortress" ("Be my tight(ening)") and that it would use such puns in its marks frequently, is lacking any persuasiveness already in itself, but especially in the required overall impression. In case use of the terms “my" and “tight" had been intended, the word formation BEMYTIGHT, which could not nearly be confused in the same way, would have seemed much more reasonable.” (Page 23 the English translation).

Moreover, it is noted that ‘Beele’ filed and registered in June 2015 as EUTMs other trade marks that are highly similar to the contested mark (Resitite and Revitite) in its own name. Despite Beele’s allegations, all these trade marks do not fit in Beele’s already existing trade mark portfolio at the time of filing of the contested mark (e.g Drifil, Controfil, Actifoam, Nofirno, Slipsil, Beebond, Beeseal or Beele).

The last two trade marks, RESITITE and REVITITE, as well as the current contested mark BEMITITE were surrendered by ‘Beele’ on 13/12/2018, presumably as a result of the Decision of the Hanseatic Higher Regional Court of 13/09/2018 in which the court considered that the mark BEMITITE was filed in bad faith. The EUTM proprietor’s actions stand against it and its claims because, as the Hanseatic Higher Regional Court said, “if the applicant - as it declares- had indeed been so convinced that the respondent withdrew completely from the European market after the fair SMM2010 and had no further interest in it, the applicant would not have had the slightest reason to “surround” the respondent so systematically at the same time with highly confusingly similar trademarks, as it happened. In this case, nothing would have been more obvious than to apply for the trade mark REMITITE in Europe in the name of the applicant itself at the same time”. (Page 28 the English translation).

Deciding upon ‘Beele’’s knowledge about the business activity of the applicant and its negotiations with various partners for the distribution of its products in the EU and about ‘Beele’’s claim that it assumed that the invalidity applicant had permanently withdrawn from the German/European market after 2010 SMM, the Hanseatic Higher Regional Court stated that “the applicant’s [‘Beele’] behaviour of filing trade mark applications in the area of similarity of Remitite is, according to the facts, a reaction to this knowledge”.

As it can be seen from the diagram filed by the applicant in its second set of observations, the applicant was indeed blocked by the EUTM proprietor at basically all SMM trade fairs since 2010. Using the contested EUTM not to protect a trade mark according to its distinctive function but to wield the registration as a weapon or tool to reach an abusive or fraudulent and deviating from the legitimate functions of a trade mark, the protection of which are the objectives pursued by the EU trade mark law, is in the Cancellation Division’s opinion a clear proof of unfair practice towards Beele’s competitor.

As regards the defence of the EUTM proprietor that it is still enjoying the protection for patent EP 2116280 B1 effective until 2022 for ‘Fire-resistant system for passing at least one cable, tube or the like through an opening in a wall’ so it was not necessary to register an allegedly bad-faith trade mark, this is also not convincing. As observed also by the Hanseatic Higher Regional Court, “there is nothing to suggest that the infringement of the patent EP-0534546381, which expired in 2012, alleged against the respondent [the invalidity applicant] also constitutes an infringement of the persisting patent EP 2116280 B1 and that thus the respondent for legal reasons had to be effectively prevented from the re-entering the German /European market with its products with the designation REMITITE”.

Therefore, in the Cancellation Division’s opinion, Beele had the contested mark registered effectively creating an obstacle to the applicant’s expansion into the European Union market. This could effectively prevent the applicant from carrying out its business activities and justifies the applicant’s legitimate interest in obtaining a decision for invalidating the EUTM.

Although the enforcement of a EUTM is not sufficient in itself to constitute an act of bad faith, these circumstances indicate that the EUTM proprietor had, at the moment of filing of the EUTM, a dishonest objective to prevent a third party from entering the EU market (judgment of 11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, §44).

The application is not only successful as regards the contested goods but it is also successful as regards the rest of the contested services, given that the protection of the general interest in business and commercial matters being conducted honestly justifies invalidating an EUTM also for services that are dissimilar to those being carried out by the invalidity applicant and do not even belong to an adjacent or neighbouring market. For this reason, a positive finding of bad faith at the time of filing the contested EUTM can only lead to the invalidity of the EUTM in its entirety (11/07/2013, T-321/10, Gruppo Salini, EU:T:2013:372, § 48).

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods and services.

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

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

The Cancellation Division

Carmen SÁNCHEZ PALOMARES

Ioana MOISESCU

Richard BIANCHI

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.