OPPOSITION No B 2 623 893

Biostar Microtech International Corporation, 2F, No. 108-2, Min Chuan RD., 231, Xindian Dist., New Taipei City, Taiwan (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Suprema HQ Inc., 6 Ho 16 F. 248, Jeongjail-Ro, Bundang-Gu, Seongnam-Si, Gyeonggi-Do, Republic of Korea (applicant), represented by Cabinet Germain & Maureau, 12 rue Boileau, 69006 Lyon, France (professional representative).

On 04/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 623 893 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 14 557 219 . The opposition is based on European Union trade mark registration No 1 165 059 .  The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, .

The contested application was published on 06/10/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 06/10/2010 to 05/10/2015 inclusive.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

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

Class 9: Computer systems, namely computers, printers, main boards, interface cards, keyboards, monitors, scanners, modems, disk drivers, add-on cards and pointing devices for use in personal computers, including mouses and tablets; computer parts and components; circuit boards and circuit cards for computers; facsimile machines.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 16/02/2017, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 21/04/2017 to submit evidence of use of the earlier trade mark. On 20/06/2017 (within the time limit extended until 21/06/2017), the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Annex 5: Product catalogues of February 2012 and March 2015 showing the opponent’s goods (mostly main boards (also called ‘motherboards’) and, only on few occasions, graphic cards and mini computers) and a modified version of the earlier trade mark ‘BIOSTAR’.

• Annex 6: Pricelists for Germany and the European Union for the years 2011-2015 concerning mostly the opponent’s main boards (and to some extent graphic cards), showing a modified version of the earlier trade mark ‘BIOSTAR’.

• Annex 7: Invoices and related delivery notes for ‘BIOSTAR’ main boards sold to various countries of the EU in the relevant period.

• Annex 8: Product reviews for the opponent’s main boards from the United Kingdom from the years 2011 and 2012 and advertising material from the United Kingdom concerning the relevant period.

• Annex 9: Advertising materials and purchase offers of the opponent’s main boards related to Germany and the year 2014; credit notes concerning the advertisements of the ‘BIOSTAR’ products in 2014 and 2015.

• Annex 10: Examples of media and exhibition coverage of the ‘BIOSTAR’ main boards in the European Union within the relevant period.

• Annex 11: Print-outs from various EU websites of ‘Amazon’ with purchase offers of the ‘BIOSTAR’ main boards, including some consumer reviews.

• Annex 12: Invoices relating to the participation of the opponent at the international exhibition ‘Cebit’ in Germany in the years 2010 - 2013 and at ‘Intel Solutions Summit 2014’ in Copenhagen in 2014 together with photographs of the ‘BIOSTAR’ exhibition stands.

On 23/01/2018, after expiry of the time limit, the opponent submitted additional evidence, namely Annexes 16-21.

Even though, according to Rule 22(2) EUTMIR (in force at the moment of filing the request for proof of use), the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 95(2) EUTMR (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 30).

The factors to be evaluated when exercising this discretion are, first, whether the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, whether the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

Moreover, the Office is not required, when exercising its discretion under Article 95(2) EUTMR, to examine all the criteria referred to above. One of those criteria alone is sufficient to establish that it does not have to take into account the late evidence.

In this regard, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

In the present case, the initial two-month time limit set by the Office for the opponent to submit proof of use was extended by additional two months which gave the opponent sufficient time to prepare and submit the necessary evidence. Moreover, the late evidence (mentioning facts occurred between 2010 and 2015) was available before the time limit had expired and there is, therefore, no apparent justification for its late submission. Finally, the late evidence seems to be a further set of documents that were filed by the opponent on its own will rather than documents that were submitted in reaction to the applicant’s arguments with the aim to explain or clarify the evidence already on file.

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Office therefore decides to take into account only the evidence submitted within the time limit. In the circumstances of the case, it is not appropriate to re-open the adversarial part of the proceedings and delay the proceedings by a further round of observations from the parties.

In any case, the late evidence in essence only corroborates the information already on file and does not provide any additional proof that would broaden the scope of genuine use proven by the initial evidence.

The documents in Annexes 6-12 show that the place of use is in the European Union. This can be inferred, for example, from some addresses in various countries of the EU. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices, product reviews, media coverage or the product offers at ‘Amazon’, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. These documents prove that the opponent’s main boards were constantly offered for sale and sold in substantial quantities in various countries of the European Union during a substantial part of the relevant period.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

The evidence shows that the mark has been used in accordance with its function and essentially as registered.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier trade mark is as follows:

The mark appears in the evidence essentially in the following forms:

1. 

2. BIOSTAR

Both forms of use are considered to be acceptable variations of the mark as registered. The additions or omissions are rather minor because they only concern elements of stylisation with a rather limited trade mark impact. Consequently, these additions or omissions do not alter the distinctive character of the mark as registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145 and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

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

In the present case, the evidence proves use only for main boards (which, following the definitions provided by both parties, are parts of computers that allow communication and connection between various components of the system). There are only very few indications concerning the other goods mentioned by the opponent, namely graphic cards and mini computers. Thus the extent of use proven for these other goods is clearly insufficient.

Therefore, the Opposition Division will only consider main boards in Class 9 in its further examination of the opposition.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

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

Class 9: Main boards.

The contested goods are, following a limitation of 22/08/2016, the following:

Class 9: Computer software [recorded] for access control or time and attendance management using biometrics including fingerprint, facial and iris; downloadable application software, namely downloadable server and client software for management of users and biometric devices; wire/wireless doorlock apparatus for access control; fingerprint checking doorlock; biometric readers; fingerprint scanners; biometric identification device for time and attendance management; fingerprint identification systems; biochip inspectors; intruder preventing sensors; security equipment for face recognition; optical reader for recognizing passport fabrication; encoded identity cards; iris recognition door lock; biometrics recognition apparatus.

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.

The opponent’s main boards are parts of computers (in particular personal computers) that allow communication and connection between various components of the system. As such, they are used by specialised IT firms which are building computers or computer systems.

The contested goods are, in essence, various devices and software for surveillance, security and access control purposes, most of them based on biometrics. They are highly specialised products targeting for example companies in the security sector, public authorities or companies requiring a high level of surveillance and security.

Although both the opponent’s and the applicant’s goods essentially fall in the IT field, there is no clear link between them applying the established criteria for similarity. The nature of the goods is different because main boards are integral parts of computers (they are, in essence, printed circuit boards) whereas the contested goods are software or ready-made surveillance or security devices. The purpose of main boards is to allow the basic functioning of a computer whereas the contested goods are used for surveillance/security purposes. The goods satisfy different needs. The method of use of the goods is different because main boards are used by incorporating them into a computer while the contested goods are used by installing them for example in buildings.

Given the specific nature of both the opponent’s and especially the applicant’s goods, they are likely to be manufactured by different producers specialised in different fields (namely manufacturing of printed circuit boards versus biometric security and surveillance devices). Their production requires different skills and know-how. For the aforesaid reasons, the goods do not coincide in producers as claimed by the opponent. The fact that there are two producers in the world that produce both main boards and security devices (one in the United States of America and the other in Taiwan, as shown in the evidence filed by the opponent) seems to be rather an exception than a rule. Moreover, this evidence concerns other territories than the EU.

Furthermore, due to their different nature, purpose of use and usual commercial origin, the goods compared are likely to be marketed through different trade channels and sales outlets. They also target different public.

Finally, the goods cannot be considered complementary, as argued by the opponent.

Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Although some of the contested goods might contain main boards, these would be rather one of many parts of the finished contested product and not the essential one that would determine the whole character of the product. Bearing in mind the above case-law, the relevant consumers of the contested surveillance and security goods would not expect that they are produced by a manufacturer of main boards (i.e. by the opponent). Hence, the opponent’s arguments emphasising the complementarity between the goods must be dismissed.

In view of all the above findings, the goods are considered dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the identity or similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) 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

Saida CRABBE

Vít MAHELKA

Klaudia MISZTAL

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.