OPPOSITION No B 2 752 874

Automatic Switch Company, 160 Park Avenue, 07932 Florham Park, New Jersey United States of America (opponent), represented by Urquhart-Dykes & Lord LLP, Cale Cross House, Pilgrim Street, NE1 6SU Newcastle-Upon-Tyne, United Kingdom (professional representative)

a g a i n s t

TM Technologie - Spółka z o.o., Morawica 355, 32-084 Morawica, Poland (applicant), represented by Triloka Czarnik Ozog Kancelaria Patentowa i Adwokacka Sp.P., ul. Kornela Ujejskiego 12/7, 30-102 Kraków, Poland (professional representative).

On 21/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 752 874 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 203 813 ‘APCO’, namely against all goods and services in Classes 9, 11 and 37, and some of the services in Class 42. The opposition is based on European Union trade mark registration No 211 698 ‘ASCO’ and United Kingdom trade mark registration No 2 442 520 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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 marks on which the opposition is based, namely European Union trade mark registration No 211 698 ‘ASCO’ and United Kingdom trade mark registration No 2 442 520 .

The date of filing of the contested application is 11/03/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union (European Union trade mark registration No 211 698) and in the United Kingdom (United Kingdom trade mark registration No 2 442 520) from 11/03/2011 to 10/03/2016 inclusive.

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

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

European Union trade mark registration No 211 698 ‘ASCO’

Class 9: Electric and electro-magnetic controls and electronic control equipment; automatic electric switches, valves, magnet and solenoid operated switches and relays.

United Kingdom trade mark registration No 2 442 520

Class 9: Accessories for temperature-dependant monitoring and control devices for gas heating apparatus, namely temperature sensors, relays, switches, indicator lights, and acoustical signalling devices; actuators; alarm panels; applied electronic machines and instruments; electric switches including automatic electric switches, breaker switches, and bypass switches; valves, including automatic air operated valves, automatic and electric valves, automatic control valves; valve islands; valve monitoring systems; coils; comfort controls; communications systems; computer hardware and software for monitoring and control of multiple power generator systems and transfer switches for emergency and standby power; computer monitors; computer peripheral devices; computer software comprising computer-based electronic analogs for fire pump controllers; computers; connectivity modules; connectors; contactors; control boards; control panels; control valves including solenoid operated hydraulic valves; current monitors; digital data displays and monitors; dimmer bypass switches; electric, electro-magnetic, electronic and solid state control apparatus and equipment; electric surge protectors; electric valves for controlling the loss of fluids; electrical and electromagnetic regulators; electrical connectors; electrical control panels for industrial use; electrical switches and transducers; electrically-operated valves for industrial use, and valve fittings therefor; electrohydrolic valves and actuators; electromagnetic and electronic regulating accessories; electromagnetic driven pistons; electromagnetic valves; electro-magnets; electronic timers; electro-pnematic poppet valves; electro-pneumatic slide valves; electro-pneumatic spool valves; filters; fire pump controllers; flow controls; fluid flow control valves; FRLs; gas solenoid valves; gas valves and actuators; pilot generators, igniters and adapters/fittings therefor; gauges for gas valves; heating controls; industrial controls comprising duplex controllers; interface modules; isolation valves and parts, fittings and accessories therefor; jockey pump controllers; junction boxes; key locks; lighting contactors; lighting control systems; lubricators; magnet and solenoid operated switches, relays and breaker switches; magnets; meters; microprocessor metering devices; microprocessors; modules; network cards packaged control unit for starting up, synchronizing, and paralleling electrical power sources, the unit including automatic transfer switches, isolating switches, engine starting controls, solenoids, battery chargers, solenoid valves, electronic monitors, and contractors; parts, fittings and accessories for valves, solenoid valves, isolation valves, pinch valves and valve manifolds, namely, fittings for valves, silicone tubing, tubing guides, electrical connectors, strainers, flow controls, electronic timers, junction boxes, filters, regulators, lubricators, gauges and key locks, field bus protocols; pilot generators, burners, igniters and adapters/fittings; pilot valves; pistons; position indicators; potentiometers; power control systems and components; power operated valves for gas burners; pressure and temperature actuated switches; pressure monitors; pressure sensors; pressure switches; process control pilot valves; propulsion accessories for fluids; range controls; rectifiers; redundant control systems; regulators; relays; safety valves; self-recycling valves; shut down panels; shut off valves; silicone tubing; solenoid operated valves; solenoid pilot valves; strainers; switches; telephone interface modules; temperature switches; thermocouplers and parts therefor; thermostatic valves; thermostats; transfer switches and engine generators; transformers; transmitters; tubing guides; din connectors

Class 11: Burners and adapters/fittings therefor; heating control devices for cooking apparatus; pipeline strainers; tap water faucets.

Class 37: Maintaining emergency electric power systems; installation and maintenance services in the field of emergency power systems.

Class 42: Monitoring services.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 16/08/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 21/10/2017 to submit evidence of use of the earlier trade marks. The Office, upon the opponent’s request, extended this time limit until 21/12/2017. On 20/12/2017, within the time limit, the opponent submitted evidence of use.

Furthermore, on 23/06/2017, before the request for proof of use was made by the applicant, the opponent submitted a brochure regarding its history. This piece of evidence will be also taken into account as it was submitted within the time limit.

The evidence to be taken into account is the following:

Evidence submitted on 23/06/2017

Annex 3: Excerpt from the brochure titled ‘ASCO Load Banks’ (10 pages in total). The brochure is undated, is in English and contains the trade marks in question on the first two pages and on its last page (e.g. and also a word mark ‘ASCO’). According to the brochure ‘ASCO is your one-stop partner that offers complete solutions that you can rely on to solve any power testing requirement’ (second page). The brochure concerns predominantly products sold under other trade marks, namely Avtron, Froment and Sigma (pages 3-10). The last page contains information that in 2015 ‘Avtron and Froment become brands of ASCO Power Technologies’.

Evidence submitted on 20/12/2017

Annex 1: 28-page brochure titled ‘ASCO 7000 Services Power Transfer Switches’. The brochure bears a copyright note of October 2012 (on the last page) and was printed in the United States of America. It is in English and contains the earlier trade marks (e.g. and also a word mark ‘ASCO’). According to the brochure ‘ASCO Power Transfer Switches are the standard of the industry’ (third page). The brochure concerns predominantly Power Transfer Switches sold under the earlier trade mark, namely a particular line of products . It concerns also other products such as microprocessor controllers, user controls, indicators and other optional accessories for the transfer switches. According to the brochure the ASCO switches ‘are designed to provide transfer of loads between power sources with a timed load disconnect position for an adjustable period of time’ (page 4). No reference to the territory is made.

Annex 2: Quotation provided by Emerson Power Network Limited with a seat in Skelmerslade (United Kingdom), under the consent from the opponent, to a company WMB Installations Ltd with a seat in Manchester (United Kingdom). It is in English and is dated 18/02/2013. The price is given in GBP. It concerns the switchboard replacement of an automatic closed transition transfer switch (catalogue number 7ACTSB30400J5XC).

Annex 3: Purchase order made by WMB Installations Ltd with a seat in Manchester (United Kingdom) and sent to Emerson Power Network Limited with a seat in Skelmerslade (United Kingdom). It is in English and is dated 24/03/2013. The price is given in GBP. It concerns a product with a catalogue number 7ACTSB30400J5XC. A delivery note is attached to the order in question (dated 25/05/2013).

Annex 4: Purchase order made by Siemens AG Oesterreich with a seat in Weiz (Austria) and sent to Emerson FZE / ASCO Power with a seat in Dubai (United Arab Emirates). It is in English and is dated 26/11/2015. The price is given in USD. It concerns the following products (with regard to some of them only catalogue symbols appear): 309320-003 (9 feet Extension Harness) and 2100113237 (Automatic Transfer Switch ASCO Type 7000). Document titled ‘Commercial Proposal ASCO 7000 Series) is attached to the order in question (dated 26/11/2015). It concerns a product referred to as D07ATS030150J5X0 (7000 Series ATS). Annex 4 comprises also an invoice issued by Emerson FZE / ASCO Power with a seat in Dubai (United Arab Emirates) for Siemens AG Oesterreich with a seat in Weiz (Austria). The price is given in USD. The invoice is in English and is dated 22/12/2015. The documents do not contain any description of the goods. Only a statement appears ‘all switches will be supplied with ASCO standard packing’ in the commercial proposal and ‘automatic transfer switches’ in the invoice. With regard to the latter no price is indicated.

Annex 5: Commercial proposal made to a company named Fanox with a seat in Spain. It is in English and is dated 18/05/2015. It concerns a product with a catalogue number 330DF08AWRL2S. An invoice is attached thereto. The invoice was issued by Emerson FZE / ASCO Power with a seat in Dubai (United Arab Emirates) for Fanox Electronic S.L. with a seat in Bizkaia (Spain). It is in English and is dated 02/06/2015. The price is given in USD. The documents do not contain any reference to particular goods such as transfer switches (only catalogue numbers are given).

Annex 6: Extract from a brochure titled ‘ASCO Panelmount (Facility – Wide) Surge Protection’ (six pages in total). This brochure bears a copyright note of 2012 (on the last page). It is in English and contains the earlier trade marks (e.g. and also a word mark ‘ASCO’). According to the brochure ‘Emerson Network Power has developed a series of products to specifically address these potential SURGEHOTSpots’ and ‘offers protection from transistors on distribution panels or any medium exposure locations’ (pages 3 and 4). Some model numbers are given, for example 330SA05AWRL2S (page 5). No reference to the territory is made. There is only an address of the company in the USA. No information is given as to whom or where it was distributed.

Annex 7: Commercial proposal made to a company named SMIT Transformers B.V. It is in English and is dated 26/10/2015. It concerns a product with a catalogue number 3ATSA20104FGXD (300 Series ATS). The price is given in USD. A purchase order is attached to this commercial proposal. It was issued by SMIT Transformers B.V. with a seat in Nijmegen (Netherlands) and addressed to Emerson FZE / ASCO Power with a seat in Dubai (United Arab Emirates). It is in English and is dated 19/05/2016, that is, outside the timeframe. The price is given in USD. It concerns a product with a catalogue number P1069886. Annex 7 contains also an invoice issued by Emerson FZE / ASCO Power with a seat in Dubai (United Arab Emirates) and addressed to SMIT Transformers B.V. with a seat in Nijmegen (Netherlands). It refers to a product with a catalogue number 3ATSA20104FGXD (300 Series ATS). It is in English and is dated 13/06/2016. The price is given in USD. The documents do not contain any reference to particular goods (only catalogue numbers are given).

Annex 8: Commercial proposal made to a company named Importex. It is in English and is dated 13/03/2015. It concerns a product with a catalogue number DO7ATSA30100H5X0 (ASCO 7000 Series Transfer Switch). The price is given in USD. A purchase order is attached to this commercial proposal. It was issued by Importex and addressed to Emerson FZE / ASCO Power with a seat in Dubai (United Arab Emirates). It is in English and is dated 03/06/2015. The price is given in USD. It concerns a product with a catalogue number DO7ATSA30100H5X0 (ASCO 7000 Series Transfer Switch). Annex 8 contains also an invoice issued by Emerson FZE / ASCO Power with a seat in Dubai (United Arab Emirates) and addressed to Importex Handelsgesellschaft mbH with a seat in Lilenthal (Germany). It refers to a product with a catalogue number DO7ATSA30100H5X0 (ASCO 7000 Series Transfer Switch). It is in English and is dated 05/07/2015. The price is given in USD. The documents do not contain any description of the goods. Only a statement appears ‘all switches will be supplied with ASCO standard packing’ in the commercial proposal and ‘transfer switch’ in the invoice.

Annex 9: Letter concerning a service contract in which ASCO Power technologies/Emerson with a seat in Skelmersdale (United Kingdom) offers its services for Johnson Controls GWS with a seat in Copenhagen (Denmark). It is in English and is dated 22/03/2014. The price is given in GBP. The contract concerns routine annual maintenance which includes ‘clean, inspection and test of the transfer switches’. A purchase order is attached to the letter in question. It is issued by Emerson Network Power Limited with a seat in Marlow (United Kingdom) for CSC with a seat in Weavering-Maidstone (United Kingdom). It is in English and is dated 08/04/2014. It concerns ‘carry out one annual clean, inspection and test of the transfer swiches and produce a report on the condition for CSC Valby Copenhagen’.

Annex 10: Inspection report issued by Emerson Network Power Limited with a seat in (United Kingdom) with regard to a product with a catalogue number E07ATSC34000J5XC. It is in English and is dated 11/05/2014. Neither the place of inspection nor the name of the ordering party is given.

Annex 11: Three purchase orders dated 11/08/2014 issued by ASCO Power Technologies with a seat Skelmersdale (United Kingdom) for Norland with a seat in Dublin (Ireland). These orders are in English and are dated 11/08/2014. They concern ‘annual clean, inspection and test of the each LCP&MCP line’. The prices are given in Euro.

Annex 12: A few letters concerning a service contract in which ASCO Power Technologies/Emerson with a seat in Skelmersdale (United Kingdom) offers its services for Norland Managed Services with a seat in Dublin (Ireland). It is in English and is dated within the relevant period of time. The prices are given in Euro. The contract concerns routine annual maintenance which includes ‘clean, inspection and test of the transfer switches’.

Annex 13: Three purchase orders issued by Norland Managed Services with a seat in Dublin (Ireland) for ASCO Power Technologies with a seat in Skelmersdale (United Kingdom). These orders are in English and are dated 26/08/2015. They concern ‘annual clean, inspection and test of the each LCP&MCP line’. The prices are given in Euro.

Assessment of evidence

In accordance with Article 10(3) EUTMDR, the indications and evidence required in order to submit proof of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based. These requirements for proof of use are cumulative (05/10/2010, T 92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements.

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).

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 use of the earlier mark must be established to the satisfaction of the Office and not merely assumed. Therefore, the evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark was genuinely used.

The evidence concerning proof of use may cover the following documents, for example: invoices, price lists, affidavits, catalogues, surveys, turnover and sales figures, press clippings, samples of products/packaging, advertisements, offers made to potential clients and other documents confirming that the mark was used genuinely on the market. The opponent submitted some of the aforesaid documents, such as invoices, purchase orders, post-service reports and brochures. It should be emphasised that the final outcome depends on the overall assessment of the evidence in the particular case.

The Opposition Division notes that the evidence concerns partly goods (Annexes 1-8 submitted on 23/06/2017) and partly services (Annexes 9-13 submitted on 23/06/2017) as it was stated by the opponent. The evidence submitted on 23/06/2017 (Annex 3) concerns solely goods.

At this point, the Opposition Division considers it appropriate to focus the assessment of the evidence on the criteria of extent of use (with regard to the goods) and place of use (with regard to the services); in its opinion, the evidence submitted by the opponent is insufficient to prove that these requirements have been met in the present case.

Extent of use

It has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market. The trade mark has to be used for goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (judgment of 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37).

The evidence submitted on 23/06/2017 (Annex 3) does not concern products offered under the earlier trade marks, but under other brands such as ‘Avtron’, ‘Froment’ and ‘Sigma’ (pages 3-10). The last page contains an information that in 2015 ‘Avtron and Froment become brands of ASCO Power Technologies’.

With regard to the evidence submitted on 23/06/2017 they cover two brochures (Annexes 1 and 6) and commercial documents concerning five transactions of goods. These transactions were made by the following companies: WMB Installations Ltd (quotation – Annex 2, purchase order – Annex 3), Siemens AG Oesterreich (commercial proposal, purchase order and invoice – Annex 4), Fanox (commercial proposal and invoice – Annex 5), SMIT Transformers B.V. (commercial proposal, purchase order and invoice – Annex 7) and Importex (commercial proposal, purchase order and invoice – Annex 8).

The only documents where the earlier trade marks appear are the brochures and the commercial documents in relation to the purchase made by Siemens AG Oesterreich (Annex 4). With regard to the latter it is clear that the transaction concerned the product sold under the mark in question, namely ‘Automatic Transfer Switch ASCO Type 7000’ (i.e. D07ATS030150J5X0 7000 Series ATS). The other commercial documents do not refer to any trade marks as only catalogue symbols appear in these documents. For example, with regard to Annexes 2-3 the documents concern a product with the catalogue number ‘309320-003 (9 feet Extension Harness)’ and with regard to Annex 5 they refer to a product with the catalogue number ‘330DF08AWRL2S’. Furthermore, it should be noted that a connection cannot be found between these codes of the products listed on the commercial documents and the codes present on the brochures. It is therefore impossible to figure out whether these products were sold under the earlier trade marks or other trade marks used by the opponent, for example ‘Avtron’, ‘Froment’ or ‘Sigma’.

With regard to the brochures, they were printed in the United States of America and the opponent did not submit any evidence confirming that these brochures were distributed in the territory of the European Union.

Therefore, the Opposition Division is of the opinion that the only one set of documents confirming sale of some products bearing the earlier trade marks (Annex 4) is not enough to contribute to the finding of extent of use. Therefore, the evidence concerning the relevant goods is insufficient with regard to the extent of use.

Place of use

With regard to the services, the documents (i.e. Exhibits 9-11) show that the place of use was predominantly Ireland (Exhibits 11-13) and also Denmark (Exhibit 9). According to these documents the maintenance and cleaning services were provided by a company with a seat in the United Kingdom. It should be however noted that an indication of the registered seat of the owner of the mark may not be regarded as sufficient indication that the use has taken place in that particular country. If the earlier mark is a national mark with effect in one of the Member States of the European Union, the mark must have been genuinely used in the country where it is protected (Article 47(3) EUTMR). Furthermore, even though Article 18(1)(b) EUTMR stipulates that the affixing of the trade mark to goods or to the packaging thereof in the European Union solely for export purposes is considered as use of the mark, mere indication of the opponent’s seat as such does not constitute evidence of such acts. On the other hand, the fact that clients who have their seats outside the relevant territory are listed in the documents for proving use of the earlier mark is in itself not sufficient to rule out that services (e.g. promotion services) may actually have been rendered in the relevant territory for the benefit of these companies located in other territories (09/06/2010, R 952/2009-1, Global Tabacos, § 16). In addition, as stated above, Exhibit 10 refers neither to the place of inspection nor to the name of the ordering party. Therefore, it does not contribute to finding whether the services were used in the relevant territory.

In the above, the evidence concerning the services in question does not relate to the relevant territory.

Overall assessment

It is important to note that, when evaluating the evidence submitted, the Opposition Division has to make an overall assessment, and all the circumstances of the case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Individual items of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with the other documents and information submitted.

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during (with regard to the services) and for the relevant extent (with regard to the goods).

Although the opponent is free to choose its means of proving the extent of use (08/07/2004, T 203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to show the reality of the commercial use of the mark in the relevant territory at least to an extent that is sufficient to dispel any possible belief that this use might be merely internal, sporadic or token. The materials listed above do not in themselves enable the Opposition Division to determine that genuine use has been made of the trade marks in question.

The methods and means of proving genuine use of a mark are unlimited. The above finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the opponent chose to restrict the evidence submitted (15/09/2011, T 427/09, Centrotherm, EU:T:2011:480, § 46).

The evidence submitted by the opponent contains several deficiencies that prevent the Opposition Division from ascertaining whether the earlier mark was genuinely used in the relevant territory and to the appropriate extent. These materials prove only some sporadic sales of goods to clients. Furthermore, they do not prove that services were rendered in the relevant territory.

Since two of the factors have not been proved by the opponent, namely the place and extent of use, there is no need to assess the remaining factors, that is, the nature and time of use.

In the present case the Opposition Division is of the opinion that the evidence assessed in its entirety is insufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory for some of the goods and services for which it is registered.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR in relation to European Union trade mark registration No 211 698 and Article 47(2) and (3) EUTMR EUTMR in relation to United Kingdom trade mark registration No 2 442 520 together with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).

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

Irina SOTIROVA

Michal KRUK

Loreto URRACA LUQUE

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.