DECISION

of the Second Board of Appeal

of 12 November 2019

In case R 71/2019-2

Automatic Switch Company
160 Park Avenue Florham Park, New Jersey 07932 United States of America	Opponent / Appellant

represented by Urquhart-Dykes & Lord LLP, Cale Cross House, Pilgrim Street, Newcastle-Upon-Tyne NE1 6SU, United Kingdom

v

TM Technologie - Spółka z o.o.
Morawica 355 32-084 Morawica Poland	Applicant / Defendant

represented by Triloka Czarnik Ozog Kancelaria Patentowa i Adwokacka SP.P., ul. Kornela Ujejskiego 12/7, 30-102 Kraków, Poland

APPEAL relating to Opposition Proceedings No B 2 752 874 (European Union trade mark application No 15 203 813)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), C. Negro (Rapporteur) and H. Salmi (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 11 March 2016, TM Technologie - Spółka z o.o. (‘the applicant’) sought to register the word mark

APCO

for the following list of goods and services:

Class 9 – Electric and electronic apparatus and equipment, namely power supplies, batteries, accumulators, gauges and switches and stabilisers, starters and ignition systems for electric lamps; Electric and electronic evacuation systems, alarm systems, security systems for buildings, fire prevention systems and apparatus and parts therefor, included in this class; Signalling, checking (supervision) and controlling electric and electronic apparatus; Accumulators, electric; Acoustic signal transmitters; Alarms; Burglar alarms; Sound alarms; Fire alarms; Batteries for lighting; Batteries, electric; Electric batteries for vehicles; Battery jars; Choking coils (impedance); Electromagnetic coils; Coils, electric; Holders for electric coils; Chips (integrated circuits); Gauges; Light-emitting diodes (LEDs); Light (Traffic-) apparatus [signalling devices]; Bells [warning devices]; Alarm bells, electric; Signal bells; Fluorescent screens; Theft prevention installations, electric; Regulating apparatus, electric; Measuring devices, electric; Gasometers (measuring instruments); Sockets, plugs and other contacts (electric connections); Ducts [electricity]; Electric installations for the remote control of industrial operations; Sprinkler systems for fire protection; Holders for electric coils; Encoded magnetic cards; Encoded magnetic cards; Integrated circuit cards [smart cards]; Computer peripheral devices; Computers; Printers for use with computers; Portable computers; Portable and handheld computers; Intercommunication apparatus; Optical lanterns; Transmitters for telecommunication; Transmitters of electronic signals; Temperature indicator labels, not for medical purposes; Objectives [lenses - optics]; Printed circuits; Lens hoods; Lighting (batteries for- ); Print circuit boards; Processors [central processing units]; Computer programs, downloadable software; Recorded computer programs; Computer operating programs, recorded; Prisms (optics); Relays, electric; Switches, electric; Inverters (electricity); Converters, electric; Distribution consoles (electricity); Switchboxes (electricity); Milage recorders for vehicles; Battery boxes; Junction boxes (electricity); Battery boxes; Branch boxes (electricity); Optical lenses; Electric installations for the remote control of industrial operations; Signals, luminous or mechanical; Switchboxes [electricity]; Luminous signs; Light dimmers [regulators], electric; Flashing lights (luminous signals); Distribution boards (electricity); Signalling panels, luminous or mechanical; Chargers for electric batteries; Remote control apparatus; Optical apparatus and instruments; Plugs, sockets and other contacts (electric connections); Fire escapes; Detectors; Smoke detectors; Circuit breakers; Telerupters; Optical goods; Electrified rails for mounting spot lights; Connectors (electricity); Connections for electric lines; Junctions [electrical]; Connectors (electricity); Road signs, luminous or mechanical; Beacons, luminous;

Class 11 – Electric apparatus for lighting and parts therefor; Electric lamps, in particular light fittings, safety lamps, emergency lamps; Electric safety lighting installations; Electric lamps; Miners' lamps; Lamp shades; Lamps (Globes for-); Lamp mantles; Lamp casings; Burners for lamps; reflectors (lamp-); Lamp chimneys; Lamp glasses; Safety lamps; Aquarium lights; Electric lamps; Sockets for electric lights; Laboratory lamps; Luminous tubes for lighting; Lamps; Street lamps; Electric discharge tubes for lighting; Discharge tubes, electric, for lighting; Torches for lighting; Pocket searchlights; Pocket searchlights; Lanterns for lighting; Ceiling lights, luminous tubes for lighting; Lights and lighting; Apparatus and installations for lighting; Lighting apparatus for vehicles; Ceiling lights; Lightbulbs; Reflectors for vehicles; Vehicle lights; Reflectors for vehicles; Automobile headlamps; Vehicle lights; Automobile lights; Bicycle lights; Light diffusers;

Class 37 – Factory construction; Interference suppression in electrical apparatus; Machinery installation, maintenance and repair; Office machines and equipment installation, maintenance and repair; Electric appliance installation and repair; Burglar alarm installation and repair; Computer installation, repair and maintenance; Fire alarm installation and repair; Building construction supervision;

Class 41 – Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of workshops [training]; Arranging and conducting workshops (training); Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of colloquiums;

Class 42 – Technical research; Research and development for others; Design of buildings; Technical engineering; Calibration (measuring); Computer programming; Computer system design; Material testing; Technical project studies; Computer software design; Computer software design; Computer system design; Technical project studies; Industrial design; Material testing; Graphic design (art); Rental of software; Industrial design.

2. The application was published on 19 May 2016.

3. On 16 August 2016, Automatic Switch Company (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the goods and services, namely:

Class 9 – Electric and electronic apparatus and equipment, namely power supplies, batteries, accumulators, gauges and switches and stabilisers, starters and ignition systems for electric lamps; Electric and electronic evacuation systems, alarm systems, security systems for buildings, fire prevention systems and apparatus and parts therefor, included in this class; Signalling, checking (supervision) and controlling electric and electronic apparatus; Accumulators, electric; Acoustic signal transmitters; Alarms; Burglar alarms; Sound alarms; Fire alarms; Batteries for lighting; Batteries, electric; Electric batteries for vehicles; Battery jars; Choking coils (impedance); Electromagnetic coils; Coils, electric; Holders for electric coils; Chips (integrated circuits); Gauges; Light-emitting diodes (LEDs); Light (Traffic- -) apparatus [signalling devices]; Bells [warning devices]; Alarm bells, electric; Signal bells; Fluorescent screens; Theft prevention installations, electric; Regulating apparatus, electric; Measuring devices, electric; Gasometers (measuring instruments); Sockets, plugs and other contacts (electric connections); Ducts [electricity]; Electric installations for the remote control of industrial operations; Sprinkler systems for fire protection; Holders for electric coils; Encoded magnetic cards; Encoded magnetic cards; Integrated circuit cards [smart cards]; Computer peripheral devices; Computers; Printers for use with computers; Portable computers; Portable and handheld computers; Intercommunication apparatus; Optical lanterns; Transmitters for telecommunication; Transmitters of electronic signals; Temperature indicator labels, not for medical purposes; Objectives [lenses - optics]; Printed circuits; Lens hoods; Lighting (batteries for- ); Print circuit boards; Processors [central processing units]; Computer programs, downloadable software; Recorded computer programs; Computer operating programs, recorded; Prisms (optics); Relays, electric; Switches, electric; Inverters (electricity); Converters, electric; Distribution consoles (electricity); Switchboxes (electricity); Milage recorders for vehicles; Battery boxes; Junction boxes (electricity); Battery boxes; Branch boxes (electricity); Optical lenses; Electric installations for the remote control of industrial operations; Signals, luminous or mechanical; Switchboxes [electricity]; Luminous signs; Light dimmers [regulators], electric; Flashing lights (luminous signals); Distribution boards (electricity); Signalling panels, luminous or mechanical; Chargers for electric batteries; Remote control apparatus; Optical apparatus and instruments; Plugs, sockets and other contacts (electric connections); Fire escapes; Detectors; Smoke detectors; Circuit breakers; Telerupters; Optical goods; Electrified rails for mounting spot lights; Connectors (electricity); Connections for electric lines; Junctions [electrical]; Connectors (electricity); Road signs, luminous or mechanical; Beacons, luminous;

Class 11 – Electric apparatus for lighting and parts therefor; Electric lamps, in particular light fittings, safety lamps, emergency lamps; Electric safety lighting installations; Electric lamps; Miners' lamps; Lamp shades; Lamps (Globes for —); Lamp mantles; Lamp casings; Burners for lamps; reflectors (lamp-); Lamp chimneys; Lamp glasses; Safety lamps; Aquarium lights; Electric lamps; Sockets for electric lights; Laboratory lamps; Luminous tubes for lighting; Lamps; Street lamps; Electric discharge tubes for lighting; Discharge tubes, electric, for lighting; Torches for lighting; Pocket searchlights; Pocket searchlights; Lanterns for lighting; Ceiling lights, luminous tubes for lighting; Lights and lighting; Apparatus and installations for lighting; Lighting apparatus for vehicles; Ceiling lights; Lightbulbs; Reflectors for vehicles; Vehicle lights; Reflectors for vehicles; Automobile headlamps; Vehicle lights; Automobile lights; Bicycle lights; Light diffusers;

Class 37 – Factory construction; Interference suppression in electrical apparatus; Machinery installation, maintenance and repair; Office machines and equipment installation, maintenance and repair; Electric appliance installation and repair; Burglar alarm installation and repair; Computer installation, repair and maintenance; Fire alarm installation and repair; Building construction supervision;

Class 42 – Technical research; Technical engineering; Computer programming; Computer system design; Computer software design; Computer software design; Computer system design; Industrial design; Rental of software; Industrial design.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier rights:

1. EUTM registration No 211 698 for the word mark

ASCO

filed on 1 April 1996, registered on 19 June 1998 and duly renewed for the following goods on which the opposition is based:

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

2. United Kingdom trade mark registration No 2 442 520 for the figurative mark

filed on 29 December 2006, registered on 14 March 2008 and duly renewed for, inter alia, the following goods and services on which the opposition is based:

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.

6. The applicant requested that the opponent submit proof of use of the earlier marks on which the opposition was based. The opponent submitted documents as evidence of use.

7. By decision of 21 November 2018 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety. The opponent was ordered to bear the costs. It gave, in particular, the following grounds for its decision:

• The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely EUTM registration No 211 698 ‘ASCO’ and UK trade mark registration No 2 442 520.

• On 23 June 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 June 2017

• Annex 3: Excerpt from the brochure entitled ASCO Load Banks. The brochure is in English and undated. The earlier marks are visible on the first two pages and on the last page. 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 predominantly concerns products sold under other trade marks, namely ‘Avtron’, ‘Froment’ and ‘Sigma’. The last page contains information that in 2015 ‘“Avtron” and “Froment” become brands of ASCO Power Technologies’.

Evidence submitted on 20 December 2017

• Annex 1: 28-page brochure entitled ASCO 7000 Services Power Transfer Switches. The brochure bears a copyright note of October 2012 and it was printed in the United States of America. It is in English and contains the earlier marks. According to the brochure ‘ASCO Power Transfer Switches are the standard of the industry’ (third page). The brochure predominantly concerns Power Transfer Switches sold under the earlier trade mark, namely a particular line of products . It also concerns 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 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 entitled ‘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 also comprises 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 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 entitled 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 the 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 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 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 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 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 catalogue number DO7ATSA30100H5X0 (ASCO 7000 Series Transfer Switch). Annex 8 also contains 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 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 to 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 switches 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 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 euros;

• 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 euros. 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 euros.

Extent of use

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

• The evidence submitted on 20 December 2017 covers 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 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 catalogue number ‘309320-003 (9 feet Extension Harness)’ and with regard to Annex 5 they refer to a product with catalogue number ‘330DF08AWRL2S’. Furthermore, it should be noted that a connection cannot be found between these products codes listed on the commercial documents and the codes present in the brochures. It is therefore impossible to figure out whether these products were sold under the earlier 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 only one set of documents confirming the sale of some products bearing the earlier 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 noted however that an indication of the registered seat of the owner of the mark may not be regarded as a sufficient indication that 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, 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.

• The evidence concerning the services in question does not relate to the relevant territory.

Overall assessment

• It is concluded that the evidence furnished by the opponent is insufficient to prove that the earlier marks were genuinely used in the relevant territory (with regard to the services) and to the relevant extent (with regard to the goods).

• Although the opponent is free to choose its means of proving the extent of use, 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 evidence submitted does not enable the Opposition Division to determine that genuine use has been made of the trade marks in question.

• 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. The materials prove only some sporadic sales of goods to clients. Furthermore, they do not prove that the services were rendered in the relevant territory.

• Consequently, the evidence submitted is in its entirety insufficient to prove genuine use of the earlier marks during the relevant period in the relevant territory for some of the goods and services for which it is registered.

8. On 11 January 2019, the opponent filed an appeal against the contested decision. The statement of grounds of the appeal was received on 20 March 2019, together with a witness statement and Exhibits ST1 and ST2 to the witness statement.

9. On 11 April 2019, the applicant submitted its observations in reply together with Annexes. The deficiency in the Annexes pursuant to Article 55 EUTMDR, i.e. the missing index, was remedied on 25 June 2019.

Submissions and arguments of the parties

10. The arguments raised in the statement of grounds may be summarised as follows:

Extent of use

• The opponent submitted two brochures (Annexes 1 and 6) listing goods for sale in the EU under the ‘ASCO’ trade mark during the relevant period. In the contested decision, it is stated that there is no evidence confirming that these brochures were distributed in the EU. However, in point 1 of page 1 of the submissions, it is clearly stated that the Annex 1 brochure was available for download in the EU during the relevant period on specified websites.

• During the relevant period, the internet was, and remains, an important means of information facilitating commerce. Much product information is made available on company websites rather than by the provision of traditional printed brochures. The relevant brochures were available on the opponent’s websites to consumers for download in the EU during the relevant period. The Opposition Division has not provided any reasoning as to why this is not acceptable. Annex 1 clearly bears a copyright date of 2012. The opponent requests that the Board give the opponent the benefit of doubt and accept the submission that these brochures were available for download in the EU during the relevant period. However, if the Board of Appeal does not accept that these brochures were available in the EU, this does not mean that the goods described therein were not on sale in the EU and is therefore not fatal to the proof of use.

• Regarding the Annexes evidencing sales of ‘ASCO’ branded power transfer switches, surge protection devices and accessories during the relevant period in the EU, the Opposition Division stated that only the documents in Annex 4 bear the earlier (‘ASCO’) marks. This is demonstrably incorrect since the ‘ASCO’ marks appear as follows:

• Page 35: in Annex 2 quotation clearly states that one of the accessories to be provided is an ‘ASCO 5200 Series Power Manager’;

• Page 71: in Annex 7 commercial proposal identifies the manufacturer of the ‘Automatic transfer switch Series 300’ as ‘ASCO’;

• Page 73: in Annex 8 commercial proposal identifies the title of the proposal as ‘ASCO 7000 Series’;

• Page 75: in Annex 8, under the heading ‘Scope of Supply’, it is clearly stated that the order is for the ‘ASCO 7000 Series’ transfer switch;

• Page 27: a table is provided showing how the catalogue number of an ‘ASCO 7000 Series’ power transfer switch is derived;

• Page 34: in Annex 2, the quotation sets out ‘catalogue no. 7 ACTSB30400J5XC’, which is a catalogue number that matches the derivation given on the page 27 table. The Annex 2 quotation clearly contains a reference to an ‘ASCO 7000 Series’ power transfer switch. Similarly, in Annex 3 (page 39) the invoice bears the serial No ‘J7ACTSB30400J5XC’.

• The abovementioned Annexes clearly evidence ordering of ‘ASCO 7000 Series’ power transfer switches by use of the catalogue codes explained in the Annex 1 ASCO brochure. It is irrelevant that the word ‘ASCO’ does not appear alongside these codes on these sales documents. The Opposition Division speculates that these codes might refer to some other trade marks such as ‘AVTRON’, ‘FROMENT’ or ‘SIGMA’, but there is absolutely no evidence that they would. This is pure speculation and goes against the information clearly set out in the evidence filed.

• The same comments relating to the cross-referencing of catalogue numbers given in Annex 1 equally apply to the Annex 6 brochure (bearing a copyright date of 2013). On page 61 of Annex 6, a list of catalogue numbers for ‘ASCO 330 Series’ surge protection devices is given. On page 56 of Annex 7, one of these catalogue numbers appears in the invoice.

• It is irrelevant if the Annex 1 and 6 brochures were not circulated in the EU. The Annex 1 brochure proves the existence of ‘ASCO 7000 Series’ power transfer switches bearing exclusive catalogue numbers somewhere in the world during the 2012. The Annex 6 brochure proves the existence of ‘ASCO 330 Series’ surge protection devices bearing particular catalogue numbers in 2013. The fact that order documents and invoices exist from consumers in the EU bearing exactly the same catalogue numbers during the relevant time period shows that transactions involving these goods were taking place in the EU during the relevant time period, whether or not those brochures were circulated in the EU.

• It is unreasonable to reject invoices and other order documentation as evidence of use if they do not explicitly bear the relevant mark. The catalogue numbers in the invoices are clearly cross-referenced with product brochures bearing the relevant trade mark and identifying catalogue numbers under that trade mark. This is sufficient to evidence commercial transaction of the relevant goods in the EU during the relevant period. The Opposition Division’s speculation that other trade marks might have been involved, contrary to the evidence provided, is erroneous.

• Even if the Board were to reject the above submissions, it is submitted that the Opposition Division has erred in that it has applied a de minimis rule contrary to the provisions of 27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 24 et seq. This judgment states that use of the mark by a single client, which imports the products for which the mark is registered, can be sufficient to demonstrate that such use is genuine if it appears that the import operation has a genuine commercial justification for the proprietor of the mark.

• The Opposition Division accepted the Annex 4 evidence. This is therefore evidence of a commercial transaction of ‘ASCO’ branded goods in the EU during the relevant period satisfying the condition set out in the ‘Laboratoire de la mer’ judgment (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). Furthermore, Annex 3 page 41 sets out GBP 525 worth of commissioning services. Commissioning services involve the completion of the installation of the ‘ASCO’ branded goods evidenced. Proof has therefore been submitted as regards use of the ‘ASCO’ trade mark in Class 37 ‘installation and maintenance services in the field of emergency power systems’ during the relevant time period.

Place of use

• Annexes 9 to 11 clearly show that the company in the United Kingdom was selling maintenance and inspection services under the mark during the relevant period. Annex 2 also evidences commissioning (installation and maintenance) services in the UK in the relevant time period. That some of these services might actually have been rendered overseas is insufficient to reject the sale of such services in the relevant territory as evidence of use.

Witness Statement

• Reference is made to the enclosed Witness Statement of Mr T., Commercial and Managing Director of ASCO Power Technologies for Europe, the Middle East and Africa (the EMEA region). In his sworn testimony, Mr T. in point 6 sets out that the Annex 1 brochure was available for download in the EU during the relevant period. Mr T. also confirms in point 7 that the serial numbers given in the annexes are unique to ‘ASCO’ branded power transfer switches and are not used in relation to any other brand. Furthermore, Exhibit ST2 provides further evidence of sales regarding commissioning (installation and maintenance) services in the United Kingdom during the relevant period as proof of use concerning the services in Class 37.

• Whilst the appeal should succeed without this further testimony, the Board of Appeal is requested to consider the witness statement to put the evidence of use previously filed into context and address the criticisms of the Opposition Division, which are incorrect.

11. The arguments raised in response may be summarised as follows:

• The earlier UK registered mark has not been used by the opponent at all and no evidence has been submitted to prove otherwise. The scope of use of the earlier marks, if any, is extremely narrow, it covers only ‘power transfer switches’, as well as, if any, ‘maintenance, inspection services and commissioning services related thereto’.

• The brochures in Annexes 1 and 6 have never been distributed in the EU, and presumably they were published for use regarding US customers only.

• The Annex 1 brochure mentions the products described therein as ‘CE marked (optional)’ (page 8, Annex 1 Brochure, cf. Attachment No 1) meaning that a manufacturer declares that the product meets all the legal requirements for the CE market and can be sold throughout the European Economic Area, i.e. also the EU. However, the products may also be marked as ‘optionally’, as in said brochure, which means that they are not marketed in the CE now, which further means that this brochure does not prove the actual use of the earlier mark in the EU.

• Annex 1 also refers to the ‘ASCO POWERQUEST’ sign which incorporates the trade mark ‘POWERQUEST’ which is only registered in the US, and has never been registered or attempted to be registered by the opponent elsewhere.

• Annex 1 mentions ‘the new ASCO PowerQuest® Power Monitoring and Control System’. However, considering that the trade mark ‘POWERQUEST’, No 2 435 453 was registered in the US in March 2001, and that it must have been used within the next five years failing which this trade mark registration would have been revoked due to non-use, this brand was put into circulation no later than in 2005-2006, which means that the Annex 1 brochure announcing the ‘ASCO PowerQuest’ family of products as ‘new’ is indeed much older than the relevant period of 11 March 2011 to 10 March 2016. Also said brochure only provides the ASCO Power Technologie LP address in the US as the contact data, and not any other address in the EU which could have made the opponent’s statement regarding the ‘ASCO’ branded products distributed more reliable.

• In any case the use of the earlier mark by ASCO Power Technologies is not the same as it being used by Automatic Switch Company, the US company being a separate business entity, where the business links between the two, and also between the Emerson Network Power, were not further explained. Whether use by these two companies of the sign ‘ASCO’, could be treated as use of earlier EUTM registration No 211 698 has not been proven.

• As to Annexes 2, 7 and 8: page 35 of Annex 2 discloses no link to the EU; and page 71 of Annex 7 states ‘Manufacturer: ASCO’ and ‘Supplier: Asco Power Technologies’ which indicates that ‘ASCO’ / ‘Asco Power Technologies’ is a contract manufacturer for said products; however these products are branded as Smit Transformers (cf. Attachment No 3), thus the document does not refer to ‘ASCO’ marked products.

• Page 73 of Annex 8 indicates that the said product is an ‘ASCO’ product but does not prove that this product was indeed branded as such, and that it was manufactured under this brand.

• The opponent argued that the serial number in the table on page 27 of Annex 1 ‘ASCO 7000 Series power transfer switch’ are present in Annex 2 and Annex 3 (7ACTSB30400J5XC in Annex 2 and J7ACTSB30400J5XC Annex 3). The ‘J7ACTSB30400J5XC’ in Annex 3 starts with a ‘J’ and is followed by a set of other codes, which do not match the table chart shown in Annex 1 (cf. Attachment No 4), which mean that this serial number belongs to a product other than the ‘ASCO 7000 Series power transfer switch’. The products hidden under these catalogue numbers were however marked as ‘Emerson Network Power’ (cf. our Attachments No 5a-d) and the fact that they were advertised by ‘ASCO’ being apparently a sub-division of Emerson Network Power does not prove that they were marked as ‘ASCO’ either.

• The opponent argued that it is irrelevant whether or not the brochures in Annexes 1 and 6 were circulated in the EU. However, the opponent could have proven the existence of ‘ASCO 7000 Series power transfer switches’ and ‘ASCO 330 Series’ by submitting documents and invoices from consumers in the EU bearing exactly the same catalogue numbers during the relevant time period which would have shown that transactions involving these goods had taken place in the EU during the relevant time period. It is doubtful whether ‘7000 Series power switches’ were indeed put into commerce under the name of ‘ASCO’, however, it is obvious from the evidence filed that the ‘330 Series surge protection devices’ were not – they were merchandised under the mark ‘Emerson Network Power’, which makes other links between the ‘ASCO’ signs and the switches doubtful.

• The examples of evidence gathered prove that there were some devices merchandised under the names Smit Transformers or Emerson Network Power, which probably incorporated some electronic parts in some kind of switches, whether this kind of use can be considered as true and genuine is at least doubtful.

• The Office accepted the Annex 4 evidence as proof of use of the earlier mark which it should not have done as the quantity of the products delivered was intentionally made blank, thus, it is impossible to judge whether this sale was merely an incident or executed in the course of normal business conditions.

• The Annex 3 order acknowledgement on page 41 sets out GBP 525 worth of commissioning services, which the opponent believes meet the standard for use as stated in the ‘Laboratoire de la mer’ judgment (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50) in Class 37 ‘installation and maintenance services in the field of emergency power systems’. It is however not clear what ‘commissioning’ refers to and the GBP 525 gross value of, what is called ‘installation and maintenance services’ equals the price of an average plumber service delivered in the United Kingdom for household purposes (cf. Attachment No 7).

Reasons

12. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

13. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

14. 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.

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

16. There is genuine use of a trade mark where the mark is used in accordance with its essential function as a trade mark, which is to guarantee the identity of the origin of goods or services for which it is registered, in order to create or preserve an outlet for those goods and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 37; 30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38; 18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 27).

17. Genuine use of a trade mark in the sense of Article 47(2) EUTMR in conjunction with Article 18 EUTMR must be understood to denote real use that is not merely token, serving solely to preserve the rights conferred by the mark (fictitious use). Genuine use of the mark entails use of the mark on the relevant market and not just internal use by the undertaking concerned (27/09/2007, T‑418/03, La Mer, EU:T:2007:299, § 54; 11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 36-37). Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 47).

18. In the present case, the filing date of the contested application is 11 March 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 March 2011 to 10 March 2016, inclusive.

Use for the goods in Classes 9 and 11

19. With regard to the goods for which the earlier marks are protected, i.e. goods in Class 9 for the earlier EUTM registration and goods in Classes 9 and 11 for the earlier UK registration, the Opposition Division concluded that the evidence furnished by the opponent was insufficient to prove a sufficient extent of use of the marks.

20. As regards the goods in Class 11 covered by the UK earlier mark, namely ‘Burners and adapters/fittings therefor; heating control devices for cooking apparatus; pipeline strainers; tap water faucets’, the opponent has not declared that the mark had been used and has not submitted any evidence. Therefore, genuine use was not shown for these goods.

21. The goods covered in Class 9 by the earlier EU mark are:

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

22. The goods covered in Class 9 by the earlier UK mark are:

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.

23. First, the Opposition Division found that the excerpt from the brochure entitled ASCO Load Banks (Annex 3, filed on 23 June 2017), does not concern products offered under the earlier marks ‘ASCO’, but under other brands such as ‘Avtron’, ‘Froment’ and ‘Sigma’. The Board notes that this brochure was submitted together with the grounds for the opposition to show the 125 year history of the opponent and the alleged high distinctiveness of the mark ‘ASCO’. This brochure is undated but shows the history of the company until 2014 (see last page ‘Company Timeline’). In this brochure, the signs ‘Avtron’, ‘Froment’ and ‘Sigma’ refer to company names but also identify goods (e.g. ‘Avtron and Froment Brand load banks’ on page 21) whereas this is not the case for the sign ‘ASCO’. ‘ASCO’ identifies the company name rather than a mark used on goods (17/09/2019, T‑633/18, TON JONES / Jones (fig.) et al., EU:T:2019:608, § 63‑72; 23/03/2017, T‑239/15, Cryo-Save, EU:T:2017:202, § 39).

24. Second, as to the goods in Class 9, the opponent referred to Annexes 1 to 8 before the Opposition Division, which are two brochures (Annexes 1 and 6) and commercial documents concerning five transactions for goods.

25. The mark ‘ASCO’ appears on the brochure in Annex 1 for power transfer switches. The brochure bears the address of ASCO Power Technologies in the USA. It is dated ‘October, 2012’ on the last page. The contested decision stated that the opponent did not submit any evidence confirming that this brochure was distributed in the territory of the European Union. This finding must be approved since apart from the statement in the opponent’s submissions that the brochure was available for download in the EU during the relevant period on specified websites, this has not been supported by any evidence. For example, a printout of the website from the Wayback Machine showing that during the relevant period the products could be delivered to EU customers could have been provided in order to show that it was plausible that EU customers downloaded the brochure.

26. The Witness Statement of the Commercial and Managing Director of ASCO Power Technologies for Europe, the Middle East and Africa, was filed for the first time before the Board, even if it is accepted as additional evidence, it does not undermine the above findings for the following reasons.

27. Regarding the affidavit, it is necessary, first, to recall, that, according to the case-law, sworn statements which have evidential value under national legislation constitute, in principle, evidence which is admissible in proceedings before the Office (07/06/2005, T‑303/03, Salvita, EU:T:2005:200, § 40-41).

28. Nevertheless, in order to assess the evidential value of sworn statements, it is necessary, as is the case for every document, first of all, to verify the credibility and veracity of the information which they contain. In that regard, account must be taken of, inter alia, the person from whom the document originates, the circumstances in which it came into being, the person to whom it is addressed, and whether, on its face, the document appears sound and reliable (07/06/2005, T‑303/03, Salvita, EU:T:2005:200, § 42).

29. It is clear from the case-law that an affidavit by a person with close links to the party concerned, as is the case here since the affidavit was signed by the Commercial and Managing Director of ASCO Power Technologies for Europe, the Middle East and Africa, is of lesser probative value than the one from third parties and cannot on its own constitute sufficient evidence (16/06/2015, T‑585/13, JBG Gauff Ingenieure (fig.) / Gauff et al., EU:T:2015:386, § 28 and the case-law cited).

30. Furthermore, in the affidavit it is only declared that ‘this document was freely available for download worldwide after publication in 2012 on the following websites www.ascopower.com, www.emerson.com/transferswitch’.

31. The mere fact that the brochure could be downloaded from the EU is insufficient. It should be demonstrated that it was indeed the case. The mere existence of the websites in ‘.com’ does not give any indication as to the location of the use (17/09/2019, T‑633/18, TON JONES / Jones (fig.) et al., EU:T:2019:608, § 34).

32. Therefore, as such, the brochure in Annex 1 aimed at US customers has very little probative value in order to demonstrate genuine use in the EU. This being said, the evidence should be considered as a whole. Therefore, this brochure must also be assessed in conjunction with the other documents filed.

33. Regarding the other Annexes aimed at evidencing sales of products (power transfer switches, surge protection devices and accessories, according to the opponent), the opponent criticises the Opposition Division for having considered that only Annex 4 bears the mark ‘ASCO’.

34. Annex 4 is a purchase order issued by an Austrian company on 26 November 2015 for ‘automatic transfer switch ASCO type 7000’ with reference ‘7ATS-3-150-J-5’ to be delivered under the consent of the opponent from Emerson FZE, ASCO Power Technologies of Dubai. The corresponding invoice dated 22 December 2015 (amounting to around USD 13 000) mentions the same reference as was also submitted in Annex 4. Therefore, the Board confirms that the documents contained in Annex 4 show that the said product bearing the word mark ‘ASCO’ was sold in the EU.

35. Annex 3 is an invoice sent by the company Emerson to a company in the UK for the sale of a product (for GBP 10 044) which is not described. Only the reference is mentioned: ‘J7ACTSB30400J5XC’. A delivery note with the same reference is attached to the order in question (dated 25 May 2013). Annex 2 is a quotation provided by Emerson for the same goods according to the opponent. In this quotation the mark is not mentioned for the item described as ‘Automatic Closed Transition Transfer Switch, Catalogue No 7ACTSB30400J5XC’. The mark ‘ASCO’ is only mentioned on page 35 as regards ‘additional accessories’: ‘ASCO 5200 Series Power Manager’ and ‘ASCO POWERQUEST’. The applicant argues that the reference is different because of the additional first letter ‘J’ whereas the opponent merely stated that ‘similarly, in Annex 3 (page 39 of 122) the invoice bears the serial No J7ACTSB30400J5XC’ without any explanation as to why the two references do not coincide. Therefore, it is true that the evidence is unclear. In any event, as it will be explained later on (see paragraph 41 below), even if this piece of evidence were considered as relevant it would not be decisive.

36. In Annex 5, two invoices issued by Emerson with the designation ‘330DF08AWRL2S’ dated June 2015 addressed to a Spanish company are submitted for an amount of USD 9 062 each. In the same Annex a commercial proposal for a product bears the same reference. Annex 6 is a brochure which according to the opponent refers to the product of the invoice. Even though the brochure shows the same reference on the last page, the pictures of the products show that they bear the sign ‘EMERSON’, as claimed by the applicant, and not ‘ASCO’. ‘ASCO’ is only mentioned on the first page of the brochure, identifying the company. In addition, in his Witness Statement filed before the Board, Mr T. states in point 7 that the serial numbers given in the annexes on several pages (which are listed), are unique to ‘ASCO’ branded power transfer switches. The pages corresponding to Annex 5, i.e. pages 51-62, are not listed. Therefore, the opponent’s claim that the commercial proposal and the invoices refer to products bearing the ‘ASCO’ mark must be rejected.

37. Annexes 7 and 8 contain a commercial proposal (dated 26 October 2015 and 13 March 2015) and a purchase order (dated 19 May 2016 and 7 May 2015) made by a Dutch and a Spanish company, respectively.

38. As argued by the applicant, page 71 of Annex 7 ‘Specification Automatic transfer switch 300 Series’ states ‘Manufacturer: ASCO’ and ‘Supplier: Asco Power Technologies’ which indicate that ‘ASCO’ / ‘Asco Power Technologies’ is a contract manufacturer for said products. In the top right-hand corner the logo ‘SMIT TRANSFORMERS’ appears, which tends to indicate that the products are branded as ‘SMIT TRANSFORMERS’ and not ‘ASCO’.

39. Page 73 of Annex 8 indicates that the said product is an ‘ASCO’ product but does not prove that this product was indeed branded as such, and that it was manufactured under this brand.

40. Moreover no invoices corresponding to these purchase orders in Annexes 7 and 8 were submitted. The opponent did not explain why.

41. It must be recalled that proof of genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 24). The evidence submitted by the opponent is unclear. It concerns only part of the goods for which the marks are registered. The invoice dated 22 December 2015 (for around USD 13 000) submitted in Annex 4 is the sole document which evidences that sale of a product (corresponding to ‘automatic electric switches’ in Class 9 covered by the marks) bearing the word mark ‘ASCO’ really took place in the EU. The sale of one product over a five-year period does not reflect genuine use. Even if the amount is relatively high because of the specificity of the product, this is insufficient to prove more than token use. Furthermore, even assuming that the invoice in Annex 3 also concerns the sale of a product marked ‘ASCO’, which is doubtful for the reasons already explained, the extent of use would still be insufficient. In fact, the sale of only two products, irrespective of their relatively high price, is insufficient to prove genuine use.

42. On this basis, it cannot be concluded that the opponent used the mark for creating a market share for the goods at issue in UK and in the EU. The opponent has not shown any turnover figures and any advertising expenditure in the EU and the UK.

43. Finally, as to the applicant’s argument that none of the pieces of evidence submitted reproduces the figurative UK mark as registered, the Board considers that this issue may be left open since the extent of use is, in any event, not sufficient to demonstrate genuine use of the mark.

44. Therefore, the Opposition Division rightly held that the opponent failed to prove genuine use of its marks for the goods in Classes 9 and 11.

Use for the services in Classes 37 and 42 covered by the earlier UK mark

45. As regards the services in Class 42 covered by the earlier UK mark, namely ‘monitoring services’, the opponent has not declared that the mark had been used and has not submitted any evidence. Therefore, genuine use was not shown for these services.

46. As regards the services in Class 37 covered by the UK mark, namely ‘maintaining emergency electric power systems; installation and maintenance services in the field of emergency power systems’ in Class 37, the opponent referred to Annexes 9-13.

47. The Opposition Division found that the evidence concerning the services in question did not relate to the relevant territory, i.e. UK. The Board endorses the contested decision’s reasoning and findings in this regard. As found in the contested decision, the services were offered to clients in Denmark (Annex 9) and Ireland (Annexes 11, 12 and 13) or in an unknown place (the inspection report in Annex 10 does not mention the place of inspection). The fact that the company offering the service has its seat in the UK is irrelevant. Article 18(1)(b) EUTMR relating to use for export purposes only applies to goods not services. Therefore, the opponent’s argument that Annexes 9 to 11 clearly show that the company in the United Kingdom was selling maintenance and inspection services under the mark during the relevant period is rejected.

48. The opponent argues in its statement of grounds that Annex 2 also evidences commissioning (installation and maintenance) services in the UK in the relevant time period. Annex 2 addressed at a client in the UK indeed mentions ‘commissioning’. This is also mentioned in the acknowledgement of an order delivered by EMERSON but without any reference to ‘ASCO’. Furthermore, as argued by the applicant, it is not clear what ‘commissioning’ refers to and the amount of GBP 525 cannot be considered as sufficient to prove genuine use over a five-year period.

49. The seven acknowledgements of orders to UK companies submitted for the first time before the Board as Annexes to the Witness Statement mention ‘commissioning’ (which involve ‘completing the installation of the power transfer switch by supplying power to and putting the power transfer switch into an operational configuration’, according to the Witness Statement). However, they bear the ‘EMERSON’ sign and not ‘ASCO’.

50. Finally, as to the applicant’s argument that none of the pieces of evidence submitted reproduces the figurative UK mark as registered, the Board considers that this issue may be left open since it has not been shown that the mark has been used in the relevant territory for the services for which it is registered.

51. Therefore, the Opposition Division rightly held that the opponent failed to prove genuine use of its mark for the services in Classes 37 and 42.

Final remarks and conclusion

52. Having regard to the findings made above, it must be held that, considered as a whole, the various pieces of evidence adduced by the opponent before the Opposition Division and the Board are not sufficient to prove that the earlier marks have been put to genuine use in the EU and the UK during the relevant period for the goods and services for which they are registered. Therefore, it must be held that the contested decision did not commit an error in rejecting the opposition pursuant to Article 47(2) and (3) EUTMR in the present case.

53. Finally, it must be observed that the additional evidence which could have supported the information contained in the submissions and the Witness Statement – for example, sales figures detailed per product, invoices, advertisements, press articles, statements from relevant third parties etc. – was not of a kind which would have been difficult for the opponent to obtain. That evidence could have been presented to the Board of Appeal, particularly as the decision of the Opposition Division had already referred to the lack of sufficient supporting evidence regarding use of the marks (07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 45).

54. In light of the above, the appeal is dismissed.

Costs

55. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the opposition and appeal proceedings.

56. These consist of the applicant’s costs of professional representation of EUR 550.

57. As to the opposition proceedings, the Opposition Division ordered the opponent to bear the applicant’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 850.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to pay EUR 550 for the applicant’s costs in the appeal proceedings. The total amount to be paid by the opponent in the opposition and appeal proceedings is EUR 850.

Signed S. Stürmann

Signed C. Negro

Signed H. Salmi

Registrar: Signed H.Dijkema