OPPOSITION No B 2 825 951

Chetocorporation, S.A., Rua da Atalaia do Calvário 143 A, 3720‑502 Santiago de Riba-Ul, Portugal (opponent), represented by Clarke, Modet y cía. S.L., Rambla de Méndez Núñez Nº 21‑23, 5º A‑B, 03002 Alicante, Spain (professional representative)

a g a i n s t

Maria João Alves Barbosa, Rua das Cavadas 1º. Poente, Lordelo, 3730‑332 Vale de Cambra, Portugal (applicant), represented by J. Pereira da Cruz S.A., Rua Victor Cordon 14, 1249‑103 Lisboa, Portugal (professional representative).

On 12/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 825 951 is upheld for all the contested goods.

2. European Union trade mark application No 15 814 718 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 814 718 for the word mark ‘HETO’. The opposition is based on Portuguese trade mark registrations No 474 591 and No 563 243 . The opponent invoked Article 8(1)(b) EUTMR.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Portuguese trade mark registration No 474 591 , including the assessment of the proof of use submitted for this earlier right.

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 Portuguese trade mark No 474 591 for the figurative mark .

The date of filing of the contested application is 08/09/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 08/09/2011 to 07/09/2016 inclusive.

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

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

Portuguese trade mark No 474 591 for the figurative mark

Class 7: Milling machines; metalworking machine tools.

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 23/02/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 28/04/2018 to submit evidence of use of the earlier trade mark. Following the opponent’s request, this time limit was extended until 28/06/2018. On 28/06/2018, within the time limit, the opponent submitted evidence of use.

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

The evidence to be taken into account is the following:

Newspaper articles (Annexes 5-6):

Two press articles that appeared in the Portuguese magazines ‘Empresas’ and ‘Vida Economica’ in 2015 and 2013 respectively.

Invoices (Annex 7):

A set of 18 invoices issued by the opponent and dated within the relevant period, namely in 2011, 2013 and 2015. The invoices were issued to companies in Canada, Czechia, India, Portugal and Romania, and they indicate that the country of origin is Portugal.

Advertisements (Annexes 8-10):

Two catalogues from 2011 and 2013 and a brochure from 2015; all contain pictures and explanations of the opponent’s goods. The catalogues are in English and the brochure is in Portuguese.

Other evidence:

Annual economic reports for 2013 and 2014 (Annexes 1-2); both documents show the development of the company, its financial situation and the markets in which it operates.

ISO certificates (Annexes 3-4) attesting that the company’s goods and processes meet certain requirements, for example those for ‘Design, development, production and technical support of CNC machining centres’ (ISO 9001:2015).

Guideline for the graphical requirements for the use of the mark, stickers, stationery, links to the webpage of the company (Annexes 11-13); documents that show the trade mark used in different marketing materials.

When assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The invoices submitted show that the opponent provides its goods not only in Portugal, but also to clients located both in other EU countries and outside the European Union. The evidence, taken as a whole, shows that the goods were produced in Portugal, which can be concluded from the invoices, newspaper articles and other documents that are in Portuguese and indicate Portugal as the country of origin. Moreover, the content of the articles and the annual economic reports clearly shows that, in many cases, the goods were exported from the relevant territory. The newspaper article from ‘EMPESAS’, which comes from an independent source and therefore the information in it is more objective and has higher probative values, states that the market of the company is mainly outside Portugal, as an average of 75% of production is exported, but also that the company has a very strong market place in Portugal.

According to Article 18(1), second subparagraph, point (b), EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes.

In the case of an earlier national trade mark, this provision needs to be applied by analogy.

Consequently, and in accordance with Article 18(1), second subparagraph, point (b) EUTMR, this evidence of use contains indications concerning the place of use.

Therefore, the evidences provide sufficient information concerning the place of use.

Time of use

Most of the evidence is dated within the relevant period or very close to the relevant period, and hence confirms the use of the sign within the period. The invoices are from the relevant period and the same is true also of the newspaper articles and catalogues, as described above. Moreover, the name of one of the programs that is indicated on the back cover of the catalogues, namely ‘QREN-QUADRO DE REFERENCIA ESTRATEGICO NACIONAL Portugal 2007, 2013’ confirms that the catalogues are from the relevant period, as it indicates the years.

All these items of evidence contain the earlier trade mark; some of them, like the invoices, more than once. Regardless of the fact that some of the items of evidence are outside the relevant period or not dated, for example the links to the company’s internet page, they refer to information published very close to the relevant period of time (2017 – short video films) and therefore they clearly show that the goods were available for sale earlier.

Therefore, the evidence provides sufficient information concerning the time of use.

Extent of use

Concerning the extent of use, all the relevant facts and circumstances must be taken into account.

Assessed in combination, the invoices, articles, product catalogues and all other materials provide the Opposition Division with sufficient information concerning the commercial volume, territorial scope, duration and frequency of use.

The documents, most dated in the relevant period, show that the mark is used regularly. The number of units sold (evident from the sample of invoices submitted), while not very high in absolute terms, is sufficient to prove genuine use, considering the nature of the goods and their complexity, namely that they are very expensive machines for heavy industry. In the articles submitted, the company is characterised as one of the leaders in the market, confirmed by the presence of customers all over the world. The annual reports, even though they are documents created and used mainly by the opponent itself, also support the extent of the production. As a result of the above, the extent of use is proven.

Nature of use and use in relation to the registered goods

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

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods of different providers. 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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The opponent’s sign is registered as the figurative trade mark . In the evidence submitted, the sign appears as registered or in a slightly different form, mainly in terms of colour.

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

The financial documents clearly show the trade mark (for example invoice N13132 of 05/11/2013) in their upper left corner, and in some of the documents the mark is accompanied by a description of the company’s activity, namely ‘CNC milling/deep hole drilling’ . Most of the invoices include the stamp , where the area of activity is mentioned again. The opponent’s advertising materials and catalogues also demonstrate that the trade mark is used as registered or in a very similar form on the goods that are protected in the registration, as in the following extracts:

Even with additions, the earlier sign still is clearly perceptible and maintains an independent role, and therefore its distinctive character is not altered. It is concluded that the trade mark is used as registered.

As to the scope of use, the materials submitted prove the use of the trade mark for the goods for which it is protected, namely milling machines; metalworking machine tools.

For example, the technical description of the goods in the catalogues shows that they are very sophisticated, multitasking and computerised equipment that can perform a variety of different operations, one of which is ‘milling’; therefore, they can be classified as milling machines.

Moreover, the description metalworking machine tools is also relevant and true for the goods shown, as a number of independent sources have the following definitions:

‘A machine tool is a machine for shaping or machining metal or other rigid materials …’ (information extracted from Wikipedia on 05/03/2019 at https://en.wikipedia.org/wiki/Machine_tool).

‘[A] power-driven machine, such as a lathe, miller, or grinder that is used for cutting, shaping, and finishing metals or other materials’ (information extracted from Collins Dictionary on 05/03/2019 at https://www.collinsdictionary.com/dictionary/english/machine-tool).

Consequently, the use for the relevant goods has been shown.

Additionally, it is clear that the use made of the earlier mark is in line with the essential function of the trade mark, namely to indicate the commercial origin of the goods. Therefore, the Opposition Division considers that the evidence shows use of the signs depicted above as a trade mark.

Conclusion

The evidence of use in its entirety sufficiently indicates the place, time, extent and nature of use of the opponent’s trade mark for all of the goods for which it is registered and on which the opposition is based, and the Opposition Division will now examine the opposition on the basis of all the earlier goods.

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

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

a) The goods

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

Class 7: Milling machines; metalworking machine tools.

The contested goods are the following:

Class 7: Metal working machines, except mixing machines

The contested metal working machines, except mixing machines overlap with the opponent’s milling machines and metalworking machine tools. As explained above and evident from the ‘Proof of use’ section, the goods of the earlier mark are a kind of metal working machine. Therefore, they are identical to the contested goods.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

The goods found to be identical are highly specialised goods that target the professional public and business customers with specific professional knowledge or expertise and are sold at relatively high prices.

The relevant public’s degree of attentiveness will be high.

c) The signs

	HETO
Earlier trade mark	Contested sign

The relevant territory is Portugal.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

In the relevant territory the word ‘HETO’ is meaningless.

The earlier figurative sign will be seen by significant part of the public as a combination of the element © and the word ‘HETO’, and as this is the most probable scenario, the Opposition Division will focus on it.

The perception of the sign as composed of two distinct elements rather than a homogeneous word is due to the sign’s graphical presentation, which presents two elements. This perception is furthered by the usual function of the element ©. This symbol is the international indication for copyright, the exclusive right to distribute and perform an artistic work, and the majority of the public will perceive the letter ‘C’ in a circle with this meaning. Therefore, the element will be perceived by the public as an informative indication that someone has rights, without bearing a concept in and of itself, and in this respect the element is, at most, weak. It will therefore not be afforded a trade mark significance by the public and will have a limited impact on the comparison of signs and the assessment of likelihood of confusion.

Conceptually, as explained above, both signs are meaningless. Consequently, both signs, in their possible perceptions, do not bear any concepts and the conceptual comparison does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the letters ‘HETO’, which make up the whole of the contested sign and which is present in a rather standard bold typeface in the earlier mark. The signs differ in the additional element ©, in a standard font, at the beginning of the earlier mark. Due to its graphical depiction, the earlier sign will be perceived as containing two different components, ‘©’ and ‘HETO’. Moreover, because of its contrasting, heavy font and greater length, the ‘HETO’ component retains an independent, distinctive role. The coinciding component, in both signs, is distinctive for the goods at issue. Therefore the signs are similar to a high degree.

Aurally, the contested sign will be pronounced as /eto/. The earlier mark will also be pronounced as /eto/. Since the public will perceive the element © as an indication of copyright or other rights, this element is not likely to be pronounced, as it is not usual for indications to be pronounced. Therefore, the signs are aurally identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all of the circumstances of the case.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

The goods are identical and target a professional or business public with a high degree of attention. Conceptual comparison between the signs is not possible; visually they are highly similar and aurally they are identical.

Considering the nature of the goods and the characteristics of the signs, in particular the signs’ lack of concept, the visual perception of the signs should be considered as the one that has the strongest impact for the public and in the comparison of the signs. Due to the very clear visual separation of the first letter of the earlier mark, and also because of the worldwide popularity of the element © as a symbol for protected rights, overall this element will be seen by a significant part of the relevant public as having a limited trade mark significance and as being something additional to the longer and fanciful part ‘HETO’. Moreover, the fact that the contested sign is wholly contained in the earlier mark, with just one different letter, is pivotal. Even though this letter is at the beginning, this difference is not enough to neutralize the identity of the remaining letters and the identity of the goods.

Indeed, it is highly conceivable that the relevant consumer, who pays a high degree of attention and might notice the difference, will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Considering that in the earlier mark the first letter is depicted in a different style than the others, that this element can be seen by significant part of the public as an indication of rights, and that the goods in question very often contain an additional alphabetical or numerical indication, as evident from the ‘Proof of use’ section, it is conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese

trade mark registration No 474 591.

It follows that the contested trade mark must be rejected for all the contested goods.

As earlier Portuguese trade mark registration No 474 591 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, they must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ewelina SLIWINSKA

Maria SLAVOVA

Jakub MROZOWSKI

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.