OPPOSITION No B 2 894 700

Holding Mas SA, 43 Avenue Alfred Kastler, Tecnosud, 66100 Perpignan, France (opponent), represented by Bird & Bird AARPI, Le Bonnel 20 rue de la Villette, 69328 Lyon cedex 03, France (professional representative)

a g a i n s t

BBS Brandner, Bgm.-Raab-Str. 10, 86470 Thannhausen, Germany (applicant), represented by Dr. Binder & Binder GbR, Neue Bahnhofstraße 16, 89335 Ichenhausen, Germany (professional representative).

On 17/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 894 700 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 16 319 519 ‘FLEXITRANS’ (word mark) namely against all the services in Class 39. The opposition is based on French trade mark registration No 3 856 412 ‘FLEXI TRANS’ (word mark). The opponent invoked Article 8(1) (b) EUTMR.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely, French trade mark No 3 856 412 ‘FLEXI TRANS’.

The date of filing of the contested application is 04/02/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 04/02/2012 to 03/02/2017 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 services on which the opposition is based, namely the following:

Class 36: Insurance; services relating to transport insurance; services of creation and management of transport insurance contracts for companies; services of creation and management of tailor-made transport insurance contracts, services of insurances in the field of transport sector and notably the public transport of goods and passengers, maritime transport, cargo transport and the logistic.

Class 39: Transport.

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 14/03/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 19/05/2018 to submit evidence of use of the earlier trade mark. On 17/05/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annexes 1 to 4: Copies of invoices, payment notifications and quotations directed to ‘FLEXITRANS’ with an address in Perpignan (France). They are written in French with partial translations into English provided by the opponent and they are dated from 25/09/2012 to 26/11/2013 (therefore, within the relevant period). The concepts translated are ‘Flexitrans-Contract’, ‘Creation on an online form to collect information on Flexitrans […..], and ‘Eco conductor brochure printing’. The amounts that were supposed to be paid by Flexitrans have been expressly omitted.

• Annexe 5: Undated copy of five pages of what seems to be a brochure or a catalogue, written in French with some words translated into English such as ‘ECO SECURITY SUPPORT’, ‘TRAINING’ ‘AWARENESS’ ‘STATISTICAL MONITORING’. Some of them show the picture of trailers and most of them contain the sign on the bottom of the pages as part of the company name, accompanied by the address and contact details.

• Annexe 6: Five undated screenshots of the websites www.flexitrans.fr and www.april-entreprise.fr written in French. Only the terms ‘Flexitrans Insurance’ and ‘Flexitrans is direct insurance broker for transport and supply chain players’ we said:

• are translated. All the screenshots contain references to and some English terms such as ‘FLEXI FLEET’ and ‘FLEXI CARGO’ are mentioned.

• Annex 7: Copy of what seems to be a template dated on 15/12/2016, written in French. The only translation provided is the sentence ‘your new web space’. The sign appears as and

• Annex 8: Article appeared in what seems to be a magazine called ‘L´Argus de l´assurance.com’ dated on 30 of March of 2012.

• Annex 9: Extract of an article in French, the opponent translates the title, namely ‘Flexitrans protects from increases’ and a part of the text in which it is said ‘ Flexitrans the wholesale broker member of APRIL group and specialist in road transport’. The opponent submits the web site in which the article can be found www.largusdelassurance.com and a date, 03/12/2010, in which the article was supposed to appear. This date is, however, outside the relevant period.

• Annexes 10 and 11: Undated copy of three pages that seem to be part of brochures, written in French. The partial translation provided informs that ‘Flexitrans offers assistance’ and ‘Flexitrans, partner broker’ and they target ‘Public transport all types of goods’ or ‘own account common carriers’. The sign appears as .

• Annex 12: Document dated on 17/12/2009 written in French. Although, this document does not fall within the relevant period, the translations inform that ‘April Group takes position on the transport insurance market with the acquisition of the wholesale broker Flexitrans’. The translation further states that ‘Flexitrans designs and manages fleet, cargo, warehouse and vehicle finance insurance contracts that are distributed through a national network of brokers and partner agents’.

• Annexes 13 to 17: Copies of standard or adhesion contracts within the relevant period (from 01/01/2015 to 21/02/2017) and showing the policy between Flexitrans and their clients. ‘

• Annexes 18 and 19: Copy of vehicle reports dated on 29/04/2014 and 15/03/2013 in which the following sign appears.

• Annex 20: Copy of a document issued by an organisation called ‘ORIAS’ on 04/02/2016. Although it is written in French, most of the document has been translated into the language of the proceedings. This document certifies that ‘FLEXI TRANS’ has been registered in the French single Register of Insurance, Banking and Finance intermediaries. The document provides a Registration Number and informs that ‘FLEXI TRANS’ has been acting as Insurance and Re-Insurance Broker from 15/11/2007 to 28/02/2017 and as Insurance Agent from 17/10/2014 to 28/02/2017.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the services for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, 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 documents show that the place of use is France. This can be inferred from the language of the documents (French), some addresses in Perpignan (France) and their domain ‘.fr’ in the web pages provided in Annex 6. Therefore, the evidence relates to the relevant territory.

Time of use

Some of the evidence is dated from within the relevant period. It is true that the documents representing brochures and screen shots of web pages are only simple prints on which no date has been provided.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence included in Annex 9 refers to use outside the relevant period but nevertheless confirms use of the opponent’s mark within the relevant period. This is because it is expressly said that ‘Flexitrans’ is the wholesale broker member of April Group and can be considered as preparation for the actual sales made during the relevant period.

Extent of use

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

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

Although there is no indication of the monetary value of the sales made, since there are no amounts reflected and no invoices or other commercial documents are provided, all the documents combined, provide the Opposition Division with sufficient information concerning the commercial presence, the territorial scope, the duration, and the frequency of use. Although it is true that some of the documents are not in the language of the proceedings or dated, these documents, when taken at face value and put in the context of the documents that are dated and at least partially translated, show a use of the mark that can be deemed genuine. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

In the present case, the earlier mark is a word mark ‘FLEXI TRANS’. The word mark is used with no additional elements, without spaces or particular stylisation in some of the documents. However, in some documents ‘FLEXI TRANS’ appears as a figurative mark as or

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.

This means that differences between the form in which the mark is used on the market and the registered form are acceptable as long as the distinctive character of the mark is not altered. The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Brainbridge, EU:T:2006:65, § 50). Furthermore, it is to be noted that additions do not necessarily alter the distinctive character of a mark.

In the present case, the alterations are confined to the slight stylisation of the script, the colours, the rectangular shape in which ‘FLEXITRANS’ is depicted, the fact that it is used as one word instead of in two words as registered and the smaller words ‘Une société april’ with a very small figurative element, do not constitute an alteration of the distinctive character of the word mark ‘FLEXITRANS’, since the additional elements are weaker and/or less dominant. Moreover, it is to be remembered that the scope of protection of a word mark covers representations in different typefaces and therefore, taken as a whole, the evidence submitted is sufficient to prove use of the mark on which the opposition is based, in a form which does not substantially alter its distinctive character.

Although it is true that part of the documents provided suggest use of ‘FLEXITRANS’ as a company name, the Opposition Division finds that there are still enough documents proving use of the sign as a trade mar.

Taking into account the evidence in its entirety, although not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory. However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark.

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

In the present case, the evidence shows genuine use of the trade mark for the following services:

Class 36: Services of insurances in the field of transport sector.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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

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

1. The services

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

Class 36: Services of insurances in the field of transport sector.

The contested services are the following:

Class 39: Parcel delivery; parcel delivery; collection, transport and delivery of goods, documents, parcels and letters; transport of parcels; car sharing services; mail delivery and courier services; collection of goods; collection of documents; collection of packages; pick-up and delivery of letters; delivery of correspondence; document delivery by non-electronic means; messenger courier services; courier services for merchandise; transportation by courier.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested services are, broadly speaking; transport and delivery services that refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies.

The opponent´s services are, broadly speaking, insurance services that consist of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages.

Even if, in the present case, the insurance services expressly refer to transport sector, the services under comparison are clearly dissimilar as they are provided by different companies. Furthermore, they have a completely different purpose, do not coincide in distribution channels and sales outlets and are neither complementary to, nor in competition with each other. The mere fact that their end users may overlap is not enough for finding a level of similarity between them.

In order to justify a similarity between the conflicting services, the opponent brings to the present proceedings, previous national decisions from the INPI. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

As for case R 59/2017-4 of 03/10/2017, also invoked by the opponent in its observations it is not relevant to the present proceedings as the services compared (‘travel organisation’ with ‘car hire’ services) in the said decision have no relevant points in common with the present comparison.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Saida Crabbe

Alexandra APOSTOLAKIS

Vít MAHELKA

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.