OPPOSITION No B 2 898 511

Alteco Chemical Pte. Ltd., 19, Tuas Avenue 11, 639084 Singapore, Singapore (opponent), represented by López Gimenez Torres, Avenida Maisonnave, 28 bis, 2º - Oficina 8, 03003 Alicante, Spain (professional representative)

a g a i n s t

Alveco S.R.L., Via Passerini 13, 20900 Monza, Italy (applicant), represented by Dott. Franco Cicogna & C. S.R.L., Via Visconti di Modrone 14/A, 20122 Milano, Italy (professional representative).

On 12/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 898 511 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 376 212 for the figurative mark . After a limitation by the applicant on 25/05/2018, the list of goods consists only of those in Class 17 and some of the goods in Class 19. The opposition is based on European Union trade mark registration No 4 503 793 for the figurative 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.

The date of filing of the contested application is 16/02/2017. The opponent was, therefore, required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 16/02/2012 to 15/02/2017 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 goods on which the opposition is based, namely the following:

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen.

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 06/02/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 11/04/2018 to submit evidence of use of the earlier trade mark. This deadline was extended until 11/06/2018. On 08/06/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Annexes 1 & 2: Several packing lists/shipping orders, dated 13/11/1991, 22/05/1992, 08/10/2007, 29/04/2008, 23/09/2009, 03/06/2010, 23/09/2011 (2 times), 22/10/2012 (2 times), 02/02/2013 (2 times), 04/01/2014, 13/12/2014, 04/01/2015, 17/10/2015, 13/07/2016, 28/11/2016 (2 times), 26/06/2017 (2 times), 10/07/2017, from ‘Alteco Chemical Pte. Ltd.’, located in Singapore, to several clients in the Czech Republic, Bulgaria, the Netherlands, the United Kingdom and Romania. The trade mark ‘ALTECO’ is mentioned and also the products that were shipped, namely ‘adhesive products’, ‘paint markers’ (different colours), ‘sheets’, ‘quick epoxy’, ‘remover’, ‘pens’, ‘glue gels’, ‘pins’, ‘pouch’, ‘T-shirts’, ‘bags’.

 Annex 3: Several catalogues, dated respectively 02-05/09/1997 and 03-6/09/1991 mentioning ‘Asia in Poland ’97’ and ‘Asia in Poland ’91’, showing the figurative trade mark ‘ALTECO’ for ‘glue sticks’.

 Annex 3: An invoice, dated 25/08/1995, from ‘Asby Advertising Pte. Ltd.’ to the opponent ‘Alteco Chemical Pte. Ltd.’ for a placement of a press advertisement in ‘Delo’ newspaper in Slovenia.

 Annex 3: An advertisement, dated 04/09/1995, mentioning the trade mark ‘ALTECO’ and showing some packages of ‘glue sticks’.

 Annex 4: Two invoices, dated 21/11/2011 and 19/07/2011, from ‘Z-trade’ in the Czech Republic to ‘Alteco Chemical Pte. Ltd.’ for some advertising costs. There are some copies of pages from magazines mentioning the trade mark ‘ALTECO’ and displaying a package of a ‘glue stick’, a ‘paint marker’ and different kinds of ‘glues’, a document displaying a car with its caravan and a transport car with the word ‘ALTECO’ on it and a package of a ‘glue stick’. Furthermore, there is an extract from the website www.alteco.cz, mentioning the trade mark ‘ALTECO’ and showing several products of ‘glue’, ‘glue with remover’, ‘epoxy’, ‘glue gel’.

 Annex 4: A document, extracted on 10/08/2009 from the website www.productpilot.com, regarding the ‘Messe Frankfurt’, mentioning ‘Frankfurt am Main’, dated 16-21/09/2008, titled: ‘Everything that makes autos move’. In this document is mentioned that ‘Alteco Chemical Pte. Ltd.’ assisted the trade fair, it gives further information regarding the dates, the location of the stand, a picture of the stand and mentions some goods, namely ‘paint markers’, ‘super glues’ and ‘epoxies’. In this document is also mentioned that the company ‘Alteco Chemical Pte. Ltd.’ is the manufacturer of ‘ALTECO’ brand Adhesive Products in Singapore and that their products cover a wide range of super glues (including gels) and epoxies (including epo putly) and industrial glues, etc. Furthermore, there is an invoice from the ‘Messe Frankfurt’ to ‘Alteco Chemical Pte. Ltd.’ in Singapore for the rental of the stand in 2009.

 Annex 4: A catalogue, titled: ‘think future, The World of Office and Paper Products’, from the ‘Internationale Frankfurter Messe’, dated 24-28/01/2007, showing ‘Alteco Chemical Pte. Ltd.’ as one of the exhibitors. There is also a picture of the stand displaying the mark ‘ALTECO’ and several packages of glues. Furthermore, there is an invoice from the ‘Messe Frankfurt’ to ‘Alteco Chemical Pte. Ltd.’ in Singapore for the rental of the stand in 2007.

 Annex 4: A catalogue, titled: ‘Paperworld, Internationale Frankfurter Messe’ from the ‘Internationale Frankfurter Messe’, dated 25-29/01/2006, showing ‘Alteco Chemical Pte. Ltd.’ as one of the exhibitors. There is also a picture of the stand displaying the mark ‘ALTECO’ and several packages of glues. Furthermore, there is an invoice from the ‘Messe Frankfurt’ to ‘Alteco Chemical Pte. Ltd.’ in Singapore for the rental of the stand in 2006.

 Annex 5: An undated product catalogue, mentioning the mark and making reference to ‘alteco super glue’, ‘super glue gel’, ‘pen super glue’, ‘quick epoxy’, ‘epo putty’, ‘paint markers’, ‘industrial glues’, ‘glues ideal for automotive and industrial applications’ and the catalogue also displays several pictures of packages.

As indicated above, 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. The opponent is obliged not only to indicate, but also to prove each of these requirements. However, the sufficiency of the indication and proof as regards the place, time, extent and nature of use has to be considered in view of the evidence submitted in its entirety.

First of all, the Opposition Division considers it appropriate to focus the assessment of the evidence on the criterion of time. 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 as well during the relevant period of time. 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). The evidence filed in Annex 5 is undated and the majority of the evidence mentioned in Annexes 1 & 2 falls outside of the relevant period, some of which falling even outside by more than 20 years, but also 3, 4 and 5 years. The latter is also the case with respect to Annexes 3 & 4. There are quite significant differences in the relevant period and, furthermore, the above mentioned documents do not provide any indirect proof during the relevant period. These documents, taken as a whole, are clearly insufficient to shed any light on the use of the trade mark during the relevant period. Consequently, the only evidence that falls inside of the period are eleven packing lists/shipping orders as mentioned in Annexes 1 & 2. Therefore, in particular this evidence will be taken into consideration.

Secondly, 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, its commercial volume, duration and frequency.

The evidence filed in Annexes 1 & 2 are documents that show the shipping of containers from Singapore, via Hamburg, to the Czech Republic, Bulgaria, the Netherlands, the United Kingdom and Romania. However, for the purposes of Article 47(2) and (3) EUTMR the use must be public, i.e., it must be external and apparent to actual or potential customers of the goods or services. Use in the private sphere or purely internal use within a company or a group of companies does not amount to genuine use (09/12/2008, C-442/07, Verein Radetzky-Orden, § 22; 11/03/2003, C-40/01, Minimax, EU:C:2003:145 § 37). Regarding this evidence, it shows that the goods have been shipped to Europe to some trading companies, but there is no evidence at all that these shipped goods are being offered for sale. It is not even clear whether the companies that the products were shipped to belong to or work with the opponent’s undertaking and thus that their use is in the private sphere or purely internal. The opponent has not filed any invoice, annual report or whatsoever at all to prove the extent of use of the mark. Regarding the invoices that were filed, apart from being totally outside of the relevant period, these were invoices from advertising companies and/or regarding some advertisements and/or the rental of a stand at the Frankfurt trade fair, but no invoice was filed with respect to any sales of the goods. Therefore, it cannot be concluded at all from the evidence whether any sales were made, but also whether any sales were made under the mark ‘ALTECO’. In light of the above, and especially the lack of any documents within the relevant period showing the goods under the mark being sold or offered for sale to actual or potential customers, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

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 Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).

COSTS

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

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

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

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Richard BIANCHI

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.