OPPOSITION No B 2 899 790

Chicopee, Inc., 1203 South Chicopee Road, 27504 Benson, North Carolina, United States (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA, Amsterdam, Netherlands (professional representative)

a g a i n s t

Shenzhen Migic Sports Co. Ltd., 3-4F, Building 27, 4^th Industrial Zone of Cuigang, Huaide Village, Fuyong town, Shenzhen, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 10/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 899 790 is upheld for all the contested goods.

2. European Union trade mark application No 16 387 201 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 387 201 . The opposition is based on European Union trade mark registration No 1 371 715 ‘MASSLINN’. 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 European Union trade mark registration No 1 371 715 ‘MASSLINN’ on which the opposition is based.

The date of filing of the contested application is 20/02/2017. 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 20/02/2012 to 19/02/2017 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 21: Impregnated and non-impregnated cleaning, polishing and abrasive cloths, including cloths impregnated with oil for treating floors and floor coverings.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 16/01/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 21/03/2018 to submit evidence of use of the earlier trade mark. On 20/03/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Catalogues under items 1 to 3, 5, 7 and 15

Catalogues of Wetrok® products in German for each year of the period 2012 to 2017 showing among different cleaning products and instruments, cloths marketed inter alia, under the denominations ‘Masslinn Orange’, ‘Masslinn Gelb’, ‘Masslinn Hopital’, ‘Masslinn 2000, 61 × 26 cm’ and ‘Masslinn 2000 Rolle, 20 × 32 cm’).

• Invoices under items 4, 6 and 8

Invoices issued by ‘PGI Nonwovens BV’ with address in the Netherlands addressed to different recipients in the Netherlands, Switzerland and Germany, inter alia, Wetrok GmbH and Wetrok AG dated at regular intervals between 15/10/2013 and 20/12/2016.

• Annual report under item 9

Form 10-K dated 20/03/2018 issued by the Securities and Exchange Commission regarding the annual report of the Berry Global Inc. showing that this company fully owns the subsidiaries PGI Nonwovens BV and Chicopee, Inc.

• Product test certificate under item 10

Test certificate in English issued by FIGR Forschungs- und Prüfinstitut für Facility Management GmbH on 07/11/2014 regarding ‘Masslinn dust mopping cloths’.

• Packing lists under item 11

Undated packing lists corresponding to the invoices filed under item 8 showing the Netherlands as country of origin of the goods exported to Switzerland.

• Order confirmation under item 12

Order confirmation issued by ‘pgi’ addressed to a recipient in Switzerland on 18/11/15 for sales of 192 cartons of ‘MASSLINN orange’.

• Flyer of the Masslinn line of products under item 13

Undated flyer in German regarding ‘Masslinn Hopital’, ‘Masslinn Orange’, ‘Masslinn Gelb’ and ‘Masslinn 2000’.

• Videos of presentation of Masslinn products under item 14

Links to videos in German, English, French, Swedish and Polish published on YouTube® on 06/03/2017 regarding ‘Masslinn disposable dust-binding cloths’.

Assessment of the evidence

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145 and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

As regards to the place of use, it is noted that the documents as a whole and in particular, the invoices show that the earlier mark has been used, at least, in Germany and the Netherlands. This can be inferred from the language of the documents (inter alia, German) as well as the currency mentioned (euros) and the addresses in these countries appearing on the invoices.

Moreover, 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.

As some of the evidence shows that the goods were sold from the Netherlands to Germany and the Netherlands and the remainder shows that they were exported from the Netherlands to Switzerland, it is clear that the goods were sold or exported from the relevant territory.

Considering that Germany and the Netherlands constitute a significant part of the European Union, it has to be considered that the use of the earlier mark in these countries is use in the European Union (see, 15/07/2015, T-398/13, TVR ITALIA, EU:T:2015:503, § 57; 30/01/2015, T-278/13, now, EU:T:2015:57, by analogy). Therefore, the evidence relates to the relevant territory.

Concerning the time of use, the Opposition Division notes that the catalogues, the invoices, the product’s test certificate, and the order confirmation are dated within the relevant period and so are the opponent’s catalogues. Moreover, said invoices are dated at regular intervals throughout three of the five years constituting the relevant period.

Additionally, as the annual report of the opponent’s parent company refers to events subsequent to the relevant time period, they make it possible to confirm the extent to which the earlier mark was used during the relevant time period (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50) and therefore, they will not be disregarded.

Concerning the extent of use, it has to be borne in mind that 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.

It shall also be noted that 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.

When assessed together, the catalogues, invoices, packing lists and the order confirmation provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The invoices are quite numerous and refer to significant quantities since the amounts referred to therein vary between EUR 6,000 and EUR 40,000 per invoice for products sold at a price which varies between EUR 30 and EUR 60 per unit. Moreover, they are dated at regular intervals throughout three of the five years constituting the relevant period.

Therefore, along with the catalogues of one of the opponent’s client, Wetrok, they show regular use throughout the whole relevant period. Finally, said invoices show use of the earlier mark in a significant part of the relevant territory.

Consequently, the evidence shows use of the earlier mark in a substantial part of the relevant territory which has to be qualified as effective and consistent over time (regular and frequent). As a result, the opponent has submitted sufficient indications of the extent of use.

Concerning the nature of use, it has to be observed that 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.

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.

In the present case, it is clear from the evidence, in particular the catalogues that the opponent sells various kinds of cloths under signs which include the verbal element of the earlier mark, ‘MASSLINN’ and an additional element, namely, ‘Hopital’, ‘Orange’, ‘Gelb’ or ‘2000’. As apparent from the catalogues under items 1 to 3, 5, 7 and 15 and the product test certificate in English under item 10, the opponent sells several distinct lines of Masslinn products, namely, the following: ‘Masslinn Dusty’, ‘Masslinn Yellow’/ ‘Masslinn Gelb’, ‘Masslinn 2000’, ‘Masslinn Orange’ and ‘Masslinn Hopital’.

In this regard, the Opposition Division recalls that several signs may be used simultaneously in order to designate the same product, without altering the distinctive character of the registered sign (14/12/2011, T-504/09, VÖLKL, EU:T:2011:739, § 100; 08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34).

In determining if the opponent used the mark in a way that does not alter the distinctive character of the mark in the form in which it was registered calls for an assessment of the distinctive or dominant character of the components added, on the basis of the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark (13/09/2016, T-146/15, figurative mark representing a polygon, EU:T:2016:469, § 28-29 and the case-law cited).

In particular, if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 and seq.; 10/06/2010, T-482/08, AtlasTransport, EU:T:2010:229, § 36 and seq.).

In the present case, the earlier mark ‘MASSLINN’ has no meaning. It is therefore distinctive in relation to the goods it covers. Moreover, the elements ‘Hopital’, ‘Orange’, ‘Gelb’ and ‘2000’ are always displayed after this word and, as already stated, it is apparent from the evidence that they designate different lines of ‘MASSLINN’ products.

Finally, as these additional elements ‘Yellow’ / ‘Gelb’, ‘2000’, ‘Orange’ and ‘Hopital’ most likely refer to the colour of the cloths in question (‘yellow’ in English / ’gelb’ in German and ‘orange’ in both German and English), their suitability to certain environments (‘hopital’, which is close to the English word ‘hospital’ also used in German in the same meaning) and potentially, to their year of launch (‘2000’), they will most likely be perceived as having at most a weak distinctive character by the English and German-speaking parts of the public. Moreover, irrespective of their distinctive character, these additional elements are always displayed after the earlier mark and hence clearly play a secondary role in comparison to ‘MASSLINN’.

Bearing the aforesaid in mind, it is considered that the additional elements with which the earlier mark ‘MASSLINN’ is used do not alter its distinctive character.

As to the products in relation to which the earlier mark has been used, the product test certificate shows that it has been used in relation to ‘dust mopping cloths’ and that Masslinn cloth, inter alia, ‘effectively removes fine dirt particles from smooth floors’ and therefore, that it has a cleaning purpose. However, it is not clear whether these cloths are impregnated or not. Besides, it cannot be inferred either from the evidence that they also have polishing and/or abrasive purposes.

It follows from all the aforesaid that, assessed as a whole, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory for cleaning cloths for treating floors and floor coverings (e.g. laminate as apparent from several pictures).

As the earlier mark is registered for impregnated and non-impregnated cleaning, polishing and abrasive cloths, including cloths impregnated with oil for treating floors and floor coverings in Class 21, it has not been used for all the goods for which it is registered.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

Since as apparent from the above, it cannot be determined from the evidence whether or not the cloths in question are impregnated (with oil for example), and it cannot be ascertained either whether or not they have polishing and/or abrasive purposes, but considering on the other hand, that it casts no doubt that they are intended to or suitable for cleaning floors and floorcoverings, for the purpose of the examination of the likelihood of confusion between the earlier mark and the contested sign, the former will be deemed registered only for cleaning cloths for treating floors and floor coverings in Class 21.

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 goods

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

Class 21: Cleaning cloths for treating floors and floor coverings.

The contested goods are the following:

Class 21: Brooms; carpet sweepers; rags [cloth] for cleaning; cleaning instruments, hand-operated; sponge holders; mops; pads for cleaning; scouring pads; chamois leather for cleaning; sponges for household purposes; feather-dusters; dusting cloths [rags]; gloves for household purposes; cloth for washing floors; gardening gloves; kitchen mitts; car washing mitts; Abrasive pads for kitchen purposes; Saucepan scourers of metal; Bath sponges.

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 rags [cloth] for cleaning; pads for cleaning; scouring pads; dusting cloths [rags]; cloth for washing floors are included in, or overlap with the opponent’s broad category cleaning cloths for treating floors and floor coverings. Therefore, they are identical.

The contested abrasive pads for kitchen purposes are similar to a high degree to the opponent’s impregnated and non-impregnated cleaning cloths for treating floors and floor coverings. Indeed, these goods have the same purpose, they target the same consumers and they are usually produced by the same companies. Furthermore, they coincide in distribution channels and as they are interchangeable, they have to be considered in competition.

Likewise, the contested mops; chamois leather for cleaning; sponges for household purposes; feather-dusters; saucepan scourers of metal are similar to a high degree to the opponent’s cleaning cloths for treating floors and floor coverings because they coincide in purpose, target public, distribution channels and producer. Moreover, at least some of them are likely to coincide in method of use (e.g. mops, sponges).

The contested gloves for household purposes; gardening gloves; kitchen mitts; car washing mitts are similar to the opponent’s cleaning cloths for treating floors and floor coverings because they coincide in relevant public, usual producer and distribution channels.

The contested sponge holders; brooms; carpet sweepers; cleaning instruments, hand-operated are similar to the opponent’s cleaning cloths for treating floors and floor coverings because they coincide in relevant public, usual producer and distribution channels. Furthermore, some of these can be complementary to the opponent’s goods (cleaning instruments, hand-operated).

The contested bath sponges are light, porous, highly absorbent elastic materials used in bathing and cleaning. These are similar to a low degree to the opponent’s cleaning cloths for treating floors and floor coverings. Although the former goods are for personal hygiene while the latter are for treating floor and floor coverings, the fact remains that both have a cleaning purpose. Their relevant public also coincides since both address the general public.

2. 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.

In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large displaying an average degree of attention (22/07/2015, R 214/2015-5, COLOUR CATCHER (fig.), § 16; 14/11/2014, R 611/2014-5, BALNAÏS (fig.) / BALMAIN (fig.) § 14).

3. The signs

MASSLINN
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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).

The earlier mark is a word mark consisting of a single element ‘MASSLINN’ which has no meaning as a whole and does not have any clearly identifiable component within the sign. Therefore, it is distinctive in relation to the goods in question.

The contested sign is a figurative mark made up of a single word element ‘MOSSLIAN’ which is also meaningless as a whole and has no identifiable component contained therein, so that it is also distinctive in relation to the goods in question. The stylisation of the contested sign lies exclusively in the very mildly stylized typeface in which the word is depicted.

The marks have no element that could be considered clearly more distinctive than other elements but the typeface of the contested sign plays a secondary role to the verbal element.

Visually, the signs coincide in the string of letters ‘M*SSLI*N’ and, since they have the same number of letters, they also coincide in length. However, they differ in their respective second letter, namely, ‘A’ of the earlier mark versus ‘O’ of the contested sign, and penultimate letter, ‘N’ of the earlier mark versus ‘A’ of the contested sign.

Considering that the differing letters are placed in a position where they are far from being striking, and bearing in mind that the typeface in which the contested sign’s word element is displayed plays more of a secondary role, the conclusion is taken that the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘M*SSLI*N’, present identically in both signs. As they have the same number of syllables, the signs also coincide in rhythm and intonation.

The pronunciation differs in the signs’ respective second letter, that is, ‘A’ of the earlier mark versus ‘O’ of the contested sign and their penultimate letter, ‘N’ of the earlier mark versus ‘A’ of the contested sign.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. 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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Moreover, account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the earlier mark is distinctive to an average degree and the relevant public is the general public whose degree of attention is average. The contested goods are identical and similar to varying degrees to the opponent’s goods. The signs are similar to a high degree from the visual point of view and similar to - at least - an average degree from the aural perspective. Finally, the conceptual aspect does not have any influence on the comparison of the signs.

In light of the above, and applying the interdependence principle, a likelihood of confusion cannot be excluded between these signs.

As explained above, indeed, as the differences between the signs merely lie in two letters, placed in a position where they are far from being striking (that is, their second and penultimate letters) and in the very mild stylization of the typeface of the contested sign which will only play a secondary role in the overall impression of the signs, the Opposition Division considers that the differences between the signs may easily be overlooked and, hence, that the consumers could confuse the signs.

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

It follows that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark, including those that were found similar to a low degree to the opponent’s goods. The goods in question in the present case being fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where they are arranged on shelves so that consumers are guided by the visual impact of the mark they are looking for (see in this regard 15/04/2010, T 488/07, Egléfruit, EU:T:2010:145), the high degree of visual similarity is sufficient to compensate the low degree of similarity between these goods.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 371 715 ‘MASSLINN’. It follows that the contested trade mark must be rejected for all the contested goods.

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, it 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

Nicole CLARKE

Marine DARTEYRE

Julie, Marie-Charlotte HAMEL

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.