OPPOSITION No B 3 046 441

Cooperation Panda, Tsarigradsko Shose Blvd 139, 1784, Sofia, Bulgaria (opponent), represented by IP Consulting Ltd., 6-8, Mitropolit Kiril Vidinski Str., entr. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative)

a g a i n s t

1Office Group OÜ, Narva mnt 5, 10117 Tallinn, Estonia (applicant).

On 29/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 441 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods and services of the European Union trade mark application No 17 472 011 .

The opposition is based on the following earlier rights:

 Bulgarian trade mark registration No 74 945 for the word mark ‘OFFICE 1 GREEN’

 European Union trade mark registration No 10 299 841

 European Union trade mark registration No 3 191 186

 European Union trade mark registration No 8 860 181

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON THE REQUEST FOR PROOF OF USE

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 and services

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

1) European Union trade mark registration No 10 299 841

Class 9: Equipment for recording, transmitting or reproducing sound or images, magnetic data carriers, recording discs and cards, cash registers, calculating devices, data processing equipment and computer hardware and computer software, accounting machines, acoustic alarms, fire alarms and fire blankets, document processing, reading, retrieval or sorting apparatus (other than office machines), electrical devices for storage or switching of data or messages, electrical devices for data information display, electrical devices for security purposes (other than for vehicles), compact disc players, compact discs, dictating machines, fire extinguishers, cameras, films for cameras, telephones, batteries, chargers for electric batteries, facsimile machines, franking machines, cassette tapes, headphones, projection apparatus, projection screens, mathematical instruments, measuring devices, printers, modems, scanners, telephones, time recording devices, weighing apparatus and devices, all the aforementioned goods being suitable for use in offices, and parts and fittings for all the aforesaid goods.

Class 16: Paper, cardboard, printed matter, photographs, calendars and diaries, stationery, instruction manuals, office requisites (except furniture), office supplies and office machines and parts and fittings for all the aforesaid goods.

Class 35: The bringing together, for the benefit of others, of a variety of office requisites, enabling customers to conveniently view and purchase those office requisites in a shop or store selling office requisites; the bringing together, for the benefit of others, of a variety of office requisites, enabling customers to conveniently view and purchase those office requisites from an office requisites catalogue by mailorder or by means of telecommunication; the bringing together, for the benefit of others, of a variety of office requisites, enabling customers to conveniently view and purchase those office requisites from an Internet website specialising in the marketing of office requisites; the bringing together, for the benefit of others, of a variety of office requisites, enabling customers to conveniently view and purchase those office requisites in a wholesale outlet.

2) European Union trade mark registration No 3 191 186

Class 9: Equipment for recording, transmitting or reproducing sound or images, magnetic data carriers, recording discs and cards, cash registers, calculating devices, data processing equipment and computer hardware and computer software, accounting machines, acoustic alarms, fire alarms and fire blankets, electrical equipment and devices for use in offices, compact disc players, compact discs, dictating machines, fire extinguishers, cameras, films for cameras, telephones, batteries, chargers for electric batteries, facsimile machines, franking machines, cassette tapes, headphones, lamps, projection apparatus, projection screens, mathematical instruments, measuring devices, printers, modems, scanners, telephones, time recording devices, weighing apparatus and devices, all the aforementioned goods being suitable for use in offices, and parts and fittings for all the aforesaid goods.

Class 16: Paper, cardboard, printed matter, photographs, calendars and diaries, stationery, instruction manuals, office requisites (except furniture), office supplies and office machines and parts and fittings for all the aforesaid goods.

Class 35: The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a shop or store selling office requisites; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from an office requisites catalogue by mail order or by means of telecommunication; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from an Internet website specialising in the marketing of office requisites; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a wholesale outlet.

3) European Union trade mark registration No 8 860 181

Class 9: Equipment for recording, transmitting or reproducing sound or images, magnetic data carriers, recording discs and cards, cash registers, calculating devices, data processing equipment and computer hardware and computer software, accounting machines, acoustic alarms, fire alarms and fire blankets, document processing, reading, retrieval or sorting apparatus (other than office machines), electrical devices for storage or switching of data or messages, electrical devices for data information display, electrical devices for security purposes (other than for vehicles), compact disc players, compact discs, dictating machines, fire extinguishers, cameras, films for cameras, telephones, batteries, chargers for electric batteries, facsimile machines, franking machines, cassette tapes, headphones, projection apparatus, projection screens, mathematical instruments, measuring devices, printers, modems, scanners, telephones, time recording devices, weighing apparatus and devices, all the aforementioned goods being suitable for use in offices, and parts and fittings for all the aforesaid goods.

Class 16: Paper, cardboard, printed matter, photographs, calendars and diaries, stationery, instruction manuals, office requisites (except furniture), office supplies and office machines and parts and fittings for all the aforesaid goods.

Class 35: The bringing together, for the benefit of others, of a variety of office requisites, enabling customers to conveniently view and purchase those office requisites in a shop or store selling office requisites; the bringing together, for the benefit of others, of a variety of office requisites, enabling customers to conveniently view and purchase those office requisites from an office requisites catalogue by mailorder or by means of telecommunication; the bringing together, for the benefit of others, of a variety of office requisites, enabling customers to conveniently view and purchase those office requisites from an Internet website specialising in the marketing of office requisites; the bringing together, for the benefit of others, of a variety of office requisites, enabling customers to conveniently view and purchase those office requisites in a wholesale outlet.

4) Bulgarian trade mark registration No 74 945

Class 9: scientific, navigational, geodetic, photographic, cinematographic, optical, weighing, measuring, signaling, checking, supervision, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transporting, accumulating, regulating and controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, information processing equipment and computers; fire extinguishers.

Class 16: paper, cardboard and goods made from these materials, not included in other classes; Printed works; book binding material; photographs; stationery; stationery adhesives and adhesives for household purposes; materials for artists; paint brushes; typewriters and stationery (except furniture); teaching materials (except apparatus); plastic packaging materials (not included in other classes); print letters; clichés.

Class 35: advertising; business transaction management; commercial administration; administrative activity.

The contested services are the following:

Class 35: Advertising; Business management; Clerical services; Outsourcing services [business assistance]; Computerised data processing; Book-keeping; Billing; Preparation of invoices; Drawing up of statements of accounts; Compilation of information into computer databases; Document reproduction; Efficiency experts; Commercial or industrial management assistance; Business information for enterprises (Provision of -); Professional business consultancy; Office machines and equipment rental; Tax preparation; Payroll preparation; Personnel management consultancy; Secretarial services; Word processing; Organisation for a third party of telephone welcoming services and of telephone receptionist services; Arranging subscriptions to telecommunication services for others; Consultancy of personnel recruitment; Providing assistance in the field of business management; Arranging of business introductions; Consultations relating to business disposals.

Class 36: Rental of office space; Rental of real estate; Financial consultancy.

Class 45: Legal services; Legal services relating to business.

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.

1. Comparison with the earlier European Union trade mark registrations

Contested services in Class 35

As a preliminary remark, it is to be noted that contrary to the opponent’s argument 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 (Article 33(7) EUTMR).

The contested services are essentially advertising, business assistance, management and administrative services, business analysis, research and information services, commercial trading and consumer information services.

These services are usually rendered by specialised companies that gather information and provide tools and expertise to enable their customers to carry out their business, to help them to find suitable staff to meet their needs and requirements, to promote their launch and/or sale, to acquire competitive advantage through publicity. These companies also provide businesses with the necessary support to acquire, develop and expand market share, to reinforce the client’s position in the market, or professional assistance and consultancy in the area of employment and recruitment. Some of the contested services, such as clerical services are aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose. The opponent’s goods and services are, essentially, IT apparatus, electronic and electrical equipment for use in offices in Class 9, paper, stationery and office supplies in Class 16, and retail services relating to office requisites in Class 35.

The goods and services covered by the earlier mark and the contested services in Class 35 have a different nature as far as the contested goods in Classes 9 and 16 are concerned, and purpose as far as the contested services are concerned (e.g. assisting companies in their business activities and human resources affairs versus selling office supplies). Furthermore, the goods and services are not provided by the same companies. The earlier goods and services are usually provided by companies manufacturing IT goods and office supplies, or stores selling office requisites, whereas the contested services are provided by business and personnel consultancies or advertising agencies. Moreover, the relevant goods and services target different end users and they are provided through different distribution channels.

In today’s business environment most services are performed with the use of IT equipment and office supplies, however, this does not necessarily lead to the finding of similarity. This is because such goods would be offered by different companies (including their retail) than the services performed by business consultants or advertising agencies.

The goods and services are not in competition. Finally, goods or services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, §40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, §25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). This is not the case here as the goods and services belong to different market sectors. Therefore, the compared goods and services are dissimilar.

Contested services in Classes 36 and 45

The contested services are financial, real estate and legal services. These services are provided by financial institutions, real-estate agents or law firms and have nothing in common with the opponent’s goods and services. They differ in nature (as far as the opponent’s goods are concerned), purpose, providers/producers and distribution channels. They are neither complementary nor are they in competition. The goods and services are dissimilar.

Conclusion with regard to the opponent’s earlier European Union trade mark registrations

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 goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on these earlier rights.

2. Comparison with the earlier Bulgarian trade mark registration No 74 945

Contested services in Class 35

Advertising is identically included in both lists while the rest of the contested services are at least similar to the opponent’s business transaction management; commercial administration; administrative activity because they coincide in their purpose, namely to contribute to the smooth running of a business, they are usually provided by the same undertaking and via the same distribution channels.

Contested services in Classes 36 and 45

These services are dissimilar to all the goods and services of the opponent, for reasons already established above. They do not coincide in any of the relevant criteria.

ANALYSIS OF THE SUBMITTED PROOF OF USE

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based. Therefore, it remains necessary to establish (i) whether the opponent has demonstrated genuine use of the earlier Bulgarian trade mark registration No 74 945 for the word mark ‘OFFICE 1 GREEN’, and whether (ii) genuine use can be established for the services found identical or at least similar to the contested services in Class 35.

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 date of filing of the contested application is 13/11/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Bulgaria from 13/11/2012 to 12/11/2017 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 found identical or at least similar, namely the following:

Class 35: Advertising; business transaction management; commercial administration; administrative activity.

According to Article 10(3) EUTMDR, 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 02/04/2019, within the deadline given by the Office in accordance with Article 10(2) EUTMDR, the opponent submitted evidence of use.

According to the opponent ‘OFFICE1’ was founded in 1994 as a franchise retail chain selling office products and supplies headquartered in Florida with international operations running from a central office and warehouse in Sofia, Bulgaria.

The opponent included some website links (www.metropolitanhotelsofia.com and www.office1international.com) and information from Wikipedia. The opponent also included information from the Wayback machine to show that its website has been active between 2004 and 2018.

The evidence to be taken into account is the following:

 Several invoices issued by the opponent to Thessaloniki, Greece, for the sale of office supplies, such as office paper, envelope, letter tray, fine permanent marker, for a few thousand Euros each. None of the product lines refer to the earlier mark, although some indicate ‘O1S’, while others refer to other trade marks, such as ‘FABER-CASTELL’, ‘HAN’, ‘VERBATIM SWIVEL’. The invoices are dated in 2015-2017. The invoices’ heading displays the following sign:

 Screenshots from www.office1international.com displaying the following sign: in relation to a chain of stores distributing stationery products across Europe and worldwide. One news item from 2015 reports on the 15^th anniversary of the first ‘Office 1 Bulgaria’ store. Another page shows the domain of www.office1.bg;

 English-language ‘Proposal for advertising through the advertisement channels of 101 ‘Office 1 Superstores’ in Bulgaria, including advertising tariffs;

 One invoice issued by the opponent to Austria for ‘Marketing Support Catalog O1S No.28’ for EUR 1000;

 Four invoices dated in 2015 and 2016 with the heading

for Bulgarian Levs amounting to around EUR 600-1200 for ‘marketing support’ according to the opponents’ translation;

 One invoice issued to Switzerland for ‘Customer event’, for USD 6000;

 One invoice issued to Austria dated in 2016 for ‘Marketing Support Catalog O1S No.28’;

 A list prepared by the opponent for ‘Monthly Superstore License Fee’ and four invoices issued by the opponent for license fees (royalty payments) dated in 2019.

Some of the website screenshots prove the existence of the Bulgarian store, and the invoices show that the opponent has been shipping goods from Bulgaria. Most of the invoices were also issued in Bulgarian, some of them state amounts in Bulgarian Lev. As far as genuine use may result from the export, it can be established that the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period, except for the invoices concerning royalty fees which post-date the relevant period.

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.

The invoices filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use for the sale office supplies, but not as far as ‘marketing support’, ‘customer events’ or ‘advertising’ are concerned, which are the services that might be considered as covered by the opponent’s relevant services in Class 35. The list prepared by the opponent for ‘Monthly Superstore License Fee’ is evidence coming from the opponent without any evidence backing up its content from independent sources, apart from four invoices dated after the relevant period. In any event, it is not clear from these invoices what kind of services were provided by the opponent.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the earlier mark as far as services in Class 35 are concerned, which are the services in relation to which identity or similarity at least has been found.

An additional deficiency of the evidence must be established in relation to the nature of use requirement, which is an independent reason for finding that use of the earlier mark is not proven.

In the context of Article 10(3) EUTMDR, 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. 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 earlier mark the opponent relied on is the word mark ‘OFFICE 1 GREEN’.

‘GREEN’ will be perceived with its English meaning by a significant part of the public and might therefore be seen to allude to environmentally friendly characteristics. The distinctiveness of this term is thus considered to be below the average. At the same time, there is no direct link with the earlier services in Class 35, and therefore the term retains enough distinctive character so that its omission affects the distinctive character of the mark in the form in which it was registered. None of the materials submitted contain a sign which would include all the elements of the earlier mark, namely ‘OFFICE 1 GREEN’.

The materials refer to a sign containing the first two elements of the earlier mark, ‘OFFICE 1’, however with the addition of another verbal element ‘Superstore', while ‘GREEN’ is not present in any of them.

In fact, most of the evidence displays the figurative sign . Even if we assume that the stylisation does not change the distinctive character of the verbal part represented, we are left with the following verbal components ‘Office1Superstores’. ‘Superstores’ is an English term which will not be understood by a significant majority of the public in Bulgaria. The public will understand the first part of this element ‘super’ as refering to the high quality of the services but since the rest of the letters in the sign, namely ‘stores’ will be meaningless, the element as a whole will mostly be seen as something of high quality. Even if for this reason the distinctiveness of this element is assumed to be lower than average, the fact remains that the addition of ‘Superstores’ affects the distinctive character of the mark as registered.

Consequently, the identified addition and omission show use of the trade mark in forms differing in elements that alter the distinctive character of the mark in the form in which it was registered. In fact, the Opposition Division is of the view that the evidence shows use for different distinctive signs but not of the earlier Bulgarian trade mark.

In view of the above, the Opposition Division considers that the evidence does not show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

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).

These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that 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 to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (judgment of 17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31).

Given the deficiencies in the extent and nature of use the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier Bulgarian trade mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, as far as this earlier national mark is concerned, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the opponent’s claim that it owns a family of marks, all characterised by the common element ‘OFFICE 1’. This claim could not overcome either the dissimilarity of the goods and services, or the lack of sufficient evidence to demonstrate genuine use.

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, 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Teodora Valentinova TSENOVA PETROVA

Marianna KONDAS

Victoria DAFAUCE MENENDEZ

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.