OPPOSITION Nо B 3 058 817

 

Wheel Pros, LLC, 5347 S. Valentia Way, Suite 200, 80111 Greenwood Village, United States of America (opponent), represented by Fieldfisher LLP, The Capel Building Mary's Abbey, D07 N4C6 Dublin 7, Ireland (professional representative) 

 

a g a i n s t

 

KMC Chain Industrial Co., Ltd., No. 41, Chung Shan Road, Xinhua District, Tainan City, Taiwan, People’s Republic of China (applicant), represented by Racheli S.R.L., Viale San Michele Del Carso, 4, 20144 Milan, Italy (professional representative).

On 28/01/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.		Opposition No B 3 058 817 is upheld for all the contested goods, namely: Class 12: Roller chains for vehicles; silent chains for vehicles; parts and accessories of motorcycles, namely, motorcycle chains, silent chains for motorcycles; parts and accessories of automobiles, namely, automobile chains, silent chains for automobiles.
2.	European Union trade mark application No 17 874 703 is rejected for all the contested goods. It may proceed for the remaining goods.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 874 703 (figurative mark), namely against some of the goods in Class 12. The opposition is based on European Union trade mark registration No 5 106 596 ‘KMC’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

The opponent originally also invoked Article 8(5) EUTMR on the basis of European Union trade mark registration No 5 106 596 ‘KMC’ (word mark), and non-registered trade mark rights in the European Union and all its Member States for the sign ‘KMC’ (word mark) in relation to which the opponent invoked Article 8(4) EUTMR. On 21/02/2019, when filing its further facts, evidence and arguments, the opponent withdrew the grounds under Article 8(4) EUTMR and Article 8(5) EUTMR as grounds for its opposition. Therefore, the opposition will only be examined in relation to the remaining ground of 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 European Union trade mark registration No 5 106 596 on which the opposition is based.

 

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.

 

The date of filing of the contested application is 14/03/2018. 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 14/03/2013 to 13/03/2018 inclusive.

 

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

 

Class 12:  Automobile wheels.

 

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 15/07/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 20/09/2019 to submit evidence of use of the earlier trade mark. This time limit was extended until 20/11/2019 upon the opponent’s request. On 20/11/2019, within the time limit, the opponent submitted evidence of use.

 

The evidence to be taken into account is the following:

 

 A witness statement dated 20/11/2019, signed by a Trade Mark Attorney from the firm representing the opponent, containing information about the opponent’s activities and making reference to the 11 annexes listed below.

It is explained that this witness statement serves to re-file evidence of use already submitted in a prior invalidity action No 12197C filed on 30/01/2017 and which consists of a witness statement signed by the same Trade Mark Attorney from the firm representing the opponent together with Exhibits JCS10 to JCS21 to which it referred, and that the opponent also introduces further evidence of proof of use of the earlier mark from 2016.

 Annex 1: an extract from the opponent’s customer records showing the names and addresses of its authorised dealers located within the European Union.

Several names and addresses of companies in Austria, the Czech republic, Finland, France, Germany, Greece, Italy, the Netherlands, Poland, Portugal, Spain, Sweden and the United Kingdom feature in this Excel-sheet.

 Annex 2: an extract from the opponent’s financial records showing the sales data during the period dated 2011 to 2018;

The extract shows the name of the sales agents, their location and the dates of the invoices and the invoiced amounts between 26/07/2011 and 30/09/2019. Over 200 invoices are dated within the relevant period, starting with an invoice of 02/08/2013 (KM65122997215) and ending with an invoice of 12/03/2018 (KM68528512735).

These invoices have been issued to agents in Austria, Belgium, Denmark, Finland, Germany, Ireland, the Netherlands, Sweden and the United Kingdom. All invoices have been issued to one agent per country.

 Annex 3: a copy of the evidence of use filed in invalidity action No 12197C referred to above, namely:

o a witness statement dated 30/01/2017, signed by a Trade Mark Attorney from the firm representing the opponent, containing information about the opponent’s activities and making reference to Exhibits JCS10 to JCS21 listed below.

It is explained that the opponent sells its range of KMC wheels throughout the European Union through a number of authorised dealers.

o an extract from the opponent’s customer records showing sales of KMC wheels by its dealers located in Denmark, Finland, France, Germany, Hungary, the Netherlands, Poland, Sweden and the United Kingdom from 2013 to 2016 (Exhibit JCS10);

o a selection of 15 invoices issued by the opponent to its authorised dealers in the Netherlands (Exhibit JCS11), Finland (Exhibit JCS12), Denmark (Exhibit JCS13), and the United Kingdom (Exhibit JCS14) dated between 02/09/2012 and 07/12/2016.

o screenshots from the websites of the opponent’s dealers in France, the Netherlands and the United Kingdom, as well as promotional materials and invoices (Exhibits JCS15 to JCS21), namely:

- screenshots bearing the printing date of 30/01/2017, taken from the websites of the opponent’s dealers in the Netherlands (Exhibit JCS15), in the United Kingdom (Exhibit JCS19) and France (Exhibit JCS21); the earlier mark features on several screenshots;

- screenshots from the website of the opponent’s dealer in the Netherlands taken via the Wayback Machine web archive dated 10/07/2014 and 12/08/2015 (Exhibit JCS16);

- an undated flyer used by the opponent’s dealer in the Netherlands to promote (amongst others) KMC wheels, which is – according to the affidavit – from December 2014 (Exhibit JCS17); three different types of KMC wheels are depicted;

- a selection of three invoices issued by the opponent’s authorised dealer in the Netherlands to a Belgian customer dated 26/03/2014, 06/12/2016 and 13/12/2016, all referencing the earlier mark in the description of invoiced goods (Exhibit JCS18);

- a brochure used by the opponent’s dealer in France indicating that the advertised prices are valid until 09/05/2016 (Exhibit JCS20); the earlier mark features several times in the text of brochure and on some of the KMC wheels depicted therein.

 Annexes 4 to 10: screenshots from the websites of the opponent’s authorised dealers in Denmark (Annex 4), the United Kingdom (Annex 5), France (Annex 6), Italy (Annex 7), Poland (Annex 8), Hungary (Annex 9) and Germany (Annex 10), all taken via the Wayback Machine web archive on several dates between 18/12/2013 and 08/02/2018, except the screenshot from the dealer in Italy which is taken from the corresponding website and bearing the printing date of 19/11/2019.

Most of these screenshots depict different types of KMC wheels, in combination with product codes and/or product specifics, which reference the earlier mark, as is shown in the samples below:

Annex 4 – Denmark	Annex 7 – Italy

Annex 8 – Poland	Annex 10 – Germany

 Annex 11: a selection of 20 invoices dated from 16/09/2016 to 03/08/2018 to the opponent’s authorised dealers in Denmark, Finland, the Netherlands and the United Kingdom.

All invoices pertain to the relevant period and are dated as follows: three invoices from 2016, ten invoices from 2017 (one invoice has been included three times) and seven invoices from 2018.

The goods in these invoices are denoted by a product code and a ‘material description’, which includes a reference number, an abbreviated reference number (e.g. KM651 or KM705) and product specifics, e.g.: .

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.

The applicant argues that some of the evidence (namely Annexes 1 and 2, and part of Annex 3) relates to internal documents. Statements and information coming from the sphere of the owner of the earlier mark are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (11/01/2011, R 490/2010-4, BOTODERM / BOTOX, § 34; 27/10/2009, B 1 086 240 and 31/08/2010, B 1 568 610). In general, further material is necessary for establishing evidence of use, since such statements and information have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the internal documents are supported by the other items of evidence.

The aforementioned affidavits, screenshots of the websites of the authorised dealers of the opponent and invoices show that the place of use are several EU Member States, including Austria, the Czech republic, Finland, France, Germany, Greece, Italy, the Netherlands, Poland, Portugal, Spain, Sweden and the United Kingdom. This can be inferred from the addresses on the invoices, the ccTLD’s of the websites, as well as from the language on all of the documents (mostly English).

Most of the evidence is dated within the relevant period. It is true that some of the invoices submitted as part of Annex 3 predate the relevant period, whereas some invoices submitted in Annex 11 postdate the relevant period. Evidence referring to use outside the relevant period is disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, the small number of invoices that have been issued after the relevant period confirm use of the earlier mark within the relevant period. This is because they demonstrate continuity in the use of the mark.

The screenshots from the websites of the authorised dealers of the opponent (Annex 3 and Annexes 4 to 10), the promotional materials and some invoices (namely the invoices issued by the opponent’s authorised dealer in the Netherlands to its Belgian customer) reference the earlier mark. Even if most invoices do not reference the earlier mark in their product descriptions (in particular the invoices issued by the opponent to its authorised dealers submitted as part of Annex 3, and as Annex 11), it becomes clear that they refer to KMC wheels upon cross-referencing the abbreviated reference numbers on the invoices with the information on the websites of the opponent’s authorised dealers. This is shown in the following example for ‘KM651’: an invoice dated 21/03/2017 and issued to the opponent’s Danish authorised dealer refers to , whereas one of the opponent’s wheels on the website of this dealer is depicted as follows .

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.

Use of the mark need not be quantitatively significant for it to be deemed genuine. It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

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.

In this respect, the opponent has shown that its goods have been sold to several authorised dealers located throughout the European Union. Even if the sales shown are not particularly high taking into account the market sector concerned, they are dated throughout the relevant period and billed to authorised dealers in several EU countries and are not numbered sequentially, which shows that they are only examples of regular and frequent sales and not the totality thereof. Moreover, although neither the number of invoices nor the number of KMC wheels invoiced therein is very impressive, the opponent does not have to show economic success, but only that it has put the earlier marks to genuine use. The Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

As regards the nature of use, the evidence shows that the earlier mark is shown on the websites of the authorised dealers of the opponent (Annex 3 and Annexes 4 to 10), on the promotional materials and on some invoices of one of the opponent’s authorized agents. As explained above, this evidence can be read in combination with the invoices to see that the goods sold therein were marked with this sign as registered and that it was used to indicate the commercial origin of the goods which shows use as a trade mark.

In response to the applicant’s argument that evidence filed as Annex 9 is not in the language of the proceedings, it is underlined that the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the nature of Annex 9 and its self-explanatory character, the Opposition Division considers that there is no need to request a translation.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark for automobile wheels during the relevant period in the relevant territory.

 

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

 

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

 

a) The goods

 

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

Class 12: Automobile wheels.

The contested goods, after a limitation, are the following:

Class 12: Roller chains for vehicles; silent chains for vehicles; parts and accessories of motorcycles, namely, motorcycle chains, silent chains for motorcycles; parts and accessories of automobiles, namely, automobile chains, silent chains for automobiles.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

 

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

 

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 goods, which are essentially transmission system spare parts for vehicles and motorcycles and the opponent’s automobile wheels have the same nature (spare parts for vehicles or motorcycles) and general purpose (transmission system for vehicles or motorcycles). In addition, they may also originate from the same manufacturer; indeed, as regards spare parts for motorcycles in particular, it is not uncommon for car part factories to also manufacture motorcycle parts. Finally, they can also be sold through the same distribution channels. Taking into account all these factors, all the contested goods are considered to be at least similar to a low degree, to the opponent’s goods.

 

 

b) Relevant public — degree of attention

 

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

 

In the present case, the goods found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise. It is however not excluded that some of these goods are also directed at the part of the general public consisting of motorbike and car enthusiasts who are knowledgeable.

 

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. 

c) Distinctiveness of the earlier mark and comparison of the signs

 

KMC
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).

In addition, 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 present assessment will rest on the earlier mark’s inherent distinctiveness. 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.

The opponent asserted that the earlier mark is inherently highly distinctive. However, it should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (decision of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). The opponent did not submit any evidence of acquired distinctiveness and therefore the Opposition Division cannot conclude a higher than normal degree of distinctiveness.

The verbal element ‘KMC’ constituting the earlier mark and being the only verbal element of the contested sign is meaningless. It is therefore distinctive to a normal degree.

The contested sign is a figurative mark consisting of the abovementioned verbal element written in white capital letters, which is placed on and in the middle of a figurative element consisting of two overlapping, horizontally placed circles in greyscale. Where the circles overlap, they form a node, as if to form a lemniscate. Although the figurative element mainly is decorative of nature, it cannot be denied some degree of distinctiveness. The contested sign does not have a visually dominant element. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal element ‘KMC’ will have a stronger impact on the consumer than the figurative element.

Visually, the signs coincide in all the letters of the earlier mark ‘KMC’, and only differ in the figurative element of the contested sign which has no counterpart in the earlier mark.

Therefore, taking into account the stronger impact of the verbal element of the contested sign, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of all their respective letters ‘KMC’, present identically in both signs.

Therefore, the signs are aurally identical.

 

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. This outcome is not altered by the figurative element of the contested sign which does not have any concept for the consumer.

 

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

 

 

e) Global assessment, other arguments and conclusion

 

The contested goods are similar to a low degree to the opponent’s goods. They target professionals and part of the general public consisting of motor and car enthusiasts whose degree of attention may range from average to high. The signs are visually highly similar, aurally identical and conceptually neutral. The distinctiveness of the earlier mark is average.

Account is 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). As the only differences between the signs reside in the figurative element of the contested sign, the similarities between the signs clearly outweigh the differences. The consumers may believe that the contested sign is a sub-brand of the earlier mark to distinguish a new product line. Indeed, although admittedly the goods at issue have been found similar to a low degree only, it is recalled that 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). In the present case, the similarity between the signs is sufficient to outweigh the remote degree of similarity between the goods, and a likelihood of confusion exists in relation to them, even in the case of a higher degree of attention of the public.

In its observations, the applicants argues that the marks at issue have peacefully coexisted on the register and in the market for many years.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

As regards the absence of a likelihood of confusion, this may be only inferred from the ‘peaceful’ nature of the coexistence of the marks at issue on the market concerned (07/06/2016, R 1889/2015-4, CIPRIANI / HOTEL CIPRIANI, § 42 (03/09/2009, C 498/07 P, La Española, EU:C:2009:503, § 82). Furthermore, the coexistence must concern the relevant countries in the case, i.e. if the earlier mark is an EUTM, the applicant must show coexistence in the entire European Union (02/04/2020, R 2520/2018-4, MILEY CYRUS / CYRUS).

 

In this regard it should also be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

 

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

 

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

The evidence consists essentially of the following:

 Annex A: a selection of 31 invoices for motorcycle chains, dated between 10/05/2010 and 23/12/2015, and – with the exception of one invoice which has been issued to a company in Germany – issued by the applicant either to KMC Chain Europe BV in the Netherlands or one and the same addressee in Italy.

 Annex B: pictures of motorcycle chains, with many of them depicting the mark KMC which has been engraved therein.

 Annex C: an undated catalogue of ‘KMC Motorcycle Chain’ in English, depicting the ‘KMC’ brand several times, and including a timeline of the KMC brand (starting in 1977, indicating several milestones throughout the past decades, which end with ‘2014’ for ‘Power Transmission Business Expansion’), as well as a reference to ‘KMC [EUROPE]’ based in the Netherlands.

The applicant has indicated in its submissions that the catalogue is of 2013.

 Annex D: an undated catalogue of ‘KMC CHAIN’ in English, depicting the ‘KMC’ brand several times, referencing ‘KMC’ for five different types of chains, namely automobile chains, cam chains, motorcycle drive chains, bicycle chains and industrial chains.

 Annex E: a selection of 11 invoices for roller chains, dated between 29/04/2010 and 24/05/2015, and issued by the applicant to one and the same addressee in Poland.

 Annex F: one invoice dated 25/04/2018 for automobile chains accessories, and issued by the applicant to KMC Chain Europe BV.

 Annex G: pictures of automobile chains with the mark KMC engraved therein

 Annex H: an undated catalogue of ‘KMC’ with the tagline ‘Specialized For Automotive Components’ in English, depicting the ‘KMC’ brand several times, including a company overview, as well as a reference to ‘KMC [EUROPE]’ based in the Netherlands.

 Annex I: financial reports and consolidated financial statements on the applicant for the period 2014-2018, including consolidated financial statements for the years ended on 31/12/2016, on 31/12/2017 and on 31/12/2018 and independent auditors’ report, and listing among others its subsidiaries, and referring to KMC Chain Europe BV as a ‘counterparty’.

 Annex J: comprehensive income financials statements for the applicant for the period 2014-2018

It is pointed out that for the applicant to prove that the coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public, it must be proven that the earlier (‘coexisting’) marks and the marks at issue are identical to those involved in the opposition before the Office (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86; 18/09/2012, T-460/11, Burger, EU:T:2012:432, § 60-61) and cover the same goods or services as those in conflict (30/03/2010, R 1021/2009-1, ECLIPSE / ECLIPSE (fig.), § 14). Furthermore, if the earlier trade mark is a European trade mark registration, the applicant must show coexistence in the entire European Union. Hence, the applicant needs to provide evidence that the identical marks to the marks which are in conflict coexist in the market (the whole EU), which could actually indicate that consumers are used to seeing the marks without confusing them.

However, as the evidence and arguments submitted by both parties, in particular the decisions of 21/03/2018 in Cancellation No 12197 C (KMC/KMC) and of 12/07/2010 on Opposition No B 1 117 391 (KMC/KMC) involving both parties, show, it is quite clear that the parties have been in a relatively long standing and active conflict when it comes to their respective trade marks in the territory of Europe. Therefore, the ‘peaceful’ nature of the coexistence of the marks at issue on the market has not been proven. Moreover, although the applicant provided evidence that its ‘KMC’ brand has been used in the European Union for different kinds of chains for several years, this evidence in itself is not sufficient. It mainly focuses on sales of its goods to subsidiaries/distributors/customers in the Netherlands, Italy, Germany and Poland, but does not succeed in showing a peaceful coexistence of the signs at issue throughout the entire European Union.

Therefore, in the absence of conclusive arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

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

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, 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

Christophe DU JARDIN

Erkki MÜNTER

 

 

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.