OPPOSITION No B 3 072 377

DCD Ideal spol. s.r.o., Dynín 88, 37364 Dynín, The Czech Republic (opponent), represented by Patentcentrum Sedlák & Partners S.R.O., Okružní 2824, 37001 České Budějovice, The Czech Republic (professional representative)

a g a i n s t

Dietrich Wollert GmbH Schläuche aus Gummi und Kunststoff, Wissmannstr. 71, 27755 Delmenhorst, Germany (applicant), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Hollerallee 73, 28209 Bremen, Germany (professional representative).

On 14/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 377 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 948 114 for the word mark ‘DWD Ideal’, namely against all the goods in Class 17. The opposition is based on Czech trade mark registration No 232 623 for the figurative mark . The opposition was initially based on Article 8(1)(a) and (b) EUTMR, however, in its letter of 30/04/2019, the opponent explicitly withdrew Article 8(1)(a) EUTMR as a basis of the opposition. Consequently, the opposition proceeds only on the basis 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 the trade mark on which the opposition is based.

The date of filing of the contested application is 28/08/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Czech Republic from 28/08/2013 to 27/08/2018 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 17: India-rubber, gutta-percha, rubber, asbestos, mica, plastic semi-finished products, materials - sealing, packing and insulating, especially. cement excelsior boards, ligno and styroform boards.

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 05/08/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 10/10/2019 to submit evidence of use of the earlier trade mark. On 09/10/2019, within the time limit, the opponent submitted evidence of use.

The applicant argues that the opponent did not submit translations of some of the evidence of use, namely the invoices and the credit notes, and that therefore this evidence should not be taken into consideration. However, 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). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, especially their self-explanatory character, the Opposition Division considers that there is no need to request a translation. It has also to be noted that the invoices and the credit notes have been partially translated (ex. customer, due date, total amount). In addition, in its submissions, the opponent described each of the annexes and indicated to which products the invoices and credit notes refer.

The evidence to be taken into account is the following:

• Annex A: Nine invoices and six credit notes, out of which one credit note and one invoice are dated outside the relevant period, accordingly 16/11/2018 and 20/09/2018. All the invoices are issued by the proprietor (DCD IDEAL spol. S.R.O.) and bear the signs , or on their cover pages. They are issued to consumers in the Czech Republic, Austria and Slovenia. This can be deduced from the currency showed on the invoices, namely EURO and Czech Korona (CZK), the German and Czech languages and the customer’s addresses. These documents mainly show the sale of thermal insulation goods, as indicated by the opponent, and according to the relevant products codes (ex. EPS 70F, EPS 100Z, EPS 100S, EPS 80F) that could be cross-checked with the provided catalogues discussed below.

• Annex B: Five printed labels bearing the mark and dates within the relevant period (2014-2017), which the opponent attaches on its products, accordingly. They appear together with the relevant technical parameters for the given product. The labels are partly in Czech, partly in English and contain the product’s indication, namely and the product’s code However, it is not shown how the labels with the mark are affixed over the products.

• Annex C: Two catalogues from the years 2015 and 2018 the cover pages of which feature the relevant years and signs like and .

The opponent’s mark appears in the same composition (with additional components) on the rest of the pages thus clearly identifying that the products are offered under this house mark.

As may be seen, the product catagloues contain a variety of insulation goods, inlcuding the ones referred to in the documents above. The products are in Czech with some translations provided by the opponent. At their final page they bear references to contacts and countries of distribution, namely the Czech Republic, Slovakia and Slovenia.

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• Annex D: Printouts from different websites where, according to the opponent, building materials (especially polystyrene) are offered. They contain results illustrating products of the opponent, some of which already referred to above, and obviously showing the mark in question and options for purchase of these goods.

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All the printouts are from 07/10/2019 (outside the relevant period) as may be observed at the bottom of the pages. From the language of the websites and the domain names of some of the pages, it can be deduced that they target the Czech and Slovak public.

Assessment of the evidence

Time of use

The evidence must show genuine use of the Czech trade mark within the relevant period (from 28/08/2013 to 27/08/2018).

Part of the evidence is dated within the relevant period. However, some of the evidence (the above mentioned invoice and credit note and the printouts from the webpages) are dated after the relevant period.

In this regard, it must be noted that 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. Indeed, 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 (order of 27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 31).

In the present case, the aforementioned extracts from the websites, dated after the end of the relevant period, are also relevant, because they give indication about the product codes and the names of the goods, that could be found on the invoices within the relevant time period and show how the mark is presented on some of the relevant products.

As to the invoice dated outside the relevant time period, namely 20/09/2018, that is to say less than one month after the relevant period, this is also relevant because it shows continuity of use for the goods in question.

The credit note from 16/11/2018 will be disregarded.

Consequently, taking into account that the majority of the evidence is dated within the relevant period, as well as the fact that the remaining pieces of evidence contain relevant information referring to the relevant period, it is concluded that the evidence of use filed by the opponent contains sufficient indications concerning the time of use.

Place of use

The evidence must show that the earlier mark on which the opposition is based has been genuinely used in the Czech Republic.

The invoices, the catalogues and the extracts from the websites show that the place of use is primarily the Czech Republic. This can be inferred from the language of the invoices (partly Czech) and the website’s printouts, some of the website’s domains, the currency used in the invoices (partly Czech Krona), the opponent’s address on the invoices and the addresses of the consumers purchasing the relevant goods (addressees of the invoices).

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. This provision applies mutandis mutandis to the earlier national mark. Therefore, the sales to customers in Austria and Slovenia from the Czech Republic also constitute genuine use in the Czech Republic (also see by analogy Boards of Appeal decision from 14/07/2010, R 602/2009-2-RED BARON, § 42).

Therefore, the evidence relates to the relevant territory.

Extent of use

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

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that the 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.

The Court has held that ‘use of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

The invoices and the credit notes submitted (except one invoice and credit note mentioned above) relate to the relevant period and prove the frequency of the use of the opponent’s mark for some of the products.

Furthermore, although the amounts of the sales displayed on the invoices are not particularly extensive, they are a sufficient indication that some of the opponent’s goods (mentioned above) were actually present on the relevant territory, generating a relevant commercial turnover for the opponent’s undertaking.

However, only some pages of the catalogues and some extracts from the webpages show how the opponent’s mark is affixed on some of the relevant goods only and to that extent a better picture of the market situation may be obtained only for those goods. These documents confirm that the goods mentioned therein are the ones that are actually sold on the invoices, as may be confirmed by cross-checking the product codes mentioned therein and those used in the invoices, as well as the catalogues and the labels presented, e.g. EPS NEO, EPS 70, etc., defined as thermalisation materials presented in the shape of a block.

Although the invoices submitted by the proprietor do not show particularly extensive turnovers with regard to part of the relevant goods, it is considered that the several invoices that have been submitted for the years of the relevant period are indicators of the sales and territorial scope of use of the opponent’s mark in relation to some of the relevant goods. Therefore, the fact that the commercial volumes originating from the sale of these goods are not very particularly high is offset by the evidence regarding the duration and frequency of use of the contested mark throughout the relevant period.

As mentioned above, the use of the mark need not be quantitatively significant for it to be deemed genuine. Indeed, the purpose of Article 42(2) and (3) EUTMR is not to assess commercial success or to review the economic strategy of an undertaking, nor is it to restrict trade-mark protection to only large-scale commercial use of the marks (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 32; and 08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38). Following this, despite the minimal references, the opponent showed some extent of use.

Nature of use

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.

The sign is registered like . The evidence submitted shows use of the sign essentially as and .

Article 18 EUTMR states that use of the mark in a form different from that registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of this provision is to allow its proprietor to make variations in the sign that, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

With regard to additions:

• several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438,

§ 34);

• 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 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

As it could be seen the mark was used properly as registered. The accompanying elements are secondary within the signs and do not alter its distinctive character.

In relation to the applicant’s argument that the opponent uses the mark as a company name only and not as a trade mark, as it has been demonstrated above some of the goods bear the relevant trade mark affixed on them. Even though the numbers mentioned are only for some product’s models, all these products as seen also in the catalogues and the labels are offered under the house mark.

Conclusion

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).

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 during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

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

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for insulating blocks (polystyrene). These goods can be considered to form an objective subcategory of materials - sealing, packing and insulating, namely polystyrene panels for insulating purposes. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for materials - sealing, packing and insulating, namely insulating blocks (polystyrene).

The analysis below will proceed taking into consideration these goods only.

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 and for which use has been proved are the following:

Class 17: Materials - sealing, packing and insulating, namely insulating blocks (polystyrene).

The contested goods are the following:

Class 17: Hoses of rubber and/or plastic, in particular exhaust gas hoses, abrasion-resistant rubber spiral hoses, abrasion-resistant rubber hoses, acetylene hoses, exhaust hoses, oxyacetylene hoses, construction hoses, ventilating and aerating hoses, petrol hoses, cement silo discharge hoses, cement sprayer hoses, beer hoses, bitumen hoses, brake hoses, bunkering hoses, steam hoses, deck washing hoses, sewage hoses, pleated hoses, paint spray hoses, fire hoses; Hoses of rubber and/or plastic, in particular flat hoses of rubber, flat hoses of plastic, beverage hoses (including for liquid foodstuffs), grain silo hoses, spiral slurry hoses, water hoses of rubber, winch hoses, hot air compressor hoses, hot tar sprayer hoses, spiral or non-spiral hot water hoses, heat-protected hoses, high-pressure water hoses, high-pressure washer hoses, hydraulic hoses, industrial water hoses; hoses of rubber and/or plastic, in particular ideal green multi-purpose hoses, industrial hoses with a textile glass component, slurry pump hoses, cable protection hoses, sewer flushing hoses, hoses for sweeping machines, compressor hoses of rubber and PVC, fuel hoses, radiator hoses, spiral coolant hoses, leaf and grass vacuum hoses, solvent hoses, air pressure hoses, milk hoses, mortar sprayer hoses; hoses of rubber and/or plastic, in particular dairy steam hoses, multi-purpose self-fastening hoses, oil hoses, compressed air hoses, propane gas hoses, spiral PVC hoses, sprinkler hoses, acid hoses, sandblast hoses, oxygen hoses, pest control hoses, silo hoses, spiral suction hoses, spiral suction pressure hoses, blasting material recovery hoses, road sweeper hoses; hoses of rubber and/or plastic, in particular tanker hoses, submersible pump hoses, tar sprayer hoses, multi-purpose hoses, vacuum hoses, wall hydrant hoses, washing machine hoses, vehicle washing machine hoses, water hoses; cement silo hoses, twin autogenous hoses, couplings for hoses, couplings for pipes, couplings for pipelines, couplings for high-pressure hoses, hose fittings, seals for hose fittings.

The contested goods encompass a large variety of hoses including couplings, fittings and seals for them. Hoses serve essentially to conduct liquids and couplings for hoses and hose fittings are essential for waterproofing and preventing leaks etc. at coupling points. All these materials are made of rubber or plastic. By contrast, the opponent’s goods are used for thermal insulations (ex. buildings, floors, etc.). As it could be seen from the evidence and the opponent’s description, they are made of polystyrene. To this extent, they have different nature and purpose from the contested goods. They are neither complementary (polystyrene blocks are not used to insulate hoses, by contrast to other insulation materials that have such application), nor are they in competition due to their distinct functionality. Therefore, the relevant public would not expect the goods in conflict to be produced by the same undertaking. Following this, the Opposition Division considers the goods in conflict to be dissimilar.

2. Conclusion

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

COSTS

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

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Manuela RUSEVA

Meglena BENOVA

Valeria ANCHINI

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.