OPPOSITION Nо B 3 082 689

 

Alucan Entec S.A., Alfonso XII, 687-697, 08918 Badalona (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Muntaner, 240 – 4º 2ª, 08021 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Plahoma Eight AG, Alter Hof 5, 80331 München, Germany (applicant), represented by LS‑IP Loth & Spuhler Intellectual Property Law Partnerschaft von Rechtsanwälten mbB, Alpha-Haus, Garmischer Strasse 35, 81373 München, Germany (professional representative).

On 24/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 082 689 is rejected in its entirety.

 

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

 

REASONS

 

On 09/05/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 989 000 for the figurative mark , namely against some of the goods and services in Classes 1 and 35. The opposition is based on European Union trade mark registrations No 6 706 907 for the figurative mark and No 8 420 754 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

 

 

PROOF OF USE

  

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

 

 

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that both earlier trade marks were registered more than five years prior to the relevant date mentioned above.

As the EU trade mark registration No 8 420 754 covers the same or narrower scope of goods and services that the EU trade mark registration No 6 706 907, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EU trade mark registration No 6 706 907.

The date of priority of the contested application is 09/10/2018. The opponent was therefore required to prove that the aforementioned EU trade mark registration No 6 706 907 for the figurative mark was put to genuine use in the European Union from 09/10/2013 to 08/10/2018 inclusive.

 

Furthermore, the evidence must show use of that trade marks for the goods and services on which the opposition is based, namely the following:

Class 6: Common metals and their alloys; aluminium; containers and packaging of aluminium; receptacles and containers of metal; Bottles (metal containers) for compressed gas or liquid air; bottles of aluminium; preserve tins; tins; packaging containers of metal; Foils of metal for wrapping and packaging; bottle caps of metal; sealing caps of metal; bottle closures of metal; closures of metal for containers.

Class 10: Aerosol dispensers for medical purposes.

Class 21: Aerosol dispensers, not for medical purposes; bottles; insulating flasks; refrigerating bottles; drinking vessels.

Class 35: Import, export and selling in stores or via electronic media of containers, bottles, bottle closures and aerosol dispensers; business management; business administration; advertising.

Class 40: Treatment of materials; metal treatment; metal plating; metal tempering. 

 

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 03/03/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 08/05/2020 to submit evidence of use of the earlier trade mark, which upon opponent’s request was extended until 08/07/2020. On 01/07/2020, within the time limit, the opponent submitted evidence of use.

  

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

 

The evidence to be taken into account is the following:

 Enclosure 1: 73 invoices issued between 27/02/2015 and 31/12/2018, in Spanish, French or English, including the earlier mark on the top left corner, the opponent’s address and the description of the products such as PLAIN ALU AC29, SPRAY, ALUM. CAN BRUSHED, BOT ALUMINIO 1L TAPON. The invoices are addressed to subjects in Spain, France, UK, Italy, Lithuania, Germany, Belgium, Netherlands and Poland and the amount charged (included on many of those invoices) is in the six digit range.

 Enclosure 2: Undated extracts from a few catalogues including the earlier trade mark, i.a. as follows . The catalogues are in English, include the opponent’s address, photos and descriptions of the opponent’s products such as the aluminum cans for aerosols, beverage aluminum bottles, technical and chemical aerosols and bottles and bottles closures. The following is mentioned in one of them: ‘Alucan is ……offering …more than 30 standard shapes of aluminium bottles from 20cl to 100cl….. In 1999 we launched the first aluminium bottle in the market…’.

 Enclosure 3: Screenshot of the opponent’s website taken via the Wayback Machine web archive on several dates between 15/12/2016 and 04/11/2018, including logo and examples of its products, such as cans for aerosols and aluminum bottles for different use as well as the different types of bottle closures.

 Enclosure 4: An article published on Fieldfisher España in Spanish (along with its translation into the language of proceeding) on 07/09/2016 with the title ‘Alucan construye una nueva planta y da entrada a un fondo de Suma’ (Alucan builds a new plant and gives entrance to a fund of Suma). Inter alia the following is mentioned there: ‘…..The manufacturer of aluminum containers for mass consumption companies, Alucan Entec,…. The company specializes in aluminum bottles and aerosols for food and beverage companies, cosmetics and the pharmaceutical industry….’.

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).

When evaluating the evidence submitted, the Opposition Division has to make an overall assessment and all the circumstances of the case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Individual items of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with other documents and information.

The documents submitted show that the opponent is producing and distributing its products in Spain. In addition, it sells its products to several EU countries, such as France, Italy. Lithuania, Germany, Belgium, Netherlands, Poland. This can be inferred from the languages of the documents (Spanish, French and English), the currency mentioned (Euro) and the addresses of the opponent’s customer in the invoices. Although the evidence does not refer to all the countries of the EU, the European Court of Justice has clarified that, in assessing whether the earlier European Union trade mark has been put to ‘genuine use’, the territorial borders of the Member States should be disregarded (19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 44). Therefore, the evidence relates to the relevant territory, the European Union.

A part of the evidence submitted is dated within the relevant period. In particular, most of the invoices, the article about the opponent published on Fieldfisher España as well as the several screenshots from the opponent’s websites.

Although some of the evidence is undated (e.g. the catalogues) or it is outside of the relevant timeframe (some of the invoices), this evidence has to be assessed in conjunction with other dated evidence. Therefore, it might still be taken into consideration. The catalogues support the information in the aforementioned evidence, namely the type of goods sold under the earlier mark. As regards the few invoices which are issued after October 2018, these in connection with the invoices from the relevant time period show that the mark has been used continuously.

Therefore, there are sufficient indications concerning the time of use of the earlier mark.

Concerning the extent of the use made of the earlier mark, account must be taken of the commercial volume of all the acts of use, the duration of the period in which those acts of use occurred and the frequency of those acts.

However, the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the cases where large-scale commercial use has been made of the mark.

The documents submitted by the opponent provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. This conclusion results, in particular, from the invoices as they show continuous use during the relevant period of the earlier mark in relation mainly to aluminum cans and bottles and their closures. In addition, the amounts in the invoices provide information regarding the commercial volume of the use of the mark, referring to sufficient amounts of products.

Therefore, the evidence provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use and, consequently, the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Most of the evidence clearly demonstrates the mark as registered. Therefore, there are sufficient indications as to the nature of use of the mark as registered.

Taking into account the evidence in its entirety, 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.

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.

The evidence submitted proves use of the trade mark only for the following goods containers and packaging of aluminium; receptacles and containers of metal; bottles (metal containers) for compressed gas or liquid air; bottles of aluminium; packaging containers of metal; bottle caps of metal; sealing caps of metal; bottle closures of metal in Class 6, aerosol dispensers for medical purposes in Class 10 and aerosol dispensers, not for medical purposes; bottles in Class 21.

The opponent claims that it “…does not only provides the goods itself to the clients, but also it performs the service of selling and tailoring the product for each client (treatment of materials and metals). Therefore, each invoice includes the code of the product (XXXX) and the code for the product’s client and description “PLAIN ALU AC29”. However, the opponent’s statement is not supported by any objective and relevant evidence.

Therefore, the Opposition Division will consider only the abovementioned goods in its further examination of the opposition.

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 on which the opposition is based and for which the use was proven, are the following:

Class 6: Containers and packaging of aluminium; receptacles and containers of metal; bottles (metal containers) for compressed gas or liquid air; bottles of aluminium; packaging containers of metal; bottle caps of metal; sealing caps of metal; bottle closures of metal.

Class 10: Aerosol dispensers for medical purposes.

Class 21: Aerosol dispensers, not for medical purposes.

 

The contested goods and services are the following:

 

Class 1: Tempering and soldering preparations; Aluminium salts; Alum; Salts of alkaline metals; Aluminium alum; Aluminium chloride; Alumina; Alumino-silicates; Ammonia alum; Iron salts; Iron salts; Aluminium hydroxide.

Class 35: Advertising; Business management; Business administration; Office functions; Retailing and wholesaling in relation to tempering and soldering preparations, aluminium salts, alum, salts of alkaline metals, aluminium alum, aluminium chloride, aluminium oxide, aluminium silicate, ammonia alum, iron salts, iron salts, alumina, aluminium hydrate.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, 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.

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 Opposition Division does not share the opponent’s opinion that the contested goods are similar to the opponent’s goods by the mere fact that “their principal compound is aluminium”. While the opponent’s goods in Classes 6, 10 and 21 are various aluminium containers and holders, in particular cans and bottles for aerosols as well as their closures, the contested goods in Class 1 are primarily chemical substances and preparations for use mainly in industry, possibly in science or agriculture. Hence their nature is different. Although (some of) the contested goods may be used in the manufacturing of the opponent products, this is not sufficient to find a similarity between the relevant goods, as they have nothing else relevant in common. They clearly have different intended purposes and they differ in their distribution channels. In addition, since the goods in Class 1 are generally used for production of further products and are not the end products such as the opponent’s (aluminum) cans and bottles, the end consumers are clearly different. They are not complementary nor are they in competition, and their usual origin is not the same, since the know-how needed for the manufacturing of these goods is completely different. Therefore, the opponent’s goods and the contested goods in Class 1 are dissimilar.

The opponent’s goods are certainly dissimilar to the contested services in Class 35, which concerns services in the fields of advertisement, business management and administration and retail and wholesale services. These services and the opponent’s goods have nothing relevant in common. They differ in their nature, purpose, methods of use, distribution channels and producers/providers. Besides, they are neither complementary nor in competition. Therefore, they are dissimilar.

b) 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 and services at issue are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

The opponent has also based its opposition on the earlier EU trade mark registration No 8 420 754 registered for the following goods and services:

Class 6: Containers and packaging of aluminium; Containers and recipients of metal; Bottles (metal containers) for compressed gas or liquid air; bottles of aluminium; preserve tins; tins; metal packaging containers; Foils of metal for wrapping and packaging; bottle caps of metal.

Class 10: Aerosol dispensers for medical purposes.

Class 21: Aerosol dispensers, not for medical purposes; bottles; insulating flasks; refrigerating bottles; drinking vessels.

Class 35: Import, export and selling in stores or via electronic media of containers, bottles, bottle closures and aerosol dispensers; business management; business administration; advertising.

Class 40: Treatment of materials; metal treatment; metal plating; metal tempering.

This trade mark covers slightly narrower scope of goods in Class 6 and it covers the same scope of goods and services in Classes 10, 21, 35 and 40 as the earlier EU trade mark registration No 6 706 907, which has been examined above. It is noted that even if the use of the EU trade mark registration No 8 420 754 would have been confirmed, it would be for the same or even less goods as the ones for which the use was shown and which are listed in the part concerning proof of use of this decision. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been 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

 

 

Claudia MARTINI

Renata COTTRELL

Marta ALEKSANDROWICZ-STANLEY

 

 

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.