OPPOSITION Nо B 3 078 603

Autoritat Del Transport Metropolità, Consorci Per A La Coordinació Del Sistema Metropolità De Transport Públic De L’àrea De Barcelona, Muntaner, 315‑321, 08021 Barcelona, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Notemachine Group Holdings Limited, Russell House, Elvicta Business Park, NP8 1DF Crickhowell, United Kingdom (applicant), represented by Taylor Wessing Llp, 5 New Street Square, EC4A 3TW London, United Kingdom (professional representative).

On 30/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 603 is rejected in its entirety.

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

REASONS

On 19/03/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 999 304 (figurative mark). The opposition is based on Spanish trade mark registration No 2 600 815 (figurative mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

In the notice of opposition, the opponent also invoked Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR, in the sense of Article 6bis of the Paris Convention, stating that Spanish trade mark registration No 2 600 815 is a ‘well known mark’. However, this earlier right is registered, and the purpose of Article 6bis of the Paris Convention is to prevent the registration and use of a subsequent trade mark that is liable to create confusion with another mark already well known in the country of such registration, even where the well-known mark was not protected by registration. Consequently, it is clear that Article 6bis of the Paris Convention affords protection to non-registered trade marks with a well-known character.

Article 8(5) EUTMR, invoked by the opponent in relation to the same earlier right, also affords protection to earlier registered marks with a reputation. Even though the terms ‘well known’ (a traditional term used in Article 6bis of the Paris Convention) and ‘reputation’ denote distinct legal concepts, there is a substantial overlap between them. This is shown by a comparison of the way well-known marks are defined in the WIPO Recommendations with the way reputation was described by the Court (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 22), which concluded that the different terminology was merely a ‘nuance, which does not entail any real contradiction …’.

In practical terms, the threshold for establishing whether a trade mark is well known or enjoys reputation will usually be the same. Therefore, it will not be unusual for a mark that has acquired well-known character to have also reached the threshold laid down by the Court (14/09/1999, C‑375/97, Chevy, EU:C:1999:408) for marks with reputation. In both cases the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public, and the thresholds required for each case are expressed in quite similar terms (‘known or well known among the relevant sector of the public’ for well-known marks, compared with ‘known by a significant part of the relevant public’ for marks with reputation) (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 26).

Therefore, given that the mark is registered, the opponent’s claim has to be taken as a claim of ‘enhanced distinctiveness’ under Article 8(1)(b) EUTMR in view of its purported ‘well-known’ character. The evidence filed to prove reputation will be examined under Article 8(5) 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, namely Spanish trade mark No 2 600 815

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 priority of the contested application is 12/06/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 12/06/2013 to 11/06/2018 inclusive.

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; electricity conducting, distributing, transforming, accumulating, regulating and controlling apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus.

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37: Architectural consultation; repair; installation services, service stations.

Class 39: Services related to transport of travellers; any activity related directly to the traffic of travellers and merchandising by land, air or water; travel arrangements.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

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 27/01/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 01/04/2020 to submit evidence of use of the earlier trade mark. This time limit was extended until 01/06/2020. On 01/06/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following.

 Corporative image – – and its use in relation to the organisation of public transport in Barcelona. It is shown on tickets, a railway network map, price stickers, covers for transport cards, brochures, an activity report, etc.

 Extracts from the website www.atm.cat in Catalan showing, inter alia, the opponent’s participation in international associations (e.g. European Metropolitan Transport Authorities, International Union of Public Transport), and a list of the opponent’s bulletins.

 Allusions to the ATM/T-MOBILITAS project for the years 2016-2020.

 Around 30 invoices issued in the period January 2013 - December 2018, bearing the logo at the top. They are all in Catalan and refer to the organisation of public transport: operation of trains; organisation of public transport in Barcelona; participation in international transport/mobility conferences; sale of advertising space; leasing of trains; user contribution fee for the maintenance of the stations; realisation of the annual survey of mobility on working days, in order to examine certain aspects of mobility throughout the metropolitan region.

On 19/03/2019, together with the opposition notice, the opponent submitted the following evidence:

 results of a Google search for ‘autoritat del transport metropolitan de Barcelona’;

 Wikipedia extract, in Spanish, regarding Autoridad del Transporte Metropolitano.

The invoices and internet extracts show that the place of use is Spain. This can be inferred from the language of the documents (Catalan and Spanish), the currency mentioned (‘EUR’) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within 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 submitted provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The trade mark is depicted in a clearly visible position on the invoices, network map, trains, brochures, and internet extracts. The invoices are evenly spread throughout the relevant period. Although they refer to only part of the relevant territory, namely the city of Barcelona, this is considered sufficient to prove use for the territory of Spain, due to the nature of the services provided. Consequently, the use of the trade mark on the invoices, together with the remaining evidence, is considered sufficient to prove its use as a trade mark.

With regard to the Wikipedia entry, ‘it is settled case-law that a Wikipedia article lacks credibility, as it is taken from a collective encyclopaedia established on the internet, the content of which may be amended at any time and, in certain cases, by any visitor, even anonymously’ (16/06/2016, T‑614/14, KULE, EU:T:2016:357, § 47 and the case-law cited therein).

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. 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.

In the present case, the registered mark is and the marks displayed in the evidence are or . The graphic depiction merely plays a decorative role, and the verbal element ‘Area de Barcelona’ is descriptive, as it merely indicates the geographical area where the services are rendered. Therefore, it is considered that these alterations do not affect the distinctive character of the earlier mark. The distinctive element ‘ATM’ is displayed in all the signs, and the omission of the figurative element is acceptable, as it plays a rather decorative role.

In view of the above, the Opposition Division considers that the evidence does 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).

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 and services 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.

In the present case, the evidence shows genuine use of the trade mark for the following services:

Class 39: Services related to transport of travellers; travel arrangements.

The invoices also make reference to some advertising activities. These services in Class 35 do not fall within any of the categories for which the earlier mark is registered. Therefore, they do not show use for the goods and services for which the marks are registered, but for other services for which it has no protection.

Even though the trade mark appears on the ticket vending machine display, it does not mean that the opponent is the producer of these machines. It merely means that they are used as a point of sale. Given the lack of any evidence that would prove otherwise, the extent of use has not been proved in relation to any goods in Class 9, including vending machines.

Therefore, the Opposition Division will only consider services related to transport of travellers; travel arrangements in Class 39 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 services on which the opposition is based and for which genuine use has been proved are the following:

Class 39: Services related to transport of travellers; travel arrangements.

The contested goods and services are the following:

Class 9: Cash dispensing machines; automated cash machines; parts and fittings for all the aforesaid; software for cash dispensing machines and automated cash machines.

Class 36: Financial services; insurance; banking services; lease and rental of cash dispensing machines; information, advisory and consultancy services in relation to all the aforesaid services.

Class 37: Installation, maintenance and repair of cash dispensing machines and automated cash machines; information, advisory and consultancy services in relation to all the aforesaid services.

Class 42: Technical advice relating to operation of cash dispensing machines and automated cash machines and software therefor; software design, development, consultancy, installation, updating and maintenance; information, advisory and consultancy services in relation to all the aforesaid services.

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 and services in Classes 9, 36, 37 and 42 have nothing in common with the opponent’s transport services in Class 39. The contested goods and services refer to cash dispensing machines; automated cash machines and services related to them. These goods and services have clearly different purposes and natures. They are neither complementary nor in competition. They are provided/distributed through different channels and their commercial origins do not usually overlap. 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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Spain.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 12/12/2018. However, the contested trade mark has a priority date of 12/06/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 12: Vehicles, apparatus for locomotion by land, air or water.

Class 39: Services related to transport of travellers; any activity related directly to the traffic of travellers and merchandising by land, air or water; travel arrangements.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 19/03/2019 (together with the notice of opposition) the opponent submitted the following evidence:

 Google searches for ‘autoritat del transport metropolitan de Barcelona’;

 Wikipedia extract in Spanish regarding Autoridad del Transporte Metropolitano.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Despite showing some use of the trade mark, the evidence provides no information on the extent of this use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. The evidence is not supported by any further independent and objective evidence that would enable the Opposition Division to draw the conclusion, without resorting to suppositions and probabilities, that the mark is recognised by the relevant public. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public in Spain. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has reputation in this territory.

On 01/06/2020, after expiry of the time limit, the opponent submitted additional evidence to prove genuine use of its trade mark.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence, or where the evidence submitted is manifestly irrelevant or manifestly insufficient to meet the requirements of laid down in Article 7(2) EUTMDR, the opposition will be rejected as unfounded.

Article 8(1) EUTMDR is an essentially procedural provision, and it is apparent from the wording of that provision that when the evidence of reputation submitted within the time limit set by the Office pursuant to Article 7(1) EUTMDR is manifestly irrelevant or manifestly insufficient to meet the requirements laid down in Article 7(2) EUTMDR, the opposition must be rejected as unfounded. It follows that the Office cannot take into account evidence submitted after expiry of the time limit when the evidence submitted within the time limit is manifestly irrelevant or manifestly insufficient for the purposes of establishing the reputation of the earlier mark.

The evidence submitted by the opponent within the set time limit consists of only two internet extracts. It is considered to be manifestly insufficient for the proceedings in question. Therefore, the evidence submitted on 01/06/2020, after expiry of the time limit, cannot be taken into account.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

The Opposition Division also notes that the opponent did not provide any facts, arguments or evidence that could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

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

Anna BAKALARZ

Katarzyna ZANIECKA

Monika CISZEWSKA

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.