OPPOSITION Nо B 3 085 885

 

Avanzit Tecnología, S.L.U, C/ Federico Mompou 5, Edificio 2, 28050 Madrid, Spain (opponent), represented by Francisco José Rodríguez Alvarez, Avda. del Manzanares 66, 28019 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Septentrio NV, Interleuvenlaan 15 Bus I, 3001 Leuven, Belgium (applicant), represented by Michaël Andries Thomas Beck, Technologielaan 9, 3001 Heverlee, Belgium (professional representative).

 

On 05/11/2020, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 085 885 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 021 211 for the word mark 'MOSAIC', namely against all goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 10 212 538 for the figurative mark . The opponent invoked Article 8(1)(a) and 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, namely European Union trade mark registration No 10 212 538, .

The date of filing of the contested application is 08/02/2019. 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 08/02/2014 to 07/02/2019 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 and services on which the opposition is based, namely:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; 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 35: Advertising; Business management; Business administration; Office functions.

Class 38: Telecommunications.

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.

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 28/01/2020 in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 02/04/2020to submit evidence of use of the earlier trade mark. On 24/02/2020 within the time limit, the opponent submitted evidence of use.

The evidence submitted to prove use of the earlier mark is the following:

• Eight invoices dated between 31/10/2012 and 09/02/2018 addressed to the same client having a seat in Spain.

Five of these invoices are issued by the company Ezentis Tecnologia, S.L. while the other three were issued by the opponent Avanzit Tecnología, S.L. (only one of these commercial documents is issued within the relevant period, i.e. an invoice dated 24/06/2014).

In the description of these eight invoices the following indications are given –

1. Mtto. Sw Mosaic ESCAPEX y PLANEX MOV 18 (09/02/2018);

2. Mto. Lic. Mosaic Escapex Planes Mov. 2017 (22/02/2017);

3. Mantenimiento Licencias Mosaic 2016 (05/02/2016);

4. Mantto. Mosaic ESCAPEX y PLANE (08/05/2015);

5. Sis. Mosaic en Planex (28/10/2014);

6. Mant Lic Mosaic p/SCAPEX 2014 (24/06/2014);

7. Mantto. Licencias MOSAIC 2013 (22/05/2013);

8. LICEN. MOSAIC PARA EXCAP (31/10/2012).

On 24/07/2020, after expiry of the time limit, the opponent submitted additional evidence which the opponent marked as confidential vis-à-vis third parties and which the Opposition Division will describe only in the most general terms without divulging any such data.

The additional evidence is the following:

• Copy of a notarial deed dated 02/06/2010 where the change of name of AVANZIT, S.A. into GRUPO EZENTIS, S.A. appears;

• Seven invoices issued by Ezentis Tecnología, S.L. within the relevant period (dated from 29/08/2014 up to 31/01/2016). They are addressed to companies located outside the European Union, namely in Chile (Ezentis Chile, S.A. and another company); Brasil (Ezentis Energia, S.A and another company).

The various concepts appearing in the invoices are drafted in Spanish and have not been translated into the language of proceedings. These concepts are: ‘licencias adicionales MOSAIC FMS.’; ‘Soporte Desarrollos específicos MOSAIC F.; ‘Licencia base MOSAIC FIELDWORK’; ‘Desarrollos específicos e implantación de la solución MOSAIC FIELDWORK’.

Even though, according to Article 10(2) EUTMDR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account.

 

According to Article 10(7) EUTMDR, where the opponent submits after the expiry of the time limit set by the Office indications or evidence that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 95(2) EUTMR.

When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence. 

In the case at hand the additional evidence submitted by the opponent was submitted in reply to the arguments put forward by the applicant in response to the initial evidence of use.

The opponent did not furnish any explanation as to why these pieces of evidence were filed after the term given to him for submitting proof of use. They are all dated within the relevant period and, in absence of any argument in this respect, they would had been at the opponent’s disposal at that time already.

Although the acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence, and here there is not a single explanation as to why these documents were not filed within the time limit given, the fact that the applicant contested the initial evidence submitted by the opponent justifies the submission of additional evidence in reply to such an objection (29/09/2011, T-415/09, Fishbone, EU: T: 2011: 550, § 30, 33; 18/07/2013, C-621/11 P, Fishbone, EU: C: 2013: 484, § 36).

In any case, the additional evidence in this case does not introduce new elements of evidence but merely reinforces and further elaborates on the findings which are applicable to the evidence submitted within the time limit.

Considering that the opponent submitted relevant indications or evidence within the time limit initially set by the Office and, in spite the unjustified belated filing, the Office, in the exercise of the discretion conferred on it by Article 95(2) EUTMR decides to take into account the additional evidence submitted on 24/07/2020. This is the best scenario for the opponent while in counterpart it does not jeopardize the applicant’s interest.

The additional evidence (as indicated here below) does not change the outcome of the proceedings and, for that reason, the Opposition Division considered that there was no need to re-open the proceedings and to allow the applicant a new time limit to comment on the additional evidence.

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).

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 aforementioned requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the opponent is obliged not only to provide information but also to prove each of these requirements.

Preliminary remarks: absence of translation in the language of proceedings of evidence and use of the mark by another company than the opponent.

In accordance with Article 10(6) EUTMDR, where the evidence submitted pursuant to paragraphs 1, 2 and 3 is not in the language of the opposition proceedings, the Office may require the opponent to submit a translation of the evidence in that language, within a period specified by the Office. It is at the discretion of the Office whether the opponent has to submit a translation of the evidence of use into the language of the proceedings. In exercising its discretion, the Office balances the interests of both parties.

The evidence will only be taken into account insofar as a translation has been produced or the evidence is self-explanatory regardless of its textual components.

As to the eight invoices submitted within the time limit, the concepts for which they are issued do not appear in the language of the proceedings, but in Spanish language, and the opponent has not furnished any translation thereof. The applicant’s arguments in reply to the proof of use merely indicated that the inclusion of ‘MOSAIC’ in the description of the articles sold does not allow any conclusion as to which type of goods or services are meant to be covered by them. The Office considers that this is not a complaint about the absence of translation of the mentioned concepts nor a request of translation into the language of proceedings.

The additional invoices submitted were neither translated into the language of proceedings. However, the opponent’s arguments indicated that these other invoices ‘set forth the concepts of software licencing and IT support services provided in association with the MOSAIC program’. This is the only express clarification on the nature of the goods / services included in the invoices, however, here again the particular concepts are exclusively indicated in the original language, i.e. Spanish.

In these circumstances, taking into account the otherwise self-explanatory nature of the invoices with regard to relevant information such as dates, addresses of customers, amounts and the word ‘MOSAIC’, all of which do not require a translation for their understanding, it is considered that the fact that the original language of the invoices is not English does not prevent the Opposition Division from identifying and extracting ‘some’ relevant information from them.

Therefore, for reasons of procedural economy, and to avoid unnecessary costs, the Opposition Division considers that the assessment can proceed without requesting a translation and it will not require the opponent to submit a translation of the invoices into the language of proceedings. This is also the best position for the opponent’s interest and do not jeopardize the applicant’s defence since, as indicate here below, the evidence submitted is found to be insufficient for showing genuine use of the earlier mark.

The applicant contested the evidence of use filed by the opponent on the grounds that only one invoice issued within the relevant period originates from the opponent itself (Avanzit Tecnologia, S.L.U), and that the rest are from another company (Ezentis Tecnologia, S.L).

The opponent submitted a notarial deed dated 02/06/2010 with the change of name of Avanzit, S.A. into Grupo Ezentis, S.A.

Although Avanzit, S.A. does not coincide with the name of the opponent, which is Avanzit Tecnologia, S.L.U, and Grupo Ezentis, S.A. is neither the company issuing the first five invoices submitted within the time limit, i.e. Ezentis Tecnología, S.L., the CIF (Código de Identificación Fiscal = Tax Identification Code) of both companies is the same (B 28417939). Taking into consideration that this number does not change when there are modifications on the company name while keeping the same company form, it would appear that indeed ‘Avanzit Tecnologia, S.L.U’ and ‘Ezentis Tecnología, S.L.' is the same legal entity with a change of name.

As a consequence thereof, and irrespectively that the notarial deed submitted is unable to show that there is a relationship between ‘Ezentis Tecnologia, S.L.’ and the opponent ‘Avanzit Tecnologia, S.L.U’, the invoices submitted within the time-limit confirm that they are the same company which changed its company name at a certain time.

Assessment of the evidence

Nature of use

The term ‘nature of use’ refers to: 1) use of a mark in accordance with its essential function, which is to guarantee the identity of the origin ; 2) use of the mark as registered or of a variation thereof in accordance with Article 18(1)(a) EUTMR; and 3) use in connection with the goods and services for which it is registered.

With regard to the use of the mark as registered or of an acceptable variation

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes inter alia evidence of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR.

 

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.

The General Court further mentioned that strict conformity between the sign as used and the sign as registered is not necessary. However, the difference must be in negligible elements and the signs as used and as registered must be broadly equivalent (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

In order to decide whether the sign as used and the sign as registered are broadly equivalent, it must first be established what elements are negligible. The General Court has developed criteria for doing so in several judgments.

It has held that the assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 36).

As regards omissions, the Court has established that if the omitted element is in a secondary position and not distinctive, its omission does not alter the distinctive character of the trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37).

The evidence submitted consist of different invoices where the respective contents on the goods and/or services contain an indication of the word ‘MOSAIC’. The concepts contained in the first eight invoices are those reproduced on page 2 of this decision, among others, ‘mtto. Sw Mosaic ESCAPEX Y PLANEX’; ‘mto. Lic. Mosaic …’; ‘Sis. Mosaic en Planex’ or even ‘Licen. Mosaic para Excap’.

In order to assess whether a mark is used as registered, photographs of the products or of promotional material of the services as offered in trade under the relevant mark are particularly relevant. In contrast, invoices are usually not suitable materials for showing this because, for example, figurative trade marks are normally not reproduced as such on invoices and verbal elements are frequently shortened.

As indicated above the only relevant pieces of evidence submitted here for showing evidence of use consist of invoices where in the various concepts the word ‘MOSAIC’ appears.

The reproduction of the verbal element ‘Mosaic’ in the invoices does not provide sufficient indications that this use corresponds to the earlier mark on which the opposition is based, which is not a word mark but a figurative sign consisting of the two verbal elements ‘Mosaic’ and ‘geospatial’ together with an additional figurative element as reproduced below:

The figurative element consists of four tiles or squares depicted over two lines, three in green and the one located at the lower left part slightly bigger in blue colour, together with a golden/brown curved line over the verbal element ‘Mosaic’. This figurative element does not have a secondary position in the overall impression of the sign. Although it could be seen when perceived in the earlier mark as abstractly representing a mosaic, and therefore reinforcing the verbal component ‘mosaic’, it still plays an important role in the resulting overall impression. The other additional element of the earlier mark, the verbal element ‘geospatial’, also play a certain role in the overall impression of this sign. Nevertheless, in view of its simplicity and minor size compared with the rest of the components, the impact of this additional verbal element is less relevant than the verbal element ‘mosaic’ and the figurative element located at the beginning of the sign.

The figurative element of the earlier mark as described above is not negligible nor can be found to have a limited impact in the distinctiveness of the sign as registered. It can therefore be considered as a co-dominant element of this sign endowing it with distinctiveness and contributing to the distinctive character of the trade mark as a whole.

The omission in the invoices of relevant elements of the sign as registered, in particular the figurative element, is considered a non-acceptable variation because the modifications do not relate to insignificant elements. Furthermore, there is no other evidence, such as catalogues or other promotional material, to show that the goods or services in question have been used in relation to any other sign than simply the word 'mosaic' on its own. Consequently, the opponent has not provided any other pieces of evidence, in addition to the invoices, where it can be verified how the use of the earlier mark was made in the market place during the relevant period.

In view of the above, it is concluded that the mere use of the word ‘mosaic’ as appearing in the invoices cannot be considered as broadly equivalent to the earlier mark on which the opposition is based because this latter is strongly characterized by the presence of a figurative element (R 1140/2006-2 SCORPIO / ESCORPION §19; 06/10/2017, T-386/16, Silente & Amount, ECLI:EU:T:2017:706, § 67; 27/02/2014, T-226/12, Lidl, EU:T:2014:98, § 49).

This reasoning is also valid for the additional evidence submitted by the opponent after the time limit where the signs identified in those additional invoices are essentially the same.

As indicated above, the concept of the invoices refer to ‘licenses’ (licencias adicionales – licencia base); ‘support services and specific development’ (soporte desarrollos específicos – desarrollos específicos e implantación de la solución) and 'maintenance' (mtto; Mto.; Mantto.) of 'Mosaic', ‘MOSAIC FMS’; ‘MOSAIC F’ 'Mosaic ESCAPEX y PLANE(X)', 'Mosaic Escapex Planes' and ‘MOSAIC FIELDWORK’ as well as slight variations thereof. Most of the descriptions in the invoices thus also contain other verbal elements, apart from 'Mosaic', which are not present in the earlier mark and which may also alter the distinctive character of the earlier mark as registered depending on whether or not those additional verbal elements would be perceived as forming part of the sign as a whole or otherwise as sub-brands of 'Mosaic' software indicating different types of such software. However, in the absence of any other evidence in support showing the actual product or products concerned and how these signs have been used in relation to those goods, this cannot be clearly assessed.

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

Use in connection with the goods and services for which it is registered

As a trade mark has, inter alia, the function of operating as a link between the goods and services and the undertaking responsible for their production, the proof of use must establish a clear link between the use of the mark and the relevant goods and services.

From the evidence submitted it is unclear if the services referred to in the concepts of the invoices were effectively offered in the market with the sign ‘mosaic’ since they refer to ‘software licensing and IT support services provided in association with the ‘MOSAIC’ program’ as the opponent even confirms in its observations of 24/07/2020. This assertion does not mean that these ‘software licensing activities' or the ‘IT support services’ were offered under the earlier mark, or even in relation to the sign 'mosaic', but rather that those services concerned licensing activities and IT support services of a software named ‘mosaic’.

The maintenance (mtto.; mto.) and other support services of a software named ‘mosaic’ to which the invoices refer would rather be associated with the sign appearing in the header of those invoices, namely:

or otherwise, where no other sign appears, merely with the company names issuing those invoices, i.e. Ezentis Tecnologia, S.L. or Avanzit Tecnología.

In these circumstances, the concepts appearing in the invoices referring to services provided either suggests use of the sign 'EZENTIS' as depicted above or otherwise do not provide clear and conclusive indications of the sign which was used on the market when providing and offering the IT services or software licensing activities contained in those invoices. It must be recalled that the evidence must show use of the earlier mark on the market, which does not appear in the invoices submitted in relation to the services described.

As a consequence thereof, no link between the use of the earlier mark and any of the relevant services in Classes 35, 38 and 42 can be established.

As regards the references in the invoices to some software named 'Mosaic', the Opposition Division notes that the earlier mark is registered for the following goods in Class 9:

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; 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.

As can be seen from the above list, software is not expressly mentioned in the list of goods covered by the earlier mark and, according to current Office practice, magnetic data carriers and recording discs are considered to be blank. Therefore, even if it were accepted that the references in the invoices to 'Mosaic' software constituted acceptable use of the earlier mark as registered, such use would not constitute use of the earlier mark in relation to goods for which it is registered.

Nevertheless, for the sake of completeness, even if software would be considered to be covered by the terms magnetic data carriers and recording discs, to the extent that those terms were to be considered to encompass not only blank media but also recorded content (which could include software), that would still not change the outcome in the present proceedings for the reasons set out below.

In this respect, to begin with the opponent did not provide any arguments or explanations as to why software is, or would be, covered by the goods for which the earlier mark is registered. In addition to this, none of the pieces of evidence submitted contain any information about the format in which the licensed 'Mosaic' software was sold to consumers, for example, in a magnetic data carrier, a disc where software can be stored and recorded, as a downloadable electronic file (which is neither a magnetic data carrier nor a recording disc), or even as non-downloadable software (SaaS) which is rather a service that belongs to Class 42.

As a consequence thereof, the evidence submitted, in the absence of any supporting material, does not show that the 'Mosaic' software referred to in the invoices was sold on magnetic data carriers or recording discs and cannot therefore in any event prove use of the earlier mark in relation to goods for which the earlier mark is registered, even considering that the terms magnetic data carriers and recording discs encompass, not only blank media, but also recorded content, such as software.

Consequently, the evidence submitted is insufficient to prove use of the earlier mark in relation to the goods and services for which it is registered.

Conclusion on the proof of use

Considering that the four factors for establishing genuine use of the earlier mark are cumulative and the nature of use of the earlier mark in this case has clearly not been established, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

As a consequence thereof, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(3) EUTMDR.

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.

 

 

 

 

The Opposition Division

 

 

Sam GYLLING

Julia GARCÍA MURILLO

Michele M. BENEDETTI - ALOISI

 

 

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.