OPPOSITION No B 3 111 137

Gate Technologies AF Limited, 22 Lawrence Road, Hove BN3 5QB, United Kingdom (opponent), represented by Mark Sorenti, Casa Sorenti, Localita Verdolini Sotto s.n.c., Via Piacenza, 29018 Lugagnano Val d’Arda, Italy (professional representative)

a g a i n s t

Gate Technology Systems Ltd, 168 Church Road, Hove BN3 2DL, United Kingdom (applicant), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative).

On 11/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 111 137 is rejected in its entirety.

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

REASONS

On 10/02/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 148 319 for the word mark ‘Gate Technologies’. The opposition is based on earlier United Kingdom non-registered trade marks for the word mark ‘Gate Technologies’ and the figurative mark for the design, manufacture, supply and installation of custom-made furniture for airport terminals; design, manufacture, supply and installation of bespoke airport counters, including check-in desks, passport counters, immigration booths, airport service and airline flight desks; installation of airport security systems, including walk-in human scanners, luggage scanning equipment and conveyors; installation of security and safety equipment; advisory services relating to the installation of security and safety equipment. The opponent invoked Article 8(3) and Article 8(4) EUTMR.

PRELIMINARY REMARK – Brexit – Article 8(4) EUTMR

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Articles 8(1), (4) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of taking the decision. Therefore, earlier United Kingdom non-registered marks cannot be taken into account in the current proceedings in relation to Article 8(4) EUTMR. The opposition can only proceed with regard to these earlier rights on the basis of Article 8(3) EUTMR for which UK earlier rights might still be invoked.

SUBSTANTIATION – Article 8(3) EUTMR

The opponent invoked the two non-registered trade marks ‘GATE TECHNOLOGIES’ (word mark) and (figurative mark) in the United Kingdom.

As to the territory of the United Kingdom, in the absence of any restriction in Article 8(3) EUTMR, and in view of the need to provide effective protection to the legitimate interests of the real proprietor, the term ‘trade marks’ should be interpreted broadly and covers not only registered trade marks, but also applications and non-registered trade marks.

According to Article 46(1)(b) EUTMR, the right to file an opposition on the grounds of Article 8(3) EUTMR is reserved only for the proprietors of earlier trade marks.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

The opponent has to prove its ownership of the trade mark and the time of acquisition of that mark. As the trade mark can be either a registered trade mark or a non-registered trade mark, the opponent may submit either evidence of registration anywhere in the world or evidence of acquisition of rights through use.

Consequently, non-registered trade marks are covered by the provision of Article 8(3) EUTMR provided that the law of the country of origin recognises rights of this kind. The opponent needs to, therefore, provide the Office with evidence establishing that under the relevant laws it has acquired exclusive rights for the claimed non-registered trade marks. Furthermore, the opponent also has to submit evidence of an agent-representative relationship, one of the requirements of Article 8(3) EUTMR.

On 10/03/2020, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 20/07/2020.

On 26/06/2020 and 30/06/2020, within the deadline, the opponent submitted a witness statement. On 28/09/2020, in reply, the applicant submitted its own witness statement. On 16/02/2021, the opponent submitted a final witness statement replying to the applicant’s arguments. The contents of these witness statements and additional exhibits submitted by the opponent are described in more detail below.

The opponent’s first witness statement and exhibits

 A witness statement, signed on 25/06/2020, by Mr TDH, Director of ‘Gate Technologies AF Limited’ (the opponent).

According to this statement, ‘Gate Technologies AF Limited’ was incorporated on 18/12/2017 and is involved in the design, supply and installation of custom-made furniture for airport terminals.

Prior to December 2017, this trade was carried out as part of ‘Gate Technologies Limited’ (‘GTL’), incorporated on 04/01/1996.

The opponent’s two current directors (Mr TDH and Ms JH) were directors of ‘GTL’ from 1999 to 2019.

In 1998, Mr TDH and Ms JH agreed with the owners of ‘GTL’ to represent ‘GTL’ for them in the UK, including the management of banking, accounts, the generation of various financial details, and other general and administrative services. These tasks were provided for a fixed price fee and rendered monthly. The relationship between the two directors and ‘GTL’ over 20 years was developed on a basis of trust and no other terms or conditions were ever established.

In 2000, the directors discussed with the owners of ‘GTL’ the transfer of their own existing business for the design and supply of airport furniture to operate under the ‘GTL’ brand as ‘Gate Technologies’. Under this loose agreement, the directors were to operate completely independently and autonomously, benefiting from the association with an established business, and in return ‘GTL’ would obtain a broader geographic coverage, an increased turnover and receive a commission on the furniture trading.

The business operated by the two directors since 2000 has always been airport-based, supplying specialist equipment to airports in many parts of the world under the brand ‘Gate Technologies’. For all the project sales, the two directors provided their own funding, cost of sales, buying, invoicing, statutory insurances, etc. with only very occasional assistance from ‘GTL’. For many years, this arrangement was successful and mutually beneficial, but it was not governed by any formal agreement. The brand name ‘Gate Technologies’ was never registered as a trade mark in any country.

In 2017, due to several circumstances, business for ‘GTL’ was in decline. Given the difficulties, the two directors decided to diverge from ‘GTL’ and to establish a separate company, ‘Gate Technologies AF Limited’, to continue trading. This company was incorporated on 18/12/2017, as a wholly British-owned business. It was agreed by the two directors that their goodwill in the UK and their rights in the unregistered trade marks would be transferred to the opponent. The two directors continued as directors of ‘GTL’ until October 2019. However, to continue trading, the owners of ‘GTL’ established a new separate UK company, namely ‘Gate Technology Systems Ltd’ (‘GTSL’) and which is also the applicant. This company was incorporated on 05/03/2018 and has sought to register the trade mark ‘Gate Technologies’. It was agreed by the ‘GTL’ owners that the two directors would retain the ownership and goodwill of the brand name ‘Gate Technologies’, that they would resign as directors of ‘GTL’ and they would continue to trade under the company ‘Gate Technologies AF Ltd.’.

This witness statement refers to the opposition based on Article 8(3) EUTMR as follows. One of the directors of ‘GTL’, Mr DAG, is also a director of the applicant’s company ‘Gate Technology Systems Ltd.’ and the principal shareholder and owner through another company called ‘Plano Logic Ltd.’. Therefore, Mr DAG is director and principal shareholder of both companies. The applicant’s director, Mr DAG, was aware that the mark ‘Gate Technologies’ belonged to the opponent when the mark was filed. The application was made contrary to what had been previously agreed with Mr TDH and Ms JH. Although there was no direct contractual agreement between the opponent and the applicant, the applicant is nevertheless the successor company of ‘GTL’ and has a fiduciary duty not to exploit the knowledge of the opponent’s affairs as director and principal shareholder.

Together with its first witness statement, the opponent submitted, inter alia, the following evidence.

 Exhibit TDH-1: copies of web pages from the ‘Gate Technologies’ website, extracted on 24/06/2020, and a flyer (undated), showing use of the mark ‘Gate Technologies’. They describe various activities and finished projects at different airports in, inter alia, Europe; they also mention several clients and provide some pictures. According to the directors, Mr TDH and Ms JH, they commissioned the brochure and website and Mr TDH has been the registered owner of the ‘Gate Technologies’ website domain https://gatetechnologies.co.uk since it was first established. The flyer mentions that the opponent ‘Gate Technologies AF Ltd.’ has over 25 years’ experience manufacturing and installing industry-leading airport terminal furniture …’. The website https://gatetechnologies.co.uk states: ‘Founded in 1996, Gate Technologies AF Ltd has a long, productive history of designing and delivering bespoke airport equipment solutions to the very highest standard’. However, the web page extract is from 24/06/2020, so it is dated after the filing date of the opposition (10/02/2020). Furthermore, the flyer is undated, and, therefore, the mention of ‘Gate Technologies AF Ltd.’ (the opponent) has very little or no probative value.

 Exhibit TDH-2: various undated documents with pictures showing the label on counters that were, according to the opponent, designed by Mr TDH and Ms JH and supplied to London City Airport in 2001, Grand Bahama airport in 2004, Gatwick in 2015 and Charleroi airport in 2017. However, some evidence is undated, and some dates come from the opponent itself and not from an independent source. In addition, there is no direct link between the use of the earlier marks and the opponent’s company or its directors.

 Exhibit TDH-3: some examples showing use of the ‘Gate Technologies’ mark on items of packaging, stationery, and promotional and marketing materials. However, this is undated evidence on the use of the earlier marks without a direct link to the opponent’s company or its directors.

 Exhibit TDH-4: various photographs, leaflets and promotional evidence from the ‘Passenger Terminal Expo 2019’ and websites, such as https://gatetechnologies.co.uk; https://www.airport-technology.com/contractors/terminal/gate-technologies/; https://www.airport-suppliers.com/supplier/gate-technologies-ltd; https://www.britishaviationgroup.co.uk/member-list/gate-technologies-ltd/, featuring the mark. However, evidence is dated in 2019, after Mr TDH and Ms JH had already established their own company (the opponent) and left ‘GTL’.

 Exhibit TDH-5: various photographs/plans relating to, according to the opponent, a project at Brussels Airport, including the creation of check-in desks for different areas of Brussels South Airport in 2017. However, the date comes from the opponent itself and not from an independent source, and there is no direct link between the use of the earlier marks and the opponent’s company or its directors.

 Exhibit TDH-6: undated photographs/plans relating to, according to the opponent, activities at Stansted Airport, including the modernisation of the airport’s check-in hall and baggage facilities. The trade mark ‘GT Gate Technologies’ is mentioned. However, the evidence on the use of the earlier marks is undated and there is no direct link to the opponent’s company or its directors.

 Exhibit TDH-7: undated photographs/plans relating to, according to the opponent, activities at Virgin Atlantic at Gatwick’s North Terminal, including the supply of check-in and other counters as well as a ticket desk for the major long-haul operator Virgin Atlantic. The trade mark ‘GT Gate Technologies’ is mentioned. However, evidence on the use of the earlier marks is undated and there is no direct link to the opponent’s company or its directors.

The applicant’s witness statement

 A witness statement, signed on 28/09/2020, by Mr DG (who is the same person as the Mr DAG mentioned in the opponent’s first witness statement), Director of ‘Gate Technologies Limited’ and its associated company ‘Gate Technologies Systems Limited’ (the applicant).

According to this statement, ‘GTL’ was incorporated on 04/01/1996 and has, from its incorporation, made, and continues to make, consistent use of the trade mark ‘GATE TECHNOLOGIES’. Furthermore, ‘Gate Technologies Systems Limited’ is not the successor company of ‘Gate Technologies Limited’, but is rather an associated company; the former was incorporated on 05/03/2018 for the purpose of trading with certain suppliers and it has a sole licence from ‘Gate Technologies Limited’ to trade under the name ‘GATE TECHNOLOGIES’. Mr TDH and Ms JH (the two directors) were paid as statutory board directors of ‘Gate Technologies Limited’ between 01/08/1999 to 21/10/2019, when they resigned; they were not operating completely independently and autonomously as alleged, since this would have been unlawful.

During the period of their ‘Gate Technologies Limited’ directorships, there were also five co-directors. Mr DG refutes that there was a ‘loose’ agreement as stated in Mr TDH’s witness statement, as any such transaction would have required a shareholders’ resolution and that never took place. Furthermore, Mr TDH also failed to explain how any such agreement granted them any right or licence in relation to the ‘GATE TECHNOLOGIES’ trade mark. In addition, the witness statement of Mr TDH is incorrect and misrepresents the basis of the relationship. Apart from being directors of ‘Gate Technologies Limited’, they also operated a separate trading business (‘Timothy Hodge Associates’) and this company was retained by ‘Gate Technologies Limited’ to provide consultancy services and products in order to develop ‘GTL’s’ airport furniture business under the ‘GATE TECHNOLOGIES’ brand.

This witness statement includes a table with the invoices from ‘Gate Technologies Limited’ to the other trading company of Mr TDH, ‘Timothy Hodge Associates’. Furthermore, the statement also mentions that the opponent’s company was incorporated on 18/12/2017 without the knowledge of the other directors and/or shareholders of ‘GTL’ or ‘GTSL’ and that the opponent appears to have been trading in competition with ‘GTL’ from 2017.

The opponent’s second witness statement

 A witness statement, signed on 16/02/2021, by Mr TDH, Director of ‘Gate Technologies AF Limited’ (the opponent).

According to this statement, Mr TDH and Ms JH have traded in partnership as ‘Timothy Hodge Associates’ since 1989, in the business airport furniture design and supply, which is at least nine years prior to their involvement with ‘GTL’, which began in 1998. ‘Timothy Hodge Associates’ was a successful business that had no connection with ‘GTL’.

A brochure was submitted, dated in 1990, according to the opponent, from ‘Timothy Hodge Associates’ indicating the goods and trading activities conducted before they entered into the arrangement with ‘GTL’.

At a meeting on 10/10/2019 between the owners of ‘GTL’ and Mr TDH, it was explained that ‘GTL’ was to be closed and it was understood that the two directors would continue to operate in the airport furniture trade under the name ‘Gate Technologies AF Limited’. The two directors would also be allowed to keep the website www.gatetechnologies.co.uk and an agreement about the financial settlement was to follow.

The remaining part of the statement generally repeats the content of the previous statement.

Assessment of the evidence

Written statements referred to in Article 97(1)(f) EUTMR, such as the opponent’s and applicant’s witness statements, are admissible means of evidence. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary, since such statements have to be considered as having less probative value than physical evidence or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence, such as the exhibits, to see whether or not the content of the statements is supported by other evidence.

In the present case, from the opponent’s arguments and the very limited supporting evidence (the exhibits), it does not appear that the opponent is the owner of the non-registered earlier rights.

 Mr TDH and Ms JH (current directors, owners or shareholders of the opponent) were appointed as directors of a company named ‘Gate Technologies Limited’, associated with the applicant, in1999. Although there is no evidence for this, both parties, in their witness statements, agree on this.

 According to the applicant, that company, ‘Gate Technologies Limited’, was already using the non-registered trade mark ‘GATE TECHNOLOGIES’, starting from its incorporation on 04/01/1996. Although no evidence was submitted to support this, this is plausible as ‘GATE TECHNOLOGIES’ is also the name of the company of which Mr TDH and Ms JH became directors.

 The directors, owners or shareholders of the opponent, Mr TDH and Ms JH, had a business before they entered ‘Gate Technologies Limited’ (evidence of this was submitted) in the design and supply of airport furniture and seem to have agreed with the latter (GTL) in 2000 to continue this business under the name or mark of the company associated with the applicant ‘GATE TECHNOLOGIES’. It is not clear how this collaboration was legally and practically formalised or executed as no arguments or evidence were submitted. It is also not clear or proven that the business under the marks ‘GATE TECHNOLOGIES’ was carried out for the benefit of the opponent’s current directors, owners or shareholders and not for the company associated with the applicant.

 According to the parties, there was no formal agreement, and no evidence was submitted that can demonstrate the specific conditions of the collaboration between the parties.

 The opponent argues that it continued its own prior business under the earlier mark ‘GATE TECHNOLOGIES’ autonomously and independently from ‘GTL’, but no evidence (relevant correspondence, corporate or financial information) to support this was submitted. Furthermore, no specific conditions under which this would take place are mentioned.

 The exhibit that was submitted together with the opponent’s second witness statement refers to ‘Timothy Hodge Associates’ without mentioning the trade mark ‘GATE TECHNOLOGIES’. This document only shows that the opponent indeed had a business in the design and supply of airport furniture before entering ‘GTL’ in 1999/2000. However, this is not the issue, as it is not disputed that, as from 2000, the business was continued under the earlier marks. The issue is under which legal form, under what conditions and for whose benefit was this business continued. Moreover, there is no indication that the ownership of those earlier rights were transferred to the opponent’s directors, owners or shareholders.

 Even if Mr TDH, as mentioned in its first witness statement, is the registered owner of the website https://gatetechnologies.co.uk/, which from exhibit TDH-1 cannot be proved (e.g. Mr TDH was not mentioned as being the owner of the domain-name), this fact in itself is not sufficient either to prove that he was the owner of the earlier non-registered marks and does not imply any transfer of the trade mark rights.

For all these abovementioned reasons, it is not proved that the earlier rights are owned by the opponent; on the contrary, even though solid evidence is lacking, from what can be seen in the limited arguments and evidence submitted by the parties, everything seems to indicate that those rights are owned by the company named ‘Gate Technologies Limited’, associated with the applicant.

According to Article 8(3) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded.

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

Saida CRABBE

Chantal VAN RIEL

Helen Louise MOSBACK

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.