DECISION

of the Fifth Board of Appeal

of 26 July 2016

In Case R 1629/2015-5 and R 1666/2015-5

Impex Barneveld B.V.
Harselaarseweg 129 3771 MA Barneveld Netherlands	Cancellation Applicant Appellant in R 1629/2015-5 Respondent in R 1666/2015-5

represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands

v

Vaillant GmbH
Berghauser Str. 40 42859 Remscheid Germany		EUTM Proprietor Appellant in R 1666/2015-5 Respondent in R 1629/2015-5

represented by Thomas Hocker, Berghauser Str. 40, 42859 Remscheid, Germany

APPEAL relating to Cancellation Proceedings No 8 863 C (European Union trade mark registration No 9 950 106)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson and Rapporteur), A. Pohlmann (Member) and V. Melgar (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 9 May 2011, Vaillant GmbH (‘the EUTM proprietor’) sought to register the figurative declared the invalidity of:

for the following list of goods and services:

Class 9 – Apparatus and installations for electricity generation, namely fuel cells; physical, electric and electronic measuring, control and regulating apparatus, all the aforesaid goods included in Class 9, in particular for electric, oil-fired or gas-fired heating, cooking, refrigerating, drying, ventilating and water supply apparatus, water heaters, in particular flow-through water heaters, storage water heaters, combined central heating or service water heaters, boilers, burners and heat accumulator apparatus; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; inverters; parts for constructing combined heat and power installations, namely fuel cells;

Class 11 – Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating and water supply; water heaters, solar installations (heating), heating boilers and burners; apparatus and installations for electricity generation, namely combined heat and power plants; parts for constructing combined heat and power installations, namely heat pumps, combined heat and power plants, fuel cell heating apparatus;

Class 42 – Engineering, in particular development, planning, construction and monitoring of production and assembly; technical consultancy with regard to heat technology apparatus.

2. The application was published on 21 June 2011 and the mark was registered on 11 September 2013.

3. On 13 January 2014 Impex Barneveld B.V. (‘the cancellation applicant’) filed a request for declared the invalidity of of the registered mark for declared the invalidity of goods and services, based on Article 53(1), (2) and Article 8 EUTMR.

4. The invalidity request cited the following earlier right:

• Benelux registration for the word mark ‘PROTHERM’ registered on 10 April 1972 for the following goods:

Class 9 – Tank content indicators, thermostats, measuring- and control installations for central heating;

Class 11 – Radiator drain/drawing press, expansion joints/compensators, flexible connections, radiator couplings and other parts related to central heating, central heating installations.

5. By decision of 22 June 2015 (‘the contested decision’), the Cancellation Division declared the invalidity of the contested mark for part of the goods, for namely:

Class 9 – Physical, electric and electronic measuring, control and regulating apparatus, all the aforesaid goods included in class 9, in particular for electric, oil-fired or gas-fired heating, cooking, refrigerating, drying, ventilating and water supply apparatus, water heaters, in particular flow-through water heaters, storage water heaters, combined central heating or service water heaters, boilers, burners and heat accumulator apparatus;

Class 11 – Apparatus for heating, ventilating and water supply; water heaters, heating boilers and burners; parts for constructing combined heat and power installations, namely heat pumps, combined heat and power plants, fuel cell heating apparatus.

It gave, in particular, the following grounds for its decision:

• Following a detailed analysis of the evidence supplied by the cancellation applicant following a request to prove use of its earlier right, use was established for:

Class 9 – Measuring- and control installations for central heating;

Class 11 – Radiator couplings and other parts related to central heating.

• The marks were found to be similar and the element ‘PROTHERM’ was not considered to be inherently potent. However, due to its positon and size, and the descriptive/non-distinctive character of the remaining elements in the contested mark, given the risk of consumer belief that the items could come from the same or economically-linked undertakings, a likelihood of confusion was found;

• The contested mark was cancelled for all the goods found to be identical or similar to those of the earlier right. This did not include the following:

Class 9 – Apparatus and installations for electricity generation, namely fuel cells; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; inverters; parts for constructing combined heat and power installations, namely fuel cells;

Class 11 – Apparatus for lighting, steam generating, cooking, refrigerating, drying; solar installations (heating); apparatus and installations for electricity generation, namely combined heat and power plants;

Class 42 – Engineering, in particular development, planning, construction and monitoring of production and assembly; technical consultancy with regard to heat technology apparatus.

Costs were shared.

6. Both parties filed an appeal against the decision.

Submissions and arguments of the parties

R 1629/2015-5

7. On 11 August 2015, the cancellation applicant filed an appeal against the contested decision, requesting that the cancellation be extended to all the goods and services. The statement of grounds of the appeal was received on 21 October 2015, and contained the following arguments:

• The goods which the contested decision did not cancel are similar or highly similar to the cancellation applicant’s goods because they can perform the same purpose and share the same trading channels – in particular, conventional heating companies have expanded into scientifically sophisticated business areas (solar and wind energy);

• This is also the case with the contested services in Class 42 – technical engineers supplying those services will also, in many cases, sell the relevant products as well. Further, suppliers of the latter will also be expected to supply technical consultancy and advice;

• It follows from the findings of the contested decision in relation to a likelihood of confusion that these goods and service should, consequently, also be refused;

• Finally, the fact that an application for the sign ‘PROTHERM’ was refused by the Benelux Trade Mark Office is no indication of the distinctive character of this sign. The EUTM proprietor in this matter has not initiated cancellation proceedings against the sign in this case.

8. In its observations in reply received on 11 November 2015, the EUTM proprietor requests that the appeal be dismissed, stating:

• The conclusions of the contested decision in relation to the evidence of use was wrong in law, in particular, a number of documents were not translated and should be ignored;

• Various are specifically critiqued and should be declared inadmissible;

• The contested decision was wrong to find use for ‘ … other parts related to central heating’, as this is too general a description;

• In Class 9 the goods for which use was established ‘measuring and controlling installations for central heating’ are water controllers that adjust the flow of water – they are not controlling installations for central heating as normal heating applications do not need such measuring installations;

• ‘Radiator couplings’ are parts that combine apparatus for heating with radiators, while the documents shown by cancellation applicant show adapters and flanges – the latter should be classified in Class 6. Flanges and adapters are combined with several appliances like also screws and adapters are a characteristic part of the cancelled goods in Class 11;

• The EUTM proprietor agrees with the contested decision in relation to the finding of dissimilarity of the contested goods and services – and cannot accept the cancellation applicant’s assertion that that ‘… companies distributing apparatus and instruments for example for (central) heating also distribute apparatus and instruments for all other sorts of energy and heating and supplying products’. The goods as specified should be compared;

• An application for ‘PROTHERM’ by the cancellation applicant in this matter was refused by the Benelux Trade Mark Office on the basis of ‘Descriptive / Generic / Lack of distinctiveness’ – thus the similarity between the contested marks in this matter is not relevant, as descriptive word marks should be free for use by any party active in commerce;

• At best, protection of the earlier right ‘PROTHERM’ rests in its identical reproduction only, while that of the contested sign rests in the sign reproduced as a whole.

R 1666/2015-5

9. On 18 August 2015, the EUTM proprietor filed an appeal against the contested decision, requesting that the contested decision be overturned. The statement of grounds of the appeal was received on 19 October 2015, where the EUTM proprietor argued:

• The conclusions of the contested decision in relation to the evidence of use were wrong in law, in particular, a number of documents were not translated and should be ignored;

• Various documents are specifically critiqued and should be declared inadmissible;

• The contested decision was wrong to find use for ‘ … other parts related to central heating’, as this is too general a description;

• In Class 9 the goods for which use was established ‘measuring- and controlling installations for central heating’ are water controllers that adjust the flow of water – they are not controlling installations for central heating as normal heating applications do not need such measuring installations;

• ‘Radiator couplings’ are parts that combine apparatus for heating with radiators, while the documents shown by cancellation applicant show adapters and flanges – the latter should be classified in Class 6. Flanges and adapters, combined with several appliances like also screws and adapters, are a characteristic part of the cancelled goods in Class 11;

• The EUTM proprietor agrees with the contested decision in relation to the finding of dissimilarity of the contested goods and services – and cannot accept the cancellation applicant’s assertion that that ‘… companies distributing apparatus and instruments for example for (central) heating also distribute apparatus and instruments for all other sorts of energy and heating and supplying products’. The goods as specified should be compared;

• An application for ‘PROTHERM’ by the cancellation applicant in this matter was refused by the Benelux Trade Mark Office on the basis of ‘Descriptive / Generic / Lack of distinctiveness’ – thus the similarity between the contested marks in this matter is not relevant, as descriptive word marks should be free for use by any party active in commerce;

• At best, protection of the earlier right ‘PROTHERM’ rests in its identical reproduction only, while that of the contested sign rests in the sign reproduced as a whole.

10. In its observations in reply received on 28 December 2015, the cancellation applicant requests that the appeal be dismissed, arguing:

• Arguments and evidence at first instance are referred to;

• The cancellation applicant is not under an obligation to translate every example of proof of use evidence unless it is specifically requested to do so (see Rule 22(6) CTMIR applicable by analogy) – a translation of the main/relevant material was submitted;

• Evidence of use must be assessed in its entirety – and the effect of the whole in combination considered – in this context, the evidence is exhaustive and of wide variety;

• Detailed financial data is not required – there is no obligation to set out the commercial strategy of a business;

• Finally, the fact that an application for the sign ‘PROTHERM’ was refused by the Benelux Trade Mark Office is no indication of the distinctive character of this sign. The EUTM proprietor in this matter has not initiated cancellation proceedings against the sign in this case.

Reasons

11. Both appeals comply with Articles 58, 59 and 60(1) EUTMR and Rules 48 to 49 CTMIR. They are, therefore, admissible.

12. Since both appeals are directed towards the same contested decision they will be examined jointly by virtue of Article 7(1) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal.

Scope of the appeals

13. The cancellation applicant (R 1629/2015-5) has appealed against the contested decision, requesting that the cancellation be extended to all the goods and services of the registered mark – that is, to those goods and services not cancelled at first instance:

Class 9 – Apparatus and installations for electricity generation, namely fuel cells; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; inverters; parts for constructing combined heat and power installations, namely fuel cells;

Class 11 – Apparatus for lighting, steam generating, cooking, refrigerating, drying; solar installations (heating); apparatus and installations for electricity generation, namely combined heat and power plants;

Class 42 – Engineering, in particular development, planning, construction and monitoring of production and assembly; technical consultancy with regard to heat technology apparatus.

The contention of the cancellation applicant was essentially based on the failure of the contested decision to properly deal with the issue of similarity between the contested goods and services, and with likelihood of confusion.

14. The EUTM proprietor appealed (R 1666/2015-5) against the contested decision in its entirety, requesting that the contested decision be overturned. In other words, the appeal was directed to the goods for which a declaration of invalidity has been made in the contested decision:

Class 9 – Physical, electric and electronic measuring, control and regulating apparatus, all the aforesaid goods included in class 9, in particular for electric, oil-fired or gas-fired heating, cooking, refrigerating, drying, ventilating and water supply apparatus, water heaters, in particular flow-through water heaters, storage water heaters, combined central heating or service water heaters, boilers, burners and heat accumulator apparatus;

Class 11 – Apparatus for heating, ventilating and water supply; water heaters, heating boilers and burners; parts for constructing combined heat and power installations, namely heat pumps, combined heat and power plants, fuel cell heating apparatus.

The basis of the appeal was a failure in the contested decision to properly examine the proof of use evidence submitted by the cancellation applicant.

15. Taken together, this amounts to a ‘root and branch’ reassessment of all the aspects of the contested decision. It is to this that the Board will now turn.

Proof of use of the earlier mark

16. Given the criticisms of the analysis of the proof of use material submitted by the cancellation applicant, it behoves the Board to carry out its own analysis of the evidence submitted.

17. According to Article 57(2) and (3) EUTMR, if the EUTM proprietor so requests, the cancellation applicant must submit proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been genuinely used in the territories in which it is protected and for the goods or services for which it is registered and which it cites as justification for its application, or that there are proper reasons for non-use. If, at the date on which the contested EUTM application was published, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions contained in Article 42(2) EUTMR were satisfied at that date.

18. The EUTM proprietor clearly requested in correspondence dated 9 May 2014 that the cancellation applicant submit proof of use of the trade mark on which the application is based, namely Benelux trade mark No 310 197. The request was filed in due time and was found to be admissible, given that the earlier trade mark had been registered more than five years prior to the date of the application for a declaration of invalidity.

19. As stated in the contested decision, the cancellation applicant has to demonstrate the genuine use of the earlier mark for the five-year period preceding the filing date of the application for a declaration of invalidity. In addition, and since the earlier mark had been registered for at least five years on the date on which the contested EUTM application was published, use of the earlier mark has also to be established for the five-year period preceding the publication date of the application for the contested EUTM.

20. The cancellation applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Benelux from 21 June 2006 to 20 June 2011 inclusive (‘first relevant period’), as well as from 13 January 2009 to 12 January 2014 inclusive (‘second relevant period’).

21. According to Rule 40(6) in conjunction with Rule 22(3) CTMIR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

22. The material submitted is summarised as follows:

• ‘01’ consists of a price list which is said to be produced every year. This particular example is undated, is in Dutch and the prices are in euros. However, given that the Netherlands was a ‘first wave’ joiner of the single currency on 1 January 1999 this does not help with the date of the document.

A partial transition is provided, and refers to the following products:

Page 8: ‘Heat exchanger’s RW series for tap water’ and ‘… floor heating’;

Page 14: ‘industrial blending dispensers’;

Page 15: ‘central heating thermostats for collective shower systems’;

Page 16: ‘water dispenser valves’;

Page 19: ‘shower panels’;

Page 22: ‘flow valves’;

Page 34: ‘control thermostats’;

Page 52: ‘Protherm water controller’.

A version of the contested sign is used on each page of the price list:

The EUTM proprietor has a number of criticisms of this evidence – it states that the partial translation does not refer to a certain page and that the price list has no publication date. The first of these is clearly not the case and the second has been noted. It might be the case that this document provides no proof for use of cancellation applicant’s trade mark in the relevant time frame when considered alone – but, of course, the document must be read with the the cancellation applicant’s other material submitted. Other criticisms have less force – the name ‘PROTHERM’ may be a company name, but it is used in close proximity with the goods (appearing on each page of the price list) and is associated with the goods listed (see page 52 of the price list).

• ‘02’ consists of a copy of what is described as an ‘invoice history’ referring to a selection of invoices dated from January 2007 to 22 August 2014. These all refer to the same item, the ‘Protherm water controller’, which can be cross-referenced to the price list in ‘01’. There are nearly 100 references to the item, but no amounts or costings are shown. The EUTM proprietor criticises this evidence by stating that it does show ‘… something in the time period from 01.01.2007 till 31.12.2014 but it was printed at 12.11.2014 at 12:34 time. That was before 31.12.2014. That does not make sense’. This reflects an error in the commentary on this evidence by the cancellation applicant – ‘02’ does not show use from ‘01.01.2007 till 31.12.2014’ but from 1 January 2007 to 22 August 2014, as a brief examination of the document shows. The date of printing is completely consistent with these dates. The EUTM proprietor points out that the cancellation applicant does not mention which registered goods should be proofed with the document. This is a pretty thin criticism. Only one good is mentioned and it is obvious;

• ‘03’ consists of a ‘technical drawing of a PROTHERM’ appendage. As the EUTM proprietor points out, this is dated ‘1994’ and is of limited contribution to the whole. It is not clear what ‘appendage’ the document refers to;

• ‘04’ consists of four invoices dated 1995 to a business in the Netherlands. They are well outside the relevant time frame and again, are of limited value. Much the same comments may be made of ‘05’, an invoice to Italy dated 1997 and the letters in ‘05a’ and 05b’. ‘06’, ‘07’ and ‘08’ all technical drawings of ‘PROTHERM’ switches dated 2001, 2002 and 2003 – this material is before the first relevant period, as is the letter and invoice/price list in ‘09’ and ‘10’, dated 2004 and 2005, respectively;

• ‘11’ is of more probative value, consisting of six invoices in 2007, all within the first relevant period. They are directed to customers within the Netherlands and mention the ‘PROTHERM’ water controller. The sign is used in close proximity with the product – they are described as ‘PROTHERM WATER CONTROLLERS’. The only other products mentioned are ‘pulse generators’ and magnetic valves (solenoid valves);

• ‘12’ fourteen invoices from 2008, all to clients in the Benelux. These refer to the water controller, as well as ‘pulse generators’ (‘pulsers’) and magnetic valves (solenoid valves).

On the fourth invoice of the 14 there is a mention of ‘connector’ at EUR 3.92. The customer does not appear to be have been charged as there is a discount (‘korting’) that provided this item free. Another invoice mentions a ‘TACO-FLEX’, but it is not known what this is – the document is hard to read – there may be a reference to ‘voorraad’ or ‘stock’, but it is unclear;

• ‘13’ contains a technical drawing of a valve cap (‘ventiedopje’) carrying the ‘PROTHERM’ name dated 15 December 2009. There are also some 17 invoices, from 2009, featuring the ubiquitous water controller, as well as ‘pulse generators’ or ‘pulsers’ (‘WATERMETER pulsgever’) and magnetic valves (solenoid valves).

The EUTM proprietor suggests that these documents are illegible and should be ignored. In the view of the Board, there are sufficiently readable so as to provide the information indicated;

• ‘14’ consists of ten invoices from 2010, again all to clients in the Netherlands. Some of these documents are hard to read, but the main sale item is the ‘PROTHERM’ water controller, though also mentioned are pulse generators’ or ‘pulsers’ (‘WATERMETER pulsgever’) and magnetic valves (solenoid valves);

• ‘15’ consists of five invoices from 2011, referring in the main to the ‘PROTHERM’ water controller. Again, all the clients are in the Netherlands;

The EUTM proprietor suggests that these all the documents in ‘14’ to ‘16’ are unreadable and should be ignored. In the view of the Board, apart from ‘16’, there are sufficiently understandable so as to provide the information indicated;

• The documents in ‘16’, apart from the ‘PROTHERM’ sign as a header are illegible and are ignored by the Board;

• ‘17’ consists of eight 2013 invoices to customers in the Netherlands for water controllers, pulsers and valves. There is one mention of a ‘Taco-Setter’, but it is not clear what this is;

• ‘18’ consists of copies of two pages in Dutch, undated, showing pictures of a magnetic valve, a water controller and pulsar;

• ‘19’ shows five products which are branded ‘PROTHERM’. It is not known how these relate to the invoices.

23. In submissions, the EUTM proprietor argues that the evidence of use should be dismissed as the cancellation applicant did not provide translations of the same. This point was addressed fully at first instance, where the contested decision states that the cancellation applicant is not under any obligation to translate such material, unless specifically requested so to do by the Office (Rule 22(6) CTMIR). As also pointed out, the information required by the Office is self-evident from the material provided – there was no need to request a translation. The Board fully agrees.

24. In general, the criticism of the evidence provided by the EUTM proprietor rather consists of sniping at individual items of evidence in an approach that can only be described as ‘divide and rule’. It is clear from case-law, that such material should be considered as a whole, that is, the Office should ‘stand-back’ and assess the full narrative provided by the totality of that submitted (see, for example, the approach taken in 23 September 2015, T–426/13, AINHOA, EU:T:2015:669, § 33 et seq.).

25. It is clear that there is a public interest in properly applying the requirement that any earlier right holders prove use of their sign. On the one hand, the Office register cannot be merely a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period – in accordance with the tenth recital of the EUTMR, that register must faithfully reflect what companies actually use on the market (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 18-22). On the other hand, the monopoly owned by trade mark proprietors will be weakened where use of their earlier registration cannot be proved and a potentially conflicting sign effectively ends up sharing the register with that right. The latter can only be allowed where the Office has rigorously fulfilled its duties in examining the evidence proffered by the proprietor – the General Court has specified that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (24/05/2012, T‑152/11, Mad, EU:T:2012:263, § 24 and the case-law cited therein).

26. It should be noted, however, that the notion of genuine use does not involve an assessment of the commercial success of an undertaking, or a review of the economic strategy of a business, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (24/05/2012, T‑152/11, Mad, EU:T:2012:263, § 18).

27. Rather, as case-law counsels, there is genuine use of a trade mark where the mark 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. Moreover, the condition of genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and externally (24/05/2012, T‑152/11, Mad, EU:T:2012:263, § 19; 11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 37).

28. Commercial volume, length of the period of use and frequency are all factors that must be considered (24/05/2012, T‑152/11, Mad, EU:T:2012:263, § 19). In order to examine, in a particular case, whether a EUTM has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment 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. In addition, the turnover and the volume of sales of the product under the mark at issue cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. As a result, the Court has stated that use of the mark at issue need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned in order to maintain or create a market share for the goods or services protected by the mark (02/02/2016, T‑173/13, MOTOBI, ECLI:EU:T:2016:55, § 42).

29. With this analysis of the case-law in mind, the Board notes that Rule 22(3) CTMIR is applicable to applications for revocation pursuant to Rule 40(5) CTMIR, and provides that evidence of use must concern the place, time, extent and nature of use of the mark at issue (10/09/2008, T‑325/06, Capio, EU:T:2008:338, § 27; 24/05/2012, T‑152/11, Mad, EU:T:2012:263, § 17).

30. As noted in the contested decision, although some of the documents are dated outside the relevant time periods (invoices dated in 2014 and mentioned in the list referring to invoice history (‘02’) and the documents submitted as ‘03’ to ‘10’, which refer to the period between 1994 and 2005), the cancellation applicant submitted a large number of invoices issued between January 2007 and December 2013 (‘11’ to ‘17’). All these documents support time of use and, also, place of use – the invoices, price list and leaflets refer to the ‘Netherlands’.

31. In terms of extent of use, there is little doubt that the evidence is sufficient in this respect. Against the background of 24/05/2012, T‑152/11, Mad, EU:T:2012:263, § 19, as the contested decision found, the materials submitted by the applicant, namely the invoices, show that between January 2007 and December 2013 ‘PROTHERM’ goods were sold in the relevant territory and the sums in total are expressed in hundreds or thousands of euros. These numbers may not be particularly extensive considering the length of the relevant periods of use, but it is adequate in demonstrating maintenance of market share (02/02/2016, T‑173/13, MOTOBI, ECLI:EU:T:2016:55, § 42).

32. As to the nature of use, this requires evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered or of a variation thereof (according to Article 15(1)(a) EUTMR) and of its use for the goods and services for which it is registered.

33. Taking the first of these, it is considered that the materials submitted show that the earlier mark was used in such a way as to make a clear link between the goods and the cancellation applicant’s company. Further, the sign as registered as a trade mark is used in many of the invoices in close proximity with the goods (see ‘02’ for example). Further, in the view of the Board, the sign:

does not alter the distinctive character of the mark as registered. The font and lower-case lettering, and the depiction of the ‘THERM’ element in the sign in blue, are trivial changes in a trade mark sense. And the words: ‘Appendage en regelsystemen voor CV en sanitaire installaties’ can be translated as ‘Fixtures/appendage and control systems for heating and sanitary installations’, which is purely descriptive for the relevant Benelux public.

34. The Cancellation Division considered, therefore, that the evidence, when assessed in its entirety, showed use of the sign as a trade mark. The Board agrees: in consideration of the evidence as an entirety, there is sufficient to conclude that the cancellation applicant’s earlier right was used in the course of trade, at the relevant time, in the relevant place to the relevant customer.

35. This, however, is not quite the end of the matter, as it must be assessed as to what species of good the sign was used upon. The earlier right will be, consequently, so restricted.

36. The latter is registered for the following:

Class 9 – Tank content indicators, thermostats, measuring- and control installations for central heating;

Class 11 – Radiator drain/drawing press, expansion joints/compensators, flexible connections, radiator couplings and other parts related to central heating, central heating installations.

37. Turning to case-law, the Court has previously stated that that the purpose of the legal imperative that the earlier mark must have been put to genuine use is to limit the likelihood of conflict between two marks by protecting only trade marks which have actually been used, in so far as there is no sound economic reason for them not having been used (12/03/2003, T–174/01, Silk Cocoon, EU:T:2003:68, § 38). But this does not mean that the opponent is not required to prove use for all the goods and services listed in analytical detail, as the objective of Article 42(2) EUTMR is not so much to determine precisely the extent of the protection afforded to the earlier trade mark by reference to the actual goods or services using the mark at a given time, but to ensure, more generally, that the earlier mark was actually used for the goods or services for which it was registered (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 43).

38. In setting out the practical application of this approach, the Court was careful to maintain a balance between the preservation of protection afforded to too extensive a category of goods and one that has the opposite effect. The Court stated: ‘… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition’ (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45).

39. Proof has only been established for the following goods: ‘magnetic valve, a water controllers and pulsars’. A close analysis of the evidence does not reveal genuine sales for any other product. There may be the extensive price list in ‘01’, which includes a range of goods, but as the contested decision point out there is little or no reference to these goods elsewhere in evidence. In fact, such mention is almost non-existent. In ‘12’ there is a reference to a single connector that appeared to be provided free, but that is all. In the view of the Board, use of the name is restricted to the three related items (‘magnetic valves, a water controller and pulsars’) which appear to be used together. It is not a surprise, therefore, to find a number of examples of where they are sold together as well – a fact the invoices tend to reflect.

40. In ‘18’ the following passages appear:

‘Wiring diagram PRO.2 Protherm Water Controller in combination with a 230-volt solenoid valve and water meter with pulse generator (Aansluitschema PRO.2 Protherm Water Controller in combinatie met een 230 volt magneetklep en watermeter met pulsgever)’; and

41. ‘The Protherm Water Controller has one floating changeover contact. That makes it possible to use the Protherm Water Controller flexibly. This may be connected to a solenoid valve 230V ... (De Protherm Water Controller beschikt over één potentiaalvrij wissel-contact. Dat maakt het mogelijk de Protherm Water Controller flexible in te zetten. Hierdoor kan een magneetklep van 230 volt aangesloten worden...)’.

42. It appears to the Board that the water controller, as described in evidence, is essentially an electronic control device that can be used in conjunction with the magnetic solenoid valve the cancellation applicant also supplies to manipulate water flow levels and, when used with a ‘pulser’ (another species of valve), adjustably controls ‘doses’ or pulses of water. The ‘PRO.2 example depicted in evidence is:

43. With this analysis in mind, the Board notes the following. First, in Class 9 ‘tank content indicators, thermostats’ are excluded from the scope of protection in this case as these items are not included in the examples of use provided by the cancellation applicant.

44. On balance, the Board considers that the remaining description in the specification in Class 9 of ‘… measuring- and control installations for central heating’ is over generous to the cancellation applicant in the context of the use that has been demonstrated. This description seems too general and would include an unjustifiably wide species of good. Examples might be electronic timers, room thermostats and thermostatic radiator control valves. The latter may be similar to the goods on which use has been established, but that is irrelevant to considerations of proof of use, which must be based on the actual goods on which use has been established.

45. A fairer description is ‘water measuring and control devices and valves for central heating’ as this is not too reductive but, at the same time, more accurately reflects the use that has been demonstrated by the cancellation applicant. It is also most in keeping with the approach taken by the Court in 14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 49. In the latter case, proof of use relating to a ‘product for polishing metals consisting of cotton impregnated with a polishing agent (magic cotton)’ was sufficient to support use of ‘polish for metals’, but not for the higher level ‘polishing preparations’ in Class 3.

46. It might be argued that the three items indicated above are directed to water flow control, all being a species of valve and/or valve controller, and are not measuring devices as such. However, it seems inevitable that to exercise control, one must measure. The EUTM proprietor seems to admit this. In submissions, the latter argues that the goods for which use was established are water controllers that adjust the flow of water – they are not controlling installations for central heating because ‘… normal heating applications do not need such measuring installations’ (emphasis added).

47. As to the EUTM proprietor’s other assertion, that devices such as ‘water controllers’ are not used in central heating applications, in the view of the Board this is an evidence point that requires proof and not assertion, the burden of which rests with the EUTM proprietor. No proof has been provided: the Board notes that the slogan accompanying the contested sign in use is: ‘Fixtures/appendage and control systems for heating and sanitary installations’, indicating the cancellation applicant’s interest in heating systems. The Board also notes that the latter are not limited to domestic applications, and could include industrial and business installations of significant size and complexity. The latter, prime facie, do not exclude the need for fairly sophisticated water control functionality.

48. Turning to the goods in Class 11, in the view of the Board, no use has been established for these items. The goods are: ‘radiator drain/drawing press, expansion joints/compensators, flexible connections, radiator couplings and other parts related to central heating, central heating installations’.

49. The contested decision found use in relation to ‘connections, couplings, and parts related to central heating such as pulsers and magnetic valves’. As has been pointed out, there is but one mention of connectors in evidence, and none to couplings. Based on the very limited use of the name in relation to ‘pulsers and magnetic valves’ it would be unfair to expand the goods for which the cancellation applicant has proved use to the unspecified and potentially vast ‘other parts related to central heating, central heating installations’. As pointed out above, ‘pulsers and magnetic valves’ are no more than auxiliary control devices and species of valve. They fall into Class 9, as indicated previously and are captured by the generalised ‘water controllers and valves for central heating’ as set out supra.

50. With this analysis in mind, the Board now turns to an analysis of similarity between the contested goods and services.

Comparison of goods and services

Class 9 goods

51. The Class 9 contested goods are: ‘apparatus and installations for electricity generation, namely fuel cells; physical, electric and electronic measuring, control and regulating apparatus, all the aforesaid goods included in Class 9, in particular for electric, oil-fired or gas-fired heating, cooking, refrigerating, drying, ventilating and water supply apparatus, water heaters, in particular flow-through water heaters, storage water heaters, combined central heating or service water heaters, boilers, burners and heat accumulator apparatus; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; inverters; parts for constructing combined heat and power installations, namely fuel cells’.

52. The Board considers that ‘apparatus and installations for electricity generation, namely fuel cells … parts for constructing combined heat and power installations, namely fuel cells’ are not similar to ‘water measuring and control devices and valves for central heating’. Despite the reference to more general goods, the description here is limited by the word ‘namely’ to ‘fuel cells’, with forms the basis of the comparison the Board must undertake.

53. ‘Fuel cells’ are devices that generate electricity from fuel sources. Consequently, these goods have a different purpose to the cancellation applicant’s goods, have a profoundly different nature and are likely to be distributed by different commercial entities. The EUTM proprietor is correct to reject the assertion of the cancellation applicant that ‘… companies distributing apparatus and instruments for example for (central) heating also distribute apparatus and instruments for all other sorts of energy and heating and supplying products’. There is no evidence that the cancellation applicant has done so from the information in its extensive price list (see ‘01’). Further, it appears to the Board, based on the common understanding that ‘fuel cell’ is a new and developing technology, and is still a niche market, that some evidence would be required to overturn this understanding.

54. The contested decision found identity between the contested: ‘… physical, electric and electronic measuring, control and regulating apparatus, all the aforesaid goods included in Class 9, in particular for electric, oil-fired or gas-fired heating, cooking, refrigerating, drying, ventilating and water supply apparatus, water heaters, in particular flow-through water heaters, storage water heaters, combined central heating or service water heaters, boilers, burners and heat accumulator apparatus’ and ‘measuring- and control installations for central heating’.

55. The Board accepts this finding in relation to the goods that are related to ‘… physical, electric and electronic measuring, control and regulating apparatus, all the aforesaid goods included in Class 9, in particular for electric, oil-fired or gas-fired heating … and water supply apparatus, water heaters, in particular flow-through water heaters, storage water heaters, combined central heating or service water heaters, boilers, burners and heat accumulator apparatus’, given that the latter have the same purpose, are of the same or similar nature and are very likely to be supplied by the same commercial entities, as the cancellation applicant’s ‘water measuring and control devices and valves for central heating’. The variety of goods shown in the Price List in ‘01’ tends to support this finding.

56. This, however, leaves, control apparatus for ‘cooking, refrigerating, drying, ventilating’. The contested decision asserted that the latter shared similarity with the cancellation applicant’s goods on the basis that the latter are ‘… physical, electric and electronic apparatuses and the contested goods can be used for central heating’. The Board is not sure what is being asserted, here – if the contention is that, for example, a water controller for central heating is completely fungible (that is, of such nature or kind as to be freely exchangeable or replaceable) with a water controller for a cooking or refrigeration installation, this is a pretty brave assertion to make in the face of a paucity of evidence. Of course, as Article 76 EUTMR makes clear, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties – and if the latter have not supported their respective cases with evidence, the Office is unable to make up the deficiency. There is clear sense behind the restriction in Article 76 EUTMR, given that the EUIPO cannot be expected to have on tap expertise more suitable to an army of patent examiners – in this capacity the parties to a dispute are best placed to provide the material necessary to a particular matter or argument, given they are ‘in the business’ at the heart of particular trade mark disputes.

57. Consequently, the Office must make the best it can with the material provided.

58. Conceivably, however, a control valve and a controller dedicated to central heating may share the same purpose in the regulation of water flow rates in (for example) a refrigeration system. The Board notes that the Second Board found similarity between ‘installations for heating’ of the mark applied for, are very similar to ‘air conditioners’ on the basis that they are both apparatus for temperature modification, thus they have the same nature and purpose (03/11/2008, R 617/2007-2, LUXAIRE / LUX, § 19). The same may be true in relation to apparatus for cooking installations in a professional setting, and for drying, ventilating and water supply apparatus, all of which will require a regulation of water supply. Further, it is not unreasonable to accept that there may be some nexus of supply between these industries in terms of goods engineered to control an energy storage medium (like water) which assists in the function of a ‘heat pump’ – essentially a device that moves thermal energy opposite to the direction of spontaneous heat flow by absorbing heat from a cold space and releasing it to a warmer one or vice versa.

59. On balance, the Board is prepared to accept the conclusion of the contested decision that these goods are similar to an average degree.

60. As to the remaining goods in Class 9, in terms of ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; inverters’, again the Board accepts the findings of the contested decision. Their purpose is to conduct, distribute, transform, store, regulate and/or control electricity. The cancellation applicant’s goods serve mainly heating purposes and these goods are not related to electricity processing. The goods under comparison are, therefore, of different natures and intended for different purposes. They do not have the same retail outlets and it is unlikely they are manufactured by the same undertaking, and nor are they in competition with each other. They are, consequently, dissimilar. In passing, the Board notes that ‘inverters’ are defined as an electronic devices or circuitry that changes direct current to alternating current, and are merely another example of electricity processing – such items are not similar to the cancellation applicant’s goods.

Class 11 goods

61. Turning, now, to the goods in Class 11, these are: ‘apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating and water supply; water heaters, solar installations (heating), heating boilers and burners; apparatus and installations for electricity generation, namely combined heat and power plants; parts for constructing combined heat and power installations, namely heat pumps, combined heat and power plants, fuel cell heating apparatus’. There is quite an eclectic mix here and some decomposition is required, as it would be easy to sweep these items together in a manner that leads to erroneous results.

62. First, the Board is not convinced that there is any similarity at all between the contested goods and ‘apparatus for lighting’ – valves and water controllers could not be more different.

63. Next, given the previous discussion, and on the same basis, there must be some similarity between ‘… apparatus for heating, cooking, refrigerating, drying, ventilating and water supply; water heaters, heating boilers and burners’ and the earlier ‘water measuring and control devices and valves for central heating’. In this respect, there is something of a contradiction in the contested decision in excluding ‘apparatus for cooking, refrigerating, drying’ from the goods for which similarity was established, given it found similarity for control and regulating apparatus for these very purposes in relation to Class 9 goods. Given that the wider description in Class 11 includes the narrower in Class 9, both must be regarded as similar.

64. Third, similarity was also established in relation to ‘parts for constructing combined heat and power installations, namely heat pumps, combined heat and power plants, fuel cell heating apparatus’. The Board agrees: these items may be used with ‘heat and power installations’, but their purpose is similar to that of the cancellation applicant’s goods, in that they control heat, a process which is commonly achieved via water flow control. The purpose of the goods, their nature and likely sources of distribution may well be shared.

65. Finally, the contested decision found dissimilarity for the remaining goods: ‘apparatus for steam generating, solar installations (heating); apparatus and installations for electricity generation, namely combined heat and power plants’. In the view of the Board, the apparatus for steam generation could well include water controllers and valves for central heating, given that ‘steam’ is merely water in a gaseous or vapour phase and generation of the latter could well involve regulation of water flow, particular water controlled in the form of ‘pulses’. ‘Steam’ is also used as an alternative to water in some central heating systems. The Board therefore finds ‘apparatus for steam generating’ to be very similar to the cancellation applicant’s goods.

66. In terms of ‘apparatus and installations for electricity generation, namely combined heat and power plants’, as set out in the contested decision, combined heat and power plants generate electricity and useful heat at the same time. Such installations are popular in other countries in the European Union, where the hot water (generated as a by-product of electricity production) can be used in a number of central heating applications, including domestically. It seems to the Board that ‘water controllers and valves uses in central heating’, would be an essential component of cogeneration in combined heat and power plants: their uses and users, physical nature and trade channels could well be shared. These goods are similar.

67. On balance, the Board is not prepared to accept the finding of the contested decision that ‘solar installations (heating)’ are different to the goods of the cancellation applicant. It is well known that a typical domestic use of solar panels is to heat water. Given that is the case, a solar heating installation would almost certainly be marketed with water flow control valves and the like. A gas burner may be different in nature to a valve, but it is an essential part of a central heating system. In this case, the overall purpose is shared, as is the likely user and trade channels. These goods are similar.

Class 42 services

68. The contested services are: ‘… engineering, in particular development, planning, construction and monitoring of production and assembly; technical consultancy with regard to heat technology apparatus’.

69. The contested decision found that these services were different to the goods of the cancellation applicant, in that the former were considered to be based on applying scientific principles to design or on providing advisory services, and they include specific expertise in the technological (engineering) area and its application. The contested decision than argued that the cancellation applicant’s goods in Classes 9 and 11 and the contested services have clearly different natures, methods of use and distribution channels – the consumer would not consider them as originating from one and the same provider/producer and it followed that the cancellation applicant’s goods and the contested services are dissimilar.

70. In the view of the Board, though the goods being compared to the contested services in this decision are different to those in the contested decision, the basis of the argument is convincing. The services on offer provide a level of sophistication that does not sit well with the cancellation applicant’s limited commercial activities as evidenced in this case and captured by its use under the sign ‘PROTHERM’ on ‘water measuring and control devices and valves for central heating’. The latter goods are very restricted in scope. Merely providing potential customers with advice as to their applicability and operation cannot fall into the description of ‘technical consultancy with regard to heat technology apparatus’, let alone ‘engineering, in … planning, construction and monitoring of production and assembly’. The Board finds no similarity between the contested services and goods of the cancellation applicant.

71. In summary, the Board has found the following goods to be identical or similar:

Class 9: – Physical, electric and electronic measuring, control and regulating apparatus, all the aforesaid goods included in Class 9, in particular for electric, oil-fired or gas-fired heating, cooking, refrigerating, drying, ventilating and water supply apparatus, water heaters, in particular flow-through water heaters, storage water heaters, combined central heating or service water heaters, boilers, burners and heat accumulator apparatus;

Class 11 – Heating, steam generating, cooking, refrigerating, drying, ventilating and water supply; water heaters, solar installations (heating), heating boilers and burners; apparatus and installations for electricity generation, namely combined heat and power plants; parts for constructing combined heat and power installations, namely heat pumps, combined heat and power plants, fuel cell heating apparatus.

72. And the following goods and services to be dissimilar to the goods of the cancellation applicant:

Class 9 – Apparatus and installations for electricity generation, namely fuel cells; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; inverters; parts for constructing combined heat and power installations, namely fuel cells;

Class 11 – Apparatus for lighting;

Class 42 – Engineering, in particular development, planning, construction and monitoring of production and assembly; technical consultancy with regard to heat technology apparatus.

The relevant consumer

73. The contested decision found that the relevant public consists of the public at large and the more expert user with professional knowledge. The Board is prepared to accept this finding – ‘water measuring and control devices and valves for central heating’ may well be purchased by the general public given the interest the latter has in ‘DIY’. Thus the level of attention of the relevant public in this case will vary from average to high.

Comparison of the marks

74. The signs to be compared are:

    PROTHERM
    Earlier mark(s)	Contested sign

75. The Board fully accepts the findings of the contested decision in relation to the similarity between the signs in this case.

76. The relevant territory is Benelux. For reasons of procedural economy, and in view of the conceptual comparisons of the signs, the Cancellation Division focused on a comparison of the signs in the Netherlands, a Member State where English is widely spoken and understood by the relevant public.

77. The contested mark is a combined figurative and word mark, comprising the verbal element ‘protherm’, written in a rather standard font in lower-case letters, wherein ‘pro’ is in red and ‘therm’ is in black. The verbal element ‘protherm’ is partly included in a figurative element depicting an outline of a tiger or other feline. Underneath these elements is the expression ‘Always at your side’, written in red.

78. Visually, the marks are similar to the extent that they coincide in the verbal element ‘protherm’. On the other hand, they differ in the way in which the coinciding verbal element is represented in the contested mark. The marks also differ in the contested mark’s additional expression (‘Always at your side’) and in its figurative element and colours.

79. Aurally, the pronunciation of the marks coincides in the sound of the verbal element ‘protherm’, present identically in both signs, and to that extent the marks are aurally similar. The pronunciation differs in the sound of the expression ‘Always at your side’ of the contested mark, which has no counterpart in the earlier mark.

80. Conceptually, although the word ‘protherm’, contained in both marks, does not exist as such in Dutch, it is reasonable to assume that the concepts of ‘pro’ and ‘therm’ will be singled out and associated with some meanings by the relevant consumers. The first part, ‘pro-’, of the verbal element ‘protherm’ will be perceived as, inter alia, the preposition ‘for’ or an abbreviation for ‘professional’. The term ‘therm’ is used in combining forms (e.g. ‘thermometer’, ‘thermostaat’) and, therefore, will allude to something related to, or caused by, heat. Consequently, the public will perceive the verbal element ‘protherm’ as referring to something for, or related to, heat, or as referring to something related to, or caused by, heat and intended for professionals or made with professional competence or skills. The English expression ‘Always at your side’ included in the contested mark will be perceived as a slogan expressing constant support for consumers or the manufacturer’s reliability.

81. The signs were found to be similar, and the Board agrees.

Global appreciation

82. The Board notes that the likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18), in particular the similarity of the marks and the similarity of the goods and services, which are interdependent criteria in the sense that a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C–39/97, Canon, EU:C:1998:442, § 17).

83. The contested decision states that there was no term in the contested mark that was visually more eye-catching than any other. The Board is not convinced by this. By virtue of its size and position, the ‘PROTHERM’ element dominates the words above which it appears and the symbol of a ‘big cat’.

84. In terms of distinctiveness, the words, as mentioned above ‘Always at your side’ will be considered by the relevant public to be an advertising and promotional slogan with little or no distinctive value – it is a species of ‘marketing fluff’ that could apply to any provider of goods and services. The ‘big cat’ symbol makes no reference to the goods at issue, but will be seen primarily as decorative – but is not without distinctive value.

85. There was much debate in submissions about the potency of the word ‘PROTHERM’ as a mark of trade. In the view of the Board, this element is allusive, but distinctive. It is a ‘portmanteau’ word that captures the concepts of ‘heat’ (‘thermal’) in the sign with ‘PRO’ as a reference to, perhaps, ‘professional’ and the preposition ‘for’. Given this analysis, there is a conceptual link between the two signs that is not lost by merely amounting to no more than a shared description.

86. As pointed out in the contested decision, the relevant public will more easily refer to the verbal elements in a composite sign than by a description of graphic features (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Further, in the relevant trade at the heart of this dispute (essentially plumbing supplies) ordering of parts and components is commonly made by telephone, emphasising the importance of the shared verbal component. In this respect, the expression ‘Always at your side’ will be rather ignored – it occupies a secondary position in the contested mark and will be seen, as previously discussed, as no more than a promotional, non-distinctive, addition to the sign.

87. The earlier right is reproduced in its entirety in the later sign and the figurative elements in the contested mark, in terms of size and potency as distinguishing features, are insufficient to exclude confusion. As the contested decision states, the presence of the word ‘PROTHERM’ is crucial – the other matter in the contested sign is not enough to divert consumer’s attention away from the element in common.

88. Further, the goods and services in this matter are identical and similar and the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In this respect, consumers tend to remember similarities rather than dissimilarities between signs and, as has been pointed out, ‘PROTHERM’ is a conceptual, visual and verbal link between the signs at issue.

89. Thus confusion is likely on behalf of the relevant consumer – or at least a significant part thereof – as based in the Netherlands. This also captures the risk that consumers will assume that the goods at issue will extend from economically-linked undertakings (e.g. 31/01/2012, T‑205/10, La victoria de Mexico, EU:T:2012:36, § 23).

90. As to the putative rejection of an application for the mark ‘PROTHERM’ at the Benelux Office for goods similar to those contested in this matter, the Office cannot base its considerations on this one decision without more information and explanation as to why it was taken. It is noted that the application was rejected on the basis of ‘Descriptive / Generic / Lack of distinctiveness’ but this pro forma refusal cannot replace the analysis that the Board, and the contested decision, have undertaken in relation to the word ‘PROTHERM’. While it might be true that the latter may not be the most potent sign ever to grace a trade mark registry, there is no obvious reason to find it that it is without worth as a mark of trade, that is, non-distinctive. The Board also notes that the earlier right prayed in aid of this opposition has been registered since 10 April 1972 and remains on the Benelux register.

Conclusion

R 1629/2015-5

91. As set out above the cancellation applicant (R 1629/2015-5) appealed against the contested decision, requesting that the cancellation be extended to all the goods and services of the registered mark – that is, to those goods and services not cancelled at first instance. In this respect the cancellation enjoyed some slight success in extending the finding at first instance to some of the goods of the contested sign in Class 11.

R 1666/2015-5

92. Given that the EUTM proprietor filed an appeal against the contested decision, requesting that it be overturned, this appeal has failed and must be dismissed.

Costs

In accordance with Article 85(6) EUTMR and Rule 94(7)(d) CTMIR the Board of Appeal fixes the costs. Given that both parties have had a measure of success overall, the costs award at opposition remains unchanged. The Board does not consider that the small improvement to the cancellation applicant’s position achieved in R 1629/2015-5 should disturb this result, or be reflected in a cost award on appeal. However, the cancellation applicant is entitled to representation costs in respect of appeal R 1666/2015-5, which is set at EUR 550.

Order

On those grounds,

THE BOARD

hereby:

1. Appeal R 1629/2015-5 succeeds in part;

2. Accepts the application for a declaration of invalidity as it applies to the following goods:

Class 9 – Physical, electric and electronic measuring, control and regulating apparatus, all the aforesaid goods included in Class 9, in particular for electric, oil-fired or gas-fired heating, cooking, refrigerating, drying, ventilating and water supply apparatus, water heaters, in particular flow-through water heaters, storage water heaters, combined central heating or service water heaters, boilers, burners and heat accumulator apparatus;

Class 11 – Heating, steam generating, cooking, refrigerating, drying, ventilating and water supply; water heaters, solar installations (heating), heating boilers and burners; apparatus and installations for electricity generation, namely combined heat and power plants; parts for constructing combined heat and power installations, namely heat pumps, combined heat and power plants, fuel cell heating apparatus;

3. Notes that the contested sign, therefore, remains registered for:

Class 9 – Apparatus and installations for electricity generation, namely fuel cells; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; inverters; parts for constructing combined heat and power installations, namely fuel cells;

Class 11 – Apparatus for lighting;

Class 42 – Engineering, in particular development, planning, construction and monitoring of production and assembly; technical consultancy with regard to heat technology apparatus;

4. Dismisses appeal R 1666/2015-5;

5. Orders the parties to share the costs of the opposition and the appeal 1629/2015-5. Awards the cancellation applicant EUR 550 in respect of appeal 1666/2015-5.

Signed G. Humphreys

Signed A. Pohlmann

Signed V. Melgar

Registrar: Signed H.Dijkema