OPPOSITION No B 1 998 445
Gottlieb Binder GmbH & Co. KG, Bahnhofstr. 19, 71088 Holzgerlingen, Germany (opponent), represented by Bartels und Partner, Patentanwälte, Lange Str. 5, 70174 Stuttgart, Germany (professional representative)
a g a i n s t
Van Merksteijn Plastics B.V., Verzetslaan 20, 7548 EN Enschede, The Netherlands, (applicant), represented by Hortis Legal, Veraartlaan 8, 2288 GM Rijswijk ZH, The Netherlands (professional representative).
On 09/12/2016, the Opposition Division takes the following
Class 16: Adhesives for stationery or household purposes, plastic materials for packaging (not included in other classes).
Class 17: Foils and films in semi-processed plastic substances, with exception of silicone foils and silicone tapes.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods
European Union trade mark application No
During the course of the opposition proceedings, the scope of protection of the trade marks in conflict was limited.
On 01/09/2014, the applicant submitted a limitation of its list of goods in Class 17. On the other hand, the opposition proceeding where suspended because the opponent’s mark, which was registered for goods in Classes 17, 20 and 26, became subject of a cancellation application. As a consequence, the earlier mark on which the opposition is based was revoked for part of the goo--ds for which it was registered by Decision No 9821 C (revocation) of the Cancellation Division adopted on 18/09/2015.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must 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 3 466 232.
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 publication of the contested application.
The contested application was published on 19/01/2012. 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 19/01/2007 to 18/01/2012 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 17: Adhesive tapes, adhesive strips, adhesive bands, adhesive foils, adhesive films, all made of plastic; but not including profiles made of plastic or semi-finished products.
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
In accordance with Rule 22(2) EUTMIR, on 05/03/2014, the Office gave the opponent until 05/05/2014 to submit evidence of use of the earlier trade marks. Following a request from the opponent, the Office extended the deadline until the 05/07/2014. On 03/07/2014, within the time limit, the opponent submitted evidence of use.
The evidence submitted is the following:
Item 1: a set of 13 invoices dated between January 2009 until December 2011, issued to clients from Germany (9), Italy, Austria, Belgium and Switzerland (1 of each), all identified with reference numbers. The invoices concern a product identified as ‘Article No. 70140-00, 70140-G1 and 70140-40’ which is referred to as ‘Gecko/Nanoplast’ in the product description. They reflect the volume of sales and the sales prices (in EUR currency) of the opponent’s product.
Items 2 and 3: two printed photos (undated). One of a sample label which, according to the opponent, is directly placed on the product and the other of a content label of the packaging unit. The labels contain a mark displayed as ‘Gecko® - Nanoplast®’ and an article number (70140-G1), which coincides with the one contained in the invoices (indicated above).
Item 4: a copy of a certificate from the company DQS Madizinprodukte GmbH, whereby it is certified that the opponent has implemented and maintains a Quality Management System (QMS) in the scope ‘development, production and marketing for touch and close fastener-systems of medical devices’, amongst others, with the trade mark ‘GECKO’. The date of signature of the certificate is the 12/03/2012.
Item 5-7: the book “9. Materialica Design + Technology Award 2011” which contains a reference to the opponent’s product ‘Gecko Tape’ as a winner of the said award. It describes the opponent’s products as ‘a silicone microstructure with approx. 29,000 gripping elements per cm2 …the elastic Gecko tape exhibits high adhesion without leaving residues – not only on smooth but also on moist, slippery surfaces. Properties: high adhesion, residue-free removal, washable and reusable’. Items 6 and 7 consist of copies of documents also related to the award which includes the opponent’s product in the category identified as “02 product” and a copy of the winners manual 2011 providing support to the winners for advertising purposes.
Copy of pages from the opponent’s client’s catalogue, dated 2011, showing the earlier mark ‘Gecko® - Nanoplast®’ in relation to silicon tape.
Belatedly, on 01/08/2016, the opponent requested the Office to approve the cancellation decision No 9821 C, as further evidence in the present proceedings. However, this request cannot be accepted for several reasons. First, because each case must be examined on its own individual merits and the outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Secondly, because the evidence submitted by the opponent in the cancellation proceedings is not exactly the same as that submitted in the current case and it does not cover the same period, though it overlaps, as rightly stated by the opponent, namely from 19/01/2007 to 18/01/2012 inclusive in the present proceedings and from 17/09/2009 to 16/09/2014 inclusive in the cancellation proceedings. In addition, in its arguments, the opponent asks for the adoption of the cancellation decision but it does not clearly refer to or identify any specific material submitted in the cancellation proceedings.
Assessment of the evidence of use
According to the applicant, the proof of use documents submitted by the opponent are not sufficient to prove genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered. In particular:
Invoices: the evidence does not indicate that the goods have been displayed or marketed within the EU or that the opponent actually sent them. In addition, they seem to indicate one specific product with the name ‘Gecko/Nanoplast’ and therefore, should not be taken into account.
Labels: they are undated, not displayed or printed on any product and do not contain details of the opponent. They do not contain information to show that there is a connection between the mark and the goods.
QMS Certificate: the effective date of the certificate is 03/12/2012, i.e. out of the relevant period to show use.
The “Materialica Design + Technology Award 2011”: the magazine contains 61 pages and only one (page 13) refers to the so-called ‘GECKO-tape’ product. This magazine is not for potential customers. Despite the copyright stamp of 2011, it is undated because there is no publication date of the magazine. Therefore, it does not show that it was distributed within the relevant period.
Copy of the material award document 2011 and the winner manual: they are undated and contain no mention to the opponent or the product. It only mentions the mark as being ‘GECKO tape’.
The winner manual 2011: it is undated and does not contain any information relating to the opponent.
The evidence only shows genuine use of the trade mark in relation to silicone foil/silicone tape (Velcro).
Regarding the applicant’s statement indicating that there is no evidence that shows that the opponent sent the invoices submitted, it is to be noted that all the invoices are numbered and identify data such as the names, addresses of the opponent’s clients, references, delivery date, volumes of sales and price sales of the products which are properly identified with the earlier trade mark as well as the currency used in the transactions, namely EUR. Hence, in the absence of any proof, specific arguments and concrete evidence as regards this claim, the information contained in these invoices is considered valid and does not raise any doubts concerning the veracity of the data reflected therein. Therefore, the Opposition Division finds no objective reasons to call into question neither the proper execution of the transactions contained in the invoices nor their proper submission.
Furthermore, the applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
Place of use
The evidence must show that the earlier trade mark has been genuinely used in the European Union. The invoices submitted show that the places of use are, in particular, Germany, and to a certain extent, Austria, Belgium and Italy. This can be inferred from the clients’ identifying information (addresses) in these countries reflected in the invoices as well as the language used in some of the evidence (German).
Consequently, the evidence submitted has shown that use relates to several member states of the EU and suffices to establish that the trade mark was present in the market in the relevant territory.
Time of use
According to the applicant, the QMS certificate is not valid because its date of effectiveness is the 03/12/2012, which is outside of the relevant period.
The date of signature of the certificate is the 12/03/2012 which falls outside the relevant period. However, as indicated by the opponent, the implementation and maintenance of a Quality Management System consists of a long procedure which requires the preparation of a series of previous activities such as planning, monitoring, quality controls that must be successful for obtaining a Quality Management System Certificate, which is the aim and last step of the said procedure. In this sense, it is implicitly clear that all these activities took place before the certificate was signed and granted and hence, it shows activity from the opponent within the relevant timeframe.
Regarding the documents concerning the award to the opponent’s product and the pages from the catalogue which, according to the applicant, are undated, what is clear from the title of these documents is that the award was granted to the opponent for the year 2011. Therefore, the date in which this information was published is irrelevant because it is clear that the award, as such, was granted in 2011, which falls within the relevant period.
In addition, the use need not have been made throughout the period of five years, but rather within the five years. The provisions on the use requirement do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52).
Furthermore, evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).
Most of the evidence submitted is dated within the relevant period and, consequently, it suffices to establish that the sign was used within the relevant time.
Extent of use
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
The evidence submitted by the opponent relates to Germany, Austria, Belgium and Italy. The invoices relate to the relevant period and are samples which prove the frequency of use of the mark throughout that period.
The invoices reflect an acceptable volume of sales of the opponent’s product as well as the sales prices. Furthermore, the fact that the invoices are non-consecutive and cover an extensive period, from January 2009 until December 2011, must also be taken into consideration since they show regular commercial activity.
Likewise, it can be deducted that the invoices submitted are several examples of sales but do not represent the total sales of goods carried out by the opponent during the relevant period, under the earlier mark and gives the Opposition Division sufficient information regarding the commercial activities of the opponent throughout the relevant period.
The invoices filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.
Therefore the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.
Nature of use
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes 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), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
According to the applicant, the mark is not used as it is registered because it appears used as ‘Gecko-Nanoplast’ in the evidence.
It is true that in most of the evidence submitted the earlier mark appears used side by side with the term ‘Nanoplast’ and hence, it is appropriate to consider whether the use of the earlier mark with the other term alters its distinctive character.
In principle, the simultaneous use of several marks or signs does not preclude accepting the evidence as establishing use in respect of one of these signs. Indeed, it is a common market practice for undertakings to market a line of products by displaying a common mark (‘a house mark’) along with marks which indicate particular products within the broader range. In fact this appears to be the case here in that the opponent has sold its adhesive tape under the mark ‘Gecko’ which is accompanied by the mark ‘Nanoplast’ for a specific type of product. This conclusion can be derived from the different article numbers with which the goods are identified in the invoices, as indicated above. In addition, when the earlier mark is used alongside the term ‘Nanoplast’, the relevant public is nonetheless informed that it is a matter of use of two trade marks because both terms are followed by the registered trade mark symbol ®, as can be seen from the labels and the product catalogue.
Consequently, when confronted with the earlier mark used side by side with the term ‘Nanoplast’, the public will perceive the earlier mark ‘Gecko’ as an independent trade mark.
Therefore, the earlier mark’s distinctive character has not been unacceptably altered by the use in combination with the term ‘Nanoplast’.
Furthermore, the labels submitted by the opponent clearly identify ‘Gecko’ and ‘Nanoplast’ as two different trade marks and, contrary to the applicant’s statement, the information reflected in these labels identifies the product subject of the invoices because they contain the article number (70140), as clarified by the opponent, which is identical to the article number reflected in the invoices emanating from the opponent.
Consequently, the evidence shows that the mark is used as registered.
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, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence submitted by the opponent in its entirety, although it is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, as indicated by the applicant, the evidence does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
According to case-law, when applying the abovementioned provision the following should be considered:
…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.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub categories.
(14/07/2005, T 126/03, Aladin, EU:T:2005:288).
In the present case, the evidence proves use for silicon tapes, belonging to the following categories in the specification: adhesive tapes, adhesive strips, adhesive bands, all made of plastic; but not including profiles made of plastic or semi-finished products. Although these categories encompass a broader scope of goods than that for which use has been demonstrated, the goods in these categories are not in essence different and dividing them further can only be done in an arbitrary manner.
As the opponent is not required to prove all the conceivable variations of the category of adhesive tapes, adhesive strips, adhesive bands for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad categories in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for adhesive tapes, adhesive strips, adhesive bands, all made of plastic; but not including profiles made of plastic or semi-finished products.
Therefore, in line with the principles developed in the ‘Aladin’ judgment cited above, genuine use of the earlier mark is accepted in relation to the goods indicated above.
For the rest of the goods protected by the earlier right there is no evidence of use within the relevant period indicated above.
Therefore, the Opposition Division will only consider the above mentioned goods in its further examination of the opposition.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The goods on which the opposition is based are the following:
Class 17: Adhesive tapes, adhesive strips, adhesive bands, all made of plastic; but not including profiles made of plastic or semi-finished products.
The contested goods are the following:
Class 16: Films and foils of plastic, with or without adhesive, provided with a removable coating for decoration, bookbinding material, namely plastic foils or imitations of leather for binding books, writing or drawing books, albums and files, adhesives for stationery or household purposes, plastic materials for packaging (not included in other classes).
Class 17: Foils and films in semi-processed plastic substances, with exception of silicone foils and silicone tapes.
Class 27: Wallpaper, wall hangings (non-textile), wall coverings of plastic, floor coverings of plastic.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category is exclusive and restricts the scope of protection only to the specifically listed goods.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 16
The contested adhesives for stationery or household purposes (not included in other classes) are generally those used in connection with paper products or for fixing things of plastic, wood or other materials in the home or office and hence they coincide with the opponent’s adhesive tapes, adhesive strips and adhesive bands, all made of plastic; but not including profiles made of plastic or semi-finished products in Class 17 to the extent that the goods protected by the earlier right may also be used simply as an adhesive. Therefore, they are goods that share the same purpose, target the same public, may proceed from the same producers and share the same distribution channels. Therefore, they are similar.
The contested plastic materials for packaging (not included in other classes) are for safeguarding merchandise during transportation, are used to wrap or pack other goods and are all goods intended to assist in the packaging of other goods and coincide with the opponent’s adhesive tapes, all made of plastic; but not including profiles made of plastic in Class 17 to the extent that the latter may be used with the former for packaging and protecting goods whilst in transit or in storage. Therefore, they share the same purpose, are complementary to each other and may be provided by the same undertakings and target the same public. Consequently, they are similar.
However, the contested films and foils of plastic, with or without adhesive, provided with a removable coating for decoration, book binding material, namely plastic foils or imitations of leather for binding books, writing or drawing books, albums and files (not included in other classes), do not coincide with the opponent’s adhesive tapes, adhesive strips and adhesive bands, all made of plastic; but not including profiles made of plastic or semi-finished products in Class 17. Indeed, the contested goods cover finished materials used for assembling a book from a number of sheets of paper or other material used in the process of physically assembling a book from a number of sheets of paper as well as stationery articles used for sticking either objects or materials together and even if the opponents goods may be used simply as an adhesive, this is not sufficient to establish a degree of similarity between the goods. Therefore, they differ in their natures, usual origins, trade channels, methods of use and are neither complementary nor in competition with each other and although the relevant public may coincide in some cases, this would not be sufficient to find any degree of similarity on its own. Thus they are dissimilar.
Contested goods in Class 17
The contested foils and films in semi-processed plastic substances, with exception of silicone foils and silicone tapes have connection points with the earlier adhesive tapes, all made of plastic; but not including profiles made of plastic or semi-finished products to the extent that they are all plastics for use in the manufacture and industrial sectors. Therefore they share the same purpose, may come from the same producers and target the same public and hence, they are similar.
Contested goods in Class 27
The contested wallpaper, wall hangings (non-textile), wall coverings of plastic, floor coverings of plastic consist of wall and floor coverings and therefore are intended to be added as furnishings to previously constructed floors and walls. The opponent’s adhesive tapes, adhesive strips and adhesive bands, all made of plastic; but not including profiles made of plastic or semi-finished goods are adhesives used, among others, for fastening and binding. Therefore, they differ in their natures, usual origins, trade channels, methods of use and are neither complementary nor in competition with each other and although the relevant public may coincide in some cases, this would not be sufficient to find any degree of similarity on its own. Thus they are dissimilar.
Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
According to the applicant, the goods at issue are addressed only at professionals. However, adhesive tapes in Class 17 may be used for industry purposes but may also simply be used as an adhesive, as explained above.
Therefore, the goods found to be similar are directed at both the public at large and at professionals. Some of the goods concerned are likely, by their degree of sophistication and their cost, to be the subject of a more careful purchasing decision (such as the foils and films in semi-processed plastic substances, with exception of silicone foils and certain types of adhesive tapes, strips and bands of the opponent such as those which are also semi-processed). However, this is not the case for all the goods. Therefore, it is considered that the degree of attention displayed by the relevant public ranges from average to high, depending on the goods concerned.
Earlier trade mark
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.
The earlier mark is the word mark ‘Gecko’ which does not have any meaning in French.
The contested sign is a figurative mark composed of the capital letters ‘GEKK FIX’, in blue and the picture of a creeping red gecko which tail is rolled in a circle depicting a letter ‘O’, between the letters ‘K’ and ‘F’ resulting this combination in the transcription of the word ‘GEKKOFIX’.
The applicant indicates that it is likely that the public will be prompted to perceive the contested sign by reading ‘GEKK FIX’ wherein the letters ‘GEKK’ are also separated from “FIX”.
Accordingly, it seems that there are different scenarios in the way in which the contested mark may be perceived by the relevant public as a part may read the word ‘GEKKOFIX’ and another part will read ‘GEKK’ and ’FIX’. Taking this into consideration, the Opposition Division will concentrate the comparison of the signs in conflict under the scenario according to which the relevant public will identify the word “GEKKOFIX” in the contested mark, as this is the scenario which is most likely to happen.
The applicant has submitted several documents with the purpose of showing that the term ‘Gecko tape’ is a commonly used term or generic name for sticky tapes and frequently used in chemistry.
However, the Opposition Division does not find this information conclusive to demonstrate that the term ‘Gecko tape’ is a commonly used term or generic name for sticky tapes. Indeed, the documents refer to ‘Gecko Tape’ in titles and the content of the articles refer to a comparison of tape (as such) with gecko’s or lizard’s sticky feet. The article contained in Annex F, for e.g. describes the making Gecko Tape as ‘a hands-on activity in which audiences use a material similar to one that scientists are researching to mimic the ability to gecko toes to adhere to vertical surfaces, others deal with how to emulate the toes of a gecko’, but the expression ‘Gecko Tape’ appears with capital letters and the fact that is it not used together with the ® symbol does not mean that it is not a trade mark.
Furthermore, even if ‘Gecko Tape’ is a frequently used term in the chemistry field, the average consumer, who is not familiar with the terms are used in that field, will not recognize any meaning in the term ‘Gecko’. Therefore, this term is a fantasy word and therefore distinctive.
Regarding the contested sign, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04 ‘Respicur’ EU:T:2007:46, § 57).
In the present case, it is likely that the relevant public will dissect the word element of the contested mark into two elements, namely ‘GEKKO’ and ‘FIX’.
The element ‘GEKKO’ does not have any meaning for the relevant public and therefore is distinctive.
The word ‘FIX’ is very close to the French verb ‘fixer’ and hence it is highly likely that the relevant public will either understand it or associate it with the meaning ‘fix, fasten, attach’ (information extracted from Wordreference.com dictionary on-line on 22/11/2016 at http://www.wordreference.com/fren/fixer). Therefore this element is weak in relation to the goods at issue, bearing in mind that they are adhesives of different types which purpose is fixing or attaching and hence the part of the public that will understand its meaning will not pay as much attention to it.
According to the applicant, the red reptile depicted on the contested mark is quite dominant. However, for the Opposition Division the size of the said figurative element is not sufficient for it to be considered more dominant (visually eye-catching) than the other elements of the mark.
Bearing in mind all the above, it must be concluded that, though the red reptile is a distinctive element within the contested sign, the initial element ‘GEKKO’ is its most distinctive element because it has no meaning and is positioned in the first part of the word element contained in the contested mark. Therefore, the public will attribute more trade mark significance to this initial element.
Since the relevant public is composed of both the public at large and the professional public and bearing in mind the principle of economy of proceedings, the comparison of the signs at issue will focus on the public at large given that this public is more prone to confusion.
Visually, the signs coincide in the letters ‘GE*KO’. However, they differ in their third respective letters ‘C’ in the earlier mark and ‘K’ in the contested sign, in the weak element of the contested sign ‘FIX’ and in the picture of a red gecko, already described above, which have no counterparts in the earlier mark.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are similar to an average degree.
Aurally, the word element of the contested sign will be pronounced in two parts, corresponding to the two words of which it is composed, namely ‘GEKKO’ which plays an independent and distinctive role and ‘FIX’. Therefore the pronunciation of the signs identically coincides in the syllables ‘GE/CKO’ because the letters ‘CK’ of the earlier mark have the same sound as the letters ‘KK’ of the contested sign. Their pronunciation differs in the sound of the weak element ‘FIX’ of the contested mark, which role is diminished and has no counterpart in the earlier sign.
Therefore, the signs are highly similar.
Conceptually, although the signs as a whole do not have any meaning, the public in the relevant territory will perceive the weak element ‘FIX’, in the contested sign, according to the abovementioned meaning due to its equivalent verb in French ‘fixer’ and the figurative element consisting of a lizard, which is distinctive.
To this extent, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings.
The conflicting goods are similar and dissimilar. The consumer’s level of attention will vary from average to high.
Visually the signs have been found to be similar to an average degree, aurally highly similar and conceptually not similar.
Account has to be taken of the fact that almost all the letters of the only word element of the earlier mark ‘GE*KO’ are fully included within the initial and distinctive part of the contested sign, ‘GE KO’, that their differing letters ‘C’ and ‘K’ respectively are placed in the third position of these words, which makes the difference in the letters less evident and that phonetically the earlier mark is fully included in the initial element of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Though the contested mark contains an additional word element and a figurative element, the initial element ‘GEKKO’ plays a leading role and will catch the attention of the public primarily because it is placed in the initial position and also because it is the distinctive verbal element in it whereas the element ‘FIX’ is written at the end of the mark and is weak due to its meaning, as already explained. The figurative element included in the contested trade mark is also distinctive; however, being figurative, it will not be the first element to catch the public’s attention.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high level of attention need to rely on their imperfect recollection of trade marks ((21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).
Due to the fact that the differing letters of the earlier mark and the distinctive element of the contested sign are in their third position and will be less evident for consumers, their high aural similarity and the weak distinctive character of the element ‘FIX’ placed at the end of the contested mark, a likelihood of confusion exists.
The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the applicant are not relevant for the present proceedings mainly because neither of the trade marks in conflict quoted in these cases consist of a verbal sign which can be broken down into elements which suggest a concrete meaning or resemble words known to the consumer.
The applicant also refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).
Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.
In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings because the words accompanying the element ‘Gecko’, namely ‘Blue’ and ‘Snow’ do not seem to be weak.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 3 466 232. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.