OPPOSITION No B 2 111 469

Klein Iberica S.A., Pol.Ind. Can Cuyás, Ctra. N-150 a Sabadell, KM.1 Edificio Klein, 08110 Montcada i Reixac (Barcelona), Spain (opponent), represented by Clarke, Modet & Co., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

N.K. Fencing Limited, 40 Trailcock Road, Carrickfergus BT38 7NU, Northern Ireland, United Kingdom (applicant), represented by Ansons, 4th Floor, Imperial House, 4-10 Donegall Square East, Belfast BT1 5HD, Northern Ireland, United Kingdom (professional representative).

On 26/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 111 469 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services in Classes 6, 37 and 40 of Community trade mark application No 11 093 218 for the figurative sign .

The opposition is based on Spanish trade mark registration No 2 835 532 for the figurative sign for goods in Classes 6 and 20. The opponent invoked Article 8(1)(b) CTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) CTMR, 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 Spanish trade mark No 2 835 532.

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 20/09/2012. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 20/09/2007 to 19/09/2012 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 6: Rolled and cast construction materials; rails, chains, locksmith, pipes and sections, nails and screws; ironworks; devices for operation, support and suspension of doors, windows, blinds, drawers, curtains, stark and articulated panes and other cargo; blinds and grills panes, doors and windows, all made of metal or predominantly metal.

Class 20: Furniture, frames, wood panels furniture; wooden crates; non-metallic components for curtains, particularly rings, hooks, rods, rods pitchers, smock tape, rails, junction rails; terminals, supports, tensors, grapples and galleries, curtain casters, no metal shelves, all kind of shelves.

According to Rule 22(3) CTMIR, 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.

On 08/01/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 13/03/2015 to submit evidence of use of the earlier trade mark. On 12/03/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Exhibit 1: three commercial brochures, all undated (the opponent has circled and underlined what it considers are the dates in the brochures; however, as these circled or underlined indications are seven or nine numbers long, the Opposition Division cannot be certain of the dates to which they refer). The first brochure (eight pages), in English, French, Italian and Spanish, relates to a product listed as NK60-NK85 and includes text describing this product, the technical designs for the product, and pictures of and the reference code for this product. The sign appears on each page of the first brochure. The second brochure (eight pages), in English, French, Italian and Spanish, relates to a product listed as NK45-NK80 and includes text describing this product, technical designs for the product, and pictures of and the reference code for this product. The sign appears on each page of the second brochure. Finally, the third brochure (19 pages), in English, Catalan, Portuguese and Spanish, relates to various products referred to as NK45, NK50, NK80, NK60‑85, NK45/80 SUPERIOR, NK50 SUPERIOR, NK60/85 SUPERIOR, NK50 LATERAL, NK60/85 LATERAL, CLOS NK60 LATERAL, NK50 RETRAC, NK60/85 RETRAC, CLOS NK 60 RETRAC, NK50 HPL and NK 60/85 HPL, and includes text describing the range of products, technical designs for the products, and pictures of and reference codes for these products. The signs , and appear on the cover page of the third brochure. On all of the following pages, the sign is always found with reference codes for NK** products (** being numbers), while the sign is present on the left-hand side of the footer on each page with an even number, and the sign is present on the right-hand side of the footer on each page with an odd number.

• Exhibit 2: four pictures of sliding door systems and their fittings, none of them dated. One of the pages includes pictures of 14 different products, of which 13 have an NK** name, and on the right-hand side of the footer of this page is the sign . The three other pages contain large pictures showing examples of sliding door installations inside buildings. On those pictures, in the bottom left corner is the sign , at a small size, while on the left-hand side of the footer is the sign and on the right-hand side of the footer is the sign , both at a larger size.

• Exhibit 3: 21 invoices issued by the opponent, all dated between 08/01/2007 and 10/12/2012, so within the relevant period. The invoices are in French, Portuguese and Spanish and are not accompanied by a translation into the language of proceedings. The sign appears on every invoice in the top left corner and the sign appears on every invoice in the top right corner, while the letters ‘NK’ appear only in the names of the products.

• Exhibit 4: a one-page extract from the opponent’s website www.klein-europe.com, in English and bearing the date when it was printed out, 11/03/2015 (there is also a copyright notice for 2014). The extract includes pictures showing examples of sliding door installations inside buildings as well as a list of products. The sign appears in the top left corner of the page and the sign appears in the top right corner of the page, both in large characters, while the letters ‘NK’ appear only in product names or reference codes or with the expression ‘Sliding Doors’, and in smaller characters.

On 06/10/2015, the opponent also submitted, in its observations in response to the applicant’s observations, the following:

• Exhibit 5: price lists with general sales conditions in English from 2008, 2011, 2012 and 2015. The signs , and appear on these documents.

• Exhibit 6: three additional invoices issued by the opponent, all dated between 20/05/2011 and 11/12/2014, so within the relevant period. The invoices are in English and French and are not accompanied by translations.

The applicant makes several arguments, one of which is that the opponent failed to show use of the trade mark as registered, as none of the items of evidence includes the mark as registered and the evidence includes signs that alter the distinctive character of the mark as registered.

In the context of Rule 22(3) CTMIR, 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) CTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) CTMR, the following shall also constitute use within the meaning of paragraph 1: use of the Community 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. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) CTMR, 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.

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

In the present case, the dominant elements of the earlier figurative trade mark are the letters ‘NK’, which are the most eye-catching elements, whereas ‘KLEIN’ is written in smaller characters, vertically on the right-hand side of the sign. Since ‘NK’ has no meaning in relation to any of the goods for which the trade mark is registered, it must be considered a distinctive element of the earlier trade mark. This point is not contested by the opponent, which argues that ‘the main and distinctive elements in the opposing trade mark are the letters “NK” ’.

However, in the evidence submitted by the opponent, the signs that are repeatedly used are , and . The Opposition Division notes that in those signs, even bearing in mind that there is a large ‘K’ in two of them, the distinctive element ‘NK’ is absent. This circumstance alters the distinctive character of the mark.

The opponent argues that the evidence submitted proves genuine use of the earlier figurative trade mark . However, the sign as registered does not appear once in the evidence submitted by the opponent. Furthermore, in the evidence submitted, even though ‘NK’ appears, it is not used as a trade mark as such. Indeed, it appears only in the invoices in the boxes reserved for the product name, reference code and description, and will therefore be understood as a product name or reference code, and not as a trade mark. The letters ‘NK’ almost always appear with other verbal elements, such as ‘45’, ‘50’, ‘60’, ‘RETRAC’ or ‘CLOS’, which either alter the distinctive character of the sign or reinforce the idea that the verbal element thus formed is the reference code for a product. The same is true of the web printout on which the letters ‘NK’ appear only as part of the names of products in a column headed ‘Family Models’, and of the price lists in which ‘NK’ is always used as part of a product reference code or name. Moreover, in the commercial brochures submitted it is even stated that ‘NK has been designed to separate rooms’, which makes it clear that ‘NK’ refers to a product and not a trade mark. It is true that the letters ‘NK’ alone appear as a sign in the bottom left corner of three pictures (Exhibit 2). However, above those pictures are the signs and in larger characters; these are the most eye-catching signs on these pages and will be identified as the relevant trade marks by the public. Furthermore, these pictures are undated.

In view of the above, the Opposition Division considers that the evidence does not show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) CTMR.

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).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in its registered form in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) CTMR and Rule 22(2) CTMIR.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ric WASLEY

Gailė SAKALAITĖ

Andrea VALISA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.