CANCELLATION No 9 660 C (INVALIDITY)
William Joseph Norris Gonzalez, C. La Fuente, 4, 03610 Petrel (Alicante), Spain (applicant), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)
a g a i n s t
Metalube Limited, 4 Huntsman Drive, Irlam, Manchester M44 5EG, United Kingdom (EUTM proprietor), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, Leeds LS2 8PA, United Kingdom (professional representative).
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 11 319 407 is declared invalid in its entirety.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 11 319 407 for the figurative trade mark . The application is based on International trade mark registration No 636 473 designating Germany, France, Italy and Portugal, on Spanish trade mark registration No 1 669 603(4) and on UK trade mark registration No 2 017 243, all for the figurative trade mark . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant requests that the contested trade mark be declared invalid in its entirety as there is a likelihood of confusion with the earlier marks arising from the high similarity between the signs and from the identity or similarity between the goods and services. He submits evidence of genuine use of the earlier marks, which will be listed and analysed below, in reply to the Office’s notification to that effect based on the EUTM proprietor’s request received on 19/01/2015.
The EUTM proprietor criticises the evidence of use submitted and, in particular, puts forward that the evidence does not prove ‘a commercial exploitation of the earlier marks that is real’, namely for the purposes of maintaining or creating a share in the European Union market for the goods protected by the earlier marks. It points out to the deficiencies of the documents such as the fact that some are not dated or dated outside the relevant period, that only one of the distributors mentioned by the application is based in the European Union and that the invoices are not issued by the applicant but by another company. It also indicates that the signs which are used in those documents differ from the earlier marks as registered and do not constitute an acceptable variation of them.
Furthermore, the EUTM proprietor claims that there is no likelihood of confusion despite the fact that the goods in Class 4 are identical, and the services in Classes 40 and 42 similar, to the goods for which the earlier marks are registered. It alleges that the low degree of visual similarity and the average degree of phonetic and conceptual similarity which can be established between the signs are triggered by commonalities in the descriptive verbal elements of the earlier marks. It considers that the distinctive character of the earlier marks lies in their stylisation rather than in their verbal elements. In support of its contentions, it submits definitions of the words ‘metal’ and ‘lube’ as available at https://en.oxforddictionaries.com. Moreover, it argues that the professionals for whom the goods and services at issue are intended will pay a higher than average degree of attention on purchasing these goods and services
PROOF OF USE
According to Article 64(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.
The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.
The application is based on several earlier trade marks which are all subject to proof of use requirement. For reasons of economy of proceedings, the Cancellation Division will first examine the application on the basis of the applicant’s Spanish trade mark registration.
The EUTM proprietor requested the applicant to submit proof of use of Spanish trade mark registration No 1 669 603(4) for the figurative sign .
The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.
The application for a declaration of invalidity was filed on 05/08/2014 and the contested trade mark was published on 03/01/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the Spain from 05/08/2009 to 04/08/2014 inclusive. Since the earlier mark was registered more than five years prior to the date of publication of the contested mark, use of the earlier mark had to be shown also for the period from 03/01/2008 to 02/01/2013 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:
Class 4: Lubricating oils
According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, 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.
On 04/02/2015, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 09/05/2015 to submit evidence of use of the earlier trade mark. This time limit was extended until 09/06/2015 at the applicant’s request.
On 09/06/2015, within the time limit, the applicant submitted evidence as proof of use.
The applicant explains in its observations that, in 1985, a group of researchers in the field of tribology (the science of interacting surfaces in motion) created an antifriction formula, intended for the automobile and the industrial markets, capable of reducing friction dramatically and that this was the birth of a new generation of high tech antifriction lubricants. He explains that the ‘METAL LUBE’ product ‘made in USA by METAL LUBE INTERNATIONAL’, a division of FUTURE PRODUCTS, CORP., has warehouse distributors, inter alia METAL LUBE EUROPE, and that since its creation METAL LUBE has continued to bring innovative products onto the market.
The evidence is, inter alia, the following:
Document No 1: Extract from an undated catalogue in English entitled ‘METAL LUBE ANTI-FRICTION LUBRICANTS – Automotive and Industrial Applications’. The cover page features the sign . The document contains a list of ‘warehouse distributors’ namely METAL LUBE USA, INC., METAL LUBE EUROPE with an address in Alicante (Spain) and METAL LUBE COLOMBIA with an address in Bogota, Colombia, above which the following is indicated ‘Made in USA by METAL LUBE INTERNATIONAL A DIVISION OF FUTURE PRODUCTS, CORP. (with an address in the USA).
Document No 2: Catalogue, undated, in Spanish, partially translated into English entitled ‘METAL LUBE LA LUBRICACION MÁS AVANZADA DEL MUNDO A SU ALCANCE’ (Metal Lube, the most advanced lubrication in the world within your scope). The trade mark is visible on the first page. The text indicates that the METAL LUBE anti-friction formula drastically reduces frictions between metallic parts of motors and machinery (bearings, gears), a problem which leads to the wear of the parts in question and, as a consequence, to high energy consumption, expensive repairs and loss of time. The catalogue includes photographs of several products on which the trade mark ‘METAL LUBE’ is visible. These products are called ‘Fórmula Motores’ (engine formula), ‘Fórmula Alta Potencia’ (high-performance engine formula), ‘fórmula transmisiones manuales, diferenciales, y engranajes’ (Manual transmission formula), ‘Fórmula Transmisiones automáticas’ (Automatic transmission formula), ‘Fórmula Dirección Asistida y Aire Aconditionado’ (Power steering and air conditioning formula), ‘Tratamiento Sistema Combustible Gasolina’ (Gasoline fuel treament), ‘Tratamiento Sistema combustible Diésel’ (Diesel fuel treatment), ‘fórmula Motos 4 tiempos’ (4-stroke motorcycle formula), ‘Fórmula Engranaje y Cardán’ (gear and cardan formula) ‘fórmula Sistemas Hidraulicos’ (Hydraulic system formula)(for use in vacuum systems, vacuum pumps, injection machinery, any system of equipment incorporating hydraulic oil), Fórmula Bicycle’, ‘Fórmula penetrante’, ‘Fórmula Super Lubricante’. The goods are intended for lubrication of metallic parts of motors of cars and motorbikes, but also of industrial machinery, of bicycles or even of train/airplane/ship models in the case of the product called ‘Lubricante Técnico’.
Document No 3: Document in English about which the applicant explains that it is intended for its customers as additional information about the products, undated. The document explains that METAL LUBE drastically reduces frictions between parts, up to 95%, which results in lower fuel and oil consumption and that it can be used in all types of engines.
Document No 5: 98 invoices dated between 2003 and 2015, which, in the applicant’s own words are dated not only ‘within the relevant period but before and after this period in order to prove the continuous use in the market of the “METAL LUBE” products’.
The logo is placed in the upper left corner of each invoice. The invoices also indicate the company name ‘METAL LUBE España, S.L.’ (which becomes ‘METALUBE ESPAÑA S.L.’ as of the invoices dated January 2012, with the same address in Alicante, Spain.)
There are 44 invoices issued to customers in Spain and dated in the overlap of the two relevant periods namely between 05/08/2009 and 02/01/2013, to which must be added several invoices dated in either one or the other relevant period, also to customers in Spain. The addresses of the customers are in several towns/provinces of Spain such as Vizcaya, Navarra, Jaén, Granada, Valencia, Murcia, Madrid, Barcelona, etc.
The goods are described as: ‘Formula Motores’, ‘Form. Motos 4 tiempos’, ‘Fórmula Sistema diesel’, ‘Fórmula sistema gasolina’, ‘Form. Engranajes’, ‘Form. Super Lubricante’, etc.
The amounts of the invoices range from approx. EUR 1 200 to approx. EUR 5 800.
As supplementary evidence, the applicant files photographs of the products mentioned in the invoices, such as ‘fórmula motores (engine formula), ‘’fórmula engranajes’ (gear and cardan formula), ‘form. Motos 4T’ (4-stroke motorcycles formula), ‘fórmula sistemas gasolina’ (gasoline treatment formula), etc. on which the trade marks or can be seen.
Document No 9: Extract from the webpage http://store.metallube.es printed on 03/06/2015 showing T-shirts, accessories, tents and cyclist equipment on which the trade mark ‘METAL LUBE’ is visible such as