OPPOSITION No B 2 273 053

Emhart Glass S.A., Hinterbergstr. 22, 6312 Steinhausen, Sweden (opponent), represented by Unit4 IP Rechtsanwalte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Envipco Holding N.V., Leliegracht 10, 1015 DE Amsterdam, The Netherlands (applicant), represented by Advopat – Patent- und Rechtsanwalte, Theaterstr. 6, 30159 Hannover, Germany (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 273 053 is upheld for all the contested goods, namely:

Class 7: Machines, in particular machines for counting, sorting, separating and transporting containers; automatic machines for recycling empties.

2. European Union trade mark application No 12 031 902 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 031 902, namely against all the goods in Class 7. The opposition is based on international trade mark registration No 930 549 designating the European Union. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, 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.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of international trade mark registration No 930 549 designating the European Union, on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 16/09/2013. 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 16/09/2008 to 15/09/2013, inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 7: Machines and parts thereof for manufacturing glass containers.

According to Rule 22(3) EUTMIR, the evidence of use must 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 25/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/06/2016 to submit evidence of use of the earlier trade mark. This deadline was extended by two months and expired on 30/08/2016. On 29/08/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Attachment 1: an excerpt from a group presentation by Bucher Group dated September 2011, which contains information regarding its net sales, number of employees and market position in 2010.

Attachments 2 and 3: excerpts from the opponent’s website regarding information about the company. Attachment 2 mentions the opponent’s ‘FlexIS’ product, which is a machine that makes glass containers. It is dated 26/04/2012, while Attachment 3 is undated.

Attachment 4: an article published in the magazine Glass Machinery Plants and Accessories in April 2012. The article describes in detail the 100-year history of the opponent, emphasising that the opponent is the forerunner and creator of the IS ‘individual section’ machine for automatically manufacturing glass containers. In the article, it is reported that the company built a Europe-wide sales and manufacturing operation from the 1950s on, with plants and branches in Switzerland, Germany, Italy and the United Kingdom. The article mentions the opponent’s ‘FlexIS’ product.

Attachments 5, 6 and 7: excerpts from the 2011, 2012 and 2013 annual reports of the Bucher Group, commenting on the opponent’s presence in the EU. In particular, the important contribution of Europe to total turnover can be found in the annual report for 2013, which shows that Europe accounted for 38% of net sales worldwide. Attachments 5 and 6 mention and ‘Flex-M’ products.

Attachment 8: a screenshot from the website www.glass-alliance.com that advertises the services of the company and mentions the product. It is undated.

Attachment 9: an article published on www.glassonline.com, dated 01/03/2010, which contains information about the machine.

Attachments 10 and 11: extracts from presentations by Mr Gunter Lubitz of the company Vetropack, one made at the Beer Strategy Conference 2012 in Copenhagen, Denmark, and one made at the world packaging base 2012 in Croatia. These documents mention the product.

Attachments 12 and 13: screenshots of the opponent’s website containing product information and photos of the opponent’s products ‘FlexPusher’, ‘FlexInspect T’, ‘FlexInspect M’, ‘FlexInspect BCM’, and . These screenshots are undated.

Attachment 14: the opponent’s customer journal dated September 2012, which contains information on the products on display at the Glass Tec held in Dusseldorf, Germany, in 2012. The opponent showed its ‘FlexPusher’ and ‘FlexPusher SP’, its ‘FlexRadar’ product, its ‘FlexInspect T’ and the ‘closed-loop control four plunger up “FlexiS” – “FlexPressure” system FPS – plunger process control PPC’.

Attachment 15: an undated excerpt that contains specific information, in German, regarding the products ‘FlexPusher’, ‘FlexIS’ and .

Attachment 16: the opponent’s technical news bulletin dated November 2011 with information on the ‘FlexPusher’.

Attachments 17, 18, 20, 21, 22 and 24: six purchase orders issued by Emhart Glass S.A., dated from 28/05/2010 to 10/11/2015, to clients located in Germany, Austria and Bulgaria. They mention the ‘FlexIS’, ‘FlexInspect BC’, , and ‘Flex Pusher’ products.

Attachments 19 and 23: two quotations, one issued to a Danish company and one to a German company, regarding the conversion from a stand-alone FPS plunger up to ‘FlexIS’ and secondly ‘FlexPusher’ conversion for exiting UBC conveyer dated 03/01/2011 and , dated 11/10/2011. According to the description, ‘FleXinspect BC’ is a ‘belt handler that provides the inspection of finish, base and sidewall of glass containers’.

Attachment 25: an overview of sales of ‘FlexIS’ and products in the European Union between 2008 and 2013. It shows high turnovers throughout this six-year period.

Assessment of evidence

The requirements for proof of use, namely the place, time, extent and nature of use, are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). Therefore, the opponent is obliged to prove each of these requirements.

Place of use

The evidence must show that the earlier international trade mark has been genuinely used in the European Union.

The documents submitted show that the place of use is the European Union. This can be inferred from the language of the majority of the purchase orders (German), the currency mentioned (euros), some addresses in Germany, Austria and Bulgaria, and the information in some of the documents submitted, such as an overview of the sales in the EU; two quotations issued to Danish and German companies; extracts from presentations by Mr Gunter Lubitz of the company Vetropack, one made at the Beer Strategy Conference 2012 in Copenhagen, Denmark, and one made at the world packaging base 2012 in Croatia; and excerpts from the 2011, 2012 and 2013 annual reports of the Bucher Group, commenting on the opponent’s presence in the EU, and in particular the importance of the turnover attained in Europe, which amounts to 38% of the company’s net sales worldwide. Therefore, the evidence relates to the relevant territory.

Time of use

The evidence must show genuine use of the international trade mark designating the European Union within the relevant period, namely from 16/09/2008 to 15/09/2013, inclusive.

All of the dated evidence is dated within the relevant period.

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 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 to prove genuine use of the earlier international mark designating the EU in relation to machines and parts thereof for manufacturing glass containers in Class 7 relates to purchase orders to different clients located in different European countries, such as Germany, Austria and Bulgaria. Bearing this in mind, the Opposition Division observes that the evidence submitted sufficiently demonstrates that there has been public and outward use of the mark. The territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not. The materials submitted, in particular the purchase orders concerning sales to end clients, relate to the full duration of the relevant period and prove the frequency of use of the mark throughout the relevant period.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of 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.

In the present case, the earlier mark is registered as the word mark ‘Flex’. The attachments submitted by the opponent show use of the earlier mark with additional verbal elements, such as ‘IS’, ‘Inspect’ and ‘Pusher’. It can be safely assumed that the relevant public, which is a professional public, has basic knowledge of English and will understand these elements merely as descriptions of certain characteristics of the product or as referring to certain models.

It follows that the sign ‘Flex’ used along with the other verbal or figurative elements and , mentioned above, functions as a trade mark identifying the commercial origin of the goods provided by the opponent and that these other verbal or figurative elements do not alter the distinctive character of the mark as registered.

The evidence clearly shows that the opponent is active in the glass container manufacturing industry, and shows use of the mark for the goods for which it is registered, machines and parts thereof for manufacturing glass containers.

In view of the above, the Opposition Division considers that the evidence shows use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Conclusion

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 in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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.

1. The goods

The goods on which the opposition is based are the following:

Class 7: Machines and parts thereof for manufacturing glass containers.

The contested goods are the following:

Class 7: Machines, in particular machines for counting, sorting, separating and transporting containers; automatic machines for recycling.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

The contested machines, in particular machines for counting, sorting, separating and transporting containers; automatic machines for recycling empties are similar to the opponent’s machines and parts thereof for manufacturing glass containers. The goods are mainly used in the market sector of containers; they may have the same purpose and distribution channels. They can also have the same producers and can target the same consumers.

2. The signs

FLEX	Flex
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The goods are similar and the marks are identical.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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).

Bearing in mind the above principle and considering the identity between the signs, the opposition is successful, as the identity between the marks is enough for the consumers to be confused about the commercial origin of the relevant goods found to be similar.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 930 549. It follows that the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(1)(b) EUTMR it is not necessary to examine the remaining ground on which the opposition was based, Article 8(1)(a) EUTMR.

COSTS

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

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Dorothee SCHLIEPHAKE

Patricia LOPEZ FERNANDEZ DE CORRES

Marianna KONDAS

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.

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) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.