OPPOSITION No B 2 353 301

Gitta Hantzsch-Heider, Hauptstr. 120b, 01833 Stolpen OT Langenwolmsdorf, Germany (opponent), represented by Riechelmann & Carlsohn, Wiener Str. 91, 01219 Dresden, Germany (professional representative)

a g a i n s t

Varilabel Holding Europe B.V., Techniekweg 1 a, 3481 MK Harmelen, The Netherlands (applicant), represented by de Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative).

On 04/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 353 301 is partially upheld, namely for the following contested goods:

Class 16: Labels of plastic, used for chemicals and chemical packaging.

Class 24: Labels of textile, used for chemicals and chemical packaging.

2. Community trade mark application No 12 675 708 is rejected for all the above goods. It may proceed for the remaining services, namely the following:

Class 40: Treating and processing of paper, plastics and textile; digital printing; printing; information and consultancy relating to the aforesaid services; all the aforesaid services including via electronic channels, including the internet.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 12 675 708. The opposition is based on Community trade mark registration No 5 822 663. The opponent invoked Article 8(1)(a) and (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 Community trade mark registration No 5 822 663 “RATAGS”.

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 30/04/2014. 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 30/04/2009 to 29/04/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 11: Lighting apparatus, in particular table, wall and ceiling lights and birthday lights; Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes, in particular craft articles of paper and/or cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 20: Furniture, mirrors, picture frames, in particular flower stands, room dividers and hand-crafted furniture; goods (not included in other classes) of wood; words of art and hand-crafted products of wood, room and table ornaments of wood; folk art products of wood, in particular candle arches, pyramids, fir trees, smoking figurines (scent diffusers), angels, miners, wooden figurines, flower children, smoking houses (scent diffusers), candle shrines; Christmas articles of wood, in particular decorations for Christmas trees, stars, straw plaits, advent stars, lanterns and wooden figurines from the Christmas story; Easter articles of wood, in particular Easter bunnies, Easter eggs, daffodils, hens, chicks, birds, beetles, butterflies, flowers and blossoms; table, wall and ceiling lights, birthday lights, bowls, illuminated and non-illuminated wall collages, pictures and decorative wall plaques, all of wood; wood carvings, chip trays, jewellery boxes of wood, turned wooden parts for works of art or artworks; worked wood parts; goods (not included in other classes) of wax, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21: Domestic and kitchen utensils and containers; combs and sponges; brushes (other than for painting); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings, in particular wooden toys and toy furniture; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 43: Services for providing of food and drink; temporary accommodation.

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 05/02/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 10/04/2015 to submit evidence of use of the earlier trade mark. At the request of the opponent this term was extended until 10/06/2015. On 09/06/2015, within the time limit, the opponent submitted evidence of use.

The evidence consists of the following:

• Main product catalogues dated in 2009 and 2010. The catalogues are in German and in English and display various goods, such as window and tree decoration, light arches, pyramids, Easter and Christmas decoration, greeting cards, etc. published by “RATAGS GmbH”.

• Main product catalogues dated in the period 2011-2013. The catalogues are in German and in English and display various goods, such as window and tree decoration, light arches, pyramids, Easter and Christmas decoration, greeting cards etc. published by “RATAGS GmbH”.

• Main product catalogues dated in 2014. The catalogues are in German and in English and display various goods, such as window and tree decoration, light arches, pyramids, Easter and Christmas decoration, greeting cards etc. published by “RATAGS GmbH”.

• Copy of catalogue “Figures Edition 2009” in German, published by “RATAGS GmbH” dated in 2009 and 2010.

• Copy of catalogue “Tree Decoration 2009” in German, published by “RATAGS GmbH” dated in 2009 and 2010.

• Copy of catalogue “Craft Supplies 2009” in German, published by “RATAGS GmbH” dated in 2009 and 2010.

• Copy of “Easter catalogue 2011” in German, published by “RATAGS GmbH”, dated in the period 2011-2013.

• Copy of catalogue “Figures Edition 2014” in German, published by “RATAGS GmbH” dated in 2014.

• Copy of catalogue “Tree and Window Decoration 2014” in German, published by “RATAGS GmbH” dated in 2014.

• Copy of catalogue “Ore Mountain crafting 2014” in German, issued by “RATAGS Kunsthandwerk” dated in 2014.

• Copy of colouring book, dated in the period 2009-2014.

• Copy of advertising material (leaflets) issued by “RATAGS Kunsthandwerk”, dated in the period 2009-2014.

• Copy of photos of products made of wood, light arch, tree and Easter decoration, copies of photos of the shop where the products are sold and copies of photos of the product’s packaging (paper, plastic and cardboard bags and boxes) showing the opponent’s sign on them, dated in the period 2009-2014.

• Copy of photos of postcards sold in “RATAGS Kunsthandwerk”, dated in the period 2009-2014.

• Copy of “do-it-yourself” cards, dated in the period 2009-2014.

• Copy of bobbin lace frame with bobbin lace pattern, dated in the period 2009-2014.

• Copy of customer price lists dated in 2014.

• Copy of 12 invoices issued by “RATAGS Holzdesign HEIPRO GmbH“, by “RATAGS Kunsthandwerk, Gitta Heider” and by “RATAGS GmbH”, dated in the period 2009-2014 issued by the opponent and directed to different clients in Germany. The opponent’s sign appears on top of each invoice, the invoices include product name, number of sold items and reference numbers.

Invoices for the year 2009 with the following amounts: 203,37 € and 49,35 €.

Invoices for the year 2010 with the following amounts: 364,14 € and 83,20 €.

Invoices for the year 2011 with the following amounts: 286,36 € and 129,30 €.

Invoices for the year 2012 with the following amounts: 2265,21 € and 63,10 €.

Invoices for the year 2013 with the following amounts: 237,76 € and 21,70 €.

Invoices for the year 2014 with the following amounts: 244,66 € and 122,10 €.

• Copy of German newspaper and journal articles and advertisements with English translations; the articles contain information about the different products that are sold in the shops and the history of the trade mark, etc.

- “Top Magazin Dresden Ostsachsen” dated in Autumn 2014,

- extract from the “Sachsische Zeitung” without date, another extract from the same newspaper dated December 2010,

- extract from the „DKV Wohnungsgesellschaft Sachsen mbH“, edition 2010/11,

- extract of the newspaper „MDR television Mittendrin“, edition 2011,

- extract from “Radio PSR- the super mix for Saxony” dated 2009,

- copy of newspaper extracts without date or reference to the name of the newspaper.

• Copy of Affidavit issued by “Gitta Heider” as managing Director of the Company “RATAGS Holzdesign HEIPRO GmbH” dated in June 2015, stating that the Community trademark “RATAGS” is regularly used in Germany in its registered form for paper, cardboard and goods made from these materials, in particular craft articles of paper and/or cardboard, etc.; goods made of wood; works of art and hand-crafted products of wood; room and table ornaments of wood; folk art products of wood; Christmas articles of wood; Easter articles of wood; table, wall and ceiling lights; illuminated and non-illuminated wall collages, pictures and decorative wall plaques, all of wood; wood carvings, chip trays, jewellery boxes of wood, turned wooden parts for works of art or artworks; worked wood parts, etc.

The tables attached would show the number of sold items for the different products:

Greeting cards:

Paper for handcrafts:

Pyramids:

Light Arches:

Pyramids:

Smoker Figures and Houses:

Window decoration:

Easter decoration:

• Extract from the Commercial Register, confirming the name change into “RATAGS Holzdesign HEIPRO GmbH” in 2006, with English translation.

• Request for recording the change of Mrs. Heider’s surname, filed with the municipal administration in 2009, with English translation.

• A set of invoices directed to the opponent issued by different manufacturers/ stationery and printing jobs (graphic applications) dated within the relevant period, all of them referring to ‘RATAGS’.

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 (judgement of 06/10/2004, T-356/02, ‘VITAKRAFT’, paragraph 28).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

The invoices, catalogues, advertisements, etc. show that the place of use is throughout Germany. This can be inferred from the language of the documents (German), the currency mentioned (EUR) and the addresses mentioned. Therefore, the evidence relates to the relevant territory.

It is noted that the factor ‘place of use’ requires that the CTM has been put to genuine use in the Community. Following ‘Leno Merken’ (judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816), Article 15(1) CTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether a CTM has been put to ‘genuine use’ in the Community (paragraph 44).

In territorial terms and in view of the unitary character of the CTM, the appropriate approach is not that of political boundaries but of market(s). Moreover, one of the aims pursued by the CTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.

As the Court indicated in ‘Leno Merken’, it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (paragraph 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (paragraph 58).

In the present case the CTM has been used regularly throughout the whole relevant period, at a sufficient scale and throughout Germany. Therefore, it is considered that there are sufficient indications concerning the place of use.

According, to case-law, it is sufficient that a trade mark should have been put to genuine use during a part of the relevant period for it not to be subject to the sanctions (25/03/2009, T‑191/07, Budweiser, EU:T:2009:83, § 108).

Concerning the factor time of use, the Opposition Division points out that some documents are not dated and others are dated beyond the relevant period. However, the majority of the invoices and the advertisements inserted in the newspapers, clearly show that the documents relate to the relevant period.

In the case at hand, the information contained in the evidence is clearly sufficient to show use of the earlier trade mark in the relevant period, namely, from 30/04/2009 to 29/04/2014 inclusive.

Therefore, the opponent provides enough evidence to show time of use of the earlier trade mark.

The documents 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.

Consequently, the Opposition Division concludes that nature of use of the earlier trade mark complies with the requirements of Article 15(1) CTMR and the mark is used 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.

In the present case, it is noted that the majority of the evidence displays the mark as registered. While admittedly there are examples of use in the evidence in which there are slight modifications to the sign, these do not change the distinctive character of the sign as registered because they are either descriptive in relation to the type of goods (for example, ‘Holzdesign’ meaning wood design) or non-distinctive (underlining or registered trade mark symbol…).

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.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 42(2) CTMR, 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 only for craft articles of paper and/or cardboard, etc.; goods made of wood; works of art and hand-crafted products of wood; room and table ornaments of wood; folk art products of wood; Christmas articles of wood; Easter articles of wood; table, wall and ceiling lights; illuminated and non-illuminated wall collages, pictures and decorative wall plaques, all of wood; wood carvings, chip trays, jewellery boxes of wood, turned wooden parts for works of art or artworks; worked wood parts; games and playthings, in particular wooden toys and toy furniture; decorations for Christmas trees (belonging to Classes 11, 16, 20 and 28).

The goods craft articles of paper and/or cardboard, etc.; goods made of wood; works of art and hand-crafted products of wood; room and table ornaments of wood; folk art products of wood; Christmas articles of wood; Easter articles of wood; table, wall and ceiling lights; illuminated and non-illuminated wall collages, pictures and decorative wall plaques, all of wood; wood carvings, chip trays, jewellery boxes of wood, turned wooden parts for works of art or artworks; worked wood parts; games and playthings, in particular wooden toys and toy furniture; decorations for Christmas trees belong to broad categories of the opponent’s lighting apparatus, in particular table, wall and ceiling lights and birthday lights (Class 11); paper and goods made from this material and goods made of cardboard, not included in other classes, in particular craft articles of paper and/or cardboard; printed matter; photographs; stationery; artists' materials (Class 16); folk art products of wood, in particular candle arches, pyramids, fir trees, smoking figurines (scent diffusers), angels, miners, wooden figurines, flower children, smoking houses (scent diffusers), candle shrines; Christmas articles of wood, in particular decorations for Christmas trees, stars, straw plaits, advent stars, lanterns and wooden figurines from the Christmas story; Easter articles of wood, in particular Easter bunnies, Easter eggs, daffodils, hens, chicks, birds, beetles, butterflies, flowers and blossoms; table, wall and ceiling lights, birthday lights, bowls, illuminated and non-illuminated wall collages, pictures and decorative wall plaques, all of wood; wood carvings, chip trays, jewellery boxes of wood, turned wooden parts for works of art or artworks; worked wood parts; goods (not included in other classes) of wax, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics (Class 20) and games and playthings, in particular wooden toys and toy furniture; decorations for Christmas trees (Class 28).

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition. There is no evidence for use in relation to the remaining goods and services covered by the earlier mark.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 and services

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

Class 11: Lighting apparatus, in particular table, wall and ceiling lights and birthday lights.

Class 16: Paper and goods made from this material and goods made of cardboard, not included in other classes, in particular craft articles of paper and/or cardboard; printed matter; photographs; stationery; artists' materials.

Class 20: Folk art products of wood, in particular candle arches, pyramids, fir trees, smoking figurines (scent diffusers), angels, miners, wooden figurines, flower children, smoking houses (scent diffusers), candle shrines; Christmas articles of wood, in particular decorations for Christmas trees, stars, straw plaits, advent stars, lanterns and wooden figurines from the Christmas story; Easter articles of wood, in particular Easter bunnies, Easter eggs, daffodils, hens, chicks, birds, beetles, butterflies, flowers and blossoms; table, wall and ceiling lights, birthday lights, bowls, illuminated and non-illuminated wall collages, pictures and decorative wall plaques, all of wood; wood carvings, chip trays, jewellery boxes of wood, turned wooden parts for works of art or artworks; worked wood parts; goods (not included in other classes) of wax, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 28: Games and playthings, in particular wooden toys and toy furniture; decorations for Christmas trees.

The contested goods and services are the following:

Class 16: Labels of plastic, used for chemicals and chemical packaging.

Class 24: Labels of textile, used for chemicals and chemical packaging.

Class 40: Treating and processing of paper, plastics and textile; Digital printing; Printing; Information and consultancy relating to the aforesaid services; all the aforesaid services including via electronic channels, including the internet.

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

The term ‘in particular’, used in the opponent’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 term ‘including’, used in the applicant’s list of services, indicates that the specific services 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.

Contested goods in Classes 16 and 24

The applicant’s labels of plastic, used for chemicals and chemical packaging (Class 16) and labels of textile, used for chemicals and chemical packaging (Class 24) are plastic and textile products used for labelling. The opponent’s goods made from paper or cardboard in Class 16 are goods that include labels made from paper and carton. While the nature of the goods at issue is different (plastic and textile vs. paper and carton), they coincide in their intended purpose. Furthermore, they can be produced by the same undertakings, share the same distribution channels and are directed at the same end-user. It is therefore concluded that the goods at issue are similar.

Contested services in Class 40

The contested treating and processing of paper, plastics and textile; digital printing; printing; information and consultancy relating to the aforesaid services; all the aforesaid services including via electronic channels, including the internet are dissimilar to any of the opponent’s goods in Classes 11, 16, 20 and 28. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels and they are not in competition. Therefore, these services are dissimilar.

2. The signs

RATAGS	RATAGS
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The signs are identical and the contested goods in Classes 16 and 24, namely labels of plastic, used for chemicals and chemical packaging and labels of textile, used for chemicals and chemical packaging are similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) CTMR and the opposition is upheld insofar as it is directed against these goods.

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 contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these services 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) CTMR and directed against the remaining services because the services are obviously not identical.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Liliya YORDANOVA

Julia TESCH

Martina GALLE

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.