OPPOSITION No B 2 796 673

La Superquimica, S.A., Avenida del Carrilet, 293, 08907 L’Hospitalet de Llobregat (Barcelona), Spain (opponent), represented by Canela Patentes y Marcas, S.L., Girona, 148 1-2, 08037 Barcelona, Spain (professional representative)

a g a i n s t

Guarniflon S.P.A., Via Torquato Tasso, 12, 24060 Castelli Calepio (Bg), Italy (applicant), represented by Jacobacci & Partners S.P.A., Piazza della Vittoria, 11, 25122 Brescia, Italy (professional representative).

On 29/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 796 673 is upheld for all the contested goods.

2. European Union trade mark application No 15 540 206 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 540 206 ‘TEKBOND’, namely the goods in Classes 1, 16 and 17. The opposition is based on Spanish trade mark No 2 151 432 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 Spanish trade mark No 2 151 432 .

The date of filing of the contested application is 14/06/2016. 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 14/06/2011 to 13/06/2016 inclusive.

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 relevant date mentioned above.

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

Class 1: Adhesives, gums and glues for industrial use

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 or services in respect of which it is registered and on which the opposition is based.

On 12/07/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 17/09/2017 to submit evidence of use of the earlier trade mark; the deadline was subsequently extended until 17/11/2017 upon the opponent’s request. On 17/11/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

1. Invoices

Document 1: 43 invoices (dated between 18/06/2012 and 03/06/2016) issued by Cey S.A. to several clients in Spain for sales of a total of 1 022 units of TECHNOBOND products (including TECHNOBOND CYANO PROF. C-01 50G; TECHNOBOND CYANO PROF. C-06 PLASTICOS 20G; TECHNOBOND ANAEROBIC R-03 RETENEDOR 50ML; TECHNOBOND AN F-70 FIJAESPARRAGOS 50 ML; TECHNOBOND AN S-42 SELLADOR ROSCAS 50 ML; TECHNOBOND ANAER. F-43 FIJATUERCAS 50 ML; TECHNOBOND ANAER. F-22 FIJATORNILLOS 50 ML).

2. Samples of products/packaging

Document 3: pictures (undated) of TECHNOBOND products accompanied by translations into English of keywords.

3. Brochures

Document 2: brochure (undated) in Spanish describing the characteristics and uses of TECHNOBOND products displaying TECHNOBOND (adhesives for industrial use, e.g. nut fasteners, screw fasteners, washer fasteners and bearing fasteners) accompanied by translations into English of relevant parts of the brochure.

Document 5: catalogue (undated) of TECHNOBOND products accompanied by translations into English of relevant parts of the catalogue.

4. Advertisements

Document 4: brochure (with a legal deposit date in 2004) in Spanish entitled ‘Tu casa a punto!’ describing the characteristics and uses of TECHNOBOND products, including do-it-yourself tips and expert tricks from professionals, accompanied by translations into English of relevant parts of the brochure.

Document 6: printouts (undated) from web pages in Spanish advertising TECHNOBOND products (www.comprabuena.com; www.ferreteriayhosteleria.com; www.ceys-alaball.com; www.amazon.es; www.hcvotero.es; www.arcashop.es) accompanied by translations into English of key words.

Assessment of the evidence

In its observations of 22/03/2018, the applicant claims that the proof of use submitted is insufficient. The applicant claims that the invoices, the only dated items of evidence, were issued by a company different from the opponent. However, as stated by the opponent, the company issuing the invoices is an affiliated company, as is the opponent, of the business group GRUPO AC MARCA S.L. Furthermore, according to Office practice ‘Use by companies economically related to the trade mark proprietor, such as members of the same group of companies (affiliates, subsidiaries, etc.) is similarly to be considered as authorised use (judgment of 30/01/2015, T‑278/13, now, EU:T:2015:57, § 38). Where goods are produced by the trade mark proprietor (or with its consent), but subsequently placed on the market by distributors at wholesale or retail level, this is to be considered as use of the mark (judgments of 17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 32; 16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675, § 73)’. Therefore, at the evidence stage it is prima facie sufficient that the opponent only submits evidence that a third party has used the mark (Section 6, Proof of Use, Chapter 2, Substantive Law, paragraph 2.9.2).

The applicant also claims that, except for the invoices, the rest of the documents are undated; however, since the undated evidence constitutes conclusive indirect proof that the mark has been put to genuine use during the relevant period, the Opposition Division must disregard this claim. This is supported by case-law in which the Court has held that circumstances subsequent to the relevant point in time may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 31).

Regarding the time of use, the 42 invoices (Document 1) clearly demonstrate the opponent’s trade mark ‘TECHNOBOND’ being used for different products in the relevant period (i.e. from 14/06/2011 to 13/06/2016 inclusive).

Therefore, this evidence relates to the relevant period.

In respect of the place of use, the evidence demonstrates that the earlier mark has been used in the relevant territory (i.e. Spain). This can be inferred from the language of the documents (Spanish) and some addresses contained in the invoices (Document 1).

Therefore, the evidence relates to the relevant territory.

Concerning the nature of use, in the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force at the moment of filing the request for proof of use), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods for which it is registered.

The applicant claims that the trade mark displayed is completely different from the earlier trade mark as registered, on which the opposition is based, as regards its proportions, its colours, the layout of the words and its overall impression. However, Article 18 EUTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark. In this case, the proprietor of the trade mark has used differing elements, as depicted above in the list of evidence that cannot be considered to alter its distinctive character. The use of the trade mark as a badge of origin has been proven by the evidence listed above, in which the trade mark ‘TECHNOBOND’ is clearly displayed on various products.

Therefore, the evidence demonstrates that the mark has been used in accordance with its function and as registered.

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, and its commercial volume, duration and frequency.

The documents filed, in particular the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices demonstrate the sale of thousands of units of different products displaying the opponent’s trade mark, in diverse Spanish locations, throughout the entire relevant period. Use of the mark need not be quantitatively significant for it to be deemed genuine.

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

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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

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

As stated in Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those 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, § 45 and 46).

In the present case, the evidence shows genuine use of the trade mark only for the following goods:

Class 1: Adhesives and glues for industrial use

Therefore, the Opposition Division will only consider the abovementioned 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.

1. The goods

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

Class 1: Adhesives and glues for industrial use

The contested goods, after a limitation, are the following:

Class 1: High performance skived and extruded technopolymers.

Class 16: Plastic materials for packaging, not being used with hot melt adhesive used in hot melt applicators; plastic film for wrapping, not being used with hot melt adhesive used in hot melt applicators; bags [envelopes, pouches] of plastics, for packaging.

Class 17: Plastic substances, semi-processed; plastics in extruded form for use in manufacture; plastic film, other than for wrapping; high performance skived and extruded technopolymers in the form of films and tapes.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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.

In relation to the contested goods, the applicant states that, regarding the method of use, the opponent’s adhesives are used in a completely different way from the applicant’s plastic film and technopolymers and that these goods are neither complementary nor in competition, as they are intended for completely different purposes. In addition, the applicant argues that the goods on which the opposition is based are adhesives sold to end users and professionals through general hardware stores as revealed by the recipients of the invoices submitted as evidence by the opponent, while the applicant’s goods are sold to industrial original equipment manufacturers working in the telecom, electronics, insulation, sealing, lining and composite manufacturing sectors and specialised film and tape distributors, so the distribution channels and end consumers of these goods are also different.

In support of its arguments, the applicant refers to previous Office decisions in which the goods in conflict were considered dissimilar. 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 to the present proceedings. In the opposition decision of 20/09/2011, B 1 742 900, the opponent’s adhesives as finishing, adhesives and glues for industrial purposes in Class 1 were limited to those used for posters, footwear, ceramic tiles, wall paper, formulations for bonding and grounding; gelatine for industrial purposes, which is not the case in the current proceedings. In the opposition decision of 28/10/2014, B 2 320 813, the goods in Class 1 found to be dissimilar to the opponent’s adhesives were different from the applicant’s goods in the current proceedings, since unprocessed plastics, the only identical goods, are no longer included in the applicant’s list of goods. Finally, in the opposition decision of 26/05/2014, B 2 028 960, the goods in Class 1 found to be dissimilar to the opponent’s goods are different from the applicant’s goods in this class in the current proceedings.

Contested goods in Class 1

The applicant claims that the term high performance skived and extruded technopolymers identifies a family of polytetrafluoroethylene high elongation and modulus films and tapes used in industrial applications including high temperature coil and capacitator wrapping, masking and conveyor release linings. It further claims that adhesive goods are epoxy-, cyanocarylate- and acrylate-based products, while technopolymers are perfluorethylene-based products. The applicant also claims that the intended purpose of the opponent’s adhesive products is to stick other goods together, while the applicant’s technopolymers are used to cover other products and provide them with further properties, such as chemical, temperature and mould protection and thermal insulation, and that the most relevant property of the applicant’s goods is that they are non-stick, the opposite of the main characteristic of the opponent’s adhesives.

In reply to this claim, the opponent states that the description of the contested goods does not clearly define particular products but defines their chemical composition, and that the applicant on its website describes its products as adhesive strips and bands, boasting about its adhesive systems and their adhesive capabilities. Moreover, adhesives are intended not only to bond two surfaces but also to insulate, coat, withstand high temperatures, etc., and adhesives do not necessarily need to be sticky. Consequently, according to the opponent, the applicant’s goods in Class 1 should fall within the broader category of the opponent’s goods in this same class.

The Opposition Division is of the opinion that the contested high performance skived and extruded technopolymers are similar to the opponent’s adhesives for industrial use, since they have the same producers, distribution channels and relevant public.

Contested goods in Class 16

The contested plastic materials for packaging, not being used with hot melt adhesive used in hot melt applicators; plastic film for wrapping, not being used with hot melt adhesive used in hot melt applicators; bags [envelopes, pouches] of plastics, for packaging are similar to a low degree to the opponent’s goods, as they may have the same distribution channels and relevant public and they could also be complementary.

Contested goods in Class 17

The opponent states that the applicant’s goods in Class 17 are intimately related to its goods, since adhesives in the form of tapes or films can be used for sealing, can provide higher resistance to temperatures, etc.

The Opposition Division considers that the contested plastic substances, semi-processed; plastics in extruded form for use in manufacture; plastic film, other than for wrapping; high performance skived and extruded technopolymers in the form of films and tapes are similar to a low degree to the opponent’s goods, as they may have the same distribution channels and relevant public, and they could also be complementary.

2. 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.

In the present case, the goods of the earlier mark target the professional public, and the contested goods in Classes 1 and 17 target a professional public, while the contested goods in Class 16 target both a professional public and the general public. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81). The degree of attention will high be due to the specialised nature of the goods.

3. The signs

	TEKBOND
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier trade mark is a black and white figurative mark formed by the verbal element ‘TECHNOBOND’ depicted in upper case letters against a black background underlined with a white line, all placed against a grey rectangle. The first part of the verbal element, ‘TECHNO’, is depicted in white with a small white triangle next to the first letter, ‘T’. The second part, ‘BOND’, is depicted in grey. The figurative elements and overall graphic depiction will be perceived as purely decorative. This is also supported by the fact that 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).

The contested sign is a word mark formed by the sequence ‘TEKBOND’, which does not have a meaning for the relevant public.

The opponent claims that the prefixes in both signs, ‘TECH’ and ‘TEK’ in the earlier and the contested signs, respectively, may be associated by the relevant public with the Greek prefix ‘TECNO’, referring to technology or technological or its equivalents in Spanish, ‘technología’ and ‘tecnologico’. The applicant claims that one of the meanings of the word ‘BOND’ is ‘to stick and bind things together’ and that accordingly when associated with goods such as adhesives and glues, consumers will tend to perceive the word ‘TECHNOBOND’ as evocative of a technical characteristic, namely of sticking things together. The Opposition Division cannot uphold the applicant’s claim in relation to the word ‘BOND’, since the relevant public is the Spanish public, which will not understand the word ‘BOND’, as it is not a basic English word. Regarding the claim that ‘TECH’ and ‘TEK’ may be associated with the meaning of the word ‘TECNO’, the Opposition Division is of the opinion that this will be the case for the element ‘TECH’ of the earlier mark but not for the element ‘TEK’ of the contested sign; however, since it may be descriptive of some of the characteristics of the relevant goods (e.g. as referring to technical adhesives) it is weak and accordingly will affect the distinctiveness of the earlier mark. Therefore, the most distinctive element of the earlier mark is the word ‘BOND’.

Visually, the signs coincide in their first syllable ‘TE’, and last syllable, ‘BOND’. However, they differ in the letters ‘CHNO’ and ‘K’ in the middle of the earlier and the contested signs, respectively, and in the graphical depiction and figurative elements of the earlier mark, which have no counterparts in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sounds ‘TEC(*)/K-**-BOND’, present identically in both signs, since the relevant public will not pronounce the letter ‘H’, so the letters ‘CH’ in the earlier mark will have the same sound as the letter ‘K’ in the contested sign. However, the pronunciation differs in the syllable ‘NO’ in the middle of the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the element of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, 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.

4. 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are similar to different degrees and they target business professionals, whose degree of attention is high. Furthermore, the earlier mark has an average degree of distinctiveness. The signs coincide in their first and last syllables and differ in their middle letters, ‘CHNO’ in the earlier mark and ‘K’ in the contested sign, which due to their positions could easily go unnoticed by the relevant public. Moreover, both signs are long signs and the public is usually less aware of the differences between long signs, and even though the first part of the earlier mark, ‘TECHNO’, has a low degree of distinctiveness it cannot be disregarded that there is an average degree of visual and aural similarity between the signs under comparison even though the degree of attention of the relevant public will be higher than average.

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 who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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). In the case at issue, the similarity between the signs offsets any lesser degree of similarity between some of the goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public for the goods found to be similar, even for those similar to a low degree, and therefore the opposition is well founded on the basis of the opponent’s Spanish trade mark No 2 151 432.

It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (formerly Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Ioana MOISESCU

Paloma PERTUSA MARTÍNEZ

Birgit FILTENBORG

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.