OPPOSITION No B 3 067 529

Power Adhesives Limited, 1 Lords Way, Basildon SS13 1TN, United Kingdom (opponent), represented by Graham Henry Jones, 77 Beaconsfield Road, Blackheath, London SE3 7LG, United Kingdom (professional representative)

a g a i n s t

ATB Industria e Comercio de Adesivos Ltda., Rua Marcelino Pinto Teixeira #1268, Parque Industrial Ramos, 06816‑000 Embu Das Artes, Brazil (applicant), represented by Simões Garcia Corte-Real & Associados – Consultores Lda., Rua Castilho 167, 2º andar, 1070‑050 Lisboa, Portugal (professional representative).

On 30/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 529 is partially upheld, namely for the following contested goods:

Class 1: All the contested goods in this class.

Class 16: All the contested goods in this class with the exception of rub down transfers; stickers [stationery]; washi.

Class 17: All the contested goods in this class with the exception of rubber, raw or semi-worked; gutta-percha.

2. European Union trade mark application No 17 921 715 is rejected for the goods as reflected under point 1 of this dictum. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 921 715 for the figurative mark . The opposition is based on European Union trade mark registration No 2 202 588 and United Kingdom trade mark registration No 1 214 892, both for the word mark ‘TECBOND’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to both trade mark registrations.

PRELIMINARY REMARK ON PROCEDURAL ECONOMY

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2 202 588 for the word mark ‘TECBOND’. The other earlier right on which the opposition is based, namely United Kingdom trade mark registration No 1 214 892 for the word mark ‘TECBOND’, will be examined only if it may have an impact on the outcome of this decision.

I. ASSESSMENT OF THE EVIDENCE SUBMITTED (PROOF OF USE, ENHANCED DISTINCTIVENESS/REPUTATION)

The outcome of the opposition depends to a great extent on the conclusions in relation to the evidence submitted by the opponent in order to prove the genuine use, the enhanced distinctiveness and/or the reputation of the earlier mark. Therefore, in this section the Opposition Division will first examine the submitted evidence in its entirety and will determine whether the earlier mark was put to genuine use and whether it acquired enhanced distinctiveness and/or reputation.

List of evidence

On 05/02/2019, within the time limit for filing further facts, documents and evidence, the opponent submitted evidence to support its claim for enhanced distinctiveness and reputation of the earlier marks. As this evidence was submitted before the expiry of the time limit for providing proof of use (even before the applicant’s request for proof of use), it can also be considered when assessing proof of use.

The evidence consists of the following documents:

 Several brochures of the opponent listing and describing the characteristics and uses of the opponent’s goods, inter alia, adhesives. The word mark ‘tecbond’ or ‘tecbond®’ in different fonts (title, upper or lower case) and colours, alone or in combination with other elements (e.g. ‘263’, ‘239’, ‘271-PL’, ‘2507FS’, ‘43 mm’), is shown throughout as a reference to the name of a range of (hot melt) adhesives for industry offered by the opponent in different forms (i.e. in stick, cartridge or bulk forms). It can be seen in some of the brochures that the word mark ‘TECBOND’ (with some additional data) is affixed directly on the product itself, for example . Some of the documents contain information that the opponent’s company is Europe’s leading shaped hot melt adhesive specialist, offering the largest range of high-quality, performance adhesives and hand-held glue applicators. According to the brochures, the opponent’s company has more than 40 years (some mention more than 30 years) of experience in offering industry specialist knowledge on all aspects of commercial gluing operations using thermoplastic adhesives. All the brochures are in English; those dated are from 2012, 2015 and 2017.

 Opponent’s product catalogue of 05/2007 listing and describing the characteristics of the opponent’s goods, including ‘TECBOND’ adhesives. There is a reference to ‘POWER ADHESIVES’ at the bottom of the first page and a reference to the website www.poweradhesives.com on the last page. The document is in English.

 Opponent’s leaflets and data sheets promoting and describing the characteristics of the opponent’s goods, inter alia, ‘tecbond’ hot melt adhesives, for use in different areas of industry (e.g. for the concrete industry, in manufacturing mattresses or for bonding of ceramic tiles to hardboard display boards). Some of these documents were issued on 04/03/2008 and 01/05/2008, while others are not dated. All are in English. There are references to ‘POWER ADHESIVES’ and the website www.poweradhesives.com.

 Sample of 32 invoices, dated between 18/08/2003 and 12/06/2018 (at least one invoice per year; 10 invoices from the relevant period between 21/06/2013 and 20/06/2018), issued by the opponent and addressed to various entities located in different states within the European Union of the time (Belgium, Denmark, Germany, Estonia, Ireland, Spain, France, Italy, Netherlands, Austria, Poland, Finland, Sweden, United Kingdom). Approximately half were addressed to different undertakings within the United Kingdom. The invoices are in English and the currencies referred to are the euro and pound sterling. They concern, inter alia, the sales of goods bearing the mark ‘TECBOND’ (accompanied by further descriptions such as ‘LOW MELT ADHESIVE’, ‘HM ADH’, ‘HM ADHESIVE’, ‘ADH CLEAR’, ‘BULK HM ADH’, ‘232 INDUSTRIAL AFDH’). Furthermore, the physical quantities of the goods sold range from 15 kg to 2 640 kg or from 2 cartons to 975 cartons per invoice, amounting to around 7 100 kg, 2 075 cartons and 100 bags in total for the abovementioned period. The sales figures vary from around GBP 63 to GBP 7 400 and from EUR 105 to EUR 40 242 per invoice, amounting to around GBP 30 540 and EUR 89 360 in total for the abovementioned period.

 Annual turnovers from 2003 to 2018, for items with ‘TECBOND’ in the description, with the following figures:

.

The document is of unknown origin and does not include any signature, stamp or a date. However, in its submission of 20/12/2019, the opponent argues that the data has been provided by its accountants on the request of Mr Sweeney.

 Letter from Mr S. J. Sweeney, director of Power Adhesives Limited (i.e. the opponent’s company), dated 30/10/2018 and addressed to the opponent’s representative. It states that the opponent’s company had been using the ‘TECBOND’ trade mark in the United Kingdom and Europe many years before the United Kingdom trade mark was registered in 1999. Mr Sweeney further mentions that the company does not have the exact dates as the company’s records do not go back that far but, according to the best estimate, it was since the mid-1980s. He continues that in 2017 the annual turnover for ‘TECBOND’ adhesives in the United Kingdom and Europe was GBP 2 379 012.52. According to Mr Sweeney, the advertising budget is difficult to determine, as it is a combination of exhibitions and distributors that cover the whole range, including ‘TECBOND’. For more information, the opponent simply referred to the internet; however, no links or content were submitted in this regard and as such this reference is dismissed.

Following the applicant’s request to submit proof of use of the trade mark on which the opposition is based, on 26/07/2019 (within the prescribed deadline), the opponent also submitted the following evidence:

 Several brochures of the opponent listing and describing the characteristics and uses of the opponent’s goods, including adhesives referred to by the word mark ‘tecbond’ or ‘tecbond®’ in different fonts (title, upper or lower case) and colours. One is in Italian with the handwritten date March 2011, one in Spanish, issued in 2015, and another in German, issued in 2012. Although these brochures are not in the language of the proceedings, they are clearly referring to adhesives and other goods related thereto. Moreover, they follow the same structure and content as the brochures in English described above.

 Opponent’s product catalogue, leaflets and data sheets listing, promoting and describing the characteristics of the opponent’s goods and mentioning, inter alia, a word mark ‘tecbond’ in different fonts (title, upper or lower case) and colours. They are in French with added handwritten dates from September 2004 to October 2005. Although the documents are not in the language of the proceedings, they are clearly referring to adhesives and other goods related thereto. Moreover, they follow the same structure and content as the product catalogue, leaflets and data sheets in English described above and refer to ‘POWER ADHESIVES’ and the website www.poweradhesives.com.

 Two price lists of the opponent’s goods, namely adhesives, offered under the mark ‘TECBOND’, for different companies; one was effective as from 01 May 2011 and the other as from 01 January 2006 (issued 26/11/2007).

 Table providing a detailed breakdown of the figures regarding mass (kg) of adhesives sold under the ‘TECBOND’ brand to EU countries from 2002 to 2019, with some remarks below the table, as can be seen below:

The table is undated and of unknown origin, and does not include any signature or stamp.

 Sample of 12 invoices, dated between 10/05/2002 and 09/07/2002, issued by the opponent and addressed to various entities located in different Member States of the European Union (Belgium, Denmark, Germany, Ireland, Spain, France, Italy, Latvia, Lithuania, Netherlands, Austria and Sweden). The invoices are in English and the currencies referred to are the euro and pound sterling. They concern, inter alia, the sales of goods bearing the mark ‘TECBOND HM ADHESIVE’. The physical quantities of the goods sold range from 20 kg to 6 990 kg per invoice, amounting to around 18 490 kg in total for the abovementioned period. The sales figures vary from around EUR 96 to EUR 23 266 per invoice, amounting to around EUR 76 240 and GBP 2 360 in total for the abovementioned period.

a. 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 the trade mark on which the opposition is based, namely European Union trade mark No 2 202 588 for the word mark ‘TECBOND’.

The date of filing of the contested application is 21/06/2018. 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 21/06/2013 to 20/06/2018 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: Hot melt adhesives for use in hot melt applicators.

According to Article 10(3) EUTMDR, 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.

Applicant’s arguments on the evidence

The applicant argues that the opponent did not submit translations of some of the evidence and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the evidence unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR and Article 7(4) EUTMDR in conjunction with Article 24 EUTMIR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely, some of the brochures, a product catalogue, leaflets and data sheets, and their self-explanatory character, as well as the fact that most of them follow the same structure and content as the identical documents in English, the Opposition Division considers that there is no need to request a translation.

The applicant also claims that the evidence submitted by the opponent does not comply with the rules on the structure and filing of proof of use set forth in Article 10 EUTDMR. However, the Opposition Division considers that although the evidence could have been structured and summarised in a better way, the whole set of evidence is still sufficiently clear and intelligible. The structure of the evidence for proof of use and a short summary of the evidence are clearly set out in the opponent’s observations dated 24/07/2019. Consequently, the applicant’s argument does not disqualify the evidence submitted by the opponent.

In conclusion, under all the circumstances described above, the applicant’s arguments must be set aside as unfounded.

Assessment of the evidence

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).

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 that each of these requirements has been met.

Preliminary remark on probative value of the evidence

The evidence should be assessed as a whole, that is, each indication should be weighed up against the others, whereas information confirmed by more than one source will generally be more reliable than facts derived from isolated references. Moreover, the more independent, reliable and well informed the source of the information is, the higher its probative value. In consequence, information deriving directly from the opponent is unlikely to be sufficient on its own, especially if it is of an unofficial character and lacks objective confirmation.

In the present proceedings, almost the entire evidence submitted comes from the opponent itself, with the only exception possibly being the table with the mass (kg) of adhesives sold under the ‘TECBOND’ brand to EU countries from 2002 to 2019, which, however, does not contain any indication about its origin. Although the table cannot be completely disregarded in the assessment, its probative value and that of most of the evidence coming from the opponent, not supported by independent third parties, is rather low.

However, the above considerations do not apply to the invoices submitted by the opponent, which prove objective facts regarding the sale of the opponent’s goods. This evidence is, on the contrary, of a high probative value.

Time of use

Even though some items of the evidence does not fall within or otherwise refer to the abovementioned time frame (34 invoices, the product catalogue from 2007, the product catalogue, leaflets and data sheets from 2004, 2005 and 2008, the pricelists from 2006 and 2011) or is undated (some of the brochures and leaflets), others clearly relates to the relevant period. In particular, some of the brochures, 10 invoices, the table with annual turnovers from 2003 to 2018 for items with ‘TECBOND’ in the description, the letter of 30/10/2018 from Mr S. J. Sweeney and the table with volumes regarding mass (kg) of adhesives sold under the ‘TECBOND’ brand to EU countries from 2002 to 2019, are dated within, or refer to the facts from, the relevant period.

In view of the foregoing, the evidence sufficiently indicates the time of use.

Place of use

The evidence listed above that falls within or refers to the relevant period shows that the mark ‘TECBOND’ has been used in almost the entire European Union. This can be inferred from the language of the documents (the majority are in English and one is in Spanish), the currencies mentioned (invoices refer to ‘Euro’ and ‘Pound sterling’) and some addresses in the different Member States of the European Union of the time (invoices addressed to Belgium, Spain, Estonia, Austria, Poland, Finland and the United Kingdom).

Therefore, the evidence relates to the relevant territory.

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, and its commercial volume, duration and frequency.

Some of the documents referred to above, namely invoices from 09/09/2013 to 12/06/2018 and the tables, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Regarding the commercial volume, the evidence shows that the earlier trade mark generated significant turnovers, though in some countries the volumes of the goods sold are rather low. For example, between 2013 and 2018, a total amount of 2 590 000 kg of adhesives bearing the mark ‘TECBOND’ were sold in the EU countries specified in the table containing the data on the volume of the goods in kilograms sold in this time period. Even though the probative value of this table (and also the one with annual turnovers) is low, as explained above, it must still be assessed in the context of other relevant documents, for example invoices, which may support the data stated therein on an objective and more accurate basis. In this regard, the invoices submitted clearly show the sale of 358 cartons to different Member States of the European Union with a total turnover of GBP 2 100 and EUR 14 200 within the relevant period. Furthermore, the invoices submitted are only samples of the invoices issued during the relevant period and should not be considered exhaustive. This can be inferred from the opponent’s assertion (submission dated 20/12/2019, page 5, point 17) and also from the non-consecutive numbering of the invoices. Taking all the above into account, it is concluded that a sufficiently high commercial volume of sales is demonstrated by the evidence.

Furthermore, the territorial scope is sufficiently indicated by the fact that, as shown by the invoices (and also seen in the brochures and table with the volume of the goods sold), the opponent’s goods were sold to customers in several countries of the European Union of the time, namely Belgium, Spain, Estonia, Austria, Poland, Finland and the United Kingdom. The sufficiency of the duration of use is clearly indicated by the fact that the opponent submitted a sample of 10 invoices from 2013 to 2018 (and also prior to that period), with at least one invoice per year, with some brochures from 2015 and 2017. Regarding the frequency of use, the sample invoices leave no doubt that sales transactions related to the goods offered under the mark ‘TECBOND’ were carried out regularly throughout the entire relevant period.

All of the evidence taken together demonstrates that the mark was widely used on the relevant market over a continuous period of time.

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

Nature of use and use in relation to the registered goods

In the context of Article 10(3) EUTMDR, 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 and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that 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 47(2) and (3) EUTMR, Article 18 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 trade mark has been used in various forms (as shown above in the description of the evidence) which, in most cases, retain the material characteristics of the trade mark as registered, namely the verbal element ‘TECBOND’. Possible additions indicate the type of adhesives and/or their special characteristics, which are purely descriptive indications that do not alter the distinctive character of the mark as registered. All in all, there is sufficient evidence showing the use of the earlier trade mark as registered or in a form that does not alter its distinctive character.

Furthermore, the evidence shows that the mark has been used in accordance with its function for the goods for which it is registered, namely hot melt adhesives for use in hot melt applicators.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

Conclusion

Taking into account the evidence in its entirety, the Opposition Division finds that the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark, European Union trade mark registration No 2 202 588, during the relevant period in the relevant territory for the following goods:

Class 1: Hot melt adhesives for use in hot melt applicators.

B. Enhanced distinctiveness/reputation

As the opponent invoked Article 8(5) EUTMR, thus claiming that the earlier mark had a reputation, this claim is also taken as an inherent claim of an enhanced distinctive character according to Article 8(1)(b) EUTMR.

The opponent’s claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18). As it is relevant to the opposition further below, the Opposition Division will also determine in this section whether the earlier mark is reputed.

In the present case, the contested trade mark was filed on 21/06/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 1: Hot melt adhesives for use in hot melt applicators.

In order to determine the earlier mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

Assessment of the evidence as to its substance

Enhanced distinctiveness and reputation are knowledge threshold requirements that must be principally assessed on the basis of quantitative criteria. While enhanced distinctiveness is anything above inherent distinctiveness, a finding of reputation requires that a higher threshold be met. That is to say, whether a trade mark enjoys enhanced distinctiveness and reputation or enhanced distinctiveness only is determined on a gradual scale based on the evidence submitted, assessed principally in terms of quantitative criteria.

In making that assessment, account should be taken, in particular, of the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

The evidence submitted by the opponent reveals a certain use of the earlier trade mark in the EU, as previously established. According to the data in the table with volumes regarding mass (kg) of adhesives sold under the ‘TECBOND’ brand to EU countries from 2002 to 2019, the amount of the goods sold in the EU varies from 169 095 kg in 2002 to 375 793 kg in 2019, around 8 257 000 kg in total for the abovementioned period.

According to the data in the table with annual turnovers from 2003 until 2018, for items with ‘TECBOND’ in the description, the total turnover for the abovementioned period was around GBP 32 069 000.

Furthermore, in his letter of 30/10/2018 Mr Sweeney mentioned that the sign ‘TECBOND’ had been used in the United Kingdom and Europe since around 1980 and in 2017 the annual turnover for ‘TECBOND’ adhesive in the United Kingdom and Europe was GBP 2 379 012.52.

The invoices issued between 2002 and 2018 prove real transactions and actual sales of the goods to the consumers based in the European Union. It is apparent from these invoices that the sales were around GBP 32 900 and EUR 165 000 for circa 25 600 kilograms, 2 075 cartons and 100 bags of goods sold in the abovementioned period within the European Union.

Although the above evidence shows substantial sales, it has not been supported by any other documents, for example those issued or certified by official sources such as annual financial reports certified by auditors or statements from chambers of commerce and industry or other trade and professional associations. Furthermore, the information provided by the opponent as to the amount of the goods (in kilograms) sold in EU countries from 2002 to 2019 as well as to the annual turnovers from 2003 to 2018 is also not conclusive as to the level of recognition of the earlier mark on relevant market. This is because the numbers are not put in the context of the competitive market of adhesives in the European Union. Finally, these items of evidence originate from the opponent itself. Therefore, their probative value must be seen as low, for the reasons set out above.

The opponent submitted some promotional materials in various languages covering various years from 2004 to 2017. They give some overview of the existence of the range of the opponent’s goods on the market, their characteristics and fields of use. However, they do not indicate how many of them were indeed distributed, through which media and where. Therefore, they are considered to have a low probative value. Even though some state that the opponent’s company is Europe’s leading shaped hot melt adhesive specialist, offering the largest range of high-quality, performance adhesives and hand-held glue applicators, and that it has decades of experience in offering industry specialist knowledge on all aspects of commercial gluing operations using thermoplastic adhesives, this information has not been confirmed by any other independent evidence submitted by the opponent. Moreover, this statement does not say anything about the trade mark ‘TECBOND’.

The price lists of the opponent’s adhesives under the mark ‘TECBOND’ do not contain any further relevant information apart from the date they became effective and the name of the opponent’s clients.

Furthermore, the opponent did not submit any evidence as to the investments in promoting the earlier mark. Mr Sweeney’s statement that the advertising budget is difficult to determine as it is a combination of exhibitions and distributors that cover the whole range, including ‘TECBOND’, cannot constitute sufficient indications in that regard.

Despite showing some use of the trade mark, the evidence provides no indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, bearing in mind the above considerations as to the probative value of the evidence and the information contained therein, the Opposition Division concludes that the opponent failed to prove that its trade mark has acquired a high degree of distinctiveness through its use on the market in the European Union for hot melt adhesives for use in hot melt applicators.

In the absence of any evidence that can clearly prove the extent of recognition among the relevant public, such as a survey on the mark’s recognition, opinion polls or other means of evidence such as sworn or affirmed statements, facts and figures originating from independent sources such as auditors or chambers of commerce, decisions of Courts or administrative bodies, and bearing in mind the above analysis of the submitted documents as a whole, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark is known by a significant part of the relevant public in the European Union such that it reaches the threshold necessary for a finding of enhanced distinctive character, even though it is undisputable that the earlier mark has been subject to a certain use during a relatively long period of time.

Conclusion

All in all, taking into consideration the evidence submitted and its overall assessment, the earlier trade mark does not enjoy a degree of recognition among the relevant public in the European Union allowing the Opposition Division to make a conclusion about the acquired enhanced distinctiveness of the earlier mark in relation to hot melt adhesives for use in hot melt applicators.

Furthermore, the evidence does not succeed in establishing the reputation of this earlier right, since the opponent did not prove that the recognition of the mark among the relevant public in the European Union reaches the higher threshold necessary for acknowledging the reputation of the earlier mark.

II. 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.

a) The goods

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

Class 1: Hot melt adhesives for use in hot melt applicators.

The contested goods are the following:

Class 1: All for the use in the manufacture of adhesives; adhesives for finishing and priming; glues for industrial purposes; glue, except for stationery or household purposes; gums [adhesives] for industrial purposes; glue preparations; adhesive preparations for industrial use; adhesives for use in industry; adhesives for industrial use; natural adhesives for industrial use; leather glues; screen adhesives; adhesives for plaster; adhesives for waterproofing; adhesives for paperhanging; separating and ungluing preparations; gum for solvents / degumming preparations; silicones.

Class 16: Adhesives for stationery or household purposes; starch paste [adhesive] for stationery or household purposes; pastes and other adhesives for stationery or household purposes; pastes and other adhesives for stationery or household purposes; rub down transfers; stickers [stationery]; adhesive tapes for stationery or household purposes; self-adhesive tapes for stationery or household purposes; self-adhesive tapes for stationery use; adhesive bands for stationery or household purposes; pastes and other adhesives for stationery or household purposes; gum arabic glue for stationery or household purposes; gummed cloth for stationery purposes; washi; glues for office use; adhesives for stationery or DIY purposes; adhesives for household purposes; glues for office use; adhesives for paper and for household use.

Class 17: Caulking materials; sealing and insulating materials; sealants for joints; adhesive coated strips for use in manufacture; adhesive bands, other than stationery and not for medical or household purposes; self-adhesive tapes, other than stationery and not for medical or household purposes; duct tapes; insulating tapes; insulating tapes; rubber, raw or semi-worked; gutta-percha; weatherstripping compositions; draught excluder strips; caulking materials; insulators; sealing rings.

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.

Contested goods in Class 1

The contested all for the use in the manufacture of adhesives; adhesives for finishing and priming; glues for industrial purposes; glue, except for stationery or household purposes; gums [adhesives] for industrial purposes; glue preparations; adhesive preparations for industrial use; adhesives for use in industry; adhesives for industrial use; natural adhesives for industrial use; leather glues; screen adhesives; adhesives for plaster; adhesives for waterproofing; adhesives for paperhanging include, as broader categories, or overlap with, the opponent’s hot melt adhesives for use in hot melt applicators. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested separating and ungluing preparations; gum for solvents / degumming preparations; silicones are similar to the opponent’s hot melt adhesives for use in hot melt applicators as they can coincide in producer, relevant public, distribution channels and method of use.

Contested goods in Class 16

The contested adhesives for stationery or household purposes; starch paste [adhesive] for stationery or household purposes; pastes and other adhesives for stationery or household purposes; pastes and other adhesives for stationery or household purposes; adhesive tapes for stationery or household purposes; self-adhesive tapes for stationery or household purposes; self-adhesive tapes for stationery use; adhesive bands for stationery or household purposes; pastes and other adhesives for stationery or household purposes; gum arabic glue for stationery or household purposes; gummed cloth for stationery purposes; glues for office use; adhesives for stationery or DIY purposes; adhesives for household purposes; glues for office use; adhesives for paper and for household use are similar to the opponent’s hot melt adhesives for use in hot melt applicators. Although these goods are used in different sectors, they are of the same nature and purpose. The goods are chemical substances for sticking objects together. Therefore, the relevant public, who can coincide for both sets of goods, will assume that the adhesives are produced by the same undertakings (05/08/2014, R 1403/2013‑4, SERTEGO / SURTECO et al., § 13).

The contested rub down transfers refer to printed matter, the contested stickers [stationery] are small pieces of paper or plastic intended to be fastened to a surface and the contested washi is a traditional Japanese paper. They are all dissimilar to the opponent’s hot melt adhesives for use in hot melt applicators as they have different natures, purposes, distribution channels and methods of use. They normally originate from different companies and do not coincide in the target public. Finally, they are neither in competition nor complementary.

Contested goods in Class 17

The contested adhesive coated strips for use in manufacture; adhesive bands, other than stationery and not for medical or household purposes; self-adhesive tapes, other than stationery and not for medical or household purposes; duct tapes are similar to the opponent’s hot melt adhesives for use in hot melt applicators, since they coincide in their nature and purpose (sticking things together). Moreover, they can be produced by the same undertaking and can target the same public.

The contested caulking materials; sealing materials; sealants for joints; weatherstripping compositions (i.e. compositions used to seal openings such as doors and windows from the elements); draught excluder strips; caulking materials; sealing rings may have some adhesive characteristics and include goods such as adhesive sealants and structural sealants. These contested goods and the opponent’s hot melt adhesives for use in hot melt applicators are based on polymers. Therefore, they have at least a similar nature, and also the same trade origin (chemical industry), distribution channels (specialised outlets for construction materials or DIY shops) and target the same public (professionals or DIY enthusiasts). Their purposes are related in that sealants, which are primarily used to make a space airtight and watertight, also serve to bind surfaces together and adhesives, which are primarily used to bind surfaces together, usually create an airtight and watertight condition. Furthermore, the goods are used in the same context (building or repair) and may be used in combination. Therefore, these goods must be considered similar (25/10/2017, R 55/2017‑1, POWER TACK (fig.) / POWERPACK et al, § 32).

The contested insulating materials; insulating tapes; insulating tapes; insulators include goods such as insulating adhesives and self-adhesive insulation tapes, foams or foils. Therefore, and taking into account what has been said in the previous paragraph, these goods and the opponent’s hot melt adhesives for use in hot melt applicators can coincide in nature, purpose, relevant public, producers and distribution channels. Considering this, the goods are similar.

The contested rubber, raw or semi-worked refers to Indian rubber, caoutchouc (as used for erasing) as well as to any range of polymeric organic materials used in manufacturing, renowned for their elasticity, flexibility and toughness. The contested gutta-percha is a substance derived from trees which resembles Indian rubber and is used, like rubber, because of its elasticity, flexibility and toughness. These contested goods are all dissimilar to the opponent’s hot melt adhesives for use in hot melt applicators as they have different natures, purposes, distribution channels and methods of use. They normally originate from different companies and do not coincide in the target public. Finally, they are neither in competition nor complementary.

b) 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 found to be identical or similar (to varying degrees) are directed at the public at large (e.g. DIY enthusiasts) and at business customers with specific professional knowledge or expertise, for example in the building and construction industry.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

TECBOND
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 signs coincide in their verbal element, the only difference being the letter ‘C’ in the earlier mark versus the letter ‘K’ in the contested sign. Furthermore, while the earlier mark features the verbal element as a whole on one line, the contested sign has ‘TEK’ and ‘BOND’ on two lines. Regarding the earlier mark, when perceiving a verbal sign, consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In this regard, ‘TEC’ and ‘TEK’ are likely to be understood as referring to ‘technology’ given the widespread use of both abbreviations throughout the European Union (20/04/2016, T‑77/15, SkyTec, EU:T:2016:226, § 55; 02/07/2010, R 213/2009‑4, media-tech (FIG. MARK) / MEDIATEK, § 28; 15/12/2004, R 826/2004‑1, CYBERTEK, § 16; 17/12/2004, R 391/2004‑4, TRACETEK, § 12). In connection with the relevant goods, this element may be perceived as of a weak distinctive character given that the goods may rely on technology in some way.

However, ‘BOND’ is likely to be understood only by the English-speaking part of the public as referring to the notion of ‘joining together’, which in connection with the relevant goods will be seen as non-distinctive. This notion will not be understood by the other parts of the public, rendering this element distinctive.

Consequently, English speakers will perceive both signs as referring to the same idea of ‘joining together using technology’, while others will only grasp the meaning of technology.

Regarding the contested sign’s figurative aspects, the fact remains that when signs consist of both verbal and figurative components (as the contested sign does), in principle, 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). Furthermore, the black rectangular background will be perceived as a banal, commonplace element and, therefore, as being non-distinctive.

In terms of dominance, the contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements. The earlier mark has no dominant element due to its nature (word mark).

Visually, the signs coincide in the letters ‘TE*BOND’. They only differ in their third letter, ‘C’ in the earlier mark versus ‘K’ in the contested sign, and in the figurative aspects of the contested sign, which, however, have lower impact on the consumer’s perception for the reason given above.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‘TE*BOND’, present identically in both signs, in the same order. Moreover, they are composed of the same number of syllables and have the same rhythm and intonation. The signs only differ in the sound of their third letters, ‘C’ versus ‘K’, which, however, will be pronounced identically by English-speaking consumers.

Therefore, the signs are aurally highly similar for part of the public, while for the remaining part of the public they are aurally identical.

Conceptually, reference is made to the previous assertions, which lead to the finding that for part of the public the signs are conceptually identical, while for the other they are conceptually similar at least to an average degree to the extent they coincide in the notion of technology.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, as already concluded above in section I of this decision, the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, considering the assertions made in section c), the earlier mark as a whole is distinctive for the non-English-speaking public and of a low degree of distinctiveness for the English speakers.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all the factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Account must also be 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 with 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).

As concluded above, the contested goods are partly identical, partly similar (to varying degrees) and partly dissimilar to the opponent’s goods. Those found to be identical and similar (to varying degrees) target the public at large and business customers with a degree of attention varying from average to higher than average. The earlier trade mark has a normal degree of inherent distinctiveness for part of the public and a lower degree for the other.

The signs in dispute are visually similar to a high degree, aurally either identical or similar to a high degree, and conceptually either identical or similar at least to an average degree, as explained above. They have six out of seven letters in common and they only differ in their third letter and the figurative aspects of the contested sign. However, these differences are, in the Opposition Division’s opinion, not sufficient to counteract the similarities between the signs, which result in very similar visual and aural impressions given by the signs.

Even where the earlier mark is perceived as less distinctive, there are no elements that truly allow the marks to be distinguished, and, in any event, the Court has emphasised on several occasions that a finding of a low degree of distinctive character for the earlier trade mark does not prevent a finding of a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the public in the relevant territory, and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 2 202 588.

It follows from the above that the contested sign must be rejected for all the goods found to be identical or similar (to varying degrees) to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

III. REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient.

The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark. In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Following the assessment of the evidence submitted by the opponent in section I of this decision, and given that this evidence was found insufficient to prove enhanced distinctive character of the earlier trade mark and that a reputation requires a high threshold, the Opposition Division finds that this evidence does not demonstrate that the earlier trade mark acquired a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence that could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

IV. FINAL CONSIDERATIONS AND CONCLUSION

The opponent has also based its opposition on the United Kingdom trade mark No 1 214 892 for the word mark ‘TECBOND’. In its observations of 21/10/2019, the applicant argued that this earlier trade mark had not been substantiated by the opponent since the certificate submitted with the notice of opposition on 29/10/2018 did not include the list of goods for which the mark had been registered. However, whether or not this earlier right has been substantiated in the course of the proceedings finally remains irrelevant. In other words, it would have no material effect on the outcome reached above given that this trade mark is identical to that that has already been compared above and covers the same scope of goods in Class 1 (i.e. adhesives).

It follows that the opposition is partially well founded on the ground of Article 8(1)(b) EUTMR. It is upheld for those contested goods found identical or similar (to varying degrees), and rejected for the remaining, dissimilar goods, namely rub down transfers; stickers [stationery]; washi in Class 16 and rubber, raw or semi-worked; gutta-percha in Class 17.

The opposition is also rejected on the ground of Article 8(5) EUTMR for these remaining contested services.

V. COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vanessa PAGE

Martin MITURA

Kieran HENEGHAN

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.