EU court sides with German tape manufacturer in TM opposition
The EU General Court yesterday upheld an earlier decision to refuse a trademark opposition surrounding adhesive tape on the ground of insufficient evidence.
In December 2010, Germany-based adhesive tape manufacturer D-Tack filed a trademark application at the European Union Intellectual Property Office (EUIPO) for the word sign ‘D-Tack’.
The applied-for trademark covered goods including chemicals, adhesive tapes and bands, and retail services.
In May 2011, Barcelona-based LA Superquimica filed a notice of opposition based on its earlier Spanish word mark for ‘Tack’ and five Spanish figurative marks comprising the word ‘Tack’ followed by the word ‘ceys’.
Superquimica’s earlier marks were registered for goods including adhesive materials. The five figurative marks were registered between 2002 and 2006 and the word mark was registered in 1973 and renewed until 2019.
Also in May 2011, the EUIPO informed Superquimica that it had until September 30 that year to provide relevant evidence that the word sign ‘Tack’ had been filed or registered.
The EUIPO added that the opposition would be rejected without any examination if the evidence supporting the earlier rights was not filed within the given time limit or was insufficient.
After a request from the parties, the cooling-off period was extended and Superquimica was invited to submit additional evidence by September 11, 2014, three years later.
Although the company submitted its arguments in support of its opposition on September 10, 2014, it did not submit any further evidence to substantiate its earlier rights.
The company then provided further evidence of its earlier marks in January 2015 following a further extension.
However, the Opposition Division said in August 2015 that no official documents concerning the representation of the earlier figurative marks had been produced by Superquimica and that the evidence of use for ‘Tack’ was insufficient. The opposition was subsequently rejected.
In September 2015, the company filed a notice of appeal at the EUIPO and submitted new extracts from the Sitadex database of the Spanish Trade Mark Office. Sitadex is the official trademark registry of Spain.
The EUIPO’s Fourth Board of Appeal dismissed the appeal.
Superquimica argued before the General Court that it should not have been criticised for not providing evidence within the timeframe, because the Sitadex database was not accessible within the period.
According to the board, the technical problems with the database were not a proper justification.
The board said that the documents submitted late were all in Spanish and could not have been taken into account.
Superquimica also argued that it had produced many items of evidence of the use of the signs at issue including invoices, labels and brochures.
The company claimed that the EUIPO was wrong to hold that the elements which differ between its signs do not alter the distinctive character of the earlier trademark ‘Tack’. For example, the element ‘ceys’ is separate from the word ‘Tack’, argued Superquimica.
However, the General Court said the board was correct to conclude that the invoices did not contain any indication of the earlier word mark ‘Tack’ and that the elements ‘Tack’ and ‘ceys’ appear as a single word in the evidence.
“Even though, as the EUIPO notes, the form of use of a trademark on invoices cannot be considered decisive, it must be stated that the element ‘tackceys’ on the invoices, and in the text of the brochures and catalogues, will be perceived as an indivisible unit, the two words being conjoined,” said the court.
The General Court concluded that Superquimica failed to show any solid evidence of use of the earlier trademarks and that the addition of the element ‘ceys’ alters any distinctive character.
The General Court upheld the EUIPO’s decision and Superquimica was ordered to pay the costs.
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