Date: 2 June 2019
A recent EUTM opposition decided by the General Court (LA Superquimica v D-Tack; T-24/17) shows what EU practitioners are up against when relying on online databases to access official registers of national and regional IP offices. However, the decision also reminds us that alternatives to obtaining information from the Internet still exist.
The EUTM applicant, a German manufacturer and wholesaler of adhesive tapes, applied to register the trade mark D-TACK for goods in Classes 1, 17 and 35, including chemicals, adhesive tapes and bands, and retail services. The EUTM application was opposed by the Spanish company LA Superquimica, SA, based on a number of their earlier Spanish trade marks registered for goods including adhesive materials, as shown below. LA Superquimica’s marks included the word mark TACK and the following figurative marks in Class 16:
The following figurative mark in Class 17:
And the following figurative marks in Classes 16 and 17:
Both the Opposition Division and the Fourth Board of Appeal rejected the opposition. The key finding was that proof of existence of the earlier marks (other than the earlier word mark TACK) had not been provided, as the extracts from the Spanish Trade Mark Office’s SITADEX database submitted by Superquimica did not include representations of the marks. Superquimica had submitted representations of the various figurative marks on loose sheets of paper with no indication of their source. Because such representations were of unknown origin, they were not sufficient to substantiate the earlier marks. Further, the evidence of use of the earlier word mark TACK was found insufficient to demonstrate genuine use.
Superquimica appealed, claiming that at the time of filing the opposition, the SITADEX database for technical reasons did not reproduce representations of the earlier figurative trade marks. At the appeal stage, Superquimica submitted new extracts from the SITADEX database in Spanish which included the representations of the earlier trade marks, since the technical problems had been solved. However, the Board of Appeal took the view that “The claimed technical problems, irrespective of whether or not these existed indeed at the time the opponent had to substantiate its earlier rights, are not a proper justification for not having substantiated the earlier marks”.
Superquimica appealed to the General Court, claiming that it could not be criticised for not providing evidence within the timeframe, given that the Sitadex database was not accessible within the period prescribed by EUIPO for producing that evidence. In addition, Superquimica argued that it had produced many items of evidence of genuine use of its earlier signs, including invoices, labels, brochures, a manual, catalogues and extracts from Internet sites.
The General Court upheld the rejection of Superquimica’s opposition. The Court concurred with the earlier findings that the rules regarding the precise documents that Superquimica had to produce in support of the existence, validity and scope of protection of the earlier marks were clear and had been brought to Superquimicia’s attention by the EUIPO. The technical problems with the Sitadex database were not a proper justification for the absence of evidence of the renewal of the earlier marks. Instead of printing representations of the earlier marks as part of the SITADEX extracts, Superquimica should have considered the other options available for providing colour representations of the earlier marks from an official source which included, inter alia, a copy of the relevant page of the Boletín Oficial de la Propiedad Industrial (Spanish Official Intellectual Property Gazette) or a copy of the relevant certificate of registration.
Moreover, the documents submitted late were all in Spanish and, in the absence of a translation into the language of the proceedings, they would not have been taken into account anyway. The Board had therefore been correct to exercise its discretion and find that the late evidence (i.e. the new extracts from the Sitadex database) could not be taken into account.
The General Court also endorsed the Board’s decision that the evidence provided did not show use of the earlier TACK mark in the form under which it had been registered or in a form which could be regarded as acceptable, given that genuine use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services by enabling the consumer or end user to unequivocally distinguish the trade origin of the product or service.
There was no evidence that the mark “TACK” was used independently from the element “CEYS” and the element “tackceys” often appeared with one or more additional elements, such as “bricocinta”, “crick” or “cristal”.
As the Board found, the two elements “tack” and “ceys” always appeared conjoined, forming an indivisible unit and, even though the element “ceys” was smaller and represented in a different colour and font type, it was still clearly visible and did not occupy a secondary or ancillary position in the overall impression produced by the combination ‘tackceys’. The Court concluded that the Board had been correct to find that the addition of the element “CEYS” altered the distinctive character of the word mark “TACK”.