777 | Decision 0010756
Date Published: May 17, 2018
CANCELLATION No 10 756 C (INVALIDITY)
Stéphane Humbert, 34 rue de Poitou, 75003 Paris, France (applicant), represented by François Lesaffre, 65, rue Violet, 75015 Paris, France (professional representative)
a g a i n s t
Intertrade Europe S.R.L., Via Portogallo, 11 int. 125 BL. 12, 35127 Padova, Italy (EUTM proprietor), represented by Gallo & Partners S.R.L., Via Rezzonico 6, 35131 Padova, Italy (professional representative).
On 18/01/2017, the Cancellation Division takes the following
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 11 417 185 ‘777’ (word mark), filed on 12/12/2012 and registered on 19/09/2014. The application is based on an earlier European Union trade mark registration, No 11 106 226 ‘STEPHANE HUMBERT LUCAS 777’, and on a French copyright. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) and (5) EUTMR, Article 53(2)(c) EUTMR and Article 52(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that he is a creator of perfumes and that he started negotiating for the French department store Le Printemps to start selling his ‘STEPHANE HUMBERT LUCAS 777’ (which was registered as an EUTM following an application filed on 08/08/2012) in October 2012. At that time, the EUTM proprietor, which also had a shared counter in Le Printemps, learned about this planned launch and filed an application for the EUTM ‘777’ for perfumes itself. After that, it persuaded Le Printemps to ban the applicant from selling his perfumes in Le Printemps and several disputes are ongoing between the two parties. According to the applicant, the events described (supported by various documents, listed below) demonstrate that the EUTM proprietor filed the mark in bad faith.
Moreover, the applicant argues that there is a likelihood of confusion between the contested mark and his earlier mark ‘STEPHANE HUMBERT LUCAS 777’ on account of the coinciding element ‘777’ and the identity or similarity of the goods. The applicant asserts that the mark has a reputation, mostly based on sales figures from Le Printemps and from Harrods (London). He argues that the use of the contested mark gives the EUTM proprietor an unfair advantage, to the applicant’s detriment.
Finally, the applicant submits a logo and claims that he owns the copyright to that logo and that the contested mark infringes the copyright. He submits a copy of the French Intellectual Property Code regarding copyrights.
The EUTM proprietor points out that the Office decided on the likelihood of confusion between the same marks in earlier opposition proceedings B 2 134 784, concluding that there was no likelihood of confusion. Therefore, the bad faith claim cannot succeed for this reason alone. Moreover, the EUTM proprietor emphasises that it did not know about the applicant’s plan to launch the mark and submits emails showing that it had already requested an availability search for the mark ‘777’ in November 2012. It argues that it created the mark following commercial contacts with Arab countries, where the number seven has a special meaning, and that it appears three times because three is another number with a cultural significance.
Furthermore, both parties maintain their positions, elaborate on their previous arguments and give more information about other disputes between the parties, including several decisions of French courts as regards infringement claims and even criminal proceedings.
LIKELIHOOD OF CONFUSION – ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH 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.
- The goods
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.
The goods on which the application is based are the following:
Class 3: Parfum.
The contested goods are the following:
Class 3: Soaps; Perfumery, essential oils, cosmetics, hair lotions; Perfumes; Preparations for perfuming the atmosphere; Preparations for use as room perfumes; Room scenters.
Class 4: Perfumed candles.
Contested goods in Class 3
The contested perfumes and perfumery are synonymous with the applicant’s parfum. Therefore, they are identical.
The contested essential oils have the same nature and purpose as the applicant’s goods. These goods also target the same public and are distributed through the same channels and manufactured by the same undertakings. Consequently, they are similar to a high degree.
The contested cosmetics are similar to a high degree to the applicant’s parfum, as the goods have the same purpose – namely improving one’s general appearance, including odour – they are sold through the same distribution channels to the same end consumers and they can have the same producers.
The contested soaps also serve, in addition to their main purpose – namely cleaning and personal hygiene – to impart a pleasant smell to the body after washing. They have this in common with the applicant’s parfum. Moreover, these goods may be produced by the same entities and they are sold through the same distribution networks to the same public. Consequently, these goods are similar.
The contested hair lotions have certain points in common with the applicant’s goods. They serve the same general purpose – namely improving one’s appearance, including by imparting a pleasant smell – and they are sold through the same distribution channels to the same relevant public. On the other hand, their natures are different and they are not normally produced by the same entities. Therefore, these goods are similar to a low degree.
The contested preparations for perfuming the atmosphere, preparations for use as room perfumes and room scenters have points in common with the applicant’s goods. They have the same distribution channels, target the same users and may be produced by the same companies. These goods are similar.
Contested goods in Class 4
The contested perfumed candles and the applicant’s parfum have different natures, purposes and methods of use. They are not purchased in the same stores and it is not common for these goods to originate from the same producers. Moreover, they are not in competition or complementary. Therefore, these goods are considered dissimilar.
- 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 various degrees are directed at the public at large. The degree of attention will be average.
- The marks
STEPHANE HUMBERT LUCAS 777
Earlier trade mark
Contested trade mark
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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
Both marks are word marks. The earlier mark consists of the three names ‘STEPHANE’, ‘HUMBERT’ and ‘LUCAS’ followed by the number ‘777’. The contested mark consists solely of the number ‘777’. As they are both word marks, neither has a dominant (i.e. more visually striking) element. Likewise, none of the elements contained in either of the marks is more or less distinctive than other elements. All of the elements of the marks have an average degree of distinctiveness, since they do not have any meaning in relation to the relevant goods.
Visually, the signs coincide in the number ‘777’. On the other hand, they differ in the words ‘STEPHANE’, ‘HUMBERT’ and ‘LUCAS’ of the earlier mark, which have an average degree of distinctiveness. Since the marks coincide in one element but differ in three other distinctive elements of the earlier mark, which are, moreover, the first elements of the mark (consumers generally tend to focus on the first element of a sign when being confronted with a trade mark, as it is the part of the mark that catches their attention first), they are visually similar only to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the number ‘777’, pronounced according to the rules of each particular language. The pronunciation differs in the words ‘STEPHANE’, ‘HUMBERT’ and ‘LUCAS’ of the earlier mark. The marks differ in their beginnings, which will be pronounced first. The earlier mark is rather long and the first three words of this mark are not present in the contested mark. It is possible that consumers will not even pronounce the number in the earlier mark at all. Even if they do, the difference in pronunciation is significant and results from distinctive elements. The lengths and overall rhythms and intonations of the marks are different. Therefore, the marks are aurally similar only to a low degree.
Conceptually, the public in the relevant territory will perceive the meaning of the number ‘777’ in both marks. This number, however, does not have a specific connection to any event or year or any other particular connotation other than the abstract meaning of a three-digit number. The three word elements included in the earlier mark will be perceived by the relevant public as names, either as three first names put together or as the name of one person consisting of two first names and a surname or one first name and two surnames. Due to the coincidence of the signs in only the abstract meaning of a number without any specific context, and the difference in the presence of three names in the earlier mark, the marks are considered conceptually similar only to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 applicant, the earlier trade mark has a reputation in the European Union for perfumes. This 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).
The applicant submitted the following evidence to demonstrate the reputation of the earlier mark:
- An extract from the website http://www.printemps.com/magasins/marques depicting the department store Le Printemps and indicating that products under the brand ‘STEPHANE HUMBERT LUCAS 777’ are available in Le Printemps Haussmann (La Belle Perfumerie).
- An extract from the website http://departmentstoreparis.printemps.com/brands depicting the ‘STEPHANE HUMBERT LUCAS 777’ brand and presenting perfumes available in Le Printemps Haussmann (La Belle Perfumerie). The evidence is in English.
- A photograph of advertisement in a shop that cannot be identified from the image alone (said by the applicant to be Taizo in Cannes, France) for ‘777’ perfumes.
- A photograph of an advertisement for ‘777’ perfumes in a Harrods shop window.
- A press cutting from the Art Perfumery Magazine (a publication of the EUTM proprietor) dated November 2010 but containing no visible reference to the trade mark at issue. The article mentions only the name of the perfume creator Stephane Humbert Lucas in relation to the creation of the perfume SoOud. It states in addition that Stephane Humbert Lucas created turmoil in the artistic perfumery market with Nez à Nez.
- A copy of a page of Gala magazine, dated 06/02/2013 and containing an advertisement for perfume under the trade mark ‘777’.
- A sales overview of Harrods, dated 09/01/2015, stating that ‘777’ is ranked in position number 15 in the perfumery hall and position number 27 in perfumery and cosmetics.
- A document allegedly showing sales figures for goods under the earlier mark in Le Printemps for 2013.
- Advertisements published in Madame magazine on 07/05/2011 and 08/10/2011, mentioning the applicant as the creator of the brand soOud and advertising his new perfumes. No mention of the earlier mark can be found.
- A copy of a page from Sports Style magazine, from June 2012, giving information about the applicant’s smelling skills and his creation of the perfume Nez-à-Nez. No mention of the earlier mark can be found.
- An undated copy of a page from Harrods Magazine presenting various products, including the applicant’s new fragrance ‘777’.
- An invoice issued from Harrods to Allen and Price Limited for ‘Windows’, dated 15/08/2013, an invoice issued from Allen and Price to the applicant’s company S.H.L. for ‘Windows’, for GBP 8 000, dated 17/09/2013, an email explaining that ‘Windows’ is a type of sales show organised by Harrods, and documents showing payments related to arranging the ‘Windows’ show.
Having examined the material listed above, the Cancellation Division concludes that the evidence submitted by the applicant does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through use.
In invalidity proceedings, an invalidity applicant relying on enhanced distinctiveness or reputation must prove that its earlier right has acquired enhanced distinctiveness or reputation by the filing date of the contested EUTM, taking account, where appropriate, of any priority claimed (Article 53(1) EUTMR, second subparagraph).
In addition, the reputation or the enhanced distinctive character of the earlier mark must still exist at the time when the decision on the invalidity request is taken, given that the conditions set out in the first subparagraph of Article 53(1) EUTMIR are formulated in the present tense. Therefore, the applicant should also prove the enhanced distinctiveness of the earlier mark at the time of filing of the invalidity request, in which case, and unless there is proof to the contrary, the Cancellation Division will assume that it continues to exist at the time when the decision on invalidity is taken.
In the present case, the contested EUTM was filed on 12/12/2012 and the request for invalidity was filed on 21/04/2015. This means that the applicant had to prove the enhanced distinctiveness of the earlier mark at both points in time.
The Cancellation Division will first examine the proof of enhanced distinctiveness at the time of filing of the contested mark, that is, on 12/12/2012. Some of the documents submitted by the applicant are dated after 2012 and do not shed any light on the situation as it was in 2012. Others are undated. In any case, even the documents referring to the time before the filing of the contested mark, taken together with the undated documents, do not give any indication of the recognition of the mark among the relevant public.
The mere fact that goods under the mark may have been sold in two well-known department stores in France and in the UK is not sufficient to demonstrate the degree of recognition of the trade mark by the relevant public. The references in some articles and advertisements to the applicant as a natural person are of no relevance regarding the reputation of the contested mark. Those articles mention the applicant as a person and creator of perfumes but do not mention the earlier mark ‘STEPHANE HUMBERT LUCAS 777’ as a trade mark identifying the commercial origin of perfumes. In any case, the articles are too few to allow a conclusion that a significant part of the public would recognise even the name of the applicant himself.
The statement that the applicant ‘caused turmoil in the artistic perfumery market’ must not be overestimated, as, first, it speaks about the applicant in connection with a different trade mark and, second, it is written in a publication of the EUTM proprietor at the time when the two parties were in cooperation and, therefore, the article has to be interpreted in this context as more of an advertisement for a common project than objective information about the applicant’s importance on the market.
Overall, the evidence, taken as a whole, provides some indication of use of the trade mark but gives no indication at all about any degree of recognition of the mark among the public. The applicant claims that he has made a major investment in promoting the new perfumes under the ‘STEPHANE HUMBERT LUCAS 777’ mark, but no evidence has been submitted to support this claim.
Under these circumstances, the Cancellation Division concludes that the applicant has failed to prove that his trade mark had acquired a high degree of distinctiveness through its use at the time of filing of the contested mark.
Consequently, 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 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16). In addition, the global assessment of the risk of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity between the trade marks and the similarity between the goods or services. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
The goods are partly identical, partly similar to various degrees and partly dissimilar. The earlier mark has an average degree of distinctiveness and the consumers’ degree of attention is average.
The marks are visually, aurally and conceptually similar on account of the number ‘777’. They differ in the words ‘STEPHANE HUMBERT LUCAS’, present in the earlier sign. The earlier mark contains elements not included in the contested mark, namely the words ‘STEPHANE HUMBERT LUCAS’, which lead to considerable differences between the signs in all three aspects of the comparison.
As mentioned above, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The additional elements of the earlier mark are placed at its beginning, and the coinciding element is the last of the mark’s four components.
The differing elements are distinctive, they are at the beginning of the sign and they make the earlier mark several times longer than the contested one. Therefore, the overall impressions produced by the marks are different.
Therefore, in spite of the coincidence in the number ‘777’, the Cancellation Division considers that the element that the marks at issue have in common is outweighed by the differences between them, which are sufficiently significant to exclude a likelihood of confusion on the part of the public.
Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the cancellation application must be rejected insofar as it is based on Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.
REPUTATION – ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR
Pursuant to Article 53(1)(a) EUTMR, a European Union trade mark shall, on request to the Office, be declared invalid where there is an earlier mark as referred to in Article 8(2) EUTMR and the conditions set out in Article 8(1) or (5) EUTMR are fulfilled.
According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are 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 European Union and, 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 of refusal of Article 8(5) EUTMR are applicable in the context of invalidity proceedings only when the following conditions are met.
a) The signs must be either identical or similar.
b) The earlier 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 application for a declaration of invalidity is based.
c) Encroachment upon reputation: the use 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.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for declaration of invalidity under Article 8(5) EUTMR (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).
- Reputation of the earlier trade mark
The applicant claims that the earlier mark has a reputation throughout the European Union for perfumes.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
As explained above, the applicant has to prove the reputation of the earlier mark both at the time of filing of the contested EUTM and at the time of filing of the invalidity request.
The evidence submitted by the applicant to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, namely that the evidence does not prove that the earlier mark had acquired, at the time of filing of the contested mark, an enhanced degree of distinctiveness. Consequently and for the same reasons, the evidence is not sufficient to prove the reputation of the earlier mark.
As seen above, it is a requirement for the invalidity application to be successful under Article 53(1)(a) EUTMR in conjunction with Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that, at the time of filing of the contested mark, the earlier trade mark had a reputation, one of the necessary conditions contained in Article 8(5) EUTMR has not been fulfilled, and the application must be rejected also insofar as it was based on these grounds.
ARTICLE 53(2)(c) EUTMR – COPYRIGHT
According to Article 53(2)(c) EUTMR, a European Union trade mark shall be declared invalid on application to the Office where the use of such trade mark may be prohibited pursuant to another earlier right under the Union legislation or national law governing its protection, and in particular a copyright.
Pursuant to Rule 37 EUTMIR, the application for a declaration of invalidity must contain particulars of the right on which the application is based and particulars showing that the applicant is the proprietor of an earlier right as referred to in Article 53(2) EUTMR or that it is entitled under the national law applicable to claim that right.
In the present case, the applicant claims that he owns the copyright under the law of France to the following image: . The applicant submitted a copy of the French Intellectual Property Code regarding copyright, translated into English.
Without even assessing the question of whether or not the applicant proved his ownership of the copyright to the abovementioned image, the Cancellation Division notes that copyright relates to a ‘work of mind’, according to the translation of the French Intellectual Property Code submitted by the applicant (Article L111-1). While the image invoked by the applicant can be considered to be a work of mind, the contested mark, namely a word mark consisting of the number ‘777’ in a standard typeface without any specific graphic depiction or other graphic features, is not the subject of a copyright, as it is not a work of mind but a mere natural number. The contested mark does not reproduce any of the features of the image shown above that could be protected by copyright. A mere standard depiction of a number does not encroach on or infringe the copyright to the image invoked by the applicant. Therefore, the use of the contested mark cannot be prohibited pursuant to the copyright to the image on which the application is based.
Consequently, the application must be rejected insofar as it is based on Article 53(2)(c) EUTMR.
BAD FAITH – ARTICLE 52(1)(b) EUTMR
Article 52(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.
There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, § 60).
Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37).
The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.
Assessment of bad faith
The case-law shows four cumulative factors to be particularly relevant for the existence of bad faith:
- Identity/confusing similarity of the signs;
- the EUTM proprietor’s knowledge of the use of an identical or confusingly similar sign;
- dishonest intention on the part of the EUTM proprietor;
- the degree of legal protection enjoyed by both signs.
Before assessing the parties’ arguments, the Cancellation Division notes that the first condition mentioned above is not fulfilled as regards the contested mark and the applicant’s mark ‘STEPHANE HUMBERT LUCAS 777’. As explained above in the section on likelihood of confusion, there is no likelihood of confusion between the contested mark and the applicant’s mark. Therefore, the bad faith claim must be dismissed for this reason alone as regards the applicant’s mark ‘STEPHANE HUMBERT LUCAS 777’.
However, the applicant also claims that the EUTM proprietor knew about the applicant’s intention to launch the mark ‘777’ before the filing of the contested mark. To this effect, the applicant submitted his email correspondence with France de Foucher and several declarations of persons allegedly working at the EUTM proprietor’s counter. The first email is from the applicant to France de Foucher, dated 11/10/2012, in which the applicant sends ‘the first elements regarding the brand 777’. In this email, the applicant requests that all correspondence be sent to his email address. A few other emails were exchanged regarding the brand. Moreover, the applicant submitted a declaration by Alain Christian Michel Gargatte, who states that the entire team of the Art Selection counter (a perfume counter of Hi France and the EUTM proprietor) was informed in November 2012 of the setting up of Stephane Humbert Lucas’s brand 777 and, in early December 2012, the CEO of the EUTM proprietor stopped by and asked the employees about the brand. In another declaration, Ms Elodie Monique Vigoreux states that she worked for Printemps Haussman from May 2012 to January 2013 and she confirms that the sales teams of the different counters were informed in the course of November 2012 of the setting up of Stephane Humbert Lucas’s brand 777. The applicant relies heavily on a letter dated 12/12/2013 from Hi France (the company that shared the counter and also the CEO with the EUTM proprietor) to Yann Claude, which dismisses him from his employment at the Art Selection counter for serious misconduct, one of the reasons being his ‘absence on the Art Selection counter and presence on the counter of the mark 777 created by your brother-in-law’. The applicant explains that he is the brother-in-law mentioned, as Mr Claude’s sister is the applicant’s partner. He argues that this proves that even a company connected with the EUTM proprietor itself admits that the mark ‘777’ was created by the applicant.
The EUTM proprietor responds that it did not know about the applicant’s intention to launch the mark and submits evidence that it had already started to prepare the registration in November 2012. The earliest document is an email from 07/11/2012 requesting an investigation of whether or not the mark ‘777’ had been registered for perfumes. The EUTM proprietor also submits a declaration by Gwenaelle Artur, who claims to have written the letter of dismissal and clarifies that by the mark ‘777’ she meant the applicant’s mark ‘STEPHANE HUMBERT LUCAS 777’.
The burden of proof is on the applicant. The applicant submitted email communications demonstrating that in October 2012 he had revealed his plans to launch the perfume ‘777’ on the market to an entity called France de Foucher. There is no indication that France de Foucher informed the EUTM proprietor about the applicant’s intentions. The EUTM proprietor demonstrates that at the beginning of November 2012 it enquired about the availability of the mark ‘777’ for perfumes. Following a report that made it clear that the mark was not protected in Europe, the EUTM proprietor filed the application in December 2012. The applicant also submits declarations by two persons who state that the staff at the counters in Le Printemps knew, in November 2012, about the planned launch of the perfume ‘777’ by the applicant. However, at that time the EUTM proprietor had already taken steps to register the mark. Therefore, the documents submitted are inconclusive as regards proof that the EUTM proprietor applied for the mark because it knew about the applicant’s intention to launch the mark on the market. Moreover, according to Lindt (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361), the factor to consider is whether or not the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought (emphasis added). In the present case, the applicant demonstrated not that he had been using the sign at the time of filing of the application for the contested mark, but merely that he had planned to launch a perfume under the sign on the market.
The letter of dismissal mentioning the applicant’s mark ‘777’ cannot be interpreted as a confession that the EUTM proprietor stole the mark from the applicant. It was drafted a year after the events described above and, from the various decisions of French courts submitted by both parties, it is clear that the applicant was already in dispute with the CEO of the EUTM proprietor. From the evidence submitted by the applicant showing flasks of the applicant’s perfumes, it is apparent that the main feature of the packaging was the logo including the number ‘777’ as presented above in the section of this decision about copyright. It is perfectly conceivable that the reference ‘777 created by your brother-in-law’ serves in the letter merely to distinguish these perfumes sold at the applicant’s counter from the ‘777’ brand belonging to the EUTM proprietor. The applicant’s argument that the fact that someone refers to its mark ‘STEPHANE HUMBERT LUCAS 777’ only as ‘777’ means that there is a likelihood of confusion between the two marks has to be dismissed. If the applicant used the mark as shown in the evidence submitted, that is, , this constitutes use not of the mark ‘STEPHANE HUMBERT LUCAS 777’ but of a different mark consisting of the number ‘777’ and a figurative element. Clearly, the usual way to refer to this mark would be ‘777’.
The burden of proof is on the applicant. The applicant failed to demonstrate that he had been using the mark ‘777’ at the time of filing of the application for the contested mark. He also failed to demonstrate convincingly that the EUTM proprietor knew about the applicant’s intention to launch that mark on the market at the time when the EUTM proprietor took the first steps to register the mark. The fact that there are other disputes between the parties does not influence this finding. Consequently, it cannot be concluded that the EUTM proprietor’s intentions at the time of filing of the contested mark were dishonest.
As the bad faith of the EUTM proprietor at the time of filing of the contested mark has not been shown, the application for a declaration of invalidity must be rejected also insofar as it is based on the ground of Article 52(1)(b) EUTMR.
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, he must bear the costs incurred by the EUTM proprietor in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Carmen SÁNCHEZ PALOMARES
José Antonio GARRIDO OTAOLA
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.