CANCELLATION No 13800 C (INVALIDITY)

Apple Inc., One Apple Park Way, Cupertino, California, 95014, USA (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft Mbb - Patentanwälte Rechtsanwälte, Postfach 10 71 27 28071 Bremen, Germany (professional representative)

a g a i n s t

e*Message Wireless Information Services GmbH, Schönhauser Allee 10 – 11, 10119 Berlin, Germany (EUTM proprietor), represented by Durm Patentanwälte PartG mbB, Moltkestr. 45, 76133 Karlsruhe, Germany (professional representative).

On 25/10/2018, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 1 548 619 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 1 548 619, , (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM namely:

Class 9: Computer programs recorded on data carriers and data files; computer software, included in class 9, in particular for telecommunications and digital data transmission; video conference systems and installations, mainly comprising communications protocols, software and equipment for transmission of sound, image and/or multimedia data, and software and equipment for input and/or output of sound and/or image data (included in class 9); multimedia equipment and components therefor (included in class 9); equipment and software for video-on-demand (included in class 9); routers; telecommunications equipment; gateways; exchanges for public and proprietary digital and analog networks; switches for public and proprietary digital and analog networks; digital networks; network management systems; telecommunications apparatus, in particular ISDN terminals and ISDN telephone installations; ISDN telecommunications boxes; ISDN cards, in particular for personal computers; PC cards; PCMCIA cards; modems; apparatus for recording, transmission, processing or reproduction of sound and/or images and/or data; apparatus and equipment for telecommunications technology; image and/or sound data carriers and/or data carriers of all kinds with or without programs and/or data files, in particular floppy disks, magnetic tapes, cassettes including video cassettes and tape streamers, hard disk memories and read-only memories (ROM), RAM and plug-in modules, optical memories (except exposed and unexposed films) including CD-ROMs and WROMs; audio CD-ROMs, music cassettes; data processing equipment and computers, including microcomputers, and peripheral equipment therefor, including visual display units, modems, printers, external memories; microprocessors and other electronic component parts for computers.

Class 38: Telecommunications; provision of ISDN services; communications services, namely electronic computing centres, electronic mailbox systems and computer centres for arranging electronic data transfer; online services and services relating to computer networks, in particular the Internet, namely providing directories, operator services, protocol conversion, providing access points and network infrastructures for transmission of sound, image and/or data (included in class 38); operation of a telecommunications network, in particular a mobile radiotelephone network or satellite-supported telecommunications network; on-line services, namely the supplying, transmission and sending of information and messages of all kinds; electronic mail.

Class 42: Computer programming; writing and publishing reports in the field of computer science and data processing; conducting tests on goods in connection with electronic data processing systems, electronic data processing apparatus and electronic data processing programs; development and testing of electronic communications, word processing and data processing systems; providing, development, enhancing and adjusting of data processing programs and/or data files (including multimedia and home pages) for others, issuing of licences for data processing programs, including computer games and video games and data files; database services, namely leasing access time to a computer database and operating databases, as well as gathering and supplying of data, messages and information, including for the purpose of arranging transactions and services of all kinds.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the expression “e message” stands for “electronic message” and that the mark as a whole therefore is descriptive in relation to the registered goods and services since it contains a direct statement about their purpose, type and/or mode of delivery.

The applicant refers to EUTM No 5 004 445, EMESSAGE, for goods in classes 35, 28 and 41, which was refused by the EUIPO, and EUTM No 1 517 259, e*Message, for goods and services in classes 9, 38 and 42 (identical to those the present mark), which was withdrawn, presumably because of an official action refusing the registration. It also refers to other marks consisting of the prefix “e“, and a further descriptive term which have been refused by the EUIPO.

The applicant also refers to a web search which reveals that the term “e message” is used extensively to refer to the exchange of messages via electronic means. The applicant is of the opinion that even if the use of the term was taken up after the filing date of the contested registration, this evidence is still very relevant since it demonstrates the overriding public interest in keeping the term freely available for other undertakings to use.

As for the graphical and figurative elements of the mark, the applicant holds that they do not add distinctiveness to the mark, and that they are not sufficient to distract the attention of the consumer from the descriptive meaning of the words “e message”. The applicant refers to several trade marks which have been refused by the EUIPO consisting of the letter “e” and a descriptive component with the letter “e” colored, highlighted or otherwise standing out.

In support of its observations, the applicant filed the following evidence:

• Exhibit A1: Copies of the EUIPO’s refusals of EUTM No 1 249 093, E-MANAGEMENT, dated 08/02/2000, and EUTM No 918 896, e-law, dated 04/02/2000.

• Exhibit A2: A dictionary definition of the word “message” from Oxford Dictionaries Online.

• Exhibit A3: Copy of EUIPO’s refusals of EUTM application No 623 454, ZONEMESSAGE, dated 29/03/1999.

• Exhibit A4: Copy of EUIPO’s refusal of EUTM application No 5 004 445, EMESSAGE, dated 04/01/2007.

• Exhibit A5: A printout from the EUIPO’s database of the details of EUTM application No 1 517 259. e*Message.

• Exhibit A6 a: A printout from the Darts-IP database listing decisions for refused marks conjoining the letter “e” and a descriptive term.

• Exhibit A6 b: A printout from the Darts-IP database of decisions of the Board of Appeal which upheld appeals against refused marls consisting of the letter “e” and a descriptive term.

• Exhibit A7: Printouts of web sites which feature the term “e-message”.

• Exhibit A8: Printouts of web sites which feature the term “emessage”.

• Exhibit A9: A printout from the website www.linotype.com explaining the typeface Serpentine.

The EUTM proprietor argues that contested registration was applied for in March 2000, i.e. 17 years ago, and states that back then the registration could only have been refused if the word/figurative mark in its entirety had been devoid of any distinctive character. The EUTM proprietor holds that the applicant did not bring forward any proof that the “e message” was a common expression for goods and services in the field of telecommunications in the year 2000. It also argues that neither “e message”, “emessage”, nor “E-message” are words in the English language and states that electronic text messages have been and are termed e.g. “email” or “SMS”, not “e message”.

The EUTM proprietor points out that the EUIPO has found that the component “e* on its own was considered to be sufficiently distinctive in relation to for instance telecommunication services (EUTM No 1 625 821).

In the EUTM proprietor’s opinion, the ultra large letter ”e” with its unusually shortened lower line and in colour makes for an overall visual impression that cannot be disregarded when the distinctiveness of the sign is assessed.

The EUTM proprietor refers to EUIPO’s acceptances of a number of marks which it finds are basically identical in form to the contested mark. It specifically refers to EUTM No 3 268 893, ‘e*notice’, EUTM No 12 617 684, ‘e*warn’, and EUTM No 12 617 783, ‘e*nergy’.

In addition, the EUTM proprietor states that it has used the mark in question intensively in the past 16 years in Germany and France, in particular for mobile radio services and related services. It refers to the proof of use it has filed in the parallel revocation case No. 13798 C, and also refers to Google searches for the terms “e message” and ”emessage” in which the first results refer to the EUTM proprietor itself. It also refers to Wikipedia articles where the terms “emessage” and “e*message” are mentioned only as trade marks and short forms of its company name.

It further states that competitors are not dependent on using the terms “e message” and “e*message” freely as the technical terms are “Nachrichten”, “Textnachrichten” or “SMS”.

In support of its observations, the EUTM proprietor filed the following evidence:

• Exhibit A1 - A4: Print-outs from the German-English online dictionary LEO at https://dict.leo/ for the terms “e message”, “emessage”, “e mail”, and “email”.

• Exhibit A5: An extract from EUIPO’s esearch website with information about EUTM No 1 625 821, e*.

• Exhibit A6: An extract from EUIPO’s esearch website with information about EUTM No 3 268 893, e*notice.

• Exhibit A7: An extract from EUIPO’s esearch website with information about EUTM No 12 617 783, e*nergy.

• Exhibit A8: An extract from EUIPO’s esearch website with information about EUTM No 12 617 684, e*warn.

• Exhibit A9: A Google search for the term “emessage”.

• Exhibit A10: A Google search for the term “e message”.

• Exhibit A11: Wikipedia definition for the term “Funkrufnetz” in German.

• Exhibit A12: Wikipedia definition for the term “E*Cityruf” in German.

• Exhibit A13: Wikipedia definition for the term “iMessage” in German and English. .

• Exhibit A14: Print-out of an article with the heading “Nachrichten auf dem IPhone, iPad oder iPad touch verwenden”.

In its reply, the Applicant repeats the previous arguments an adds that the EUTM Proprietor’s claim that it did not submit any proof that the term “e message” was a common expression for the goods and services when the application was filed, is irrelevant as long as it was able to serve in trade to designate the characteristics of the goods and services claimed as indicated by Article 7(1)(c) EUTMR. The applicant refers to the evidence it filed in the application for a declaration of invalidity regarding the letter “e” and the word” “message”, which it claim show that the term as a whole is descriptive.

As regards the figurative elements of the mark, the applicant emphasises that the font Serpentine is a widely used standard font. It is of the opinion that the slightly modified fonts of the letters “e” and “g” in the contested mark does not change the overall impression of the mark and will not divert the relevant consumers from the meaning conveyed by the word element “e message”. The applicant refers to recent case law of the General Court and the Boards of Appeal which confirmed the refusals of figurative marks containing descriptive indications which feature more unusual figurative elements than the contested mark.

As for the EUTM proprietor’s claim that the mark has acquired distinctiveness through its long-term use in Germany and France, the applicant argues that the no evidence was submitted as regards the native English-speaking Member States, namely the UK, Ireland and Malta. In any case, very little evidence has been submitted and use has not been shown for many of the goods and services covered by the registration.

In its rejoinder the EUTM proprietor repeats that text messages are not usually referred to as “e message” or “emessage”, and that the component “e*” is sufficiently distinctive to render the mark as a whole distinctive. It also repeats that the contested mark has acquired distinctiveness due to intensive used in a large area of the European Union, in particular in relation to mobile radio services.

The EUTM proprietor also argues that the many examples of case law cited by the applicant relate to trade marks that do not have the least in common with the contested trade mark, and therefore these cases have no bearing on the present case.

In support of its observations, the EUTM proprietor filed the following evidence:

Exhibit A15: Extract from a Google search performed on 12/12/2017 for the term “emesssage”.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Considerations common to all the grounds invoked in conjunction with Article 59(1)(a) EUTMR, namely Article 7(1)(b) and (c) EUTMR

Relevant point in time

The Cancellation Division notes that the relevant point in time in respect of which the assessment on the claimed descriptive and non-distinctive character and of the sign must be made is the filing date. In other words, it is necessary to establish whether the term was seen as a term designating an essential feature of the goods concerned, or was perceived as non-distinctive in relation to those goods, at the time of its filing (i.e. 09/03/2000).

Relevant public

The contested EUTM is an English term. The relevant public in relation to the goods and services in question is therefore the English-speaking average consumer and professionals in the computer and telecommunications fields throughout the European Union.

The word elements making up the mark is the letter “e”, which is well-known abbreviation for “electric” and “electronic”, and the basic English word “message”. The relevant territory is therefore the whole European Union (the decision of 31/05/ 2018, R 1435/2017-1, IWATCH, paragraph 28). As English is the international language used in the computer and telecommunications fields, the relevant territory is the whole European Union, at the very least for the professional consumers.

Evidence that cannot be taken into account

The applicant:

The following evidence post-date the filing date of the contested mark:

Exhibit A4: The refusal is dated 04/01/2007;

Exhibit A8 – A9: The Exhibits feature the print-out dates, namely 19/09/2016 and 20/09/2016. Many also mention a year. In most cases the year is 2016, but also the year 2014, 2008 and “print of origin 2008-2015” are mentioned in the print-outs. It is also noted that in Exhibit 8 there is one print-out in French and one in German, which are not in English, the language of the proceedings.

The EUTM proprietor:

The following evidence only bear the print-out dates which post-date the filing date of the contested mark:

Exhibits A9, A10, A11, A12, A13, A14. Furthermore, Exhibits A11, A12, are not in English, the language of the proceedings, but in German.

The evidence post-dates the filing date:

Exhibit: A13.

EUTMs filed after the filing of the contested mark.

Exhibits: A5, A6, A7, A8, A9.

Descriptiveness – Article 7(1)(c) EUTMR

Indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Wrigley, EU:C:2003:579, § 31.)

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ 26/11/2003, T‑222/02, ROBOTUNITS, EU:T:2003:315, § 34).

The applicant claims that the term “e*message” stands for “electronic message” and that the mark as a whole therefore is descriptive in relation to the registered goods and services since it contains a direct statement about their purpose, type and/or mode of delivery.

The Cancellation Division concurs with the applicant that the letter and word combination “e message” stands for “electronic message”, and that the meaning was the same at the time of the filing of the contested mark.

The applicant shows that the prefix “e“ was recognised as a prefix meaning “electronic” at the time of the filing of the contested mark. This is evidenced by references to marks that were refused by the Office consisting of the letter e” together with a descriptive term, for instance EUTM 346 049 - , filed on 26/07/1996, EUTM 1 249 093 - E-MANAGEMENT, filed on 21/07/1999, and 918896 – e-law, filed on 31/08/1998. The fact that the letter “e” stands for “electronic” was proven by referring to among others the New Oxford Dictionary, (see EUTM 1 249 093 – E- MANAGEMENT), which gives the following definition: “E” which is commonly used in trade to designate “electronic”.

There is therefore no doubt that the letter “e” had the meaning “electronic” at the time of the filing of the contested mark. As for the word “message” it is a basic English word which is understood by all English-speakers, and denotes e.g. “a verbal, written, or recorded communication sent to or left for a recipient who cannot be contacted directly” https://en.oxforddictionaries.com/definition/us/message.

It is therefore clear that the term “emessage”, or “e message”, refers to a message that is sent by electronic means, and the term is, and was at the time of the filing of the contested mark, descriptive of any goods and services that in one way or other relate to electronic messages and the sending of such messages. The EUTM proprietor’s argument that other terms are used, such as SMS and email, is irrelevant and immaterial, as “e message” is a catch-all term which includes all kinds of electronically sent messages.

As regards the EUTM proprietor’s argument that the EUIPO has accepted other similar marks such as , and , it should be noted that each case must be examined on its own merits.

It is well established that the legality of a decision of the Board is to be measured solely against the Regulation, as interpreted by the EU courts, and not by the practice of the Office’s examiners in other decisions (see judgments of 10 March 2011, C-51/10 P, ‘1000’, paras 73 to 75 and of 16 July 2009, C-202/08 P and C-208/08 P, ‘RW feuille d’érable’, para. 57 and case-law cited therein).

Moreover, insofar as a certain inconsistency would have occurred with this or some other marks, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (see judgment of 10 March 2011, C-51/10 P, ‘1000’, para. 76 and case-law cited therein).

As regards the EUTM proprietor argument that the applicant did not prove that the sign “emessage” was a common expression for goods and services at issue at the time of the filing of the contested mark, for a sign to be refused registration it is not necessary that it be actually used in trade in a descriptive way; it is sufficient, as the wording of Article 7(c) suggests, that the sign may serve in trade to designate the goods and services or other characteristics thereof.

As the Cancellation Division has established that the letter and word combinations “emessage” and ”e message” were descriptive at the relevant point in time, it will now have to decide if the graphical elements of the mark renders it distinctive or not.

The mark is . The Cancellation Division shares the applicant’s view that the typeface in question is a basic typeface with no outstanding features. The slightly modified fonts of the letters “e” and “g” would hardly be noticed by the relevant consumers who will focus on the overall visual impression of the mark. The fact that the letter “e” is slightly bigger than the other letters in the mark and is in the colour orange would not be given any trade mark significance by the relevant consumers as it is very common in marketing to use a mixture of colours and bigger and smaller letters. In this case the bigger beginning letter “e” just emphasises the electronic character of the messages in question.

As for the asterisk (*) it is a common punctuation mark and would just be seen as such by the relevant consumers. Also, it is placed between the letter “e” and the word “message” and would therefore only be seen as something which separates the two word elements in the mark, that is, it will simply be seen as a replacement of a hyphen, which is usually used to separate the letter “e” from descriptive words, such as in the terms “e-mail” and “e-cigarette” to give a few examples.

The colour black is a basic colour which is profusely used in marketing, and the colour orange, which is featured in the beginning letter ”e” and the asterisk, is also basic and commonplace, and is a colour that is traditionally used to attract the consumers’ attention (see the decision of 03/11/2014, R 1188/2014-2, , § 32).

Therefore, the Cancellation Division concurs with the applicant that the figurative elements of the mark do not render the mark as a whole distinctive, and that the relevant public will simply view the mark in its entirety as a descriptive indication as detailed above.

The goods and services in question are those listed above and they may indeed be used in electronic messaging.

Firstly, it should be clarified that an “electronic message” is not only e-mails, but any kind of electronically sent messages including for instance text messages such as SMS, fax messages, and voice and video messages.

Class 9:

The term “e message”/”emessage” is descriptive of all the goods in Class 9 which may all relate to electronic messages in one way or other:

“Computer software, included in class 9, in particular for telecommunications and digital data transmission” may relate to the transmission and sending of electronic messages.

“Computer programs recorded on data carriers and data files” is a wide term and may include the goods above, that is, computer programs for the transmission of electronic messages.

“Video conference systems and installations, mainly comprising communications protocols, software and equipment for transmission of sound, image and/or multimedia data, and software and equipment for input and/or output of sound and/or image data (included in class 9)” can be used for sending e.g. video messages between video conference participants.

“Multimedia equipment and components therefor (included in class 9)”, “equipment and software for video-on-demand (included in class 9” and “telecommunications equipment” are wide terms which include for instance laptops, PCs and smartphones. These are typical apparatus on which electronic messages such as text messages, voice messages and video messages are sent and received.

“Telecommunications apparatus, in particular ISDN terminals and ISDN telephone installations” and “apparatus for recording, transmission, processing or reproduction of sound and/or images and/or data; apparatus and equipment for telecommunications technology” are also apparatus on which electronic messages such as text messages, voice messages and video messages are sent and received

Electronic messages are sent via “digital networks”, and “routers”, “gateways”, “exchanges for public and proprietary digital and analog networks”, “switches for public and proprietary digital and analog networks”, “ISDN telecommunications boxes”, “modems” are necessary network and computer devices for electronic messages to be transmitted and received over a network and to reach the intended destination.

“Network management systems” are systems for managing networks. These may therefore very well be systems that are used for the management of electronic message sending and reception through different kinds of networks.

The abbreviation ISDN stands for Integrated Services Digital network. The main object of “ISDN cards, in particular for personal computers” is to give access and to connect a computer or telecommunication device to an ISDN network, including for electronic messaging sending/receving on such networks.

“PC cards” and “PCMCIA cards” are memory and I/O devices used with personal computers. These cards can store electronic messages.

“Data processing equipment and computers, including microcomputers, and peripheral equipment therefor, including visual display units, modems, printers, external memories” may be used for sending/receiving, storing and displaying electronic messages. This is also the case for printers, which nowadays may have their own email addresses.

“Microprocessors and other electronic component parts for computers” are integrated circuits which incorporate functions of a computer’s central processing unit and it is involved in the sending of electronic messages. “Other electronic component parts for computers” is a wide term that incorporates any components in a computer that are involved in the sending/receiving of electronic messages.

“Image and/or sound data carriers and/or data carriers of all kinds with or without programs and/or data files, in particular floppy disks, magnetic tapes, cassettes including video cassettes and tape streamers, hard disk memories and read-only memories (ROM), RAM and plug-in modules, optical memories (except exposed and unexposed films) including CD-ROMs and WROMs” and “audio CD-ROMs, music cassettes” are goods on which electronic messages, including music messages can be recorded and stored.

Class 38:

The mark is considered to be descriptive of all the services in Class 38 which are telecommunication services which are necessary, essential and indispensable when it comes to sending electronic messages.

Telecommunications services are necessary in order to enable and facilitate the transmission, sending and receiving of all kinds of electronic messages. Even services such as “protocol conversion” and “providing of access points” are necessary in the transmission and reception of electronic messages because access points connect users to other users in a network and thus make it possible for the users to contact each other through electronic messaging. As for “protocol conversion”, this service makes it possible for devices using different protocols to contact each other.

As for the service “online services and services relating to computer networks, in particular the Internet, namely providing directories”, it is noted that a directory on a computer is a folder on which electronic messages can be stored. Therefore the mark is also descriptive of this service.

Class 42:

“Computer programming” may relate to the programming of electronic message software.

“Writing and publishing reports in the field of computer science and data processing; conducting tests on goods in connection with electronic data processing systems, electronic data processing apparatus and electronic data processing programs; development and testing of electronic communications, word processing and data processing systems; providing, development, enhancing and adjusting of data processing programs and/or data files (including multimedia and home pages) for others, issuing of licences for data processing programs, including computer games and video games and data files” are a wide range of services that for instance include electronic message processing, and auxiliary and related services.

As for “database services, namely leasing access time to a computer database and operating databases, as well as gathering and supplying of data, messages and information, including for the purpose of arranging transactions and services of all kinds” they may relate to databases for storing all types of electronic messages.

Based on the above, the Cancellation Division finds that contested mark is descriptive for all the goods and services for which it is registered.

Consequently, the trade mark as a whole is descriptive of the goods and services registered under the contested mark. It follows that the EUTM has been registered contrary to Article 7(1)(c) EUTMR in relation to the contested goods and services.

Non-distinctiveness – Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65).

The applicant claims that the mark is non-distinctive because it is descriptive, and also because the figurative element in the mark does not endow it with distinctiveness.

As concluded above, the Cancellation Division finds that the contested mark is descriptive for all the registered goods and services, and that the figurative device included in the mark does not endow the mark as a whole with distinctiveness.

The applicant did not provide any other evidence or convincing arguments which prove that the sign was devoid of distinctive character in relation to the goods and services in question at the time of its filing.

The Cancellation Division has come to the conclusion that the mark is descriptive for all the goods and services at issue. Even if mark in question would not be directly descriptive of the goods and services, it would not be seen as an indication of commercial origin as the term “emessage”/”e message” is such a well-known term in the computer and telecommunications fields that when it is seen together with goods and services in these particular fields, the relevant consumers would not give the term any trade mark significance.

In light of the above, the application based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR is endorsed.

Acquired distinctiveness

In this case, it was incumbent upon the EUTM proprietor to demonstrate to the Cancellation Division that its EUTM had acquired distinctive character throughout the European Union either before the date of filing of the mark on 09/03/2000 or between the date of registration on 29/05/2001 and the application for declaration of invalidity on 22/09/2016.

When assessing in a particular case whether distinctive character has been acquired through use, account must be taken of factors such as, inter alia, the market share held by the mark, the intensity, geographical scope and duration of the use of the mark and the amount invested by the undertaking in promoting the mark. Proof that distinctive character has been acquired may, in particular, be found in statements made by chambers of commerce and industry or other trade and professional associations or in the results of surveys (10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 56-59).

The EUTM proprietor claims that the mark has been used and has acquired distinctiveness in German and France and submitted proof of evidence in Cancellation No 13798. The material is mainly in the German, with a few pieces of evidence in French. There is no evidence whatsoever that relates to the native English-speaking average consumers, and professionals in computer and telecommunications in any other Member States.

It must be shown that the mark had acquired distinctiveness among the relevant public, namely the English-speaking average consumer and professionals in the computer and telecommunications fields throughout the European Union. The applicant has clearly failed to do so.

Consequently, the EUTM proprietor has not shown that the mark has acquired distinctiveness in among the relevant consumers in the relevant territories, and the claim under Article 7(3) EUTMR is rejected.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid under 7(1)(c) EUTMR for all the contested goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Ewelina SLIWINSKA

Anne-Lee KRISTENSEN

Liliya YORDANOVA

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 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.