CANCELLATION No C 30 641 (INVALIDITY)

 

Unimax Stationery, Plot No. D-8 & D-9, Mahatma Gandhi Udyog Nagar, O.I.D.C, Dabhel,, 396210 Nani Daman, Daman and Diu, India (applicant), represented by MD Legal Patentanwälte PartG mbB, Franklinstr. 61-63, 60486 Frankfurt am Main, Germany (professional representative)

 

a g a i n s t

 

Mitsubishi Pencil Company, Limited, 5-23-37 Higashi-Ohi, Shinagawa-ku, 140-8537 Tokyo, Japan  (EUTM proprietor), represented by Perani & Partners Spa, Piazza Armando Diaz, 7, 20123 Milan, Italy (professional representative).

 

On 30/07/2020, the Cancellation Division takes the following

 

 

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed a request for a declaration of invalidity against European Union trade mark No 6 920 615   (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely: 

Class 16: Writing instruments including correction pens.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

In the notice of invalidity the applicant invoked the applicability of Article 7(1)(b and (d) EUTMR, however, its further observations and arguments rely on the applicability of Article 7(1)(b) and (c) EUTMR. The applicant claimed that the word 'uni' is an abbreviation that is understood in many languages of the relevant territory of the European Union.

a) It can relate to the short form for ‘University’ in German and English. A printout of the web site https://dict.leo.orq/enqlisch-deutsch/uni was provided on 21/02/2020 as evidence in Attachment MD 2. The meaning of this word is also known in non-English-speaking countries of the EU and will also be understood there as a short form of ‘university’. This word alludes heavily to the intended use of the goods protected under the trade mark and is less likely to be seen as an indicator of origin of the goods thus marked and therefore enjoys a much narrower scope of protection. The term ‘uni’ / ‘university’ is directly related to the terms ‘learning’ / ‘writing’ for which pens or writing materials are required. The word is therefore recognizable as descriptive for the protected goods in Class 16 without an analytical approach.

b) Furthermore, the ‘uni’ means ‘monochromatic’ in French. A printout of the web site https://dict.leo.org/franzosisch-deutsch/uni was provided on 21/02/2020 as evidence in Attachment MD 3. That is why the trade mark ‘uni’ may indicate the color of the respective goods as it alludes to the monochromaticity/ unicolor of the various pens.

c) It can also relate to the Spanish verb ‘uni’ which means to ‘unite’. Also 'uni' is a well-known prefix used to indicate that something consists of, or relates to, 'one', i. e. ‘unicorn’, ‘unisex’ or ‘unicolor’. Therefore, the word / trade mark is descriptive for the relevant goods, as it indicates that the goods have a universal color, fitting or purpose of use.

The EUTM proprietor argues that (1) the invalidity request is inadmissible since the applicant failed to indicate the article on which the invalidity action is based, i.e. Article 59 EUTMR; (2) there are previous cancellations and opposition decisions issued by the Office as well as previous decisions of other National Trade mark Offices in which the contested mark was found distinctive to an average degree; (3) the applicant did not file evidence to support its claims which are “blatantly groundless and are mere assertions”. It filed evidence to prove that the mark has an enhanced degree of distinctiveness through extensive use. This evidence will be listed and analysed in the present decision only if necessary.

PRELIMINARY REMARKS REGARDING THE ADMISSIBILITY OF THE REQUEST FOR INVALIDITY

As mentioned above, in the notice of invalidity the applicant invoked the applicability of Article 7(1)(b) and (d) EUTMR, without filing any observations or arguments in support of its claims.

However, on 03/01/2019, in its further observations and arguments, the applicant relied on the applicability of Article 7(1)(b) and (c) EUTMR, without making any reference to Article 7(1)(d) EUTMR whatsoever. To the extent where the applicant’s intention was to also rely on other grounds then such grounds should have been invoked at the moment the application for a declaration of invalidity was filed and not later on. 

The claims made by the applicant at a later stage of proceedings cannot broaden the scope of the rights on which the application was originally based. The Cancellation Division is not entitled to allow a broadening of the scope of the cancellation request. Once the cancellation request is filed, the grounds on which it is based cannot be extended. The same considerations apply as in opposition proceedings. Even less can such an extension be allowable in view of the fact that the pendency of cancellation proceedings prevents parallel proceedings before EUTM Courts and they result in decisions with res iudicata effect, Article 128(2) and Article 63(3) EUTMR (see decision of 21/12/2009, R 1517/2007-4, § 20).

Therefore, the Cancellation Division will consider in its further examination of the invalidity application, only the claim regarding the applicability of Article 7(1)(b) and (d) EUTMR.

Furthermore, the EUTM proprietor assessed the invalidity application as inadmissible on account of the missing Article 59 EUTMR from the notice of invalidity. The EUTM proprietor referred to Article 12(1)(b) EUTMDR according to which:

“An application to the Office for revocation or for a declaration of invalidity pursuant to Article 63 of Regulation (EU) 2017/1001 shall contain:

(b) the grounds on which the application is based by means of a statement that the respective requirements laid down in Articles 58, 59, 60, 81, 82, 91 or 92 of Regulation (EU) 2017/1001 are fulfilled”

The proprietor’s arguments are unfounded. The basic rules regarding cancellation proceedings of individual marks are mainly contained in Articles 58 to 60 and Articles 62 and 64 EUTMR (the rest of the articles mentioned in Article 12(1)(b) EUTMDR referring to certification or collective marks), and in Articles 12 to 20 EUTMDR. In the present case the applicant used an invalidity form and specified that it invokes Article 7(1)(b) and (d) EUTMR. The only articles in the EUTMR referring to invalidity proceedings are Article 59 and 60, the first being the only one which can be invoked in corroboration with Article 7 EUTMR. Consequently, even though Article 59 EUTMR was not expressly invoked by the applicant in the notice of invalidity, it was implicitly invoked taking into account all the above related aspects.

Relevant public

The applicant refers to different meanings the term ‘uni’ has on one hand in German, English and ‘non-English speaking countries’, and on the other hand in French or Spanish languages. The Cancellation Division will assess the arguments and evidence regarding the public speaking the abovementioned languages. In the light of the nature of the goods in question which are in general cheap mass consumption goods, the attentiveness of the relevant public will be average.

Relevant point in time

The Cancellation Division notes that the relevant point in time in respect of which the assessment on the claimed non-distinctiveness of the contested sign must be made is the filing date of the contested mark, namely 19/05/2008. In other words, it is necessary to establish whether was a term which was not capable to distinguish the goods of the EUTM proprietor from those of other undertakings or has become customary in the current language or in the bona fide and established practices.

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 the 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 European Union trade mark, 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).

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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

In essence the applicant argues that because the mark has some meanings in some or most of the EU languages and, allegedly, in relation to the goods, then the mark lacks distinctive character. First the applicant claims that the mark is generally understood (particularly in English and German) as referring to University, second it means ‘monochromatic’ in French and third it means ‘unite’ in Spanish. Additionally, the applicant claims that the same term ‘uni’ is well known as a prefix and it is used to indicate that something consists of, or relates to, 'one', i.e. ‘unicorn’, ‘unisex’ or ‘unicolor’. Each of these claims will be analysed by the Cancellation Division in the following paragraphs.

Firstly, the applicant refers to the meaning of ‘uni’ in particular in German and English as a short form for ‘university’. The applicant argued that this word alludes heavily to the intended use of the goods protected under the trade mark and is less likely to be seen as an indicator of origin of the goods thus marked and therefore enjoys a much narrower scope of protection. The applicant contends that the term ‘uni’ (with its meaning ‘university’) is directly related to the terms ‘learning’ / ‘writing’ for which pens or writing materials are required and consequently it is descriptive for the protected goods in Class 16 without an analytical approach.

The fact that in German, English or any other official language spoken in the EU Member States the term 'uni' is used as a short form for 'university' cannot be considered to have a descriptive meaning of the intended purpose of the registered goods writing instruments in the sense that these are intended for use in universities. There are no such writing instruments which are specially intended for universities and the applicant did not provide evidence to the contrary. The Cancellation Division does not see an exclusively descriptive use of the word at the filing date of the contested mark, at present or any indications for such use in the future. The word ‘uni’ remains a vague, ambiguous and imprecise reference to a place of education where stationary goods such as writing instruments could be used; nevertheless, writing instruments can be used or found in many other places (in banks, in public administration buildings, elementary schools, libraries, clinics, and in everyday life in general etc.). The message that the term ‘uni’ per se conveys with regard to the goods at issue is not a clear and unequivocal reference to an allegedly intended purpose to use the goods or any other characteristic either. There is no direct link between the meaning of the term ‘uni’ of the contested mark and the goods it covers. The link should be direct and immediate and should be assessed in concrete also considering the relevant market which, in this case, clearly shows that ‘uni’ is not used nor could be used in relation to describe characteristics of the concerned goods.

Secondly, the applicant claims that the term ‘uni’ means ‘monochromatic’ in French. A printout of the web site https://dict.leo.org/franzosisch-deutsch/uni was provided as evidence in Attachment MD 3. The applicant claims that the mark ‘uni’ may indicate the color of the respective goods as it alludes to the monochromaticity or unicolor of the various pens. By default writing instruments write with monochromatic ink, with very few exceptions such as multicolour retractable ballpoint pens. Furthermore, the applicant filed no proof that the sign will immediately be perceived as a description for the goods at issue here and no evidence attesting to the use of ‘uni’ in the writing instruments industry. Whilst it is conceivable that the exceptional multicolour writing instruments would be described as such, since the monochromatic pens are the standard on the market, it is not common to describe this characteristic of such goods. Therefore, consumers do not expect to see the description of this feature of the pens and are not likely to associate the word ‘uni’ in relation to pens (in particular without any further indication that this term refers to the monochromatic feature such as unicolor) with the fact that the pens use only one colour.

The third meaning the applicant refers to is actually composed of two connotations: on one hand there is the claim regarding the meaning of ‘uni’ in Spanish referring to the verb ‘uni’ which the applicant states that it means to ‘unite’. However the verb in Spanish is actually UNIR and ‘uni-’ in Spanish is used as a composition element meaning ‘unico’ or ‘only one’ which is the second connotation the applicant refers to, ‘the well-known prefix used to indicate that something consists of, or relates to, 'one', i. e. ‘unicorn’, ‘unisex’ or ‘unicolor’’. Therefore, the applicant contends that the word / trade mark is descriptive for the relevant goods, as it indicates that the goods have a universal color, fitting or purpose of use. The term composing the contested sign is , therefore not co-joined in any way to another term or noun. In order to form the words the applicant referred to, the term ‘uni’ needs to be associated with further words in order to determine the specific context it refers to.

Consumers perceive a trade mark in the form in which they encounter it and do not make an effort to analyse distinguishing features on the goods, in order to read descriptive meanings into them.

The smaller the general need to leave certain expressions free, the lesser the relevance of that part of the trade which does not perceive the trade mark as a badge of origin. The trade mark possesses an average degree of distinctiveness, because it is fanciful for the goods claimed.

Since the mark is not descriptive and all the arguments of the applicant for non-distinctiveness are based on the presumption that the mark is descriptive, Article 7(1)(b) EUTMR cannot prosper based on this argument. The applicant did not provide any other evidence or convincing arguments which prove that the contested EUTM is devoid of distinctive character in relation to the goods in question.

Therefore, the applicant has failed to substantiate or prove its claim that the mark is devoid of distinctive character in relation to the goods for which it is registered.

CUSTOMARY CHARACTER - ARTICLE 7(1)(d) EUTMR

Pursuant to Article 7(1)(d) EUTMR, a sign that consists exclusively of a sign or indication which has become customary in the current language or in the bona fide and established practices of the trade cannot be registered as a trade mark.

The assessment of the alleged customary use of a sign must also be carried out in relation to the goods or services in respect of which the trade mark is registered and in relation to the perception of the sign by the relevant public (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 49). In addition, actual customary use, not mere potential use as in the case of descriptive character, must be established (see, by analogy, 21/04/2004, C-64/02 P, OHIM / Erpo Mobelwerk, EU:C:2004:645, § 29). In other terms, a finding that a sign has become a customary designation should be corroborated by evidence of actual customary use of the sign, unless this fact is likely to be known by anyone or may be learnt from generally accessible sources (22/06/2006, C-25/05 P, Storck / OHIM, EU:C:2006:422, § 50-51). Furthermore, customary use must be proven not to be sporadic but must be associated with the sign by the majority of those who are concerned by such use (Weisse Seiten, loc. cit., § 33).

The applicant merely indicated that it bases its invalidity request on this article. It did not file any arguments or evidence to support its claim. Consequently, the claim under this article is also rejected as unfounded.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected in its entirety. Since the EUTM proprietor is the winning party, there is no need to assess the evidence of acquired/enhanced distinctiveness it filed.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) 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

Michaela SIMANDLOVA

Ioana MOISESCU

Oana-Alina STURZA

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.