CANCELLATION No 11 122 C (INVALIDITY)

Giro Travel Company, 7 Stefan cel Mare street, ground floor, Roman, Neamt county, Romania (applicant), represented by Crina Frisch, 54 Carol I Boulevard, B entry, 3rd floor, suite 5, 020915 Bucharest, Romania (professional representative)

a g a i n s t

Andreas Stihl AG & Co. KG, Badstr. 115, 71336 Waiblingen, Germany (EUTM proprietor), represented by Gleiss Lutz, Lautenschlagerstraße 21, 70173 Stuttgart, Germany (professional representative).

On 29/11/2016, 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

On 24/06/2015, the applicant filed an application for a declaration of invalidity against European Union trade mark No 7 472 723 (‘the contested EUTM’), filed on 19/12/2008 and registered on 10/08/2011, for the colour mark hereunder:

The request is directed against all the goods covered by the EUTM, namely:

Class 7: Chain saws.

The applicant invoked Article 52(1)(a) EUTMR in conjunction with Articles 7(1)(a)(b) and (d) EUTMR. In addition, the applicant claims that the contested EUTM was filed in bad faith in breach of Article 52(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant’s first submissions

The applicant provides the following background information on the parties’ activities and on disputes between the parties before the Bucharest Tribunal:

• The applicant is a Romanian company, which was established in 2003. Among its activities it imports and trades chainsaws for forestry in the Romanian market. The EUTM proprietor is a German company that produces, distributes and markets a variety of goods such as chainsaws and other similar power tools.

• The EUTM proprietor took a legal action against the applicant before the Bucharest Tribunal claiming infringement of its rights to the contested EUTM. As a consequence, the applicant filed a counterclaim requesting the invalidity of the EUTM on the basis of lack of distinctiveness and bad faith. Upon motion made by the EUTM proprietor, the Bucharest Tribunal requested the applicant to submit an invalidity application to the Office pursuant to Article 100(7) EUTMR. The EUTM proprietor’s request to the Bucharest Tribunal to stay the counterclaim proceedings against the EUTM and transfer the dispute before the Office was made with the purpose of making the applicant incur in more costs and financial stress.

Regarding the claims under Article 52(1)(a) EUTMR in conjunction with Article 7(1) EUTMR and Article 52(1)(b) EUTMR, the applicant argues as follows:

• The EUTM proprietor already filed a EUTM application for a colour mark consisting of a combination of orange and grey (EUTM application No 338 194). However, the Office considered that the sign was non-distinctive pursuant to Article 7(1)(b) EUTMR.

• Since the contested EUTM is a colour mark comprising the same colours, the findings of the Office should also apply in the present case. The EUTM is indeed non-distinctive as it merely consists of the depiction of two colours, orange and grey, which are widely used in the relevant market, as shown below:

• In particular, the colour orange serves to draw the attention of the users to the dangerous parts of the power tools, while the colour grey is typically associated with the materials, metallic or plastic, of which the goods at issue are comprised. Therefore, the mark consists of colours that are common in the field of forest tools and are the get-up of the majority of chainsaws available in the market. Such colour combination in connection with the contested goods in Class 7 is not perceived as a trade mark within the meaning of Article 7(1)(b) EUTMR.

• Moreover, the EUTM application was filed in bad faith. At the moment of the filing of the EUTM the proprietor was aware that a number of its competitors were using the colours at issue to indicate the dangerous parts of their products. Despite being fully aware that the orange and grey combination is widely used for chainsaws and that its previous EUTM application was refused by the Office, the EUTM proprietor applied for the contested EUTM.

• The EUTM proprietor’s aim was to prevent third parties from marketing chainsaws or similar power tools bearing the same colours.

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

• Appendix 1: Extracts from EUIPO’s ‘eSearch plus’ database showing details of the contested EUTM.

• Appendixes 2a and 2b: Extracts from the Romanian Patent and Trade Mark Office (OSIM) showing details of the applicant’s figurative marks ‘SPARTAK’ and ‘TOTEM Powerful Tools’ for goods and services in Classes 7 and 35.

• Appendix 2c: Extracts from the websites www.dedeman.ro and www.leroymerlin.ro showing images of two chainsaws under the signs ‘TOTEM’ and ‘MOTOFERASTRAU BENZINA’.

• Appendix 3: An extract featuring images of the EUTM proprietor’s chainsaws.

• Appendix 4: An extract featuring images of forest tools and gear in orange and grey including, inter alia, the following products:

The EUTM proprietor’s response

The EUTM proprietor argues as follows:

• The company Andreas Stihl AG & Co. KG (the EUTM proprietor) is the world’s leading producer of chainsaws. ‘STIHL’ has been the world’s best-selling chainsaw brand since 1971. The company’s general revenue in 2014 exceeded EUR 2.9 billion.

• In August 2014, the applicant imported 2 030 counterfeit chainsaws into Romania, which copied the characteristics and colour scheme of the ‘STIHL’ chainsaws. The EUTM proprietor has brought a civil law suit against the applicant before the Bucharest Tribunal (in case No 28443/3/2014) because of the infringement of the contested EUTM.

• Contrary to the applicant’s claim, the contested EUTM fulfils the requirements set out by Article 4 EUTMR in conjunction with Article 7(1)(a) EUTMR: the mark’s protection is granted for the colours orange (Pantone RAL 2010) and grey (Pantone RAL 7035) applied to the goods at issue as indicated in the description of the mark.

• The applicant’s arguments regarding Articles 7(1)(b) and (d) EUTMR are irrelevant since the application for the contested EUTM was accepted on the basis of Article 7(3) EUTMR. The same applied to the International Registration No 872 542 - designating the EU - for the figurative sign hereunder:

• The applicant has presented no arguments or evidence questioning the fact that the contested mark acquired distinctive character through use when it was filed in 2008.

• As already submitted during the examination proceedings, the EUTM proprietor has been using this colour combination since 1972. In particular, the EUTM proprietor operates through several subsidiary companies and has also built up a network of distributors and licensed dealers in all the EU Member States.

• For many years the EUTM proprietor was - and still is - the EU market leader in the field of gasoline chainsaws, with a correspondingly high market share and correspondingly high number of units sold and turnover achieved. Reference is made to the evidence filed during the examination proceedings.

• As to the advertising figures, a considerable amount of money has been invested in promoting power tools in all the EU Member States. The colours orange and grey have been used in advertising material, both in the depiction of the products as well as in other parts of the advertising. The colour combination is also used in all the ‘STIHL’ outlets operated by the EUTM proprietor’s dealers. The chainsaws have been advertised in catalogues, newspapers, magazines and trade journals. The EUTM proprietor has also sponsored international competitions that are broadcasted throughout the EU.

• Besides the market surveys already presented during the examination proceedings, it was conducted a further survey for Croatia concerning the awareness of the colour combination orange/grey in November 2013.

• The applicant’s reference to the refusal of the EUTM application No 338 194 is irrelevant since in such case no claim of acquired distinctiveness was raised and, therefore, no evidence related thereto was furnished.

• The high reputation of the EUTM proprietor’s colour combination has been recognised by national courts in Germany, Czech Republic, Slovakia, China and Russia.

• As to the images depicting third parties’ chainsaws in orange submitted by the applicant, there is no indication that these products have been marketed in the any of the EU Member States or that, in particular, they were available before the filing of the EUTM within the EU. In any case, it is noted the following: the ‘HUSQVARNA’ product entered into the market in 2011 and its colour scheme, as a whole, is different of that one of the ‘STIHL’ chainsaws; the same applies to the chainsaws under the signs ‘PARKLANDER’ and ‘DAC’; the chainsaws ‘RURIS’ and ‘CYCLONE’ were confiscated as being counterfeit goods by the German and Italian customs.

• Regarding the applicant’s claim on bad faith, at the time of the filing the EUTM proprietor had no knowledge of any third party using an identical or similar sign for an identical or similar product. The EUTM proprietor is the only company using the colour combination orange/grey for the goods at issue. It is therefore a legitimate interest to seek protection for these colours. In addition, in 2008 the EUTM proprietor was already the owner of the IR No 872 542 designating the EU.

In support of its observations, the EUTM proprietor - which was granted a request for continuation of proceedings pursuant to Article 82 EUTMR - filed extensive evidence referring to the period preceding the application for invalidity. It also included the documentation submitted during the examination proceedings 19/12/2008 and made reference to the pieces of evidence filed in relation to examination of the International Registration No 872 542 designating the EU. All such material will be duly listed and assessed in the section dedicated to Article 7(3) EUTMR.

The applicant’s reply

The applicant reiterates its previous allegations and maintains that:

• The contested EUTM is solely represented by a combination of colours that needs to be available for causes of public interest, as also confirmed by the Court in the judgement of 09/07/2003, in case T‑234/01, ‘Orange und Grau’.

• In spite of the above, the EUTM proprietor is still seeking to monopolize such colour combination and filed opposition proceedings against the applicant’s Romanian trade mark application No M 2014 05856 on the basis of the contested EUTM.

• Contrary to the EUTM proprietor’s arguments, the goods imported by the applicant in Romania are not counterfeits and they bear the applicant’s marks ‘TOTEM Powerful Tools’ and ‘SPARTAK’.

• As to the claim under Article 7(1)(a) EUTM, it is noted that the contested EUTM is not clear, precise, self-contained, durable and objective as required by case-law 12/12/2002, C‑273/00, Methylcinnamat, EU:C:2002:748). The sign consists of the colours grey and orange in a 50-50% ratio, one of the top of the other. This colours combination is widely used in the relevant market and the EUTM proprietor is attempting to monopolise a colour scheme which should be available to any other company.

• In the decision of 02/12/2014, the First Board of Appeal ruled as follows:

“the mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, as is the case with the trade mark which is the subject of the main proceedings, does not exhibit the qualities of precision and uniformity required by Article 2 of the Directive”

(02/12/2014 – R 2036/2013-1 – Blue and Silver (colour mark), § 44).

The same findings can apply to the present case, since the graphical representation of the contested EUTM is analogous to the colour mark rejected by the First Board of Appeal (consisting of the colour blue depicted on the left hand and the colour silver on the right hand side).

• As to the evidence filed by the applicant in respect of Article 7(3) EUTMR, it mainly refers to the brand ‘STIHL’ and not to the contested EUTM. Although such documentation shows that the EUTM proprietor’s goods have been marketed in different countries, it does not indicate whether the EUTM acquired distinctive character.

• The market surveys were ordered by the EUTM proprietor itself and their importance is debatable. They do not show the reality of the market, with multiple producers using the same chromatic range of colours for identical goods.

• Regarding the claim of bad faith, the EUTM proprietor uses the mark to prevent competitors from using other shades of the colours protected by the mark. This demonstrates that it abuses of dominant position based on a chromatic registration. In addition, the bad faith is supported by the fact that the proprietor re-filed a EUTM application which was already rejected by the Court in case T‑234/01.

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

• Appendix 5: Extracts from the online registry of the Romanian Patent and Trademark Office (OSIM) providing details of the Romanian trade mark application No M 2014 05856.

• Appendix 6: A copy of the resolution taken by the Bucharest Tribunal, 5^th Civil Circuit, on 24/04/2015 in case No 28443/3/2014, which requested the defendant (the invalidity applicant) to submit an application for a declaration of invalidity to the Office in accordance with Article 100(7) EUTMR.

• Appendix 7: Extracts providing general information regarding the national dispute between the parties before the Bucharest Tribunal.

• Appendix 8: Extracts from the Romanian Patent and Trademark Office providing details of the opposition action filed by the EUTM proprietor against the applicant’s mark No M 2014 05856 on the basis of several earlier trade marks, including the contested EUTM.

The EUTM proprietor’s rejoinder

The EUTM proprietor’s reiterates its previous arguments, contests the applicant’s claims and points out that:

• When applying for the EUTM, the proprietor submitted a colour sample as well as a description in words with reference to an internationally recognised colour system and a specification of the arrangement of both colours.

• Furthermore, as already proved, the mark has acquired distinctiveness through use pursuant to Article 7(3) EUTMR.

• The applicant’s argumentation on the alleged bad faith on the part of the EUTM proprietor is unfounded. The EUTM proprietor had the right to oppose the applicant’s Romanian application as well as to file the application for the contested EUTM, since its aim is to protect its trade mark rights. In the case at hand, the proprietor has built a network of distributors across the EU and the EUTM filing follows a commercial logic.

• The evidence shows that the relevant public perceives the contested EUTM as a badge of origin of the relevant goods. In particular, in some countries the market surveys show that the EUTM enjoys a degree of association of 72% among the relevant public. Therefore, even if the mark is used in conjunction with the sign ‘STIHL’, it is clearly recognised as an indication of origin.

In support of its observations, the EUTM proprietor filed a copy of the invalidity applicant’s observations regarding the counterclaim action filed before the Bucharest Tribunal requesting the invalidity of the EUTM proprietor’s trade mark registrations EUTM No 9 388 877, EUTM No 7 472 723, IR No 872 542.

Preliminary remark on the arguments on the national dispute between the parties

As a preliminary remark, the Cancellation Division would like to clarify that the parties’ arguments relating to the alleged applicant’s infringement of the EUTM proprietor’s rights to the contested mark in the Romanian territory are not relevant for the assessment of the distinctive character of the contested EUTM or for establishing whether the mark was filed in bad faith.

The issue concerning whether or not the chainsaws bearing the marks ‘TOTEM Powerful Tools’ and ‘SPARTAK’ are counterfeit goods is outside the scope of the present proceedings.

As for the applicant’s claim that EUTM proprietor’s request to the Bucharest Tribunal to stay the counterclaim proceedings was made in bad faith, it is noted that such request appears to be in line with the provisions set out in Article 100(7) EUTMR and cannot be addressed as an unfair behaviour on the part of the EUTM proprietor for the purpose of the present proceedings.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 52(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).

GRAPHIC REPRESENTATION REQUIREMENTS - Article 7(1)(a) EUTMR

Article 7(1)(a) EUTMR reflects the Office’s obligation to refuse signs that do not conform to the requirements of Article 4 EUTMR.

According to Article 4 EUTMR, an EU trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods and their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

According to settled case law, in order to fulfil its role as a registered trade mark, a sign must always be perceived unambiguously and uniformly, so that the function of mark as an indication of origin is guaranteed. In the light of the duration of a mark's registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must also be durable (24/06/2004, C-49/02, Blau/Gelb, EU:C:2004:384, § 31).

It follows that a graphic representation must be, in particular, precise and durable. A graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way. The mere juxtaposition of two or more colours, without shape or contours, or by a reference to two or more colours ‘in every conceivable form’, does not exhibit the qualities of precision and uniformity required (24/06/2004, C-49/02, Blau/Gelb, EU:C:2004:384, § 33, 34)

Moreover, in cases where a sign is defined by both a graphic representation and a textual description, in order for the representation to be precise, intelligible, and objective, it must coincide with what can be seen in the graphic representation (23/09/2010, R 443/2010-2, Red liquid flowing in sequence of stills (al.)).

In this case, the question to be decided is whether the mark has been graphically represented within the meaning of Articles 4 and 7(1)(a) EUTMR.

In its submissions, the applicant essentially argues that EUTM is not capable of distinguishing the goods at issue of one undertaking from those of other undertakings, since it is not clear, precise, self-contained, durable and objective.

The contested mark is represented as consisting of two colours, grey (RAL 7035) and orange (RAL 2010), depicted pictorially by two coloured squares of equal size, one grey coloured, positioned on top of the other, orange coloured. In addition, a textual description is given, consisting of the following text:

“The colour orange is applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom of the housing of the chainsaw”

In the observations attached to the application form submitted at the moment of the filing of the EUTM, the EUTM proprietor showed the arrangement of those colours, making also reference to the International Registration No 872 542 of 04/11/2005, designating the EU for the sign below:

It appears from the above that the graphic representation and the verbal description of the sign are perfectly compatible and complementary.

It has been clearly established by case-law that a graphic representation in terms of Article 2 of the Trade Mark Directive, which corresponds to Article 4 EUTMR, must enable the sign to be represented visually, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective (12/12/2002, C-273/00, Methylcinnamat, EU:C:2002:748, § 46-55, and 06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 28-29). The function of the requirement of graphic representation is in particular to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor, so that economic operators are able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties (24/06/2004, C-49/02, Blau/Gelb, EU:C:2004:384, § 27 to 30).

It seems to the Cancellation Division that this function is performed in the present case for the reasons set out above. The verbal description specifying that “the colour orange is applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom of the housing of the chainsaw”, together with the attached colour scheme representation and other elements furnished at the moment of the EUTM filing, enables a systematic arrangement to be identified in which colours are used in a predetermined and uniform way. It may be understood by both relevant consumers and potential competitors from the foregoing that the chainsaws claimed in Class 7 will be orange in the top part of the housing and grey in the lower part of the housing.

Therefore, the Cancellation Division concludes that the EUTM application satisfied the requirements under Article 4 EUTMR in conjunction with Article 7(1)(a) EUTMR.

For the sake of completeness, the applicant’s reference to the decision of 02/12/2014 of the First Board of Appeal in case R 2036/2013-1 – Blue and Silver (colour mark) has no impact to the present case, since in that case it was established that the registration did not define a precise subject of protection and its description did not specify the position of the colours in relation to each other in a way which could define one particular combination or juxtaposition. However, as seen above, this is not the case as far as the contested EUTM is concerned.

Finally, the applicant’s allegation that the combination of grey and orange is widely used in connection with chainsaws - and, consequently, it should be available to any other company - concerns the distinctive character of the mark with regard to the specific contested goods and will be assessed in the following sections.

NON-DISTINCTIVENESS – Article 7(1)(b) EUTMR

For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to identify the goods and services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those services and services from those of other undertakings (07/10/2004, C-136/02 P, Torches, EU:C:2004:592, § 29).

The signs referred to in Article 7(1)(b) EUTMR are incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (02/07/2009, T-414/07, Main tenant une carte, EU:T:2009:242, § 32; and 03/12/2003, T-305/02, Bottle, EU:T:2003:328, § 28).

As the Court has already held, colours are normally a simple property of things, which are generally used for their attractive or decorative powers and do not convey any meaning (06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 27). However, it is possible that colours or combinations of colours may be capable, when used in relation to a product or a service, of being a sign.

To constitute a trade mark, colours or combinations of colours must satisfy three conditions. First, they must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings (12/11/2010, T 404/09 & T 405/09, Grau/Rot, EU:T:2010:466, § 15).

As regards the question of whether colours or combinations of colours are capable of distinguishing the goods or services of one undertaking from those of other undertakings, it must be determined whether or not those colours or combinations of colours are capable of conveying precise information, particularly as regards the origin of a product or service (12/11/2010, T 404/09 & T 405/09, Grau/Rot, EU:T:2010:466, § 16).

In this regard, it is crucial to reiterate that, whilst colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (12/11/2010, T 404/09 & T 405/09, Grau/Rot, EU:T:2010:466, § 17).

That being said, the distinctive character of a trade mark, within the meaning of Article 7(1)(b) EUTMR, must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T 348/02, Quick, EU:T:2003:318, § 29).

The goods for which the mark is registered, namely chain saws in Class 7, are targeted at a specialised public, namely skilled forestry workers and professional gardeners and employees of companies or public bodies specialised in construction or landscaping (30/11/2009 - R 355/2007-4 - Orange & Grey (colour mark) § 14). Furthermore, as the contested EUTM is a colour mark with no legible word elements on it, the examination of its distinctive character must be based on the perception of consumers throughout the European Union.

During the examination proceedings the EUTM was found to be non-distinctive pursuant of Article 7(1)(b) EUTMR. In the letter sent to the EUTM proprietor on 02/04/2009, the examiner found that the combination of colours orange (RAL 2010) and grey (RAL 7035) were commonly used for chain saws and considered that they were “not likely to be noticed and committed to memory as an indication of commercial origin”.

The applicant claims that the EUTM is non-distinctive as it merely consists of the depiction of two colours, orange and grey, which are widely used in the in the field of forest tools. It points out that the colour orange serves to draw attention of the users to the dangerous parts of the power tools, while the colour grey is typically associated with the materials, metallic or plastic, of which the goods at issue are comprised.

The applicant further refers to the judgement of 09/07/2003, in case T-234/01, in which the Court refused the EUTM application No 338 194, filed on 09/07/1996 by the EUTM proprietor, for the colour mark below:

In said judgement, the Court finally held as follows:

“the relevant public will not see the combination of the colours orange and grey as a sign indicating that goods thus coloured come from the same undertaking but will rather see it merely as an aspect of the finish of the goods in question”

(09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 42).

In its submissions the EUTM proprietor has not presented any argument as to the inherent distinctive character of the mark and has relied on its distinctiveness as a result of the use which had been made of it in accordance with Article 7(3) EUTMR.

Therefore, it is undisputed by the parties that the colour combination grey/orange as appearing in the mark in question is inherently devoid of distinctive character in respect of the categories of goods for which the sign is registered in Class 7.

Although the applicant has furnished scarce evidence to show that the colours grey and orange are widely used in the relevant sector, in light of the foregoing it can be confirmed that the relevant consumer will perceive the combination of grey and orange as applied to the housing of the goods at hand as a usual characteristic thereof and not as a badge of origin.

The EUTM is therefore incapable, in respect of the goods in question, of serving as an indication of origin from the perspective of the consumers of the goods, and is therefore devoid of any (inherent) distinctive character pursuant to Article 7(1)(b) EUTMR.

Since the contested EUTM falls foul of the prohibition laid down by Article 7(1)(b) EUTMR, for reasons of economy of proceedings, before considering the applicant’s arguments alleging breach of Articles 7(1)(d) EUTMR, the Cancellation Division will firstly assess the EUTM proprietor’s claim to acquired distinctiveness, pursuant to Article 52(2) EUTMR in conjunction with Article 7(3) EUTMR.

ACQUIRED DISTINCTIVENESS – Articles 7(3) and 52(2) EUTMR

A trade mark that falls foul of Article 52(1)(a) in conjunction with Article 7(1)(b), (c) or (d) EUTMR will not be declared invalid where it has acquired distinctiveness through use (Articles 7(3) and 52(2) EUTMR).

Pursuant to Article 52(2) EUTMR, where a EU trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

The EUTM proprietor must demonstrate that either the trade mark acquired distinctive character on or before the date of application, or the priority date (Article 7(3) EUTMR); or distinctive character was acquired after registration (Article 52(2) EUTMR).

In assessing the distinctive character acquired through use of a mark in respect of which protection is sought, the following may be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 51).

It is clear from case-law that the acquisition of distinctiveness through use of a mark, under Article 7(3) EUTMR, requires that at least a significant proportion of the relevant section of the public identifies the products in question as originating from a particular undertaking on the basis of the mark. However, these circumstances cannot be shown to exist solely by reference to general, abstract data, such as specific percentages (19/06/2004, C-217/13 & C-218/13, Oberbank e.a., EU:C:2014:2012, § 48; and 06/11/2014, T-53/13, Line which slants and curves, EU:T:2014:932, § 97). Moreover, proof of distinctive character acquired through use cannot be furnished by the mere production of sales volumes and advertising materials. Similarly, the mere fact that the sign has been used in the territory of the European Union for a certain time is also not sufficient to show that the target public for the goods in question perceives it as an indication of commercial origin (06/11/2014, T-53/13, Line which slants and curves, EU:T:2014:932, § 100).

Distinctive character in consequence of use must be proved for all parts of the Union in which the absolute ground for refusal exists. In the case of a colour mark, this is the EU as a whole, i.e. all Member States (10/11/2004, T 402/02, Bonbonverpackung, § 86; 12/09/2007, T 141/06, Texture of glass surface, EU:T:2007:273, § 36; 21/04/2015, T 360/12, Device of checkerboard pattern, EU:T:2015:214, § 91).

In the case at hand, the relevant dates for the application of Articles 7(3) EUTMR and 52(2) EUTMR are the filing date of the contested EUTM (19/12/2008) and its registration date (10/08/2011), respectively, and also the date of filing of the application for invalidity (24/06/2015).

Thus, it must be established either that the contested EUTM had acquired distinctive character on account of the use which has been made of it in the Member States of the European Union at the time of the filing date or that it has acquired such distinctive character on account of the use which has been made of it (14/12/2011, T 237/10, Clasp lock, EU:T:2011:741, § 90).

Considering the foregoing, the proof of acquired distinctiveness submitted must show that the EUTM had become distinctive for at least a significant proportion of the relevant public in the European Union, in relation to the goods concerned, as a consequence of the extensive use which was made of it.

Preliminarily, it is noted that, besides the contested registration, the EUTM proprietor is also the holder of EUTM No 9 388 877 and of International Registration No 872 542 - designating the EU - for the marks below:

EUTM No 9 388 877 IR No 872 542

The core features of the EUTM proprietor’s marks - which are all registered as colour marks - are practically identical. These registrations were all granted on the basis of acquired distinctiveness pursuant to Article 7(3) EUTMR. The evidence submitted in order to demonstrate acquired distinctiveness were essentially the same in respect of all marks.

The EUTM proprietor presented the documentation already filed at the examination stage and submitted a number of further evidence, including:

• Annex 1: Official annual report regarding the EUTM proprietor’s business activities in 2014. Images of STIHL chainsaws in orange and grey are displayed.

• Annex 2: An affidavit of 20/11/2015 signed by Mr Gunther Stoll, as a Senior Function Manager of the EUTM proprietor, claiming that their chainsaw has been repeatedly counterfeited by several companies, including the applicant. The affidavit is accompanied by images of counterfeited goods.

• Annex 2a: Copy of the application form, observations and evidence filed by the EUTM proprietor before the Office during the examination proceedings on 19/12/2008. The documentation includes the following:

• Attachment 1: Copy of internal instructions dated 11/04/1972 concerning the use of the colours grey (RAL 7035) and orange (RAL 2004) for the visible parts of power tools.

• Attachments 2 and 3: Catalogues in German, for the period 1988-2008, and in English, for the period 1994-2008, displaying, inter alia, different models of STIHL chainsaws in orange and grey.

• Attachment 4: List of the EUTM proprietor’s subsidiaries in Austria, Belgium, Bulgaria, Czech Republic, Denmark, France, Hungary, Italy, Netherlands, Poland, Portugal, Romania, Spain, Sweden and the UK.

• Attachment 5: A table showing the number of licensed dealers of the EUTM proprietor in the EU Member States between 2000 and 2007.

• Attachment 6: A list of EUTM proprietor’s licensed dealers in Austria, Belgium, Czech Republic, Denmark, France, Germany, Greece, Hungary, Italy, Netherlands, Poland, Portugal, Romania, Spain, Sweden and the UK.

• Attachment 7: Press release of McDonald’s Europe dated 14/09/2006.

• Attachments 8 Advertising samples from catalogues and magazines in Bulgarian, Danish, Dutch, French, German, Greek, English, Hungarian, Italian, Polish, Romanian and Swedish.

• Attachment 8a: A list of TV-commercials for ‘STIHL’ products broadcasted in Germany and samples marketing campaigns in Austria, Belgium, Germany, France, Hungary, Italy, Poland, Romania, Spain, Sweden and the UK between February and March 2008.

• Attachment 9: Extracts from the EUTM proprietor’s website in different language versions.

• Attachment 10: Extracts from an article dated March 2006 and from a press release published by Thomson Reuters on 26/06/2008 about the World Cup of Forestry Professional and the “STIHL Timbersports Series”.

• Attachment 11: Extracts from the EUTM proprietor’s website providing information on the “STIHL Timbersports Series” in different languages.

• Attachment 12: Press release of the EUTM proprietor dated 29/02/2008 including extracts form www.fiacwtcc.com concerning the sponsorship partner’s.

• Attachments 13 and 14: Advertising expenses of EUTM proprietor and its subsidiaries in the period 2003-2007 and only those related to chainsaws in the period 2003-2007 in Austria, Belgium, Bulgaria, Czech Republic, Denmark, France, Germany, Greece, Hungary, Italy, Netherlands, Poland, Portugal, Romania, Spain, Sweden and the UK.

• Attachments 15 and 16: Sales numbers and market share figures generated by the sale of chainsaws in the period 2000-2007 in all the Member States (excluding Malta).

• Attachment 17: Turnover figures related to the sale of chainsaws in the period 2000-2007 in all the Member States (excluding Malta).

• Attachments 18 and 19: Annual reports for the period 1996-2007.

• Attachments 20 and 21: Images of counterfeited products.

• Attachments from 22 to 24: Market surveys in Germany and Poland - accompanied by a translation into English - issued by the company Gfk Marktforschung GmbH in 2007.

• Attachment 25: Various statements provided by Trade and Professional Associations from Austria, Belgium, Denmark, Germany, Hungary, Netherland and Spain.

• Attachment 26: Copy of the letter of 21/04/2008 by which the Office notified the acceptance of the International Registration No 872 542 designating the EU, accompanied by extracts from the WIPO database showing details of the mark. Reference is also made to the decision of 30/11/2009, R 355/2007-4, Orange & Grey (colour mark), stating that the IR No 872 542 acquired distinctiveness in the EU within the meaning of Article 7(3) EUTMR.

• Annex 3: Copy of the decision of the Office dated 01/04/2011 notifying the acceptance of the contested EUTM on the basis of the evidence of acquired distinctiveness pursuant to Article 7(3) EUTMR.

• Annex 4: Copy of the EUTM proprietor’s catalogue dated 2015.

• Annex 5: A diagram illustrating the corporate structure of the STIHL Group in Europe.

• Annex 6: An affidavit signed by Mr Joachim Burandt on 23/11/2015, as a Sale Director of the EUTM proprietor, claiming that there are “12 728 official STIHL dealers (including their branch outlets) and 5 520 sub-distributors who are supplied by the official STIHL dealers” in the EU.

• Annexes from 7 to 13: Copy of official annual company reports indicating the following worldwide turnover for the period 2008 - 2014. The reports also display a list of subsidiary companies included in the consolidated financial statements that are located in Austria, Belgium, Czech Republic, France, Germany, Greece, Hungary, Italy, Poland, Portugal, Romania, Spain, Sweden and the UK.

• Annexes 14 and 15: Images depicting a ‘STIHL’ outlet in orange and grey and samples of packaging of a range of EUTM proprietor’s goods.

• Annexes from 16 to 22: Copy of the EUTM proprietor’s catalogues dated between 2008 and 2015.

• Annex 23: Extracts showing the EUTM proprietor’s website targeting users in almost all the EU Member States.

• Annex 24: Extracts from the EUTM proprietor’s website regarding the ‘Stihl Timbersport Series’. From the evidence it appears that “STIHL Timbersports^® is established worldwide as the major league of lumberjack sports”.

• Annex 25: Advertising material and a TV report with a list of countries where the event was broadcasted in 2013, 2014. Such list includes: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Latvia, Poland, Romania, Spain and the UK.

• Annex 26: A survey report conducted in Croatia in November 2013.

• Annexes from 27 to 36: Copy of decisions issued by national courts - in China, Czech Republic, Germany, Russia and Slovakia in 2011, 2012 and 2013 - holding that third parties infringed the EUTM proprietor’s rights to the contested mark.

• Annex 37: Images of third parties’ chainsaws in orange and grey that were seized at the Italian customs.

Since the EUTM proprietor requested data incorporated in the probative material to remain confidential, the figures provided will be analysed in general terms.

In the present case, the evidence shows that the EUTM proprietor used the mark in a significant proportion of the European Union and that it is one of the most important players in the specific, definable market segment of chainsaws. The data concerning the advertising expenses, the sales numbers and the market shares are supported by documents attesting an extensive presence of EUTM proprietor’s goods in Austria, Belgium, Bulgaria, Czech Republic, Denmark, France, Germany, Greece, Hungary, Italy, Poland, Portugal, Romania, Spain, Sweden and the UK. These goods as well as the promotional material always appear in the grey/orange colour combination.

Moreover, the high number of the EUTM proprietor’s branches is, in particular, to be noted. That factor, taken into consideration with the nature of the goods marketed by the EUTM proprietor - which are addressed to a specialised public - is ground for considering that these goods had been highly visible and widespread in the vast majority of the EU.

In its submissions, the applicant does not dispute the fact that the EUTM proprietor has marketed its goods within the EU, but it basically contests that they are recognised by their name and not by their colour scheme. In other words, the applicant argues that the evidence fails to demonstrate that the EUTM had been used and had become distinctive, since the documentation mainly refers to the use of the mark ‘STIHL’.

In this regard, it is true that since the contested EUTM comprises a colour combination, the mere use of the sign, how massive it would have been, would not allow for itself the conclusion that the relevant public perceives it as an indication of commercial origin. The EUTM proprietor’s evidence regarding sales figures and the turnover for the relevant goods is in need of being accompanied and supported by evidence regarding the recognition of the claimed colour combination as a mark, i.e. by documents relating to the perception of the sign by the relevant public as an indication of commercial origin (10/11/2004, T‑402/02, Bonbonverpackung, EU:T:2004:330, § 86; 12/09/2007, T‑141/06, Texture of glass surface, EU:T:2007:273, § 41).

However, it must be recalled that the distinctive character of a mark may be acquired in consequence of the use of that mark as part of or in conjunction with another trade mark (07/07/2005, C‑353/03, Have a break, EU:C:2005:432, § 32). Therefore, the fact that the colour combination orange and grey has been used in combination with the verbal element ‘STIHL’ does not exclude that the EUTM has acquired distinctive character through use. According to the Court, it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designated exclusively by the mark, as originating from a given undertaking (07/07/2005, C‑353/03, Have a break, EU:C:2005:432, § 30).

To this respect, the EUTM proprietor presented several independent statements emanating from seven different Member States, such as: Austria (from the Österreichische Bundesforste, the Municipal Horticultural Office, Österreichische Maschinenring, Fire Service of the City of Vienna); Belgium (IPC Groene Ruimte BV, the Royal Forestry Society of Belgium, Hooghouten-Camille BVBA, the Municipalities of Brussels, Beveren and Lokeren); Germany (from the German Test Centre for Agricultural and Forestry Machinery (DPLF), the Federal Specialist Group for Power Tools (BuFa-MOT), the German Association of Construction Machinery Engineers and Technicians (VDBUM), the Educational Institute for Forestry); Denmark (Banedanmark, Enterprise Forestry); Hungary (the Hungarian Forestry Association (OEE), Federation of Hungarian Private Forest Owners (MEGOSZ)); Netherlands (Licom Groen); and Spain (National Association of Agricultural Machinery, Forestry and Green Spaces (ANSEMAT)).

In all these statements it is recognized that the colour combination grey/orange applied to chainsaws is in forestry circles associated with the EUTM proprietor’s company.

The EUTM proprietor further submitted market surveys conducted in Germany and Poland in 2007 and in Croatia in 2013 by GfK Marktforschung, an independent market research organisation.

The applicant contests the probative value of these surveys arguing that they do not show the reality of the market, with multiple producers using the same chromatic range of colours for identical goods.

The Cancellation Division however disagrees with the applicant’s allegation.

As far as the reports of GfK Marktforschung are concerned, it must be emphasised that with the right questions, surveys by renowned, independent market research institutes can constitute valuable evidence for examining market acceptance, since demoscopy does not involve arbitrary empiricism, but rather the use of scientific findings and because in principle such institutes guarantee that those questioned were representatively chosen and the surveys properly carried out, so that the opinion of the relevant public can be inferred from the findings of the representative survey (see, to this effect, decision of 11/01/2006 - R 1/2005-4 - ‘Hilti-Koffer’, § 32).

The market surveys submitted for Germany and Poland were conducted in 2007 among a representative cross-section population amounting to approx. 3 000 persons in Germany and 4 000 persons in Poland.

As for the German public, the reports displays that 29% of all interviewees (general public over the age of 14) and 71% of those in the narrower section of the public (person who have already purchased or at least used a chainsaw) were of the opinion that the “orange/grey” colour combination in relation to chainsaws pointed to a specific company. In addition, 22% of all interviewees and 61% of those in the narrower section of the public identified the “orange/grey” colour combination with the EUTM proprietor.

The numbers concerning the Polish public are similar. Indeed, the reports indicates that 29% of all respondents and 58% of those in the closer section of the relevant public were of the opinion that the shown “orange/grey” colour combination in conjunction with chainsaws is an indication of a specific company. Moreover, 23% of all interviewees and 47% of those in the closer relevant public identified the “orange/grey” colour combination with the EUTM proprietor.

These figures are confirmed and even increased by the survey undertaken by GfK in Croatia in 2013. The respective figures are 47% of all respondents and 77% of those in the closer relevant public were of the opinion that the shown “orange/grey” colour combination in conjunction with petrol chainsaws is an indication of a specific company. Moreover, 41% of all interviewees and 69% of those in the closer relevant public associate the “orange/grey” colour combination with the EUTM proprietor.

These reports therefore demonstrate the extraordinarily high recognition and acceptance of the object of the mark among, in particular, the relevant specialist public in Germany and Poland in 2007 and in Croatia in 2013. Furthermore, the low difference between the percentage of knowledge as a trade mark and knowledge of the name of the producer shows that the majority of the relevant public not only recognises the colours and sees them as a trade mark, but also has a strong affinity to the producer.

Such levels of acceptance have not come about abstractly, but are the result of many years’ presence on the market, a significant market share and considerable investment in advertising and marketing.

The information provided by the EUTM proprietor regarding the market share, sales figures and advertising expenditure show that homogenous values were achieved in - at least - 17 EU Member States, whereby it is obvious that use cannot and will not be equally intensive in all the Member States of the Union.

It follows that, taking into account the statements provided by public and private trade associations from seven Member States and the results of the surveys attesting levels of recognition of the mark among the vast majority of the specialised public interviewed in Germany, Poland and Croatia, it is quite acceptable and proper to infer analogous high levels of recognition of the mark with reasonably comparable sales, market shares and advertising expenditure in the other Member States.

The same findings were achieved by the Office’s examiners and the Fourth Board of Appeal, in case R 355/2007-4, which held that the documentation provided by the EUTM proprietor - almost identical to evidence filed in the present proceedings - was sufficient to prove the acquired distinctiveness of the EUTM No 9 388 877 and International Registration No 872 542.

In case R 355/2007-4, the EUTM proprietor furnished a further survey conducted in France showing figures slightly below the values for Germany but still showing a trade mark recognition for the majority of the target public. Following that, the Fourth Board held that “the results from the GfK surveys show acquired distinctiveness in Germany and also in France. They can be extrapolated to the other Member States of the Community under the proviso that the amount of use is comparable so that it can be expected that the same amount of use triggers the same consumer recognition (30/11/2009, R 355/2007-4, ‘Orange & Grey’, § 45).

Therefore, the evidence filed by the EUTM proprietor at the examination stage on 19/12/2008 and re-submitted before the Cancellation Division on 25/11/2015 indicate that chainsaws in orange and grey had been massively used in a significant proportion of the European Union. The additional evidence referring to the use of mark in the period preceding the filing of the application for invalidity further confirms and reinforces this conclusion, since it proves that the EUTM had been constantly exposed to the relevant public over the years.

As the submitted documents have to be considered as a whole, it can be reasonably concluded that the EUTM proprietor is both a market leader and recognised by the specialised public by reference to the registered colour combination, even when it is confronted to those products without the word mark ‘STIHL’.

In light of the foregoing, the EUTM proprietor was successful in demonstrating that at the time of the filing date of the EUTM acquired distinctiveness in the EU within the meaning of Article 7(3) EUTMR.

Since it is recognised by the Cancellation Division that the EUTM has acquired distinctive character pursuant to Article 52(2) EUTMR, there is no need to examine the applicant’s claim regarding Article 7(1)(d) EUTMR.

BAD FAITH – Article 52(1)(b) EUTMR

General principles

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, EU:C:2009:361, § 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 overall assessment of bad faith must bear in mind the general principle that the ownership of a European Union trade mark is acquired by registration and not by prior adoption by way of its actual use. Particularly when the invalidity applicant is claiming rights to a sign which is identical or similar to the contested EUTM, it is important to remember that Article 52(1)(b) EUTMR moderates the ‘first-to-file’ principle, according to which a sign may be registered as an EUTM only in so far as this is not precluded by an earlier mark with effect either in the European Union or in a Member State. Without prejudice to the possible application of Article 8(4) EUTMR, the mere use of a non-registered mark does not prevent an identical or similar mark from being registered as an EUTM for identical or similar goods or service (14/02/2012, T 33/11, Bigab, EU:T:2012:77, § 16-17 and 21/03/2012, T 227/09, FS, EU:T:2012:138, § 31-32).

As a general rule, good faith is presumed until the opposite is proven and the burden of proof in this respect rests exclusively on the invalidity applicant (13/12/2012, T 136/11, Pelikan, EU:T:2012:689, § 57).

The applicant for invalidity must establish the circumstances which enable the conclusion that the proprietor of the EUTM was acting in bad faith at the time of filing the application for its registration (21/03/2012, T 227/09, FS, EU:T:2012:138).

The date of filing of the contested EUTM was 19/12/2008. Therefore, the applicant for invalidity must prove that the EUTM proprietor acted in bad faith on this date.

Assessment of bad faith

In the present case, the applicant points out that the EUTM proprietor had previously filed a EUTM application for a colour mark almost identical to the contested EUTM for goods in Class 7. As seen above, this application (EUTM No 338 194) was rejected since the mark was found to be non-distinctive pursuant to Article 7(1)(b) EUTMR.

The applicant’s case in relation to bad faith is essentially based on the claim that the contested EUTM was filed in spite of the fact that the proprietor knew that the combination of orange and grey was not distinctive and used by the majority of its competitors. Its sole to intention, in the opinion of the applicant, was to monopolise such colour combination and prevent other companies from using colours that should be available for all the operators.

Notwithstanding the applicant’s arguments, the Cancellation Division is of the opinion that the facts and evidence furnished by the applicant are insufficient for a declaration of invalidity based on bad faith. The applicant has not proven that the EUTM proprietor, when filing the application for the contested EUTM, unfairly filed the application for the contested EUTM.

In this context, it should be noted that it is legitimate for an undertaking to seek registration of a mark even if this mark was previously refused. The EUTM application No 338 194 was finally refused by the Court in Case T-234/01 on 09/07/2003. At that time no evidence of acquired distinctiveness was provided by the EUTM proprietor, which fairly waited for a few years to strengthen its business under the mark and, then, file a EUTM application that was supported by evidence of use.

Moreover, claiming that the colours orange and grey were customary and other companies were already using them in connection with chainsaws does not automatically trigger a presumption of bad faith and, rather, constitutes a matter for absolute grounds pursuant Article 52(1)(a) EUTMR, as the applicant indeed invoked. As far as bad faith is concerned, consideration must first be given to the intentions of the EUTM proprietor at the time when it filed the application, as a subjective factor which must be determined by reference to the objective circumstances of the particular case. Then, even assuming that the EUTM proprietor was aware of the existence of the other undertaking using the colours at issue, the applicant still has to prove the EUTM proprietor’s specific unfair intentions.

In this regard, as to the opposition proceedings filed by the EUTM proprietor against the applicant’s Romanian application No M 2014 05856 on the basis of the contested EUTM, the Cancellation Division notes that after obtaining the registration of a trade mark, the proprietor’s intention to enforce its EUTM cannot, given the circumstances, be considered as proof of the unfair behaviour of the EUTM proprietor at the time of filing of the application for the contested EUTM.

In conclusion, the applicant did not put forward evidence and facts containing sufficient indications about the alleged bad faith. As a consequence, the invalidity ground pursuant to Article 52(1)(b) EUTMR must be dismissed.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected.

COSTS

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

According to Rule 94(3) EUTMIR 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

José Antonio GARRIDO OTAOLA

Alexandra APOSTOLAKIS

Judith NEMETH

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.