CANCELLATION No 5 109 C (INVALIDITY)

Droujestvo s Ogranichena Otgovornost "Rezon", 11 A Oulitsa "Karnegi", 1142 Sofia, Bulgaria (applicant)

a g a i n s t

mobile.de GmbH, Marktplatz 1, 14532 Dreilinden, Germany (EUTM proprietor), represented by Lexton Rechtsanwälte, Kurfürstendamm 220, 10719 Berlin, Germany (professional representative)

On 10/09/2018, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 8 838 609 is declared invalid for some of the contested services, namely:

Class 35: Advertising; business management services.

3. The European Union trade mark remains registered for all the remaining contested and uncontested goods and services, namely:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; calculating machines, data processing equipment and computers, computer peripheral devices and computer programs (included in class 9).

Class 16: Paper, cardboard and goods made from these materials (included in class 16); printed matter; photographs; stationery; typewriters and office machines (except furniture); instructional and teaching material (included in class 16); plastic material for packaging, namely covers, bags, boxes and foils.

Class 35: Business administration; office functions.

Class 38 Telecommunications and in particular services on the Internet; collating, providing and transmission of messages, information, images and texts; electronic advertising.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software; rental of computer software; provision of search engines for the Internet.

4. Each party bears its own costs.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed an application for a declaration of invalidity against some of the services, namely against all the services in Class 35 and some of the services in Class 42, namely, advertising; business administration; business management services; office functions, in Class 35 and scientific and technological services and research and design relating thereto; design and development of computer hardware and software, in Class 42 of European Union trade mark No 8 838 609 (the EUTM) which is registered for the figurative sign shown below:

The application is based on the Bulgarian trade mark registration No 51 245 which is registered for the sign shown below:

The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

On 28/03/2013 the Cancellation Division took a decision which resulted in the rejection of the cancellation application pursuant to Article 64(2) and (3) EUTMR (Article 57(2) and (3) CTMR of the version in force at the time) on the grounds that the evidence submitted by the applicant was insufficient to prove that the earlier trade mark had been genuinely used.

The decision was appealed and the Board of Appeal issued its decision on 13/02/2014 in case R 951/2013-1. The Board’s decision annulled the contested decision and remitted the case to the Cancellation Division for further prosecution. The Board considered that the new evidence submitted during the appeal was acceptable as it merely supplemented the previously submitted evidence, and therefore it exercised its discretion and accepted the additional evidence of use. The Board of Appeal examined the evidence of use, including the additional evidence of use submitted before the Board, and held that the evidence of use was sufficient only to prove the use of the mark in relation to advertising in connection with vehicles, in Class 35. Therefore, it annulled the contested decision and remitted the case back to the Cancellation Division to examine the application under Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR. This decision was also appealed to the General Court in Case T-322/14 and the Court of Justice in Case C-418/16 P, both of which confirmed the Board of Appeal’s findings. Therefore, the decision was remitted back to the Cancellation Division.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion pursuant to Article 8(1)(b) EUTMR between the signs in conflict, as the word MOBILE is prominent in the contested mark and is identical to the earlier mark. The marks are therefore similar. In addition, the services in classes 35 and 42 are identical. The two trademarks can therefore be confused.

The EUTM proprietor argues that the earlier trade mark was registered in bad faith and that the EUTM proprietor has earlier national and international trade marks predating the priority date of the applicant’s mark. Furthermore, the EUTM proprietor requests the applicant to show proof of use of the earlier mark. The EUTM proprietor also argues that there is no likelihood of confusion between the marks.

The applicant submitted evidence to prove the use of the earlier trade mark.

The EUTM proprietor contests the admissibility of the evidence submitted by the applicant as it was not translated and argues that the evidence should not be taken into account and is insufficient to prove the use of the earlier mark.

The applicant submitted translations of parts of the relevant material.

In response to the translations filed by the applicant, the EUTM proprietor argues that the applicant has failed to furnish sufficient proof of use of the earlier trade mark. The EUTM proprietor claims that even after being invited to furnish translations the applicant has failed to provide translations of the relevant documents. In addition, the applicant has not proven use of the earlier mark as registered. Instead, all the documents show that the applicant has used a different mark, namely ‘mobile.bg’ (figurative mark). Furthermore, it is not possible to connect the invoices with use of the applicant’s mark. The applicant claims the invoices are “for advertising provided via the site http://moblie.bg”. None of the invoices were issued for advertising services in connection with the relevant mark.

Preliminary remark

The EUTM proprietor pleads two causes of actions: (i) that the earlier trade mark was registered in bad faith; and (ii) that the EUTM proprietor is the owner of earlier national and international trade marks predating the priority date of the applicant’s mark.

The fact that the EUTM proprietor owns additional marks which may predate the applicant’s earlier mark is irrelevant for the purposes of these proceedings. What is important is that the applicant is the owner of a mark which is earlier than the contested EUTM. Bad faith is not a defence in invalidity proceedings. However, this does not prohibit the EUTM proprietor from initiating separate invalidity proceedings based on bad faith against the earlier mark of the applicant. Therefore, this argument is rejected.

PROOF OF USE

The Board of Appeal held in its decision of 13/02/2014 in case R 951/2013-1 that the new evidence submitted during the appeal was acceptable as it merely supplemented the previously submitted evidence. Having examined all of the evidence of use, the Board of Appeal held that this evidence was only sufficient to prove the use of the mark in relation to advertising in connection with vehicles, in Class 35. This finding was upheld by the Courts. The Cancellation Division is bound by the assessment of the Board and refers to its findings as regards the POU. Therefore, the applicant has only shown sufficient evidence to prove genuine use of the EUTM in relation to advertising in connection with vehicles in Class 35. Consequently, the examination of likelihood of confusion will only continue in regard to the services for which use has been proven.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The services

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The services on which the application is based are the following:

Class 35: Advertising in connection with vehicles.

The contested services are the following:

Class 35: Advertising; business administration; business management services; office functions.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software.

Contested services in Class 35

The contested Advertising includes, as a broader category the applicant’s Advertising in connection with vehicles. Since the Cancellation Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the applicant’s services.

The contested Business management services are usually provided by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The earlier Advertising services in connection with vehicles consist of providing others with assistance in the sale of their vehicles by promoting their launch and sale, or of reinforcing a client’s position in the market and acquiring a competitive advantage through publicity. Many different means can be used to fulfil this objective. These services are provided by specialist companies that study their clients’ needs, provide all the necessary information and advice for marketing the clients’ goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

When comparing business management with advertising services in connection with vehicles, it is useful to keep in mind that advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice, since advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may reasonably assume that these two services have the same commercial origin. Therefore, they are similar to a low degree.

However, the contested services business administration; office functions in Class 35 are dissimilar to the earlier services. The contested services are used in relation to running the day to day administrative functions of a business or office, such as finance, personnel and general office tasks. These services have a different nature and purpose to the earlier services. Moreover, they are generally offered by different companies and have a different end user. These services are not commentary or in competition and therefore, they are dissimilar.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto; design and development of computer hardware and software are dissimilar to the earlier advertising services in connection with vehicles. These services under comparison relate to completely different fields. The applicant’s services refer to different types of IT services, whilst the opponent’s services are related to the field of advertising. Consequently they have a different nature, they do not serve the same purpose, are not provided by the same undertakings and the target public is not the same. As a consequence they are not in competition with each other, are not interchangeable, and cannot be considered complementary.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is assumed to be reasonably well-informed, and reasonably observant and circumspect. It should be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar to a low degree are directed at business consumers with specific professional knowledge and expertise. Given the nature of the services, which may have important financial consequences for their users, the relevant consumers are likely to display a relatively high degree of attention.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is Bulgaria.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark that contains the word ‘mobile’ written in lower case standard black typeface, placed within a rectangle that has some black shading on the left hand side. The word ‘MOBILE’, or its Cyrillic transliteration ‘мобиле’, has no exact meaning in Bulgarian, although it is close to the Bulgarian equivalent ‘MOBILEN’ or ‘мобилен’ in the Cyrillic alphabet, an adjective describing something ‘capable of moving or being moved’ and will be understood as such by the relevant consumer in Bulgaria. The meaning of the Bulgarian word ‘MOBILEN’ was confirmed by the cancellation applicant itself in its letter of 26/10/2011. It is the word element ‘MOBILE’ that plays a dominant role in the sign. The figurative element of this mark is not particularly fanciful or original and is merely a decorative non-distinctive basic geometrical shape serving as a simple frame for the word elements ‘mobile’. Therefore, it is the word element ‘mobile’ that is the most distinctive and dominant part of the contested mark.

The contested mark is a figurative mark that contains the verbal element ‘mobile.de’ written in lower case standard black typeface, placed within a rectangle that has some grey shading on the left hand side. The word ‘MOBILE’ has been examined above. The element ‘.de’ will be recognised as a generic reference to the top level domain name for Germany and therefore, has little or no distinctiveness or trade mark significance. The figurative element in the EUTM is merely a decorative non-distinctive basic geometrical shape serving as a simple frame for the word elements ‘mobile.de’, and is therefore not fanciful or original. Therefore, it is the word element ‘mobile’ that is the most distinctive and dominant part of the contested mark.

Visually, the signs coincide in the identical word ‘mobile’ written in the same standard lower case type face. Moreover, the figurative element which resembles a car registration plate is almost identical in both signs, except for the difference in colour in the shading. The signs differ in the element ‘.de’ contained in the contested sign which has no counterpart in the earlier mark but which has been found to be weak distinctively. However, as the contested sign contains the distinctive part of the earlier mark in its entirety and also an almost identical figurative element, the signs are considered to be visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the word ‘mobile’ present identically in both signs. The pronunciation differs in the syllable ‘.de’ of the contested mark, which has no counterpart in the earlier sign, but which is only weak distinctively and therefore, will not play a significant role in the overall impression of the signs. Therefore, as both signs contain the word ‘mobile’, which is the most distinctive part of both signs, the signs are phonetically similar to a high degree.

Conceptually, , the word ‘mobile’, taken literally, has no meaning in Bulgarian, although the addition of a letter ‘n’ at the end of the word converts it into the Bulgarian equivalent, which is an adjective describing something ‘capable of moving or being moved’ and will be understood as such by the relevant consumer in Bulgaria. The element ‘.de’ will be understood as the Germany top level domain and is therefore has a weak distinctive character. In the view of the Cancellation Division, the addition of the element ‘de’ will not significantly alter the overall conceptual similarity between the marks. Since both signs coincide in the word ‘MOBILE’, the signs are conceptually similar to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The applicant claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence to prove this claim.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no exact meaning for any of the relevant services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The signs in conflict have been found to be visually, phonetically and conceptually similar to a high degree. The services in conflict have been found to be partially identical, partially similar to a low degree and partially dissimilar. The earlier mark has a normal degree of distinctiveness and the relevant consumer will have a higher level of attention in relation to the services at issue.

Therefore, the Cancellation Division considers that there is a likelihood of confusion between the marks because the differences between the signs are confined to non‑distinctive or secondary elements and aspects. This conclusion even applies in relation to the services which have been found to be lowly similar due to the high visual and phonetic similarity and the conceptual identity of the signs.

Pursuant to the above, the contested trade mark must be declared invalid for the services found to be identical or similar to a low degree to those of the earlier trade mark, namely,

Class 35: Advertising; business management services.

The application is not successful insofar as the services that are dissimilar are concerned. The similarity of the services is a necessary condition for a successful finding of likelihood of confusion under Article 8(1)(b) EUTMR, as such, the application based on this article and directed against these services cannot be successful. Therefore, the application is rejected in so far as it is directed against the services:

Class 35: Business administration; office functions.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software.

The EUTM remains valid and registered for the above mentioned contested services as well as all of the uncontested 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. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Rhys MORGAN

Nicole CLARKE

Michaela SIMANDLOVA

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.