CANCELLATION No 7 938 C (INVALIDITY)

Droujestvo S Ogranichena Otgovornost "Rezon", 11 A Oulitsa "Karnegi", 1142 Sofia, Bulgaria (applicant), represented by Advokatsko Druzhestvo "Lambovski, Harizanova, Hristov", Margarita Vassileva Harizanova, 59, Hristo Botev Str., et. 4, ap. 11, 1303 Sofia, Bulgaria,

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 28/02/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 8 838 617 is declared invalid for some of the contested services, namely:

Class 35: Gathering of information.

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

Class 9: Electric and electronic apparatus and equipment (included in class 9), photographic, cinematographic, optical, weighing, measuring, signalling and checking (supervision) apparatus and instruments; apparatus for recording, transmission and reproduction of sound and images; magnetic and optical data carriers, recorded machine-readable data carriers, calculating machines, data processing equipment and computers and peripheral devices therefor; fire-extinguishing apparatus.

Class 16: Paper, cardboard and goods made from these materials (included in class 16); printed matter; photographs; stationery; typewriters and office requisites (included in class 16 and except furniture); packaging material made of plastics, namely covers, bags and foils.

Class 38: Telecommunications, in particular Internet services, namely providing Internet portals for the buying and selling of vehicles, vehicle trailers and vehicle accessories, supplying and transmission of information; providing access to information on the Internet in connection with the buying and selling of vehicles, vehicle trailers and vehicle accessories.

Class 42: Providing Internet platforms for the buying and selling of vehicles, vehicle trailers and vehicle accessories.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against part of the goods and services of European Union trade mark No 8 838 617 which is registered for the figurative sign shown below:

namely, against all of the services in Classes 35 and 42. 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 31/10/2013 the Cancellation Division rendered a decision which resulted in the rejection of the cancellation application pursuant to Rule 39(3) CTMIR (the version in force at the time) on the grounds that the applicant had not remedied the admissibility deficiency by providing a copy of the relevant renewal certificate within the given time limit.

This decision was appealed and the Board of Appeal issued its decision on 13/11/2014 in case R 2529/2013-1. The Board’s decision annulled the contested decision and remitted the case to the Cancellation Division for further prosecution. The Board considered that the applicant had duly filed a copy of the certificate of the Bulgarian trade mark registration and a translation thereof within the accorded time limit, thus proving that at the date of filing of the application, the earlier mark was in force and the admissibility requirements were clearly fulfilled. The Board further noted that pursuant to Article 76 CTMR (the version in force at the time) the Office should have requested information from the applicant relating to the renewal of the earlier right and therefore, erred in finding the application inadmissible.

On 04/04/2016 the Cancellation Division rendered a decision which resulted in the rejection of the cancellation application pursuant to Article 57(2) and (3) EUTMR (the version in force at the time of filing of the application) on the grounds that the applicant had not submitted proof of use within the given time limit, nor had it argued that there were proper reasons for non-use. This decision also noted that Ms. Margarita V. Harizanova was not appointed as the applicant’s representative in the invalidity proceedings and that therefore, she was not notified of the request for proof of use.

The decision was appealed and the Board of Appeal issued its decision on 25/04/2017 in case R 923/2016. The Board’s decision annulled the contested decision and remitted the case to the Cancellation Division for further prosecution. The Board considered that Cancellation Division did not establish that the registered letter in question reached the destination or the date of delivery to the applicant and failed to even mention Rule 62(3) CTMIR (the version in force at the time). Therefore, the Board held that it was impossible for the applicant to prove non-receipt of the registered letter and the Office could not establish otherwise. Therefore, the contested decision was annulled and 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 is registered in bad faith and that it has earlier national and international trade marks predating the priority date of the applicant’s mark. Furthermore, the EUTM proprietor requests the applicant to submit proof of use of the earlier mark. The EUTM proprietor also argues that there is no likelihood of confusion between the marks.

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

The EUTM proprietor repeats its previous arguments and insists that the conceptual differences and the differences between the services lead to a conclusion of no likelihood of confusion. Furthermore, it contests the evidence submitted by the applicant and argues that the evidence should not be taken into account and is insufficient to prove the use of the earlier mark.

On 02/07/2018, the parties were informed that the adversarial part of the proceedings was closed and that a decision would be taken in due course.

Preliminary remark

The EUTM proprietor argues that the earlier trade mark was registered in bad faith and that it is the owner of earlier national and international trade marks predating the priority date of the applicant’s mark.

However, the Cancellation Division notes that the fact that the EUTM proprietor owns additional marks which may predate the applicant’s earlier mark is not pertinent in the present proceedings. In the present application, 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

According to Article 64(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based, namely for the Bulgarian trade mark No 51 245.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 16/05/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Bulgaria from 16/05/2008 to 15/05/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the services on which the application is based, namely:

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

Class 39: Transport; packaging and storage of goods; travel arrangement.

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

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 09/02/2018, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 19/04/2018 to submit evidence of use of the earlier trade mark.

On 29/03/2018, 30/03/2018 and 04/04/2018, within the time limit, the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Item 1: Certificates of registration of the earlier mark, domain name and the different advertising newspapers.

• Item 2: Copies of the title pages of the mobile.bg advertising magazine dated between 2008 and 2013.

• Item 3: Copies of the title pages of the Avto Pazar newspaper dated from 2010-2012.

• Item 4: Different protocols of statement, declarations and general conditions concerning the services presented by the applicant’s website.

• Item 5: Price list for the www.mobile.bg webpage in relation to advertising services rendered through the website.

• Item 6: List of car dealers on the website www.mobile.bg with the date of their registration.

• Item 7: Report from Google analytics for audience overview for the location of Bulgaria and concerning the website www.mobile.bg. The data is from between 01/01/2009-31/12/2013 and is broken down into many different categories and areas but shows that in total there were 342,194,265 visits to the web page from Bulgaria during that time period. There is also further data on the visitors per month and day.

• Items 8-13: Invoices issued by the applicant to customers in Bulgaria for advertising services dated between 2008-2013.

Most of the evidence of use is dated within the relevant period. The invoices, Google analytics and advertisements show that the place of use is Bulgaria. This can be inferred from the language of the documents (Bulgarian), the currency mentioned (Bulgarian Lev BGN) and some addresses in Bulgaria. Some of the documents, (i.e. the invoices and price list), provide sufficient information concerning commercial volume, length of period and frequency of use. In particular, the applicant submitted numerous invoices dated throughout the five year period and advertisements, along with the Google analytics report showing a very substantial amount of traffic to its webpage and which clearly demonstrate a real and actual market presence that amounts to preserving an outlet for its services throughout the reference period. Finally, the evidence shows the use in relation to the signs:

1) 2) 3) mobile.bg 4) MOBILE BG.

The sign as registered is:

The word ‘MOBILE’, or its Cyrillic transliteration ‘мобиле’, has no 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 figurative element of this mark is not particularly fanciful or original but would appear to resemble a car registration plate. Therefore, it is the word element ‘mobile’ that is also the most distinctive element and also, due to its size the most dominant part of the earlier mark.

The signs as used all contain the distinctive and dominant element ‘mobile’, and in marks 1) and 2) above they also contain a very similar figurative depiction, albeit with a grey instead of a black rectangle to the left hand side. The addition of the letter ‘n’ at the end of the word Mobile in sign 2) above also does not alter the distinctive character of the sign as registered as the public will understand this word in the same way as ‘mobile’ for the reasons mentioned above and therefore, it is an insignificant variation. The additional verbal element ‘.bg’, will be recognised as referring to the top level domain name for Bulgaria and is therefore, weak distinctively. As such, the addition of this weak element ‘.bg’ and the omission of the figurative element in signs 3) and 4) above or the slight difference in the figurative element in signs 1) and 2) above do not alter the distinctive character of the sign as registered. As such, the evidence submitted shows sufficient indications in relation to the nature of use of the sign as registered. Moreover, the evidence shows use as a trade mark, namely to indicate the origin of the services.

However, the evidence does not show use for all of the services for which the earlier mark is registered. The evidence provided by the applicant shows that the earlier mark was only used for a certain kind of advertising services, namely for ‘advertising in connection with vehicles’.

If a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition or invalidity proceedings, only for the sub-category or sub-categories relating to which the goods or services for which the trade mark has actually been used actually belong (see judgment of 14 July 2005, T-126/03, ‘Aladin’, paras 45 and 46). In the present case, the sub-category to be taken into consideration would be ‘advertising in connection with vehicles’. Consequently, only these services will be taken into consideration in the present case.

Consequently, the evidence of use in its entirety sufficiently indicates the time, place, extent and nature of use of the applicant’s trade mark for some of the services for which it is registered and on which the application is based, namely advertising in connection with vehicles, in Class 35.

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: Gathering of information.

Class 42: Providing Internet platforms for the buying and selling of vehicles, vehicle trailers and vehicle accessories.

Contested services in Class 35

The contested gathering of information at least overlaps with, the applicant’s advertising in connection with vehicles in so far as they both can concern the gathering of information in relation to advertising in relation to vehicles. Therefore, these services are considered identical to the applicant’s services.

Contested services in Class 42

The contested providing Internet platforms for the buying and selling of vehicles, vehicle trailers and vehicle accessories are dissimilar to the earlier advertising in connection with vehicles. Although both services relate to vehicles, this in itself is not sufficient to find a similarity. These services in conflict relate to completely different fields as the EUTMR proprietor’s services refer to different types of IT services, whilst the applicant’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 deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are directed at both the average consumer and the 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 has been examined in detail above in the section dealing with proof of use, and for the sake of procedural economy, a further examination will not be carried out. It is recalled that the distinctive and dominant part of the earlier mark is the word ‘mobile’.

The contested mark is a figurative mark that contains the verbal element ‘mobile.dk’ written in lower case standard black typeface, with the exception of the dot or full stop which is depicted in orange, and it is placed within a black rectangle that has an orange rectangle on the left hand side. The word ‘MOBILE’, as mentioned previously, has no meaning in Bulgarian but will be understood as referring to similar word ‘MOBILEN’ or ‘мобилен’ in the Cyrillic alphabet. The element ‘.dk’ will be recognised as referring to the top level domain name for Denmark and is therefore, weak distinctively. Likewise, the figurative element in the EUTM is not particularly fanciful or original but also resembles a car registration plate. 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 of the rectangle. The signs differ in the element ‘.dk’ contained in the contested sign which has no counterpart in the earlier mark but which has been found to be weak distinctively and the orange coloured full stop or dot in the contested sign which has no trade mark significance. However, as the contested sign contains the distinctive and dominant 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 syllables ‘mobile’ present identically in both signs. The pronunciation differs in the syllables ‘.dk’ of the contested mark, which have no counterpart in the earlier sign, but which are only weak distinctively and therefore, will not play a significant role in the overall impression of the sign. Therefore, as both signs contain the identical verbal element ‘mobile’, which is the most distinctive and dominant part of both signs, the signs are phonetically similar to a high degree.

Conceptually, as mentioned above, the word ‘mobile’ has no 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 element ‘.dk’ will be understood as the Danish top level domain name and is therefore weakly distinctive and although it will evoke a concept, it does not serve to establish any conceptual dissimilarity because this element is not capable of indicating commercial origin. Therefore, as both signs coincide in the identical distinctive word ‘MOBILE’ the signs are conceptually at least highly similar.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of some weakly distinctive elements.

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.

In the present case 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 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.

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

Class 35: Gathering of information.

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, 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 following services:

Class 42: Providing Internet platforms for the buying and selling of vehicles, vehicle trailers and vehicle accessories.

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

Solveiga BIEZĀ

Nicole CLARKE

Irina SOTIROVA

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.