CANCELLATION No 11234 C (INVALIDITY)

SPBI, Parc d’Activités de L’Eraudière, 85170 Dompierre Sur Yon, France (applicant), represented by Gevers & Orès, 41 avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Elias Mundula, Via Parioli, 01 c.p. 315, 07020 Porto Rotondo (OT), Italy (EUTM proprietor), represented by Bugnion S.P.A., Viale Lancetti 17, 20158 Milan, Italy (professional representative).

On 08/06/2018, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 8 956 401 is declared invalid for some of the contested goods, namely:

Class 12: Water vehicles; apparatus for locomotion by water.

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

Class 12: Vehicles other than water vehicles; apparatus for locomotion by land or air.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods of European Union trade mark No 8 956 401 . The application is based on:

• French trade mark registration No 1 584 890 ‘PRESTIGE’. The applicant claims reputation for this mark.

• International registration No 566 710 ‘PRESTIGE’ with effect in Benelux, Spain, Hungary, Ireland, Italy, Latvia, Romania, Finland and the United Kingdom. The applicant claims reputation for this registration in connection with Spain, Hungary, Ireland, Italy, Latvia and the United Kingdom.

• The internet domain name ‘prestige-yachts.com’, allegedly used in the course of trade in the European Union and France.

The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 8(5) EUTMR, and Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

On 30/11/2016, the Cancellation Division rendered a decision that resulted in the contested European Union trade mark being declared invalid for all the goods, given the likelihood that the Finnish public could be confused in relation to their origin.

The decision was appealed and the Board of Appeal decided in case R 0228/2017-2 on 19/06/2017. The Board’s decision annulled the contested decision, as it considered that the likelihood of confusion was not possible with regard to the relevant public in Finland given that:

• neither ‘PRESTIGE’ nor ‘YACHT’ is distinctive for the goods at issue;

• the marks are not visually similar, and the public will purchase the goods after a visual perusal of the goods, with a high degree of attention when doing so;

• the aural and conceptual similarities between the marks are limited to the presence in both of them of the weak element ‘PRESTIGE’;

• the degree of distinctiveness of the earlier mark must be deemed ‘the absolute minimum’.

The Board remitted the case to the Cancellation Division for further prosecution in relation to the following issues not examined in the decision of the First Instance:

• Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR for the territories of Benelux, Spain, Hungary, Ireland, Italy, Latvia, Romania and the United Kingdom;

• Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR;

• Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant requests that the contested mark be invalidated. There is a likelihood of confusion taking into account the fact that the marks have the word ‘PRESTIGE’ in common and differ in ‘YACHT’, which is weak for the goods at issue. The word ‘PRESTIGE’ has a high degree of recognition on the market, given its widespread use; furthermore, the applicant bases its action on an internet domain name used in the course or trade of more than local significance in France and, allegedly, in the European Union.

In his reply, the proprietor concentrates on the weakness of the word ‘PRESTIGE’ and the argument that the marks’ merely having this word in common cannot lead to the action being upheld.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION 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.

The application is based on more than one earlier trade mark; specifically, it is based on an international registration with effect in diverse territories. The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in cancellation proceedings against any registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid. In the present case, the Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s international registration in the United Kingdom, for reasons that will become apparent later in this decision.

1. The goods

International registration No 566 710 covers, in relation to the United Kingdom, the following goods on which the application is based:

Class 12: Vehicles, apparatus for locomotion by water, specifically sailing boats, motor boats and pleasure boats.

The contested goods are the following:

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Vehicles appear in both lists with the same wording, and these goods are, therefore, identical.

Vehicles include apparatus for locomotion by land, air or water; the only difference between these goods is that vehicles are a broader category than apparatus for locomotion, as the latter has a motor whereas the former might or might not have a motor. Consequently, the goods are identical.

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 goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention varies and will be very high for some water and air vehicles, whereas it will be average for vehicles such as bicycles.

3. Distinctiveness of the earlier mark

According to the applicant, the earlier international registration has a reputation in the United Kingdom for some of the goods for which it is registered, namely motor boats and pleasure yachts in Class 12.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

The evidence to prove reputation is the following:

• Exhibit 2: a list of distributors.

• Exhibit 3: a table, drawn up by the party itself, with turnover figures since 2000.

• Exhibit 4: invoices relating to the United Kingdom, Spain and Ireland, corresponding to 2001 to 2008.

• Exhibit 5 documents confirming participation in boat shows.

• Exhibit 6: awards.

• Exhibit 7: advertising documents.

• Exhibit 8: press releases.

• Exhibit 9: brochures and a witness statement signed by the Executive Vice President of the company that owned the applicant’s mark before a transfer. The statement bears the date 30/01/2009.

• Exhibit 10: definition of ‘yacht’ from Merriam Webster Dictionary.

As seen above, the evidence includes a witness statement signed by an employee of the proprietor’s company. Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR cites means of giving evidence, among which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the state in which they have been drawn up.

As far as the probative value of this kind of evidence is concerned, the Office makes a distinction between statements coming from the sphere of the party concerned itself or its employees and statements drawn up by an independent source, following established case-law (09/12/2014, T‑278/12, PROFLEX, EU:T:2014:1045, § 51; 06/11/2014, T‑463/12, MB, EU:T:2014:935, § 54). Statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (11/01/2011, R 0490/2010-4, BOTODERM, § 34; 27/10/2009, B 1 086 240, MAISONS DU MONDE; 31/08/2010, B 1 568 610, THE RACE LEGENDS).

Such a statement cannot in itself constitute sufficient proof of genuine use (09/12/2014, T‑278/12, PROFLEX, EU:T:2014:1045, § 54). However, this does not mean that such statements are totally devoid of all probative value (28/03/2012, T‑214/08, Outburst, EU:T:2012:161, § 30). Statements including detailed and concrete information have a higher probative value than very general and abstract statements. The final outcome depends on the overall assessment of the evidence in each individual case. In general, further material is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Therefore, the probative value of the additional material submitted is very important.

The signed statement, in support of the reputation of the mark in the United Kingdom, contains the following affirmations:

• The company started constructing power boats in 1957 and later started building sailing boats in the 1970s.

• The trade mark ‘PRESTIGE’ was first adopted and used by the applicant’s predecessor in or about 1989 or 1990 and has been used in relation to boats since it was first adopted. In the United Kingdom, the mark was first used in 2001, at the London International Boat Show.

• The boats are constructed in France and sold in the United Kingdom via a number of exclusive distributors.

• The ‘PRESTIGE’ range of boats is one of the most successful lines of the company. Attached to the statement is a printout from a website showing details of the range of ‘PRESTIGE’ boats.

• Boats are not everyday purchases. They are expensive, and purchasers give a great deal of thought to buying a boat. The figures for the turnover in the United Kingdom from 2001 to 2008 are:

• In relation to advertising and promotion of the mark in the United Kingdom, the statement contains the following table for 2001 to 2008:

Attached to the statement are a number of brochures, which, according to the signee of the statement, were published in 2004 and 2006, and distributed in London. There are also copies of advertisements for ‘PRESTIGE’ boats featured in publications distributed in the United Kingdom (Motor Boats Monthly and Motor Boat & Yachting).

Reputation cannot be acknowledged on the basis of the documents submitted. However, account must be taken of the fact that the goods for which a higher than average degree of recognition has been claimed can, as the applicant claims, be considered luxury goods. This implies that the consumers will carry out significant research before purchasing them. In connection with this, it must be stated, first, that the mark has been used in the market since 2001. In addition, the applicant has filed proof of its efforts to advertise the mark and, furthermore, there is evidence of goods bearing the earlier sign having been awarded a number of prizes, close to the date of the filing of the cancellation action, such as European Boat of the Year (2010), European power boat of the year (2010) and International Design Award (2015). This means that the mark has been used in the relevant market for a considerable time and the relevant public’s knowledge of the sign is over the normal threshold of the simple use of the mark; consequently, the Cancellation Division acknowledges the enhanced distinctiveness of the earlier international registration with effect in the United Kingdom for motor boats and pleasure yachts.

4. The signs

PRESTIGE
Earlier trade mark	Contested trade mark

The relevant territory is the United Kingdom.

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 appeal decision of 19/06/2017, R 0228/2017-2, considered that, in relation to the similarity of the signs, the degree of distinctiveness of the word ‘PRESTIGE’ is decisive. The decision stated that ‘PRESTIGE’, an English and French noun, is laudatory, as it means ‘influence or good reputation derived from past achievements, associations etc...’ (The Oxford Dictionary of Current English, 7th edition). Furthermore, the Board held that, ‘when the word is understood by relevant consumers, the Courts have held that it is generally devoid of distinctive character (13/09/2010, T‑366/07, P&G Prestige beauté, EU:T:2010:394, § 65). The Boards of Appeal have also consistently held that for consumers with a knowledge of English, it is a term generally devoid of distinctive character owing to its laudatory message (see, inter alia, 30/01/2014, R 1647/2013-2, PRESTIGE, § 23)’ (19/06/2017, R 0228/2017-2, § 32).

However, as seen above, the threshold of the recognition of the earlier mark is higher than average, which means that its degree of distinctiveness is no longer ‘the absolute minimum’ as the Boards of Appeal stated in their decision with relation to Finland (19/06,2017, R 0228/2017-2, § 34); it must be clarified, nevertheless, that the higher degree of recognition is true only in relation to motor boats and pleasure yachts, and not in relation to the rest of the goods at stake.

As for the word ‘YACHT’, the Boards of Appeal decision considered that it is an English word and will be understood by the public (19/06/2017, R 0228/2017-2, § 35). Consequently, it is descriptive for water vehicles.

Evaluation of the similarity of the signs in relation to water vehicles

Visually, given that for water vehicles the word ‘PRESTIGE’ cannot be deemed to possess ‘the absolute minimum’ of distinctiveness, and taking into account that, in contrast, the word ‘YACHT’ does, the marks are similar to an average degree, as the different graphic elements present in the contested trade mark are quite unimaginative and purely ornamental and, therefore, do not make much difference between the signs from a visual point of view.

Following from the considerations above, and taking into account that the graphic elements do not play a role in the aural comparison and that conceptually they will not serve to distinguish the marks, aurally and conceptually the marks are similar to a high degree.

Evaluation of the similarity of the signs in relation to the rest of the goods at stake, for which the mark lacks enhanced distinctiveness

Visually, the decision of the Boards held that, although the marks have the element ‘PRESTIGE’ in common, they produce different visual impressions: ‘The visual similarity resulting from that shared but virtually non-distinctive element is offset by the different length, configuration and complexity of the contested mark; in particular the addition of the word “yacht”, the stylization of the letter “Y”, the presence of the undulating line and blue background, create a visual difference from the earlier mark, the plainly worded “PRESTIGE”’ (19/06/2017, R 0228/2017-2, § 39).

Aurally and conceptually, the marks present a certain degree of similarity on account of the presence, in both, of the weak element ‘PRESTIGE’, but account must be taken of the fact that the word ‘YACHT’, which is not weak for the goods at stake, forms an important point of dissimilarity between the signs.

Given that the signs show some links, the examination of likelihood of confusion will proceed.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The marks are visually similar to an average degree and aurally and conceptually similar to a high degree for water vehicles, which are identical. Consequently, for these goods, the public may think that they originate from the same company or related companies, and the invalidity action filed under Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR must be upheld for water vehicles; apparatus for locomotion by water.

However, in spite of the identity between the goods, for vehicles other than water vehicles; apparatus for locomotion by land or air the signs are not similar from a visual point of view, and their aural and conceptual similarities rely on the word ‘PRESTIGE’, which for the goods at stake is weak. Consequently, in relation to these goods the invalidity action filed under Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR must be upheld.

For clarification, as regards the remaining goods (vehicles other than water vehicles; apparatus for locomotion by land or air), the result of this evaluation cannot be more positive for the applicant with regard to the remaining designations of the international registration and the French mark on which the action is based.

REPUTATION – ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable in invalidity proceedings when the following conditions are met.

• The signs must be either identical or similar.

• The applicant’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the invalidity request is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the invalidity request under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The invalidity request may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the case at issue, the applicant claimed reputation for motor boats and pleasure yachts. It has been mentioned above that, although enhanced distinctiveness can be acknowledged in the United Kingdom, the claim for reputation in the United Kingdom cannot be sanctioned on the basis of the documents filed, and that is all the more true in relation to the rest of the territories on which the action is based (France, Benelux, Spain, Hungary, Ireland, Italy, Latvia, Romania and Finland), for which the evidence is either scarce or non-existent.

As seen above, the reputation of the earlier marks is a sine qua non for Article 8(5) EUTMR to be applicable. Consequently, the action filed under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR must be dismissed.

ARTICLE 60(1)(c) IN CONJUNCTION WITH ARTICLE 8(4) EUTMR

According to Article 60(1)(c) EUTMR, an EU trade mark shall be declared invalid where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark and prior to the filing of the application for a declaration of invalidity;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the applicant acquired rights to the sign on which the application is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the action based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

In the application for invalidity, the applicant claimed the internet domain name prestige-yachts.com, used in the course of trade in the European Union and France. Non-registered trade marks are not protected at European Union level, so a European Union non-registered trade mark is not an eligible basis for the application for invalidity. However, in the light of the application for invalidity together with the statements of grounds, the Cancellation Division will take into account that the applicant referred to all Member States of the European Union.

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), if the application is based on an earlier right within the meaning of Article 8(4) EUTMR, the applicant must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the applicant to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Cancellation Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the applicant must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The applicant must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the applicant is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the applicant must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the applicant must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the applicant relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the applicant merely submitted a translation of Article L711-4 and Article L714-3 of what the applicant identified as ‘the French lP CODE’, but it did not file the French law itself. Given that the applicant did not comply with the requisite of filing the relevant national law in the original language, the Cancellation Division finds the application is not well founded under Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Pierluigi M. VILLANI

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.