CANCELLATION No 9746 C (INVALIDITY)

Starbucks Corporation doing business as Starbucks Coffee Company, P.O.Box 34067, Seattle, Washington 98124-1067, Untied States of America (applicant), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Pacific Republic, Inc., 4427, Glen Canyon Cir., Pittsburg, California 94565, United States of America (EUTM proprietor), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 14/04/2016, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 10 255 503 is declared invalid for some of the contested goods and services, namely:

Class 30: Coffee, tea, cocoa, artificial coffee; preparations made from cereals, pastry and confectionery.

Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices.

Class 43: Services for providing food and drink.

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

Class 30: Sugar, rice, tapioca, sago; flour, bread, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; bee glue [propolis] for human consumption; essences for foodstuffs, except etheric essences and essential oils; flavorings, other than essential oils; flavorings, other than essential oils, for beverages; flavorings, other than essential oils, for cakes; ice cream (binding agents for -); meat tenderizers, for household purposes; powders for ice cream; puddings; rice-based snack food; royal jelly for human consumption, not for medical purposes; sandwiches; sausage binding materials; sea water for cooking; spring rolls; starch for food; stiffening whipped cream (Preparations for -); sushi; thickening agents for cooking foodstuffs.

Class 32: Beers; syrups and other preparations for making beverages.

Class 43: Temporary accommodation.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 10 255 503. The application is based on European Union trade mark registrations No 175 539 (hereinafter ‘Earlier Mark 1’) and No 630 657 (hereinafter ‘Earlier Mark 2’). The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR.

A. SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion because its earlier ‘STARBUCKS’ marks are highly similar to the ‘G-BUCKS’ element of the contested trade mark and the contested goods and services are identical or highly similar to the goods and services for which the earlier marks are protected, used and reputed. In particular, it shows that ‘G-BUCKS’ is the dominant element of the contested EUTM and that the marks are highly similar visually and phonetically, as they share the identical letters ‘BUCKS’, in an identical order and in the same position. In addition, the applicant argues that the earlier ‘STARBUCKS’ marks enjoy an outstanding reputation throughout the European Union, that consumers will attribute the goodwill acquired by its company through decades of brand promotion, including heavy advertising and through consistent quality over so many years to the goods and services offered by the EUTM proprietor especially since the EUTM is visually and aurally highly similar to the earlier marks. Consequently the use of the contested EUTM would take unfair advantage and be detrimental to, the distinctive character or the repute of the earlier trade marks.

On 26/08/2014, together with the application for a declaration of invalidity, the applicant filed, inter alia, as Enclosure 2, a copious amount of evidence aimed at demonstrating the reputation of the earlier marks on which the application is based and its claims under Article 8(5) EUTMR. The Cancellation Division notes that the evidence was provided in a structured manner and will refer to the documents submitted by using the original inventory numbers used in the applicant’s observations and on the documents themselves. Furthermore it is noted that the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. The Cancellation Division accepts this request insofar it relates to part of the evidence (specifically the financial and other sensitive commercial information contained in the documents). Therefore, it will describe that part of the evidence only in the most general of terms without divulging any such data or specific information which could breach the terms of the confidentiality request made and accepted. However, this does not apply to evidence which consists of information that is already available to the public, either on the website of the applicant and/or in the mass media (including the internet).

The evidence consists of a Reputation Memorandum (aimed at demonstrating ‘that since the creation of Starbucks in 1971, its reputation has increased steadily, becoming a brand standing for a market leader in the field of coffee and tea products and café and restaurant services’) and the accompanying exhibits (marked from Annex 1 to Annex 39).

Essentially, the documents provide information on the following:

(i) The history of the company: In particular, it is mentioned that the applicant’s company was founded in 1971 in the United States of America and opened its first store in Seattle as a roaster and retailer of whole bean and ground coffee, tea and spices. The first ‘STARBUCKS’ branded store in the EU was opened in 1998 in the UK (on King’s Road in Chelsea, London), followed by openings in Austria (2001), Germany, Greece, Spain (2002), Cyprus (2003), France (2004), Ireland (2005), Romania (2007), Bulgaria, the Czech Republic, Portugal (2008), Poland (2009) and Hungary (2010). It is further shown that by 2012 there were 18 066 ‘STARBUCKS’ branded stores in 60 countries in the world out of which 1 053 in six EU Member States (UK, Germany, Austria, the Netherlands, Spain and Greece).

In support of these statements, the applicant submitted as Annexes 1 to 6, (1) a document entitled ‘Company Profile’ dated May 2007, emanating from the applicant and providing information on the history of its company (mentioning, among other things, that ‘Starbucks Coffee Company is the world’s leading retailer, roaster and brand of specialty coffee with millions of customer visits per week at stores in North America, Europe, Middle East, Latin America and the Pacific Rim’), (2) printouts from http://community.seattletimes.nwsource.com containing the article ‘Starbucks turned a shot into a grande’, published on 04/11/2011 (showing, inter alia, that ‘today, Starbucks spans four continents and is nearing 5,000 stores. Its brand was called the world’s fastest-growing last year, ranking 88^th in a study by Interbrand, a New-York based brand-valuation firm, which assessed Starbucks brand at 1.8 million USD.[…] With Starbucks, there’s more of a social experience tied to the brand. […] The company has focused on creating an inviting atmosphere for customers, designing stores as a gathering place. As the idea caught on, Starbucks came to represent a lifestyle as much as a product’), (3) extracts from the company’s 2010 and 2012 Fiscal Annual Reports, (4) printouts from http://starbucks.co.uk, from http:www.marketingmagazine.co.uk (containing the article ‘Starbucks strategy’ published on 17/09/1998) and from http://news.bbc.co.uk (containing the article ‘Starbucks storms into UK’ published on 17/09/1998) in relation to the opening of the first STARBUCKS London store and (5) a document entitled ‘Starbucks company timeline’ emanating from the applicant.

(ii) Starbucks today: According to the document ‘Starbucks Company Profile’ dated January 2014 (submitted as Annex 7), as of 29/09/2013 there were 19 767 ‘STARBUCKS’ branded stores worldwide, including in Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Finland, France, Germany, Greece, Hungary, Ireland, the Netherlands, Poland, Portugal, Romania, Spain, Sweden and the UK. The evidence further informs that some of Starbucks’ products (ready brew coffee, coffee based beverages such as latte, doubleshot espresso, frappucino mocha/vanilla drink, ground/roast coffee) are also distributed by third parties. In support thereof, the applicant filed, as Annexes 8 to 11, printouts from various UK, Irish, French, German and Spanish websites containing press articles and screenshots in relation to the availability of ‘STARBUCKS’ branded products in various stores and supermarkets such as Carrefour, Auchan, Spar, Tesco, Harrods, J Sainsbury etc.

(iii) Product range and services: The Reputation Memorandum provides detailed information on Starbucks’ product range (which includes more than 30 blends and single-origin premium Arabica coffees as well as other hot and cold beverages, coffee and tea, ice cream, food, coffee and tea brewing equipment, mugs, tumblers and accessories) and services (the entire range of coffee house services such as provision of food and drink, entertainment services, offering Barista courses, organizing Barista championships) as well as on the company’s trading practice and its policy on environmental sustainability. Annexes 12 to 20 consists of printouts from several Starbucks’ European websites (such as UK, German and French websites) illustrating some of the products offered, the current entertainment offer, the company’s commitment to ethical trading, environmental sustainability and assisting in the community, the current course and championships, detailed information on Starbucks’ C.A.F.E. Practices (buying guidelines addressing the company’s ethical sourcing principles for its farmers), ‘Starbucks Global Responsibility Report – Goals and Progress 2013’ (focusing on the company’s performance against the goals set in 2008 in the areas of ethical sourcing, environmental stewardship and community involvement) and printouts from http://www.ethisphere.com in relation to the ‘World’s Most Ethical’ (WME) Companies award (which honors companies that promote ethical business standards and exceed the legal compliance minimums) won by Starbucks in 2012 in the category ‘Restaurants and Cafés’.

(iv) Sales figures and market shares: Annex 21 contains a Declaration given on 07/07/2014 by Ian Cranna, acting as the Vice-President of Marketing for EMEA. The evidence states that the applicant’s company is ‘one of the world’s leading coffee producers and coffeehouse companies, present in over 60 countries around the world, including 17 EU Member States’. The document further outlines for each of the years 2007 to 2012, the total retail figures for company operated and for licensed retail stores (impressive figures of several hundred millions USD per year) and the advertising figures for company-operated retail stores (notable amounts of several millions USD per year) for six EU countries.

(v) Advertising: Annex 22 contains a selection of press articles (dated between September 2009 and March 2012) from Marketing Week, Marketing Magazine, The Guardian and Campaign in relation to a number of ‘Starbucks’ advertising campaigns carried out in the UK between 2009 and 2012. The Reputation Memorandum further mentions that the ‘STARBUCKS brand has been prominently included in major movies (such as You’ve Got Mail, The Devil Wears Prada, Sex and the City, Maid of Honor etc.) which were shown in cinemas all over the world, including in the European Union’ which shows that ‘STARBUCKS is a worldwide recognised brand’. In addition to the movies referred to in the memorandum, the applicant filed as Annex 23, printouts from http://www.strongvend.co.uk and http://www.listal.com outlining some of the movies that included scenes in STARBUCKS cafés.

(vi) Market surveys and rankings: The Reputation Memorandum further provides detailed information on the brand value and recognition of the earlier marks. Annexes 24 to 26 contain copies of three ‘Surveys of market participants on the awareness/distinctiveness of the term ‘STARBUCKS’’ conducted by GfK in the UK (in September 2007, 1,003 respondents), in Germany (in September 2007, 1,016 respondents) and in Greece (in November 2007, 1,033 respondents). The evidence shows that in the UK the term ‘STARBUCKS’ is very well known among people who buy or drink at least occasionally coffee or go to coffee houses (closer relevant public) and among the general population (widest group of market participants): i.e. 83% respectively 80% and that the degree of distinctiveness (i.e. awareness for just one company) is on a quite high level, namely 56% among the closer relevant public and 51% among the general population. For Germany the term ‘Starbucks’ is relatively well known (32% of the closer relevant public and 31% of the general population) and the degree of distinctiveness is of 20% and respectively 19%, while for Greece, ‘Starbucks’ is quite well known (50% of the closer relevant public and 49% of the general population) with a degree of distinctiveness of 28% and respectively 27%.

Annexes 30 to 31 contain excerpts from a number of thirteen lnterbrand’s annual rankings from 2001 to 2013 showing that ‘STARBUCKS’/ featured in the Best Global Brands reports (ranking in the last ten places and more specifically 91st place in 2013, 88th place in 2012 and 96th place in 2011). Some quotations from the reports are as follows: ‘a brand that’s synonymous with coffee’ (the 2013 edition), ‘Starbucks, the premier coffee chain, has revamped its strategy in the past year by opening juice bars, introducing a blonde roast coffee and even offering alcohol, live entertainment and savoury dishes at some of its US locations. Where Starbucks really shines, however, is in engaging its customers and improving their online and in-store experiences’ (the 2012 edition), ‘Celebrating its 40^th year, the venerable coffee house chain remains a magnet for coffee lovers’ (the 2011 edition), ‘Starbucks has mastered the challenges of ensuring a consistent sense of ‘Starbucks’ permeates consumers’ worlds. From its retail environments and non-traditional advertising policy to its fair trade coffee, the experience is unmistakably Starbucks. One brand transcends it all. The Starbucks brand is now worth over 3.5 billion USD. To broaden its retail offer, but more importantly to communicate and provide the accessories for the ‘third space’, Starbucks now sells and recommends books that invariably scale the bestsellers lists’ (the 2008 edition), ‘Global expansion, new products, and yet more variations on the humble cup of java boost the coffee’s hut appeal’ (the 2004 edition).

Annex 33 features printouts from www.superbrands.uk (a worldwide marketing experts company that issues yearly tables of strongest brands) in relation to Starbucks. The evidence states, among other things, that ‘Starbucks Coffee Company is one of the leading retailers, roasters and brands of speciality coffee in the world. It is committed to offering its customers the highest quality coffee and the finest coffee experience. [..] Starbucks entered the UK market in 1998 and now employs more than 11,000 partners in more than 700 coffeehouses’. Further, an extract from the 2012 ‘Superbrands Annual’ report refers to Starbucks as ‘the most recognised coffee brand’ and considers that Starbucks ‘has been at the forefront of innovating the coffeehouse experience in the UK for more than 10 years. Starbucks coined the phrase ‘the third place’ – a restful environment between home and work in which to relax, take time to yourself and enjoy a freshly made cup of high quality coffee’. It is also mentioned that ‘the Starbucks mission is to inspire and nurture the human spirit – one person, one cup and one neighbourhood at the time’.

Additionally, the applicant filed as Annex 34, a copy of the Millward Brown Optimor ‘BRANDZ™ Top 100 Most Valuable Global Brands’ annual rankings for the year 2013. The evidence ranks ‘ Starbucks’ as number 44 in the Fast Food category. The Reputation Memorandum further informs that Starbucks was ranked the second in the Top 10 Fast Food brands (just after McDonald’s and before Subway, KFC, Pizza Hut or Burger King).

(vii) Press articles: Annexes 27 to 29 contain a selection of articles from the German, UK and French press (www.taz.de, Zeit online, www.stern.de, Observer, www.bild.de, Food News – www.myself.de, Die Welt, The Guardian, www.news.bbc.co.uk, Le Monde, Le Figaro, www.24matins.fr, www.e-marketing.fr) dated between September 1998 and September 2012 with references to the fame and success of the earlier marks. It is mentioned, among other things: ‘The company does not want to be USA’s most famous coffee chain anymore but that of the whole world’; ‘To date not a single copycat has managed to cause the world leader an problems’; ‘Starbucks established a sense of community in its stores that equally works in Asia, Europe and America. It addresses the people all over the world – even though we are an American company’; ‘Three new coffee shops every day. Schultz, director until 2000, today Starbucks’ chief strategist turned a small firm from Seattle into the biggest coffee shop chain worldwide with 20 million customers per year’; ‘The king of the coffee shops, Starbucks, plans to start extending its unique USA blend of coffeehouse plus music store to its 10,000-plus outlets around the globe’; ‘Starbucks, the American coffee bar giant, has opened its first store in London’; ‘In all cities around the globe the coffee house with the green logo is an integral part of the culinary infrastructure. The coffee giant influences fast food giants like McDonald’s and even more. The coffee to go has become socially acceptable’; ‘The company is already a legend: Starbucks grew from a small coffee shop in Seattle. […] turned the firm with only regional reputation into a company with international reputation and with a turnover of 2.2 billion dollars last year’; ‘Starbucks is certainly a brand with a conscience. […] Starbucks has continued to grow because people continue to enjoy the product and the brand experience and to tell other people about it. He saw Starbucks as ‘the third place’ – not work, not home, but containing elements of both, and a refuge at times from both’; ‘Ten years ago you would struggle to find real coffee severed in British towns. Starbucks and others have created an entirely new market for coffee-drinking. In this market, Starbucks is the major brand’; ‘Starbucks the American coffee bar giant’; ‘The financial success of Starbucks, the American company that was founded in 1971 on the west coast of the United States, is remarkable’; ‘Starbucks is known all over the world for its ‘coffee boutiques’’; ‘Starbucks is in the top ten marks that have the most fans on the social network Facebook. With 21 324 981 fans it is on the second place right behind Disney’.

(viii) Letters from trade associations and chambers of commerce: The Reputation Memorandum informs that the reputation of ‘STARBUCKS’ in the European Union has also been acknowledged by trade associations. In support thereof, the applicant submitted as Annexes 35 and 36, a letter from the European Coffee Federation (dated 29/11/2007) confirming that the name Starbucks has been known to them for many years and that said name is considered to be well-known in the field of coffee and a declaration issued on 13/11/2012 by the Madrid Chamber of Commerce and Industry acknowledging that the trade mark ‘STARBUCKS’ as well as the graphic representation are widely known in the Madrid market in the field of coffee and coffee-based beverages as well as in the field of food and drink provision and cafeterias.

(ix) National decision acknowledging the reputation of the brand: The evidence states that the applicant’s company has ‘vigorously and successfully enforced its STARBUCKS trade marks before the Member States national courts’ and that the later authorities have acknowledged the high distinctive character and reputation of the STARBUCKS trade marks. Annexes 37 to 39 contain copies of three decisions issued by the Czech Industrial Property Office (on 10/11/2009), the Bucharest Tribunal, Section IV^th Civil Matters (on 14/03/2003) and the Spanish Patent and Trade mark Office (on 14/12/2012) acknowledging the reputation and recognition of, inter alia, the trade mark ‘STARBUCKS’.

The EUTM proprietor replied on 22/12/2014. It argues that there exists no likelihood of confusion since the marks in question make a significantly different impression and are, as a whole, different. It further claims that the element ‘BUCK/BUCKS’ (that refers to an animal or is a colloquial form for dollar) is widely used, that there are many trade marks incorporating this element and the applicant is not the sole brand owner to use this particle for the goods and services contested. Consequently, this word is not distinctive per se, the earlier marks do not possess enhanced distinctiveness and the applicant’s argument that the use of the contested EUTM would cause unfair advantage to the distinctive or repute of the earlier marks is not valid. Furthermore it shows that the reputation of the earlier mark was not proved for the goods in Classes 30 and 32, but only for some services in Class 42. Additionally, the applicant provided no evidence that the EUTM is used in an inappropriate manner (which would be obscene, unpleasant or made in a degrading context), that the use of the EUTM would result in the reduction of the power of attraction of the applicant’s trade marks or that the services offered by the EUTM proprietor under the contested mark have a characteristic or quality which would be liable to have a negative impact on the image of the earlier marks. In support of its observations, the EUTM proprietor filed: (i) copies of three inquiries forms dated in 2012 and 2013, addressed to the EUTM proprietor’s company by companies located in Italy, Greece and Russia and (ii) the results of a search conducted in the Office’s e-search plus database showing several trade marks containing the element ‘BUCKS’. On the same date, the EUTM proprietor requested the applicant to submit evidence of the use of the earlier marks.

On 02/07/2015, the applicant submitted evidence of use. It also refuted the EUTM proprietor’s arguments, mainly by reiterating its previous statements that the marks are similar, that there exists a likelihood of confusion and that the use of the contested mark would take unfair advantage of and be detrimental to the distinctiveness and reputation of its earlier marks. On the EUTM proprietor’s argument that the element ‘BUCKS’ is devoid of distinctive character, it stated that such a claim is not founded and that out of the 98 trade marks revealed by the search, more than 50% belong to its company.

The evidence of use consists of eight Enclosures and two CDs, as detailed below. As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data. Along similar lines of reasoning to what has already been mentioned above when listing the evidence of reputation, this will not apply however to the information that has already been made available to the public, either on the website of the applicant and/or in the mass media (including the internet).

• Enclosure 1: Declaration given on 01/07/2015 by Ian Cranna, acting as the Vice-President of Marketing for EMEA and explaining in detail the use and promotion of the ‘STARBUCKS’ trade marks in the European Union.

In particular, the evidence provides background information on the ‘STARBUCKS’ branded stores in the European Union, on ‘STARBUCKS’ branded goods being available also in supermarkets and on the ways of operating of the applicant’s company (that includes both company owned and licensed stores). The Declaration further outlines: (1) the total retail turnover for company operated retail stores in the UK, Austria, Germany, France, the Netherlands and Ireland, (2) the total turnover figures for licensed stores in Greece, Spain, Belgium, Portugal, Sweden, Finland, the Netherlands, France and Denmark and (3) the total turnover figures for both company operated retail stores and licensed stores in the countries specified under (1) and (2). The amounts are in USD and are given for the period 2007 to 2012. In respect of the origin of the data, it is stated that ‘as most retailers, the applicant’s company does not retain copies of invoices provided to consumers’, however figures regarding product sales are gathered in each store and sent to Starbucks electronically, where they are stored in a database. The numbers are impressive (generally hundreds of millions of USD) and they include (according to the information provided by the Declaration) the sales of any type of product available in STARBUCKS stores (beverages, food, cups, etc.).

In addition, detailed information is provided on the ‘FRAPPUCCINO’ brand (referred to in the Declaration as ‘one of the most successful brands in the Starbucks trade mark portfolio’; it is also mentioned that each FRAPPUCCINO product also bears the STARBUCKS brand) and on ‘STARBUCKS VIA’ (‘an instant coffee product launched in 2010 in the UK and in a number of other EU Member States after that’). In this respect, the Declaration contains tables outlining: (1) sales data for blended FRAPPUCCINO products in ‘STARBUCKS’ operated stores in the UK (noteworthy amounts of several millions of GBP; the figures are given for the period 2000 to 2012), (2) sales data for blended FRAPPUCCINO products in ‘STARBUCKS’ operated stores in four different EU Member States (for three countries the figures are given for the years 2008 to 2012 and for one country for 2012 only), (3) the total gross revenue of sales of ‘STARBUCKS VIA’ in the UK (amounts of several millions of USD for the period 2010 to 2012), (4) the number of individual FRAPPUCCINO products sold in some EU Member States in 2011 and 2012 and (5) the number of individual ‘STARBUCKS VIA’ products sold in the UK from 2010 to 2012.

Finally, the Declaration comprises a section dedicated to the promotion of the STARBUCKS trade marks. Among other things, the evidence comprises several tables, outlining the advertising figures in USD for company operated retail stores in the UK, Austria, Germany, France, the Netherlands for the years 2007 to 2012 (the amounts are impressive, of several millions USD), the approximate advertising spent for STARBUCKS branded goods and coffee house services in the UK in company owned stores for the year 2011 (several millions of GBP) and the total advertising and promotion spend for STARBUCKS VIA branded goods in the UK for the period from 2010 to 2012 (from several hundreds of thousands GBP to several millions GBP).

• The information provided in the Declaration is supported by the documents attached thereto (Enclosures 1 to 22), whose content can be summarized as follows: (i) printouts from the website of the applicant’s company in relation to the history of STARBUCKS (Enclosures 1 and 2: ‘Starbucks Company Timeline’ and ‘Starbucks Company Profile’); (ii) screenshots from UK, French, German and Spanish websites and selection of articles published between 2010 and 2012 in the UK, French and German press, illustrating the availability of ‘STARBUCKS’ products, mainly coffee and various coffee based beverages, in supermarkets (Enclosures 3 to 6); (iii) a selection of images taken from the applicant’s UK, French and German websites showing the use of, inter alia, the ‘STARBUCKS’ trade marks in relation to a wide variety of beverages, food and coffee house services and more particularly fresh food, cakes and cookies, muffins, pastries, doughnuts, sandwiches, salads, fresh fruits, chocolate bars, snacks, roasted almonds, fruit and nuts mixes, caramel waffles, brewed coffee, roasted coffee, tea, coffee- and chocolate-based beverages, coffee brewing machines, electric frothers and accessories thereof, mugs and tumblers (Enclosure 7); (iv) copy of a launch study document dated June 2009 and issued by Egg Strategy; the evidence details the US and UK initial roll-out of ‘STARBUCKS VIA’ products and shows, inter alia, customers’ early reactions to these goods (Enclosure 8); (v) selection of documents in relation to ‘STARBUCKS VIA’ and more specifically, an internal communication between Starbucks and its UK retail partners dated in 2009 and 2010 and detailing the launch and the corresponding advertisement and promotional activities for ‘STARBUCKS VIA’, press release from the applicant and an article published in the UK press referring to the launch of the product on 08/03/2010, a table outlining the sales of the STARBUCKS VIA products in the UK during the first week of its launch and a table showing the number of packs of 12 STARBUCKS VIA sticks sold in the French online shop from April to October 2014 (Enclosures 9 to 12); (vi) samples of promotional material in the UK from 2008 and 2014, a presentation dedicated to the advertisement of the ‘FRAPPUCCINO’ brand in the UK showing examples of advertisements from 2007, 2011 and 2012 and an overview of advertisements used in the UK from 2007 to 2014 (Enclosures 13 to 16) and (vii) collection of documents in relation to the ‘STARBUCKS VIA’ marks and more specifically screenshots from the ‘STARBUCKS VIA’ Facebook page and printouts from Starbucks’ UK website obtained through the Internet Archive Wayback Machine and dated between 2011 and 2013 showing examples of use, excerpts from several media sites, blogs and other third-parties generated content from UK, France, Germany and Denmark, dated between 2009 and 2012 and featuring these marks, a selection of YouTube videos (submitted on two CDs) featuring advertisements for ‘STARBUCKS VIA’ in the UK, Germany and Denmark (more specifically See What London Thinks of Starbucks VIA Ready Brew (UK, 2009), Starbucks VIA Taste Challenge (UK, 2010), The Starbucks VIA™ Taste Challenge 1 (Starbucks UK facebook, 2010), The Starbucks VIA™ Taste Challenge 2 (Starbucks UK facebook, 2010), The Starbucks VIA™ Taste Challenge 3 (Starbucks UK facebook, 2010 and Starbucks Instant Kaffee in Deutschland angekommen, blog (Germany, 2009)), Starbucks VIA green commercial (Germany, 2010), Starbucks VIA green commercial II (Germany, 2010), Starbucks VIA silver commercial (Germany, 2010), Starbucks VIA gold commercial (Germany, 2010), Starbucks VIA Road Trip Highlights (Germany, 2009), Starbucks VIA Vanilla Flavored Coffee (Germany, 2010), Starbucks VIA Road Trip Highlights (Denmark, 2009) and Starbucks VIA Vanilla Flavored Coffee (Denmark, 2010)), information on the availability of ‘STARBUCKS VIA’ goods on, inter alia, EasyJet, Thomas Cook Airlines and Southern Railway, two studies conducted by or on behalf of Starbucks, in 2010, and outlining the superior quality of ‘STARBUCKS VIA’ products and their fresh taste, which is equal to the taste of filter coffee and information on ‘STARBUCKS VIA’ being awarded an Innovative Product of the Year award in 2009, following an industry-wide survey conducted by the independent market analysis company Allegra Strategy Limited (Enclosures 17 to 22).

• Enclosure 2: Printouts from http://www.leparisien.fr featuring the article ‘The Starbucks craziness takes over Paris’ published on 03/05/2011. The evidence shows, inter alia, that Starbucks’ turnover in 2010 in France amounted to 64 million euros.

• Enclosures 3, 4, 6 and 7: Screenshots from the applicant’s French and UKwebsites, dated between 2007 and 2009 and obtained through the Internet Archive Wayback Machine. The evidence shows the use of, inter alia, the ‘STARBUCKS’ marks in France and the UK in relation to goods in Classes 30 and 32 (a wide variety of coffee and coffee-based beverages, fruit juices, tea), the location of six Starbucks stores in Paris and information on the Starbucks ‘Store Locator’ in the UK which allows customers to find the nearest ‘Starbucks’ coffee shop. The evidence further states that in the UK there are 400 connected locations nationwide.

• Enclosure 5: Printouts from http://www.coffeeloft.co.uk, featuring an article entitled ‘New Starbucks Via Ready Brew Coffee Blends Now in Grocery Stores’ of 14/09/2011 and confirming the availability of these STARBUCKS branded products in grocery stores.

• Enclosure 8: Printouts from http://www.leparisien.fr, containing the article ‘Starbucks creates an Espresso especially for France’ published on 01/03/2012 and commenting (according to the applicant’s submission) on the launch of a new espresso product exclusively available in French Starbucks stores.

In its final reply of 21/09/2015, the EUTM proprietor states that the evidence of use is insufficient as it shows use of the earlier marks only for coffee, coffee based drinks, tea and coffee shop services. It further criticises the evidence on the grounds that some of the documents (i.e. the pamphlets) do not provide sufficient indications on the extent and time of use and that some of the documents are not in the language of the proceedings. Finally, the EUTM proprietor reiterated its previous arguments that the marks are not similar and therefore the application for a declaration of invalidity should be rejected.

On 03/11/2015, the Office informed the parties that the adversarial part of the proceedings was closed and that a decision on the substance would be taken on the basis of the evidence before it.

B. REPUTATION – ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

Preliminary remark as regards the proof of use

Earlier Mark 1 and Earlier Mark 2 (hereinafter collectively referred to as the ‘Earlier Marks’) have been registered more than five years prior to the date when the application was filed.

The Cancellation Division notes that on 22/12/2014, the EUTM proprietor requested that the applicant submit proof of use of the Earlier Marks and that on 02/07/2015, the latter submitted evidence as proof of use. Additionally, the applicant referred to the evidence already submitted on 26/08/2014, in order to substantiate its claims under Article 8(5) EUTMR.

However, for reasons of procedural economy and since the outcome of the present decision under Article 53(1)(a) EUTMR in conjunction with Article 8(5) EUTMR does not depend on whether use of the Earlier Marks has been proven for all or only some of the goods and services but on the goods and/or services for which a reputation has been proved, the Cancellation Division will not examine the EUTM’s proprietor request for proof of use. The examination of the present application for a declaration of invalidity will proceed on the assumption that the Earlier Marks have been used in connection with all the goods and services in Classes 30, 32 and 42 for which the marks are registered and on which the application is based.

According to Article 53(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, a European Union trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, where there is an earlier mark as referred to in Article 8(2) CTMR and the conditions set out in paragraph 5 of that Article are fulfilled (that is, where the contested trade mark is identical with, or similar to, the earlier trade mark and it is registered for goods or services which are identical to, 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 European Union and, 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 Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The earlier trade mark must have a reputation. As to relevant moment in time, it has to be pointed out that an invalidity applicant must prove that its earlier right(s) has/have acquired a reputation by the filling date of the contested EUTM (taking into account, where appropriate, any priority claimed) and also that earlier right(s) continue(s) to enjoy reputation at the time the decision on invalidity is taken. Moreover, reputation must exist in the territory concerned and for the goods and/or services on which the application is based and for which reputation is claimed.

• Risk of injury: the use 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.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for a declaration of invalidity under Article 53(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (by analogy judgment of 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 application for a declaration of invalidity may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the present case, the EUTM proprietor did not claim to have due cause for using the contested mark. Therefore and in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the Earlier Marks

According to the applicant, the Earlier Marks have a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 10/09/2011. Therefore, the applicant was required to prove that the trade marks on which the application for a declaration of invalidity is based had acquired a reputation in the European Union prior to that date and that they continue to enjoy a reputation at the time the decision on invalidity is taken. Indeed, the requirements of Article 53(1)(a) EUTMR that there is an earlier mark [...] and that the conditions set out in paragraph 5 of Article 8(5) EUTMR are fulfilled (emphasis added) have to be interpreted in the sense that reputation of the earlier mark must also exist by the time of filing the request for invalidity and subsist by the date when the decision is taken. This is because in invalidity proceedings the time span between the filing date of the contested EUTM and the invalidity decision can be considerable and it cannot be normally presumed, in the absence of evidence that reputation subsists.

Moreover, the evidence must also show that the reputation was acquired for the goods and services for which the applicant has claimed reputation, namely:

Earlier Mark 1

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, coffee based drinks, liquid and powdered drinks mixes, cereal and flour based items, bread, gourmet baked goods and cakes, chocolate, ice cream, honey, molasses (syrup), yeast, baking powder, salt, mustard, vinegar, sauces, (seasoning, spices), spices, ice, ground and whole bean coffee, coffee essences and extracts, coffee beverages, ready-to-drink coffee, coffee-based beverages, espresso and espresso beverages, herb tea, tea beverages, cocoa and cocoa-based preparations, cocoa beverages; pastries, confectionery, cakes, sponges, muffins, scones, cookies, pies and biscuits, and preparations and mixes for making the aforesaid goods; puddings and desserts; chocolate products and non-medicated confectionery; muesli and muesli bars; snack foods; sauces, syrups, toppings and spreads; flavourings; vanilla; spices; sherbets and sorbets.

Class 32: Beer, mineral water, carbonated waters, non-alcoholic beverages; flavoured and unflavoured aqueous drinks; fruit drinks and fruit juices; beverages based on fruit and/or fruit juices; liquid and powdered drinks mixes; syrups and other ingredients for preparing drinks.

Earlier Mark 2

Class 42: Restaurant, cafe, canteen, cafeteria, coffee shop and snack bar services; preparation of food and drink; catering services; provision of facilities for the consumption of food and of beverages; information and advisory services, all relating to the aforesaid services.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

Assessment of the evidence

Having evaluated all the documents listed above (see Section A ‘Summary of the Parties’ Arguments’), the Cancellation Division concludes that the Earlier Marks have a reputation in the European Union for some of the goods and services in Classes 30 and 42 on which the application is based and for which reputation was claimed.

The notable amount of evidence submitted by the applicant leaves no doubt that the Earlier Marks have been subject to long-standing and intensive use and are generally known in the relevant market, where they enjoy a consolidated position among the leading brands, as has been attested by diverse independent sources. The brand studies, the sales figures, the marketing expenditure and the international rankings, the impressive and constantly increasing number of customers, the various references in the press to their success, all unequivocally show that the Earlier Marks enjoy a high degree of recognition among the relevant public in connection with coffee, coffee based drinks, ground and whole bean coffee, coffee beverages, ready-to-drink coffee, coffee-based beverages, espresso and espresso beverages in Class 30 (Earlier Mark 1) and café, coffee shop services and preparation of drink in Class 42 (Earlier Mark 2).

For the sake of completeness, it is to be noted that part of the evidence is dated closer to the date of filing of the contested EUTM than to the date of filing of the application for a declaration of invalidity and implicitly the date when the present decision is taken. Nevertheless, in the opinion of the Cancelation Division it is undisputed that the reputation of the Earlier Marks continues to subsist at the time of taking the present decision. This is because, as seen from above, the materials presented by the applicant reveal beyond any doubt that the Earlier Marks enjoy a reputation (that was created over a period of years) and which cannot simply be switched on and off.

Finally, it must be mentioned that the evidence does not succeed however in establishing that the Earlier Marks have a reputation for all the goods and services on which the application is based and for which reputation has been claimed. The evidence mainly relates to the above mentioned goods and services in Classes 30 and 42, whereas there is too little or no reference to the remaining goods and services.

2. The signs

STARBUCKS
Earlier Marks	Contested mark

The relevant territory is the European Union.

The Earlier Marks are word marks, composed of the nine-letter word ‘STARBUCKS’, which, as such, does not have a meaning in any of the languages of the European Union. Although according to the evidence submitted as Annex 1 (see above under ‘Summary of the Parties’ Arguments’ section), it appears that ‘STARBUCKS’ was named after ‘Starbuck’, a fictional character in Herman Melville’s novel Moby Dick, the Cancellation Division finds it unlikely that such an association be made by the average consumers. The English-speaking part of the relevant public will however naturally break down ‘STARBUCKS’ into elements which have a clear and specific meaning and thus perceive it as a combination of the English words ‘star’ (referring to, inter alia, a celestial object, a famous or exceptionally talented performer in the world of entertainment or sports or to a symbol used to indicate a category of excellence) and ‘bucks’ (meaning, among other senses, a male of some horned animals, especially the roe deer, reindeer or antelopes or a colloquial term used for designating US dollars), without however attributing a meaning as a whole to this juxtaposition of words, other than the sum of its parts. Furthermore, the meaning of the element ‘star’ may be grasped by another part of the relevant public. In this regard, the Cancellation Division recalls that the Court has already held that the word ‘star’ is part of the basic English vocabulary and is generally known by a large part of the public in the European Union, including the public in non-English-speaking territories, that will understand it as a laudatory term which emphasizes the quality of the goods (see, to that effect, judgment of 10/09/2014, T‑199/13, Star, EU:T:2014:761, §  61) or as a reference to a star or a famous person (judgment of 21/01/2010, T‑309/08, G Stor, EU:T:2010:22, § 32).

When consideration is given to the relevant goods and services in Classes 30 and 42, the element ‘STAR’ is considered to be less distinctive than the element ‘BUCKS’ for that part of the public that understands it as referring to a symbol used to indicate excellence, since it will be perceived as a laudatory term, highlighting the quality of the goods and services.

As concerns the distinctiveness of the component ‘BUCKS’, as already specified above, the EUTM proprietor puts forward that this term is widely used (as there are many trade marks incorporating this element) and as such it is non-distinctive. The Cancellation Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘BUCKS’ (so that effect judgment of 13/04/2011, T‑358/09, Toro de piedra, EU:T:2011:174, § 35 and judgment of 08/03/2013, T‑498/10, David Mayer, EU:T:2013:117, § 77-79). Under these circumstances, the EUTM proprietor’s claims must be set aside.

The contested mark is a figurative mark, in black and white. It portrays the face of a man wearing sunglasses, set against a black rectangle. On the left hand side of the mark, the verbal element ‘G-BUCKS’ is written vertically, in white and rather standard uppercase letters. ‘G-BUCKS’ does not have, as a whole, a meaning either, in the languages spoken in the relevant territory. Nevertheless, a part of the public (i.e. the English-speaking) will associate the word ‘BUCKS’ with the same meaning as explained above for the earlier marks. Furthermore, ‘G’ will be associated by consumers with the seventh letter of the Roman alphabet. Finally, the figurative element will bring to mind bring the concept of the image it depicts (the face of a man wearing sun glasses).

The applicant argues that the element ‘G-BUCKS’ is the dominant element of the contested mark. In support of its claims it refers to established case-law according to which when a sign consists of both verbal and figurative element, the verbal element is, in principle, considered more distinctive than the figurative element, as the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the mark. Furthermore, it refers to six judgments of the General Court (i.e. cases T-591/11, T-361/12, T-599/10, T-357/11, T-205/10 and T-5/08) in which the verbal element was held to be the dominant one.

The Cancellation Division does not share that view.

First, it must be recalled that the distinctiveness and the dominance of a component of a mark are two distinct concepts. According to the Office’s practice, the dominant character of an element of a mark is mainly determined by its position, size, dimensions and/or use of colours. In other words, the fact that a component of a sign may be non-distinctive or distinctive to a low degree has no bearing on the assessment of its dominant character. It follows that the applicant’s reference to the principle according to which the verbal element of a mark is in principle more distinctive than the figurative one must be set aside, as such rule does not apply when assessing whether an element of a trade mark is visually dominant or not. Second, as regards the judgments invoked in support of its claims, the Cancellation Division points out that the previous cases referred to by the applicant are not relevant for the present proceedings, as the signs are not comparable to the ones at hand.

In the present case the figurative element of the contested sign occupies the entirety of the mark and overshadows by virtue of its position and size the verbal element ‘G-BUCKS’, which is placed on the left-hand side of the mark. It is therefore considered that the figurative element is the visually dominant element of the contested trade mark.

In terms of distinctiveness, the contested mark has no elements that could be considered clearly more distinctive than other elements.

Visually, the marks coincide in the sequence of letters ‘-BUCKS’. However, they differ in all other aspects. The Earlier Marks are word marks and start by the sequence of letters ‘STAR-’, which have no counterparts in the contested mark. On the other hand the verbal element of the contested mark starts by the letter ‘G’ followed by a hyphen. Therefore, it has a completely different beginning from the Earlier Marks, which is of particular importance given that the attention of consumers is normally focused on the first part of the signs. It is true that for a part of the public, the element ‘STAR’ has been found less distinctive and therefore its impact on the overall impression created by the earlier signs will be diminished as this part of the relevant public will focus more on the remaining element ‘BUCKS’. However, even for these consumers, the coincidence in the component ‘BUCKS’ is significantly lessened by the way the verbal element is depicted in the contested sign (vertically and on the left-hand side of the mark, which does not readily enable consumers to immediately perceive it) and by the overall presentation of this sign. Indeed, the contested EUTM is visually dominated by the image of man’s face wearing sun glasses. This element is as distinctive as the verbal element and must be regarded as fairly original. As such, in the opinion of the Cancellation Division, the figurative element has a significant impact on the overall visual impression given by the contested mark and it is this element that will primarily be retained by consumers. Consequently, it is considered that overall there is a low degree of visual similarity between the marks under comparison.

Aurally, although the vertical depiction of the verbal element of the contested mark and its position within the mark may make it rather difficult for it to be read by consumers, it is reasonable to consider that the contested sign will still be referred to aurally by its verbal element ‘G-BUCKS’, as the figurative element will not be pronounced. It follows that irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘bucks’ present identically in the Earlier Marks and the contested sign. The pronunciation differs in the sounds of their remaining letters, namely the first four letters ‘star’ of the Earlier Marks and the first letter ‘G’ of the contested sign. Also, the length of the signs is different and so is their beginning. In view of the foregoing and also bearing in mind what has been stated above as regards the distinctiveness of the element ‘STAR’ of the Earlier Marks for part of consumers, it is considered that the level of aural similarity of the marks will vary from low to average.

Conceptually, the marks are similar for that part of the public that understands the shared element ‘BUCKS’, as they will be associated with the same concept. Overall, for this part of the public the marks are similar to an average degree. For the remaining part of the public the signs are either conceptually not similar (if only the contested mark is associated with the image of a man’s face wearing sun glasses) or conceptually dissimilar (if the element ‘STAR’ of the Earlier Marks is perceived as a meaningful term by the public).

Against this background it is concluded that the signs under comparison are similar to the extent that they share the sequence of letters ‘BUCKS’.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As regards the degree of similarity between the marks at issue, it is clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (see, to that effect, judgment of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 67 to 69; and judgment of 18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 44). Moreover, the stronger the distinctive character of the earlier mark, the more likely it is that, when confronted with a later similar mark, the relevant public will associate it with that earlier mark.

Furthermore, it must be remembered that the degree of similarity of the signs required under Article 8(5) EUTMR differs from the one required under Article 8(1)(b) EUTMR. Thus, whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (see judgment of 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53 and the case-law cited therein).

Therefore, it is in the light of the abovementioned jurisprudence that the applicant’s claim must be examined.

In the present case, as set out in detail in section b) above, the signs are similar insofar as the verbal element ‘G-BUCKS’ of the contested mark reproduces the last five letters of the Earlier Marks ‘STARBUCKS’. It is true that the contested sign is visually dominated by the image of man’s face wearing sun glasses and that the manner of depiction of the shared component in the contested sign (vertically and on the left-hand side of the mark) does not readily attract consumers’ attention. However in the opinion of the Cancellation Division, the overall image arising from the presence of the component ‘BUCKS’ in the contested sign would reflect in the minds of the relevant consumers the earlier reputed trade marks.

As regards the distinctiveness of the Earlier Marks, ‘STARBUCKS’ is inherently distinctive for the goods and services for which a reputation has been found, in particular, by virtue of the fact that, as a whole, it does not convey any clear, immediate and unambiguous meaning to the public in the relevant territory (despite the presence, for some consumers, of a weak element, as stated above in section b) of this decision). In addition, as already shown above, the Earlier Marks have been found to enjoy a reputation in the European Union.

Another factor to consider when assessing whether there is a ‘link’ between the signs are the relevant goods and services.

The application for a declaration of invalidity is directed against the following goods and services:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 43: Services for providing food and drink; temporary accommodation.

The contested EUTM is registered for the entire class headings of Classes 30, 32 and 43 of the Nice Classification. It was filed on 10/09/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade mark applications filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the ninth edition.

Consequently, in order to take account of the entire alphabetical lists in Classes 30, 32 and 43 of the contested EUTM, the Cancellation Division will analyse the goods and services of the Earlier Marks for which a reputation has been found with both (i) the general indications specified and (ii) any items in the alphabetical lists that do not fall within the natural and usual meaning of these general indications.

In the case of Class 30, the Cancellation Division has identified the following items in the alphabetical lists covered by the contested EUTM that do not fall within the natural and usual meaning of these general indications:

Class 30: Bee glue [propolis] for human consumption; essences for foodstuffs, except etheric essences and essential oils; flavorings, other than essential oils; flavorings, other than essential oils, for beverages; flavorings, other than essential oils, for cakes; ice cream (binding agents for -); meat tenderizers, for household purposes; powders for ice cream; puddings; rice-based snack food; royal jelly for human consumption, not for medical purposes; sandwiches; sausage binding materials; sea water for cooking; spring rolls; starch for food; stiffening whipped cream (Preparations for -); sushi; thickening agents for cooking foodstuffs.

Therefore, as regards this class, both the general indications specified and the items listed above will be analysed.

In the case of Classes 32 and 43, the Cancellation Division has not identified any items in the alphabetical lists covered by the contested EUTM that do not fall within the natural and usual meaning of these general indications. Therefore, in the case of these classes only the general indications specified above will have to be analysed.

The contested goods in Class 30 cover mainly foodstuffs of plant origin prepared for consumption or conservations as well as auxiliaries intended for the improvement of the flavour of food. The contested goods in Class 32 are essentially non-alcoholic beverages and beer. Finally, the contested services in Class 43 encompass services offered by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels or other temporary accommodation establishments.

There is an obvious connection as regards the contested coffee and artificial coffee in Class 30 and services for providing food and drink in Class 43, since they are identical to the earlier reputed goods and services. Furthermore, there is also a nexus between some other contested goods in Class 30 (tea and cocoa which include as broad categories also tea- and respectively cocoa-based beverages, preparations made from cereals, which are broadly defined and cover, inter alia, waffles, pastry and confectionery) and some of the contested goods in Class 32 (mineral and aerated waters and other non-alcoholic drinks and fruit drinks and fruit juices) and the earlier reputed café, coffee shop services and preparation of drink in Class 42 to the extent where it is customary for such goods to be served in a coffee shop or as an accompaniment for coffee.

Therefore, taking into account and weighing up all the relevant factors of the present case and in particular the reputation of the Earlier Marks and the proximity of the goods and services concerned, the Cancellation Division concludes that when encountering the contested mark in relation to some of the contested goods in Class 30 (i.e. coffee, tea, cocoa, artificial coffee; preparations made from cereals, pastry and confectionery), some of the contested goods in Class 32 (i.e. mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices) and some of the contested services in Class 43 (i.e. services for providing food and drink), the relevant consumers will be likely to associate it with the earlier signs, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) CTMR (judgment of 26/09/2012, T‑301/09, ‘CITIGATE’, paragraph 96).

The same conclusion cannot be reached as far as the remaining contested sugar, rice, tapioca, sago; flour, bread, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; bee glue [propolis] for human consumption; essences for foodstuffs, except etheric essences and essential oils; flavorings, other than essential oils; flavorings, other than essential oils, for beverages; flavorings, other than essential oils, for cakes; ice cream (binding agents for -); meat tenderizers, for household purposes; powders for ice cream; puddings; rice-based snack food; royal jelly for human consumption, not for medical purposes; sandwiches; sausage binding materials; sea water for cooking; spring rolls; starch for food; stiffening whipped cream (Preparations for -); sushi; thickening agents for cooking foodstuffs in Class 30, beers; syrups and other preparations for making beverages in Class 32 and temporary accommodation in Class 43 are concerned.

The fact that the signs are similar to a certain degree and the fact that the Earlier Marks enjoy a reputation for goods and services in Classes 30 and 42 are not sufficient to automatically conclude that the relevant public is likely to establish a mental association between the signs concerned in relation to the remaining contested goods and services listed above.

Indeed, when considering these contested goods and services it is the opinion of the Cancellation Division that, while the relevant section of the public for the goods/services covered by the conflicting marks may overlap to some extent, they are so far removed from the earlier reputed goods and services, that the later mark is unlikely to bring the Earlier Marks to the mind of the relevant public.

Admittedly some of the EUTM goods may be used together with the applicant’s goods (i.e. sugar or honey). Nevertheless, this does not automatically mean that there is a connection between them or that they belong to neighbouring markets where a brand extension of the applicant would seem naturally possible.

Furthermore, the applicant was unable to provide any good reason or convincing arguments why the relevant public targeted by the contested sign would make a connection with the Earlier Marks in relation to these goods and services in Classes 30, 32 and 43.

In its submissions, the applicant claims that ‘the link between the marks is inevitable’, as the contested goods and services are identical or highly similar to those for which the Earlier Marks are reputed and the reputation of the Earlier Marks is ‘outstandingly high’. It further shows that ‘the association on the part of the consumers […] will invariably lead to use of the contested EUTM taking unfair advantage of the earlier marks’ reputation and prejudicing the earlier marks’ distinctiveness’.

In the present case, the applicant’s arguments are rather general statements about the existence of a link and further of a risk of injury (under the form of unfair advantage and detriment to distinctiveness), which however fail to explain, first of all, how the use of the contested sign in relation to the remaining contested goods and services in Classes 30, 32 and 43 would bring to mind the Earlier Marks. In addition, the applicant did not file any evidence or at least put forward a coherent line of arguments, showing what the unfair advantage or detriment to distinctiveness would consist of and how they would occur, which could lead to the prima facie conclusion that such events are indeed likely in the ordinary course of events in relation to the goods and services concerned.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical with or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (judgment of 14/09/1999, C‑375/97, Chevy, EU:C:1999:408, §30).

The Cancellation Division does not find it self-evident that the use of the contested sign for the remaining contested goods and services in Classes 30, 32 and 43 would be likely to bring to mind the Earlier Marks and take unfair advantage of the distinctive character or the repute of the Earlier Marks and/or be detrimental to their distinctiveness. Although the applicant’s arguments contain certain indications of the existence of a particular image as regards the Earlier Marks (‘high-quality coffee, innovative fresh and fun products’), the fact remains that the applicant failed to explain how such an image in relation to the reputed goods and services might be transferred to the contested goods and services in Classes 30, 32 and 43. Therefore, the Cancellation Division considers that the arguments of the applicant cannot be deemed sufficient to establish that there is a link and further a future risk of unfair advantage and/or detriment to distinctiveness when the contested sign is used in relation to these remaining contested goods and services.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

Therefore, taking into account and weighing up all the relevant factors of the case at hand, the Cancellation Division concludes that in relation to the remaining contested goods and services in Classes 30, 32 and 43 it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the application for a declaration of invalidity is not well founded under Article 8(5) EUTMR and must be rejected insofar as it is directed at these goods and services.

The examination of the application under this article will continue only in relation to the contested goods and services in Class 30, 32 and 43, for which it has been determined above that consumers will be likely to establish a mental ‘link’ between the signs.

4. The risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although in invalidity proceedings, detriment or unfair advantage may be only potential, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must however ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (judgment of 06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the applicant must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the applicant should file evidence or at least put forward a coherent line of argument, showing what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case the applicant essentially claims that: (i) the Earlier Marks enjoy an outstanding reputation (as demonstrated by the materials submitted), (ii) the degree of similarity between the signs is sufficient to create a link between the marks in the minds of the relevant public, (iii) the goods and services are identical or highly similar and (iv) invariably the use of the contested EUTM will take unfair advantage of the reputation of the Earlier Marks and will prejudice their distinctiveness.

In other words, the applicant claims that the use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the Earlier Marks and be detrimental to their distinctive character.

Before examining the applicant’s claims, it is appropriate to recall that the application for a declaration of invalidity is directed against the following goods and services:

Class 30: Coffee, tea, cocoa, artificial coffee; preparations made from cereals, pastry and confectionery.

Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices.

Class 43: Services for providing food and drink.

As seen above, the Earlier Marks were found to have a reputation for:

Earlier Mark 1

Class 30: Coffee, coffee based drinks, ground and whole bean coffee, coffee beverages, ready-to-drink coffee, coffee-based beverages, espresso and espresso beverages.

Earlier Mark 2

Class 42: Café, coffee shop services; preparation of drink.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (judgment of 06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § and judgment of 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The applicant bases its claim on the following:

• The earlier ‘STARBUCKS’ marks have an outstanding reputation throughout the European Union;

• The signs are similar in that the contested EUTM replicates more than half of the earlier ‘STARBUCKS’ marks in the same position;

• The EUTM proprietor is using its ‘G-BUCKS’ mark to identify its ready-to-drink coffee beverages in Indonesia and is advertising its products on a website and on Facebook in a manner which shows similarities to the applicant (use of a similar vocabulary, use of a green and white roundel which is reminiscent of the STARBUCKS logo); moreover, its intention is to expand its activity to Europe (screenshots and corresponding translation submitted as Enclosure 3);

• The relevant consumers will associate the earlier STARBUCKS marks with an image of high-quality coffee, beverages and food products and with innovative fresh and fun products; it would certainly be beneficial for the EUTM proprietor to be associated with such positive message;

• The EUTM proprietor would be enabled to ride on the applicant’s goodwill to benefit from the power of attraction and reputation of the STARBUCKS marks and to exploit, without any financial investment or effort of its own, the marketing efforts expended to create and maintain the image of these marks.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(Judgment of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

In the first place, it has to be recalled that the contested goods and services in Classes 30, 32 and 43 are connected to the earlier reputed goods and services to some extent, as explained in section c) above.

In the second place, the Cancellation Division notes that the Earlier Marks enjoy a reputation in the European Union in connection with goods and services in Classes 30 and 42.

As shown by the evidence, ‘Starbucks’ is a ‘magnet for coffee lovers’ and ‘came to represent a lifestyle as much as a product’. Innovating the coffee house experience, ‘Starbucks coined the phrase ‘the third place’ – a restful environment between home and work, in which to relax, take time to yourself and enjoy a freshly made cup of high quality coffee’. Furthermore, the Earlier Marks convey an image of high-quality, innovation, finest-coffee experience and sense of community that could easily be transferred to the contested goods and services in Classes 30, 32 and 43.

In the third place, as follows from case-law, earlier marks with a strong reputation, such as the ones at hand, will be recognised in almost any context, particularly as a result of their ‘good’ or ‘special’ reputation in the sense that it reflects a positive message, such as the images described above, which could positively influence the choice of consumers as regards goods or services of other producers/providers.

Bearing in mind the foregoing, the Cancellation Division endorses the applicant’s arguments and considers that, in view of the special connections between the earlier reputed goods and services and the contested goods and services, a substantial part of consumers may decide to turn to the EUTM proprietor’s goods and services in Classes 30, 32 and 43 in the belief that the contested sign is somehow linked to the applicant’s reputed marks, thus misappropriating their attractive powers and advertising value. This may stimulate the sales of the EUTM proprietor’s goods and services to an extent which may be disproportionately high in comparison with the size of its own promotional investment and thus lead to the unacceptable situation where the EUTM proprietor is allowed to take a ‘free-ride’ on the investment of the applicant in promoting and building up goodwill for its marks.

Therefore, the Cancellation Division considers that, in view of the substantial exposure of the relevant consumers to the applicant’s reputed Earlier Marks, in relation to the goods and services for which a reputation has been found and taking into account the similarity of the marks, there exists a high probability that the use without due cause of the contested trade mark in respect of the above contested goods and services in Classes 30, 32 and 43 may acquire some unearned benefit and lead to free-riding, that is to say, it would take unfair advantage of the distinctive character or the repute of the earlier trade marks.

5. Conclusion

Considering all the above, the application is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods and services:

Class 30: Coffee, tea, cocoa, artificial coffee; preparations made from cereals, pastry and confectionery.

Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices.

Class 43: Services for providing food and drink.

The examination of the present application for a declaration of invalidity will continue for the remaining contested goods and services in Classes 30, 32 and 43 on the grounds of Article 8(1)(b) EUTMR, also invoked by the applicant.

C. LIKELIHOOD OF CONFUSION — ARTICLE 53(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 goods and 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 goods and services on which the application is based are the following:

Earlier Mark 1

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, coffee based drinks, liquid and powdered drinks mixes, cereal and flour based items, bread, gourmet baked goods and cakes, chocolate, ice cream, honey, molasses (syrup), yeast, baking powder, salt, mustard, vinegar, sauces, (seasoning, spices), spices, ice, ground and whole bean coffee, coffee essences and extracts, coffee beverages, ready-to-drink coffee, coffee-based beverages, espresso and espresso beverages, herb tea, tea beverages, cocoa and cocoa-based preparations, cocoa beverages; pastries, confectionery, cakes, sponges, muffins, scones, cookies, pies and biscuits, and preparations and mixes for making the aforesaid goods; puddings and desserts; chocolate products and non-medicated confectionery; muesli and muesli bars; snack foods; sauces, syrups, toppings and spreads; flavourings; vanilla; spices; sherbets and sorbets.

Class 32: Beer, mineral water, carbonated waters, non-alcoholic beverages; flavoured and unflavoured aqueous drinks; fruit drinks and fruit juices; beverages based on fruit and/or fruit juices; liquid and powdered drinks mixes; syrups and other ingredients for preparing drinks.

Earlier Mark 2

Class 42: Restaurant, cafe, canteen, cafeteria, coffee shop and snack bar services; preparation of food and drink; catering services; provision of facilities for the consumption of food and of beverages; information and advisory services, all relating to the aforesaid services.

The contested goods and services are the following:

Class 30: Sugar, rice, tapioca, sago; flour, bread, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; bee glue [propolis] for human consumption; essences for foodstuffs, except etheric essences and essential oils; flavorings, other than essential oils; flavorings, other than essential oils, for beverages; flavorings, other than essential oils, for cakes; ice cream (binding agents for -); meat tenderizers, for household purposes; powders for ice cream; puddings; rice-based snack food; royal jelly for human consumption, not for medical purposes; sandwiches; sausage binding materials; sea water for cooking; spring rolls; starch for food; stiffening whipped cream (Preparations for -); sushi; thickening agents for cooking foodstuffs.

Class 32: Beers; syrups and other preparations for making beverages.

Class 43: Temporary accommodation.

Some of the contested goods in Classes 30 and 32 are identical to goods on which the application is based (for example sugar in Class 30 and beers in Class 32 which are identically included in the specification of the contested EUTM and that of Earlier Mark 1). As regards the contested services in Class 43, although they are not identical, it is clear that some of them are similar to services on which the application is based (for example the contested temporary accommodation in Class 43 which is similar to restaurant services in Class 42 of Earlier Mark 2).

For reasons of procedural economy, the Cancellation Division will not undertake a full comparison of the goods and services listed above. The examination of the application will proceed as if all the contested goods were identical to those of the Earlier Mark 1 and as if all the contested services were similar to those of Earlier Mark 2.

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, while most of the relevant goods and services are directed at the public at large, there are however some relevant goods that may target a more specialised public, with professional knowledge or expertise (for example thickening agents for cooking foodstuffs or ice cream (binding agents for-)). The degree of attention is likely to vary from lower than average to average, depending on the depending on the type, price and frequency of the purchase.

3. The signs

The signs have already been compared above under the grounds of Article 8(5) EUTMR (see Section B, point b)). Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

4. Distinctiveness of the Earlier Marks

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

According to the applicant, the Earlier Marks have been extensively used and enjoy an enhanced scope of protection in the European Union in connection with all the goods and services for which they are registered and on which the application is based. This claim has already been assessed under the ground of Article 8(5) EUTMR and reputation has been established only in relation to coffee, coffee based drinks, ground and whole bean coffee, coffee beverages, ready-to-drink coffee, coffee-based beverages, espresso and espresso beverages in Class 30 of Earlier Mark 1 and café, coffee shop services and preparation of drink in Class 42 of Earlier Mark 2.

As regards the remaining goods and services for which the Earlier Marks are registered, no enhanced distinctiveness or reputation has been established. Consequently, the assessment of the distinctiveness of the Earlier Marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning in relation to any of the remaining relevant goods and services at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the Earlier Marks must be seen as normal, despite the presence (where applicable) of a less distinctive element as stated above in Section B, point b) of this decision.

5. Global assessment, other arguments and conclusion

The examination of the application for a declaration of invalidity has proceeded on the assumption that the remaining contested goods in Classes 30 and 32 are identical to the goods of Earlier Mark 1 and that the remaining contested services in Class 43 are similar to the earlier services of Earlier Mark 2, which is the most favourable scenario in which the applicant’s case can be assessed (which is however, without prejudice to the EUTM proprietor, as will be shown below).

The similarities between the signs are confined to the string of letters ‘BUCKS’, which, in the opinion of the Cancellation Division and contrary to what the applicant claims, is not sufficient to lead to a finding of likelihood of confusion.

Indeed, the signs also present obvious differences that offset these coincidences.

The coinciding part is located at the end of the Earlier Marks and of the contested sign’s verbal element. In this context it must be remembered that, generally, consumers tend to focus on the first element of a sign when confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Moreover, the coincidence in ‘BUCKS’ is significantly lessened by the way this element is portrayed in the contested sign (written vertically and on the left hand of the sign).

The overall appearance of the marks is also quite distinct. As explained in detail when comparing the signs, the Earlier Marks are word marks and have a completely different beginning than the word element of the contested mark. Admittedly the component ‘STAR-’ of the Earlier Marks has been found less distinctiveness for part of consumers; however, it will not be completely ignored. On the other hand, the contested mark is visually dominated by its figurative element, which will be the one that will primarily retain consumers’ attention.

As a persuasive argument in supporting its claim of a likelihood of confusion, the applicant referred to the reputation and enhanced distinctive character of its Earlier Marks. In this regard, it must be remembered that the reputation of the Earlier Marks has been established only in relation to some goods and services in Classes 30 and 42 and that it was not sufficient to uphold the application for a declaration of invalidity for the remaining contested services under the ground of Article 8(5) EUTMR, although the ambit of this article is greater than that of Article 8(1)(b) EUTMR.

Additionally, as already specified above in the analysis of the grounds of Article 8(5) EUTMR, the degree of similarity of the signs required under this article differs from the one required under Article 8(1)(b) CTMR. In other words, the fact that the circumstances of the present case have led to the conclusion that consumers are likely to establish a mental ‘link’ between the signs in dispute does not automatically lead to a finding of a likelihood of confusion under Article 8(1)(b) EUMTR.

The above findings of an overall distinct impression of the signs are not called into question by the fact that at least for a part of the public, there is a conceptual link between the signs due to the shared element ‘BUCKS’. This is because in the opinion of the Cancellation Division the conceptual similarity is still not sufficient to lead to a finding of likelihood of confusion, since the degree of visual similarity between the signs is low as already explained above. Therefore, in the present case the fact that the signs will be associated with an analogous semantic content by that part of the public is not sufficient to outweigh the visual differences between the signs.

Against this background and taking into consideration all the facts set out above, the Cancellation Division finds that the different elements of the marks are clearly perceptible and safely counteract the similarities between the signs. Consequently, the relevant public is not likely to believe that the Earlier Marks and the contested sign, even if applied on identical goods and services, originate from the same or economically-linked undertakings, and, as a result, there is no likelihood of confusion on the part of the public, within the meaning of Article 8(1)(b) EUTMR. Therefore, the application must be rejected in so far as it is based on this ground and directed against the remaining contested goods and services in Classes 30, 32 and 43.

Given that the application is not well founded under Article 8(1) EUTMR in conjunction with Article 53(1)(a) EUTMR, it is unnecessary to examine the evidence of use filed by the applicant.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Lucinda CARNEY

Oana-Alina STURZA

Richard BIANCHI

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.