CANCELLATION No 10851 C (INVALIDITY)

Empain-Chaker Sarl, Chemin de la maille 62, 1217 Meyrin, Switzerland (applicant), represented by Lakatos, Köves És Társai Ügyvédi Iroda, Madách Imre út 14, 1075 Budapest, Hungary (professional representative)

a g a i n s t

Helvetic Clinics Egészségügyi Szolgáltató Korlátolt Felelősségű Társaság, Kende u. 14, 1111 Budapest, Hungary (CTM proprietor).

On 08/02/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The fee for the application for a declaration of invalidity will not be refunded.

REASONS

On 07/05/2015, the applicant filed an application for a declaration of invalidity in respect of Community trade mark No 11 738 622, ‘helvetic Clinics Budapest’ (word mark) (the CTM). The application is directed against some of the services covered by the CTM, namely all the services in Class 44.

The application is based on international trade mark registration designating Benelux, Denmark, Germany, Spain, France, Ireland, Italy, Hungary, Austria, Portugal, Finland and the United Kingdom No 1 155 844, .

The applicant invoked Article 53(1)(a) CTMR in conjunction with Article 8(1)(b) CTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there is a likelihood of confusion on the part of the public between the contested mark and the earlier mark, because of the similarity between the signs and between the services at issue. The applicant argued that the signs are similar and have the same conceptual meaning because they both contain the word ‘HELVETIC CLINICS’.

The CTM proprietor did not submit any observations in response to the application for a declaration of invalidity within the time limit.

RES JUDICATA – ARTICLE 56(3) CTMR

On 17/03/2015, the applicant filed a previous application for a declaration of invalidity involving the same parties, the same subject matter and the same cause of action as the request for cancellation hereby addressed.

The application was against the same CTM for goods in Class 44, based on Article 53(1)(a) CTMR in conjunction with Article 8(1)(b) CTMR, and involving the same earlier right, namely international registration No 1 155 844. The invalidity proceeding was given the number 10584 C.

On 14/09/2015, the Cancellation Division issued a decision and partially upheld the application for invalidity. The CTM was, therefore, declared invalid for some of the contested services, namely:

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; rehabilitation for substance abuse patients; veterinary services; pet grooming; animal grooming; animal breeding; alternative medicine services; aromatherapy services; speech therapy services; nursing, medical; health care; health counseling; plant nurseries; tree surgery; tree planting for carbon offsetting purposes; vermin exterminating for agriculture, horticulture and forestry; physiotherapy; hairdressing salons; dentistry; lawn care; health spa services; pharmacists’ services to make up prescriptions; pharmacy advice; weed killing; hair implantation; chiropractics; gardening; horticulture; nursing homes; hospitals; public baths for hygiene purposes; in vitro fertilization services; manicuring; massage; hospices; artificial insemination services; farming equipment rental; opticians’ services; medical clinic services; health centers; medical services; rest homes; visagists’ services; plastic surgery; services of a psychologist; sanatoriums; sauna services; beauty salons; solarium services; midwife services; landscape gardening; landscape design; telemedicine services; therapy services; tattooing; turkish baths; aerial and surface spreading of fertilizers and other agricultural chemicals; blood bank services; aquaculture services.

Furthermore, the CTM remained registered for all the remaining contested services, namely rental of sanitation facilities; medical equipment rental, wreath making; flower arranging in Class 44, as well as for all the uncontested services.

On 14/11/2015, the decision became final, since no appeal was filed within the time limit; thus, it has acquired the authority of a final decision.

Article 56(3) CTMR lays down the conditions for res judicata and states that: ‘An application for revocation or for invalidity shall be inadmissible if an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on by a court in a Member State and has acquired the authority of a final decision’.

The subject matter

The subject matter of the present invalidity proceeding is CTM No 11 738 622, in relation to all the services in Class 44. The previous invalidity proceeding, No 10584 C, was also directed against all the services in Class 44 of the same CTM.

The cause of action

The cause of action in the earlier invalidity proceeding, No 10584 C, was the ground of Article 53(1)(a) CTMR in connection with Article 8(1)(b) CTMR. The likelihood of confusion was based on international registration designating Benelux, Denmark, Spain, France, Ireland, Italy, Hungary, Austria, Portugal, Finland and the United Kingdom No 1 155 844.

In the present proceeding, the applicant bases its application on the ground of Article 53(1)(a) CTMR in conjunction with Article 8(1)(b), founding the likelihood of confusion on the same international registration, No 1 155 844, designating the same Member States invoked in the earlier proceeding, with the addition of Germany.

Therefore, the cause of action is the same in both proceedings, with the exception of one additional territory, namely Germany.

The same parties

The applicant in the present proceeding is the same as in the previous proceeding, namely Empain-Chaker Sarl, Chemin de la maille, 62 1217 Meyrin, Switzerland. The CTM proprietor is the same in both proceedings, namely Helvetic Clinics Egészségügyi Szolgáltató Korlátolt Felelősségű Társaság, Kende u. 14, 1111 Budapest, Hungary.

ARTICLE 53(1)(a) CTMR

In the present proceeding, the applicant bases its application on international registration, designating Benelux, Germany, Denmark, Spain, France, Ireland, Italy, Hungary, Austria, Portugal, Finland and the United Kingdom, No 1 155 844.

The German designation of this earlier right is not substantiated, because the trade mark was totally refused in Germany on 10/07/2014, according to the information submitted by the applicant in the earlier proceeding; therefore, this application cannot be based on the German designation of international registration No 1 155 844.

CONCLUSION

Considering all the above, the current application for a declaration of invalidity based on international registration No 1 155 844, designating the abovementioned territories, with the exception of Germany, must be rejected pursuant to the general principle of res judicata and applying, by analogy, Article 56(3) CTMR, since the decision rendered in case No 10 584 C has acquired the authority of a final decision.

It follows from the above that the request for a declaration of invalidity is rejected in its entirety.

COSTS

According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the CTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) CTMIR, the cost to be paid to the CTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case, the CTM proprietor did not appoint a professional representative; therefore, it did not incur representation costs.

The Cancellation Division

Victoria DAFAUCE MENÉNDEZ

Agueda MAS PASTOR

Jessica Norma LEWIS

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.