CANCELLATION No 11270 C (INVALIDITY)

Antonio Alonso Lago, C/ Velero, nº 8, 28045 Madrid, Spain (applicant), represented by Wolke, Patentes y Marcas, Calle Alejandro Ferrant, 9, 28045 Madrid, Spain (professional representative).

a g a i n s t

Garmin Switzerland GmbH, Mühlentalstrasse 2, 8200 Schaffhausen, Switzerland (EUTM proprietor), represented by Edwin Coe LLP, 2 Stone Buildings, Lincoln’s Inn, London WC2A 3TH, United Kingdom (professional representative).

On 24/08/2016, the Cancellation Division takes the following

DECISION

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

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 11 917 903, for the word mark ‘APPROACH’. The application is based on the following earlier rights:

• Spanish trade mark registration No 1 992 246, ‘ ’,

• Spanish trade mark registration No 1 992 247, ‘ ’,

• Spanish trade mark registration No 2 780 166, ‘ ’,

• Spanish trade mark registration No 3 105 086, ‘ ’

The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the signs have the same concept and that there will be a risk of confusion or association.

The EUTM proprietor argues that two of the earlier rights are unsubstantiated, requests proof of use for three of the earlier marks (including the two marks it claims are unsubstantiated if the Cancellation Division finds them substantiated), that the goods and services at issue are dissimilar and that the signs are sufficiently different for no likelihood of confusion to exist.

ADMISSIBILITY OF SPANISH TRADE MARK REGISTRATION No 3 105 086

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 shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

The legal basis of an opposition based on Article 8(1)(b) EUTMR requires the existence of an earlier right within the meaning of Article 8(2) EUTMR.

According to Article 8(2) EUTMR, ‘earlier trade mark’ means:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

(i) European Union trade marks;

(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;

(iii) trade marks registered under international arrangements which have effect in a Member State;

(iv) trade marks registered under international arrangements which have effect in the European Union;

(b) applications for the trade marks referred to in subparagraph (a), subject to their registration;

(c) trade marks which, on the date of application for registration of the European Union trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the European Union trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

In the present case, the relevant dates are as follows:

• The date of application for registration of the opponent’s Spanish trade mark No 3 105 086 is 02/01/2014.

• The date of application for registration of the applicant’s European Union trade mark No 11 917 903 is 20/06/2013.

It is evident that the date of application of the opponent’s Spanish trade mark No 3 105 086 is not earlier than the date of priority of the contested EUTM. Accordingly, this Spanish trade mark registration on which the opposition is partially based is not earlier within the meaning of Article 8(2)(b) EUTMR and therefore the opposition must be rejected as unfounded as far as it is based on this Spanish registration.

SUBSTANTIATION OF SPANISH TRADE MARK REGISTRATIONS No 1 992 246 and No 1 992 247

According to Article 53(1) EUTMR, a European Union trade mark will be declared invalid on application to the Office when, inter alia, there is an earlier trade mark as referred to in Article 8(2) EUTMR.

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

It follows that the Office cannot take into account any alleged rights for which the applicant does not submit appropriate evidence.

According to Rule 37(b)(ii) EUTMIR, in order for such an application to be admissible it must contain particulars of the right or rights on which the application is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity. Pursuant to Rule 37(b)(iv) EUTMIR, an application for cancellation must also contain an indication of the facts, evidence and arguments presented in support of the cancellation grounds.

Likewise, regarding translations, the following applies: according to Rule 38(1) EUTMIR, when the application is filed in a language that is not one of the two of the contested EUTM, the applicant for a declaration of invalidity has to file on its own motion a translation of its application within one month of the date of the filing of the application, failing which the application shall be rejected as inadmissible. According to Rule 38(2) EUTMIR, where the evidence in support of the application for invalidity is not filed in the language of the revocation or invalidity proceedings, the applicant shall file a translation of that evidence into that language within a period of two months after the filing of such evidence. It is up to the applicant to submit the translation of the evidence in support of the application on its own motion.

In the application for cancellation, to substantiate its earlier Spanish trade mark registration No 1 992 246 the applicant filed a one page document which appears to be an English translation of a renovation extract from the Spanish national office. However, no original was filed. To substantiate its earlier Spanish trade mark registration No 1 992 247 the applicant filed a one page renovation extract from the Spanish national office. However, no translation was filed. None of the subsequent filings made by the applicant included further documents regarding these two earlier rights.

Although there is no time limit for the substantiation of the earlier rights in invalidity proceedings based on relative grounds, and the proof of the existence, validity and scope of protection of all the earlier rights and the evidence proving the applicant’s entitlement to them have to be filed together with the application, this does not mean that there is no distinction between admissibility and substantiation requirements. Applying by analogy Rule 19(2)(a)(ii) EUTMIR, if the application for invalidity is based on a registered trade mark that is not a European Union trade mark, the applicant must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate or equivalent documents emanating from the administration by which the trade mark was registered.

As has already been mentioned above, the applicant submitted two single page documents, one a translation of an official document but not including the original, and the other an original but with no translation. Therefore, in accordance with Rule 38(2) EUTMIR (see above) and Rule 19(2)(a)(ii) EUTMIR, applied by analogy, requires that non European Union trade marks must come with a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate or equivalent documents emanating from the administration by which the trade mark was registered.

Since the evidence filed by the applicant is insufficient in light of the above requirements to substantiate the scope of protection of Spanish trade mark registrations No 1 992 246 and No 1 992 247, the application is to be rejected as unfounded as far as it concerns these two earlier marks.

PROOF OF USE

At the EUTM proprietor’s request, the applicant submitted proof of use of its earlier Spanish trade mark registration No 2 780 166.

For reasons of procedural economy, the Cancellation Division will first analyze the likelihood of confusion and will analyze the proof of use only if it is deemed necessary.

LIKELIHOOD OF CONFUSION - ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR - SPANISH TRADE MARK REGISTRATION No 2 780 166

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 services on which the application is based are the following:

Class 35: Advertising, helps the operation of commercial or industrial companies; import, export and representation, retail products in stores.

The contested goods are the following:

Class 14: Horological apparatus and instruments, watches, and parts and fittings therefor.

The earlier right has protection for services to assist businesses in promoting their goods or services (advertising), services to assist in the running of businesses (helps the operation of commercial or industrial companies), services to assist in certain specific business activities (import, export and representation) and the selling of goods in shops (retail products in stores).

The contested mark has protection for devices for measuring time, watches and their parts and fittings.

The contested goods are clearly dissimilar to the opponent’s advertising, helps the operation of commercial or industrial companies; import, export and representation services. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The applicant’s services are for promoting goods and services or assisting businesses whilst the EUTM proprietor’s goods are for telling the time. Therefore, they also have very different purposes. Furthermore, they have different methods of use, do not usually come from the same producers/providers, do not target the same end users and are not available via the same distribution channels. Finally, they are neither in competition nor complementary with one another.

The contested goods are also dissimilar to the applicant’s retail products in stores. Retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor necessarily complementary.

Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected.

Given that the opposition is not well founded under Article 8(1) 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.

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

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Sandra KASPERIŪNAITĖ

Ric WASLEY

Pedro JURADO MONTEJANO

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 must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.