CANCELLATION No 13011 C (INVALIDITY)

Bulsatcom EAD, fl.3, 15 Magnaurska Shkola Str., Sofia, Bugaria (applicant), represented by Deyan Vulchev Ivanov, app.123, entr.7, bl. 47-48, Dianabd, 1172 Sofia, Bulgaria (professional representative)

a g a i n s t

Telefonica, S.A., Gran Vía, 28, 28013 Madrid, Spain (EUTM proprietor), represented by Intecser Consultoría, Calle Goya, 127, 28009 Madrid, Spain (professional representative).

On 29/07/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 11 944 519 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 11 944 519 FUSIÓN (word mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely:

Class 38: Telecommunications service; Telephone services; Mobile telecommunications services; Fixed line telecommunication services; Providing user access to the Internet via a service provider; Provision of telecommunications access and links to computer databases and the Internet; Providing access to an Internet portal; Operation of a television subscription service (pay-TV) including video-on-demand; Television broadcasting; Reception of television programmes for onward transmission to subscribers; Mobile telecommunication network services; Transmission of messages by telephone and facsimile; Videoconferencing services; Recording, filtering and barring of calls; Transmission of digital information; Telecommunication of information (including webpages); services and Operating chat rooms; Forums [chat rooms] for social networking; Providing access to digital music websites on the Internet; Providing access to MP3 websites on the Internet; Providing an online interactive bulletin board; Providing access to weblogs; Provision of electronic communication links; Electronic advertising (telecommunications); Telecommunications invoiced to the recipient of the call (including orders, user support, technical support, advertising campaigns); Broadband services; Provision of broadband telecommunications access; Communications consisting of providing multiple user access to a global computer data network (Internet/Intranet) for the transmission and dissemination of information, images or sound of all kinds; Interactive broadcasting and communications services; Electronic mail services; Message forwarding, sending and distribution; Providing access to commercial transactions via electronic communications networks; Broadcasting and transmission of information via networks or the Internet; Provision of access to an electronic online network for information retrieval; Providing telecommunication connections to the Internet or data bases; Routing and link-up for telecommunications; Providing bulletin board services; Computer bulletin board services; Communications by optical fibre networks; Communications by computer terminals; Computer-aided transmission of messages and images; Satellite transmission, information about telecommunication; News agencies, transmission of news and daily events, sending of telegrams; Broadcasting services; Services relating to the broadcasting of radio and television programmes; Webcasting services; Subscription television broadcasting; Broadcasting services relating to Internet protocol TV; Provision of access to Internet protocol TV; Internet access services; Provision of wireless application protocol services including those utilizing a secure communications channel; Email and text messaging service; Information services relating to telecommunications, provided by means of telecommunications networks; Services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet; Communications for accessing databases, Providing access to databases, Leasing access time to a computer database; Operating of telecommunications equipment; Rental of telecommunications equipment; Providing telecommunication channels for teleshopping services; Providing communication services through the use of phone cards or debit cards.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.

On 22/01/2018 the Cancellation Division rendered a decision which resulted in the rejection of the cancellation application on the grounds that the trade mark was considered to be inherently distinctive. As a result, the Cancellation Division considered that there was no need to assess the arguments put forward by the parties regarding the acquired distinctiveness through use of the EUTM.

The decision was appealed and the Board of Appeal decided in case R 441/2018‑1 of 07/01/2019 (hereinafter, ‘the Board’s decision’). The Board’s decision annulled the contested decision and remitted the case to the Cancellation Division for further prosecution. The Board considered that the EUTM ‘FUSIÓN’ describes one essential characteristic of the services provided, namely that the EUTM proprietor provides the combination of different types of services in one product. Therefore, the EUTM had to be cancelled on the basis of Article 7(1)(c) EUTMR. The Board further concluded that the sign ‘FUSIÓN’ lacks distinctive character within the meaning of Article 7(1)(b) EUTMR in respect of the registered services. The Board remitted the case to the Cancellation Division for a ruling on the claim based on acquired distinctiveness pursuant to Article 7(3) EUTMR.

The Board’s decision has become final. Thus, the EUTM is considered to lack inherent distinctiveness under Article 7(1)(b) and (c) EUTMR. Therefore, in the present decision, the Cancellation Division will limit its assessment to the EUTM proprietor’s claim of acquired distinctiveness, taking into account, when relevant, the Board’s arguments.

SUMMARY OF THE PARTIES’ ARGUMENTS

As indicated in the Cancellation Division decision of 22/01/2018, the EUTM proprietor argued, in its response of 06/09/2016 to the cancellation applicant that, in the event the Office would consider that the trade mark is not inherently distinctive, the EUTM has acquired an important distinctiveness through use since its launch throughout the EU in 2012. The EUTM proprietor filed some evidence in support of its observations. In particular:

• Exhibit 1: copy of the opposition filed in Bulgaria by the EUTM proprietor against the cancellation applicant Bulgarian trade mark No 134201 (in Bulgarian);

• Exhibit 2: copy of the suspension of the opposition proceedings in Bulgaria (in Bulgarian)

• Exhibit 3: list with detailed information of trade marks owned by the EUTM proprietor containing the term “FUSIÓN”. Other than the EUTM object of the present proceedings, none of them consists exclusively of the word “FUSIÓN”: they are either figurative or contain other verbal elements (e.g. “PLUS”, “+”). The list contains trade marks registered or which registration is still pending. They have been applied for goods and/or services in various classes (not necessarily Class 38).

• Exhibit 4:

  • Publicity (all in Spanish):

    • 6 pages with screenshots from what seems to be ‘Movistar’ webpage with information on ‘Fusión Contigo 30Mb’ and ‘Fusión + 30 Mb’ (undated)

    • 3 pages with screenshots from what seems to be articles in online press regarding El País (undated) ‘Movistar Fusión+’ (23/06/2016), El Economista ‘Fusión’ (22/06/2016) and El Mundo - ‘Movistar Fusión Contigo’ (30/05/2016)

    • 7 pages with various advertisements regarding ‘Nuevo Fusión TV 300 Mb’, ‘#FusiónPro’, ‘Fusión TV Contigo’, ‘Fusión +30Mb’, ‘Fusión Contigo 30 Mb’ and ‘Fusión +2’ (undated);

    • 16 pages publicity document of November 2015 regarding ‘Fusión +’ with the slogan “Todo el entretenimiento de la galaxia en único lugar’

  • Frequently asked questions (all in Spanish):

    • Four pages with list of FAQ in Spanish regarding ‘Movistar Fusión’ and ‘ADSL, Móvil y TV.- Fusión’ (undated)

    • Three page screenshot with FAQ on ‘Fusión’ (undated – printing of 23/06/2016)

  • Four invoices, all of 01/11/2012 and including a reference to ‘Movistar Fusión’, ‘Movistar Fusión TV’ or ‘Movistar Fusión Fibra TV’ as products invoiced (in Spanish).

• Exhibit 5: several extracts of online magazines and third parties’ websites referring to ‘Fusión’ and the services offered.

  • www.adslzone.net, 25/09/2012 ‘Movistar arrasa antes del lanzamiento de Movistar Fusion con 25 000 altas’

  • El Economista, 20/09/2012 ‘Movistar Fusión se lanzará a mediados de octubre: la CMT autoriza la superoferta de Telefónica’

  • www.xatakamovil.com (October 2014) ‘Dos años de Movistar Fusión, el producto que llego para revolucionar la estrategia de los operadores’

  • El Mundo (07/05/2015) ‘Movistar amplía la velocidad de sus paquetes Fusión y los abres a pymes’

  • www.elotrolado.net (22/06/2016) ‘Movistar planea volver a subir el precio de Fusión a cambio de fútbol obligatorio’

  • El Economista, (22/06/2016) ‘Movistar prepara rebajas y nuevas ofertas para los clientes de ‘Fusión’

  • www.economia.elpais.com 07/05/2015) ‘Movistar lanza su nueva Fusión TV de 300 megas que cuesta de 59 a 112 euros’

  • www.tuexpertomovil.com (14/09/2012) ‘Movistar Fusión, todos los productos de Movistar en una factura

The EUTM proprietor argued that the EUTM had been used intensively in the EU since 2012 and European consumers are much familiarized with it. The EUTM proprietor considered that although the evidence shows an extremely wide use of the EUTM in Spain, many of the consumers are not Spanish but they come from the UK, Germany, the Netherlands, France, Italy etc. It inferred from this that the European consumers are really familiarised with the services offered in the market under the contested mark. The EUTM proprietor further argued (i) that ‘FUSIÓN’ is always prominently displayed on the labels, websites, packaging, manuals, advertising, promotional materials and all collateral material connected with each service; (ii) that the proprietor’s website includes extensive references to the ‘FUSIÓN’ mark and the services commercialized with it; and (iii) that the reputation is further increased by the commercials depicting the mark which have been aired on cable and network television during many of the popular television shows broadcasted throughout the European Union, thereby creating millions of commercial impressions.

On 14/11/2016, in reply to the Office’s request for translation of the evidence (as it was mostly in Spanish and a few documents in Bulgarian), the EUTM proprietor submitted a translation of the relevant excerpts in the language of the proceedings (English), in particular of:

• Exhibit 1 and 2.

• Exhibit 4: Some of the FAQ are partially translated; a few of the advertisements are partially translated; the article in El Mundo (30/05/2019): Ya no tendrás que pagar por tu línea adicional de Movistar Fusión Contigo (You will no longer have to pay for your additional Movistar Fusion Contigo (with you) line) is partially translated; the title of the article of El Economista, (22/06/2016) is also translated: ‘Movistar prepara rebajas y nuevas ofertas para los clientes de ‘Fusión’ is translated as Movistar prepares discounts and new offers for ‘Fusión’ customers.

• Exhibit 5 is resubmitted but without translation.

Moreover, the proprietor submitted the following additional Exhibits:

• Exhibit 6: Affidavit in English signed by Mr. Ramiro Sanchez de Lerin García-Ovies, General Secretary of Telefónica S.A. stating that the mark “FUSION” has been placed into extensive use in the marketplace throughout the European Union. The affidavit, dated 08/11/2016, contains information on:

  • Total sales 2012-YTD2016 (more than 1 million EUR in years 2012 to 2015) to and the current number of active customers (more than 4 million). The information is not broken down by country.

  • Total investment on advertising 2012-2016 (more than 110 million EUR). The information regards “national” and “DTs” investment, without clarification to one or another.

• Exhibit 7: Timeline in Spanish and English of Telefonica/Movistar Campaigns (2010-2016), dated 27/05/2016. The timeline of 2012 refers to ‘Fusión Launch’ and various events during the following years, for instance, ‘Campaing Fusión Cero Ahorro y Sencillez (Savings and Simplicity)’, ‘Campaign Fusión + Movistar TV more for the same price’ ‘Campaign Launch Fusion TV’, ‘Campaign Christmas Fusion TV content’,

• Exhibit 8: Compilation of Telefonica “Para Siempre” (Forever) campaigns (2012-2014) in Spanish and partial translation in English. Document of 02/06/2016. It includes examples of campaigns through different channels (radio, TV, press, Internet) and approaches (ATL/BT/point of sales). There is no specification of the territory where the campaigns took place but all the advertisements are in Spanish. The products communicated are listed as “Movistar Fusión” with additional elements (e.g. Fibra Cero, Fibra 4G, TV Autónomos etc)

• Exhibit 9: Compilation of Telefonica “SIN Para Siempre” campaigns 2012-2014 in Spanish. Document of 02/06/2016. Similar information to the one in Exhibit 8.

On 20/01/2017, the applicant indicated in its reply that the trade mark had been used only in Spain and the territories where Spanish is the native language. The applicant argued that intensive use should have been shown in the territories where English is a native language. It considered irrelevant the EUTM proprietor’s argument that there are many English-speaking people visiting Spain: neither most of the native English-speaking people in the EU live in Spain nor are most of the people who live in Spain English-native speakers. The applicant further considered that the evidence showed that the trade mark FUSIÓN was not in use alone as it had been registered but in combination with other elements like Fusión+, Fusión Contigo, Movistar Fusión, Fusión and device etc. It argued that this may be because Fusión on its own is devoid of distinctive character.

On 29/03/2017, it is rejoinder, the EUTM proprietor argued that in assessing the acquired distinctive character of the trade mark, the relevant public should be defined as not only persons who have actually purchased the goods and services but also any potentially interested persons as prospective purchasers. It considered that the evidence submitted showed the popularity, acceptance and recognition of the mark FUSIÓN in Europe. It insisted on the fact that the trade mark FUSIÓN has been used in Spain and that many consumers in Spain come from other countries such as the UK, Germany, the Netherlands, France or Italy. This shows that EU consumers are familiarised with the services offered under the EUTM. The proprietor also pointed out that it is unreasonable to require proof of acquired distinctiveness for each individual Member State and that the evidence of acquired distinctiveness must be examined as a whole. It repeated its previous arguments on the exposure of the public to commercials with FUSIÓN. As a result, the EUTM proprietor considered that the evidence demonstrates that, at the filing date of the application for invalidity, the mark FUSIÓN had acquired distinctiveness through its use. It also considered that the EUTM ‘FUSIÓN’ did enjoy recognition as a trade mark amongst the relevant public at the filing date and at the registration date of the EUTM.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR – ASSESSMENT OF ACQUIRED DISTINCTIVENESS

According to Article 7(2) EUTMR, Article 7(1)(b) and (c) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested as a consequence of the use which has been made of it.

According to Article 59(2) EUTMR, where the EUTM has been registered in breach of the provisions of Article 7(1)(b) and (c), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

Article 7(3) EUTMR constitutes an exception to the rule laid down in Article 7(1)(b), (c) and (d) EUTMR whereby registration must be refused for trade marks that are per se devoid of any distinctive character, for descriptive marks, and for marks that consist exclusively of indications that have become customary in the current language or in the bona fide and established practices of the trade.

Distinctive character acquired through use means that, although the sign ab initio lacks inherent distinctiveness with regard to the goods and services claimed, owing to the use made of it on the market, at least a significant proportion of the relevant public has come to see it as identifying the goods and services claimed in the EUTM application as originating from a particular undertaking. Thus, the sign has become capable of distinguishing those goods and services from those of other undertakings because they are perceived as originating from a particular undertaking. In this way, a sign originally unable to be registered under Article 7(1)(b) and (c) EUTMR can acquire new significance, and its connotation, no longer purely descriptive or non-distinctive, allows it to overcome those absolute grounds for refusal of registration as a trade mark.

Since a trade mark enjoys protection as of its filing date or priority date, and it determines the priority of one mark over another, a trade mark must be registrable on that date. Consequently, the applicant must prove that distinctive character was acquired through use of the trade mark prior to the date of application for registration or priority date (11/06/2009, C-542/07 P, Pure Digital, EU:C:2009:362, § 49, 51; 07/09/2006, C-108/05, Europolis, EU:C:2006:530, § 22). Evidence of use made of the trade mark after this date should not be automatically disregarded, insofar as it may provide indicative information regarding the situation prior to the relevant date (28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 49).

In cancellation proceedings, a trade mark that was registered in breach of the provisions of Article 7(1)(b) and (c) EUTMR may nevertheless no longer be declared invalid if, in consequence of the use that has been made of it, it has, after registration, acquired distinctive character for the goods or services for which it is registered (Article 59(2) EUTMR).

The precise purpose of this norm is to maintain the registration of those marks that, due to the use that has been made of them, have in the meantime — that is to say, after their registration and in any event before the application for an invalidity request — acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when registration took place, they were contrary to Article 7 EUTMR (14/12/2011, T-237/10, Clasp lock, EU:T:2011:741, § 52-53, 86; 15/10/2008, T-405/05, Manpower, EU:T:2008:442, § 127, 146; 10/12/2008 T-365/06, BATEAUX MOUCHES, EU:T:2008:559, § 37-38).

The EUTM applicant must submit evidence that enables the Office to find that at least a significant proportion of the relevant section of the public identifies the products or services concerned as originating from a particular undertaking because of the trade mark (15/12/2015, T-262/04, Briquet à Pierre, EU:T:2005:463, § 61 and the case-law cited therein).

In this case, it was incumbent upon the EUTM proprietor to demonstrate to the Cancellation Division that its EUTM had acquired distinctive character for all the services that have been found to be registered contrary to Article 7(1)(b) and (c) EUTMR by the Board’s decision, namely, all the registered services in Class 38.

Pursuant to Article 7(3) and Article 59(2) EUTMR, the proprietor must demonstrate that either, the trade mark acquired distinctive character on or before the date of application, or the priority date (Article 7(3) EUTMR); or distinctive character was acquired after registration (Article 59(2) EUTMR). Consequently, the EUTM proprietor had to demonstrate that its EUTM had acquired distinctive character either before 01/07/2013 (filing date of the EUTM) or between 19/11/2013 (date of registration) and 24/05/2016 (date of the application for declaration of invalidity).

Furthermore, the Board’s decision concluded that in view of the meanings of ‘FUSIÓN’ in Spanish and in English, when examining absolute grounds for refusal, “the meaning of the term in Spanish but also the understanding of the public outside of Spain must also be taken into consideration” (§25). The Cancellation Division infers from this finding that the Board found that the EUTM lacked inherent distinctiveness at least in Spain and in the English-speaking countries of the European Union. As a result, the Cancellation Division has to assess whether, in light of the arguments and evidence submitted by the EUTM proprietor and listed above, the contested EUTM has acquired a distinctive character through use in Spain, United Kingdom, Ireland and Malta at any of the relevant points in time.

The EUTM proprietor submitted Exhibits 1 to 9 listed above in order to prove that the EUTM ‘FUSIÓN’ had acquired a distinctive character.

Assessment of the evidence

Evidence of acquired distinctiveness must be examined as a whole, taking into account, in particular, the market share held by the trade mark, and the intensity, frequency and duration of use of the mark. The evidence must establish that a significant proportion of the relevant public is able, by virtue of that mark, to identify the goods or services concerned as originating from a particular undertaking. Evidence from non-EU states is irrelevant, except insofar as it might enable conclusions to be drawn about use within the EU (24/06/2014, T-273/12, Ab in den Urlaub, EU:T:2014:568, § 45).

The evidence must be clear and convincing. The EUTM applicant must clearly establish all the facts necessary to safely conclude that the mark has been used as a badge of origin, that is to say, that it has created a link in the mind of the relevant public with the goods or services provided by a specific company, despite the fact that, in the absence of such use, the sign at issue would lack the necessary distinctiveness to create such a link.

For a finding of acquired distinctiveness through use, the case-law does not prescribe fixed percentages of market penetration or of recognition by the relevant public (19/06/2014, C-217/13 and C-218/13, Oberbank e.a., EU:C:2014:2012, § 48). Rather than using a fixed percentage of the relevant public in a given market, the evidence should show that a significant proportion of the public perceives the mark as identifying specific goods or services from a particular undertaking.

As it can be deduced by a simple reading of the listed evidence, the core of the evidence submitted by the EUTM proprietor refers to the Spanish market and targets the Spanish consumers. This is evident from the language of the documents, from the press articles and publicity which refer to or target the Spanish market (Exhibits 4 and 5) but also from the EUTM proprietor’s documents on advertising (timelines and campaigns) which focus on Spain (Exhibits 7 to 9). Moreover, the affidavit in Exhibit 6 with financial information on sales and investment in advertising in 2012-YTD2016 does not provide any breakdown information by territories. If any, there is a reference to “national” investment. Potentially, the evidence could target Spanish-speaking markets outside the EU (for instance, Latin America) but in this case, the evidence would be even less relevant.

The Cancellation Division is aware of the case-law referred to by the EUTM proprietor’s regarding the fact that it wold be unreasonable to require proof of acquired distinctiveness for each individual Member State (judgment of 24/05/2012, C-98/11 P, Hase, EU:C:2012:307, § 62). However, such reasoning is applicable to situations where it may be difficult or burdensome to prove acquired distinctiveness through use. For instance, for shape marks, colours per se and figurative trade marks consisting exclusively of the depiction of the goods in question. This is not the case with the EUTM ‘FUSIÓN’. The number of territories where acquired distinctiveness through use had to be proven is limited to four Member States.

Nevertheless, even if it is admitted (quod non) that proof of acquired distinctiveness for each individual Member State should not be required in the present case, as the EUTM proprietor itself indicates, this is provided that “the ‘missing piece’ of the puzzle does not affect the general picture that a significant proportion of the relevant European public perceives the sign as a trade mark in the various parts or regions of the European Union”. In the present case, the lack of evidence with regards to all of the English-speaking territories referred to above necessarily affects the “general picture” as it does not allow concluding that a significant proportion of the English-speaking part of the public perceives the sign as a trade mark.

In this regard, contrary to the EUTM proprietor’s arguments, the evidence does not contain any evidence (even less convincing evidence) of exposure by the English-speaking consumers to the EUTM ‘FUSIÓN’. The EUTM proprietor argued that commercials with the EUTM ‘FUSIÓN’ have been aired on cable and network television during many of the popular television shows broadcasted throughout the European Union. However, this statement cannot be confirmed by the submitted evidence, which only refers to advertising campaigns targeting the Spanish-speaking part of the public.

As a result, the evidence submitted does not even show use of the trade mark in the English-speaking countries in question. Consequently, it does not contain sufficient indications to establish that a significant proportion of the relevant public in these countries is able to identify the services marketed under the EUTM as originating from a particular undertaking. There is no direct evidence of the degree of knowledge of the relevant public (such as a survey), nor sufficient indirect evidence thereof (such as press clips, large number of sales and market share in those territories). The evidence just consists of evidence of use of the EUTM in Spain or targeting the Spanish-speaking public.

The EUTM proprietor’s statement that many consumers in Spain are not Spanish but come from, inter alia, the UK so they are familiarised with the EUTM does not change this conclusion. First and foremost, this statement has not been supported by any evidence, such as the number of visitors or the level of exposure. The fact that British tourists and travellers may potentially be exposed in Spain to commercials with the EUTM ‘FUSIÓN’ cannot be taken into account as a convincing argument. It does not allow inferring that due to such exposure, the relevant public in the United Kingdom, Malta and Ireland will perceive the EUTM as a badge of origin.

Considering the above, and without taking position on other aspects of the assessment of the evidence on acquired distinctiveness raised by the applicant (such as use of the EUTM as registered), the Cancellation Division concludes that the EUTM proprietor failed to prove that the contested sign has acquired distinctive character through use either before the filing date or after the registration, at least in the United Kingdom, Ireland and Malta. Therefore, the claim based on Article 7(3) EUTMR and Article 59(2) EUTMR is rejected.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested services.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Michaela SIMANDLOVA

Elisa ZAERA CUADRADO

Ana MUÑIZ RODRÍGUEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.