CANCELLATION No C 13 386 (INVALIDITY) 

 

Intesa Sanpaolo S.p.A., Piazza San Carlo, 156, 10121 Turin, Italy (applicant), represented by Perani & Partners S.p.A., Piazza Armando Diaz, 7, 20123 Milan, Italy (professional representative)

 

a g a i n s t

 

Fundacion Bancaria Caixa D'Estalvis I Pensions De Barcelona, "La Caixa", Av. Diagonal, 621-629, 08028 Barcelona, Spain (EUTM proprietor), represented by Manresa Industrial Property, S.L., Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative).

On 29/04/2021, the Cancellation Division takes the following

 

 

DECISION

  

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

 

2.		European Union trade mark No 12 665 402 is declared invalid for some of the contested goods and services, namely:   Class 9: Information technology and audiovisual equipment; Recorded content.   Class 38: Telecommunication services.
3.	The European Union trade mark remains registered for all the remaining goods and services, namely:   Class 9: Optical devices, enhancers and correctors; Apparatus, instruments and cables for electricity; Safety, security, protection and signalling devices; Devices for treatment using electricity; Diving equipment; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers; Scientific research and laboratory apparatus, educational apparatus and simulators; Navigation, guidance, tracking, targeting and map making devices.   Class 36: Pawnbrokerage; Real estate services; Financial and monetary services, and banking; Valuation services; Insurance services; Fundraising and sponsorship; Safe deposit services; Provision of prepaid cards and tokens.
4.			Each party bears its own costs.

 

REASONS

 

On 27/07/2016, the applicant filed a request for a declaration of invalidity against European Union trade mark No 12 665 402 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely against all the goods and services in Classes 9, 36 and 38. The application is based on European Union trade mark registration No 4 324 877 ‘FLASH’ (word mark), European Union trade mark registration No 9 293 093 ‘FLASH PEOPLE’ (word mark) and European Union trade mark registration No 9 617 887 ‘SUPERFLASH’ (word mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that there exists a likelihood of confusion between the EUTM and the applicant’s earlier ‘FLASH’ marks because of the similarity between the signs and the identity or similarity between the goods and services. The applicant also submits a description of its company as being among the top banking groups in the Euro zone, with a strong presence in Central-Eastern Europe with a large network of branches and several millions of customers, without, however, expressly claiming that the earlier marks relied upon in the present proceedings enjoy enhanced distinctiveness. With respect to the comparison of signs, the applicant claims that they are visually, aurally, and conceptually similar since the earlier marks and the contested EUTM share their most distinctive element, ‘FLASH’. With respect to the comparison of goods and services, the applicant essentially states that the respective earlier marks cover the same classes of goods or services as those covered by the contested EUTM. Lastly, the applicant claims that the likelihood of confusion is even greater since the applicant’s ‘FLASH’ marks form part of a ‘series’ or ‘family’, and submits some evidence in this regard (as will be listed and analysed in the following sections of the decision).

 

The EUTM proprietor requests that the applicant furnishes proof of use of the earlier marks, and argues that there is no likelihood of confusion, particularly because the term ‘FLASH’ has weak distinctiveness, whilst the more distinctive element in the contested EUTM is the term ‘LKXA’. In addition, the EUTM proprietor asserts that there are previous registrations containing the element ‘FLASH’ and registered for financial services, and that the applicant’s earlier marks have peacefully co-existed therewith.

In reply, the applicant submits proof of use (which will be listed and analysed in the following section of the decision).

Lastly, the EUTM proprietor submits its observations regarding proof of use, criticising the evidence as lacking translation into the language of proceedings, or being not relevant otherwise, and requests to reject the application due to insufficient proof of use of the earlier marks.

On 24/07/2017, the Office closed the adversarial part of the proceedings. However, on 02/05/2018, the Office suspended the proceedings as earlier European Union trade mark No 4 324 877 was subject to cancellation action No 15 076 C (revocation). Once a final decision was taken in the cancellation action, the Office resumed the present proceedings.

 

PROOF OF USE

 

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

 

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

 

As stated above, according to Article 64(2) and (3) EUTMR, the earlier mark can only be subject to the use obligation when it has been registered for not less than five years on the date of the application for a declaration of invalidity.

The present application for a declaration of invalidity was filed on 27/07/2016.

From the outset, the Cancellation Division notes that earlier European Union trade mark No 9 617 887 ‘SUPERFLASH’ was registered on 30/08/2011. Therefore, the request for proof of use is inadmissible in relation to this earlier mark.

However, the proof of use request is admissible in relation to the remaining earlier marks, given that earlier European Union trade mark No 4 324 877 ‘FLASH’ was registered on 10/08/2006 and earlier European Union trade mark No 9 293 093 ‘FLASH PEOPLE’ was registered on 22/12/2010, i.e. more than five years prior to the date of the application for a declaration of invalidity. The applicant was, therefore, required to prove that the aforementioned two earlier marks on which the application is, inter alia, based were genuinely used in the European Union from 27/07/2011 to 26/07/2016 inclusive.

Furthermore, the date of filing of the contested trade mark is 05/03/2014. Since earlier European Union trade mark No 4 324 877 ‘FLASH’ was registered more than five years prior to the date of filing of the contested mark, use of this earlier mark had to be shown also for the period from 05/03/2009 to 04/03/2014 inclusive.

The evidence must show use of the trade marks for the goods and services on which the application is based, namely:

 

European Union trade mark No 4 324 877 ‘FLASH’, following the partial revocation of the mark in cancellation action No 15 076 C, final decision of the Board of Appeal of 22/06/2020, R 845/2019-5:

Class 36: Retail banking services; including bank card services; advice, information and consultancy in relation to retail banking services.

European Union trade mark No 9 293 093 ‘FLASH PEOPLE’:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; charitable fund raising; deposit of valuables; financial advice; financial information; financial sponsorship; insurance consultancy; insurance information; organization of collections; safe deposit services.

List of evidence

On 21/12/2016, in accordance with Rule 40(6) of Regulation (EC) No 2868/95, as applicable to the present proceedings, the Office gave the applicant until 26/03/2017 to submit evidence of use of the abovementioned earlier marks. Taking into account that the time limit expired on a day on which the Office was not open for receipt of documents and ordinary mail was not delivered, the time limit extended until the first day on which the Office was open for receipt of documents and on which ordinary mail was delivered, namely 27/03/2017.

On 27/07/2016, in support of its application, the applicant had already submitted the following documents:

Annex A: An opposition decision in Spanish rendered by the Spanish Patent and Trade Mark Office, dated 28/08/2013, ruling on an opposition filed by the cancellation applicant stating that there is a likelihood of confusion between a contested Spanish trade mark with the verbal element ‘FLASH LKXA’ and the applicant’s trade marks ‘FLASH’, ‘FLASH WORLD’ and ‘FLASH PEOPLE’.

Annexes B-J: Extracts from the applicant’s website, ‘www.intesasanpaolo.com’, originally in Italian, obtained on 18/02/2016, showing different prepaid bank cards offered by the applicant, such as ‘Flash Visa payWave’ – a prepaid card for young people or people who do not want to open a bank account (Annex C), ‘Carta Omnia Flash al portatore’ – a rechargeable prepaid card to enjoy Rome during the event of the ‘Jubilee of Misericordia’ (Annex D), ‘Carta Flash Expo’ – ‘The Prepaid Card Expo 2015 Intesa Sanpaolo’ (Annex E), ‘Carta Flash La Statale’ – a prepaid card designed exclusively for students and staff of the University of Milan (Annex F), ‘Flash People’ – a prepaid card for sending money to relatives (Annex G), ‘SUPERFLASH’ – an offer designed for people between 18 and 35 years old, a personal loan and a prepaid card (Annexes H, I, J).

On 24/03/2017 and 27/03/2017, within the time limit for submitting the requested evidence of use, the applicant submitted the following documents:

Annex 1: Document presenting the company INTESA SANPAOLO (the applicant), its history and activities. It appears to be an internally prepared document in the form of a presentation and is dated October 2016. According to this document, the applicant is an ‘Italian banking leader of European scale’ with a domestic network of over 4 000 branches, a market share of 13% and 11.1 million clients in Italy. It is also claimed that the banking group has an international network presence in 29 countries. The document also gives more detailed information about the structure, governance, international network, and activities of the applicant.

Annex 2: Samples of letters prepared for customers who have purchased ‘Flash’ banking cards, showing different cards (‘Flash Expo’, ‘Flash Visa payWave’) and instructions for their use, dated 13/05/2010-12/02/2015. The word ‘FLASH’ appears on some of the cards in the following ways:

Annex 3: Customer information sheet prepared by the applicant, dated 19/06/2013, containing information about the prepaid bank card ‘Flash People’.

Annex 4: ‘Social Report 2009’, referring to achievements of the applicant in the three previous years, its activities and policies, its customers. The applicant has highlighted parts of the report, mentioning ‘SuperFlash’ accounts for students and the ‘SuperFlash’ prepaid card launched in May 2009 that combines the functions of payment cards and current account services.

Annex 5: ‘Social Report 2011’, where the applicant has highlighted parts reporting on ‘the new Superflash product’ – a loan for university students and researchers. It also informs that in September 2011, ‘Superflash’ was launched and that it is an umbrella brand for dedicated services for customers in the 18-35 age range. These include bank accounts, loans, savings products and plans, a mortgage, and a free insurance policy for temporary workers. It is mentioned that in 2011, ‘Superflash’ branches were opened in Turin, Milan and Naples in Italy. The report also mentions a money transfer service and prepaid cards ‘Flash People’.

Annex 6: Stakeholders Engagement report dated 2011. The report mentions that in 2011, ‘Superflash’ branches were opened and that in September 2011, ‘Superflash’ launched its new approach to Intesa Sanpaolo’s young customers. It also states that Intesa Sanpaolo signed an agreement with ‘Western Union’ for a money transfer service and created the new ‘Flash People’ prepaid card.

Annex 7: Stakeholders Engagement report dated 2012. The report mentions the ‘Superflash’ offer and an online welcome questionnaire for ‘Superflash’ customers, in which 333 participants took place.

Annex 8: Press release prepared by the applicant concerning its participation at Expo 2015 in Milan. It mentions that there were 60 000 ‘Expo Flash Cards’ issued for the event. These served to give to cardholders discounted or privileged access to shows, exhibitions and museums in Milan and other Italian cities and give access to exclusive offers and advantages.

Annex 9: Report prepared by the applicant for a meeting with the press in Rome in November 2015 with information and statistics about the performance of the applicant. According to the report, the applicant is one of the global leaders in the banking field in terms of share price increase. The presentation states that the applicant was ‘the sole Global Banking partner of Expo 2015’ and that there were over 2 million card transactions with the applicant at the Expo and 60 000 ‘Expo Flash cards’ issued.

Annex 10: Report of the applicant, ‘2016 Community Paper’, providing information on social initiatives and activities undertaken by the applicant and mentioning that there were 60 000 ‘Expo Flash cards’ issued for the Expo 2015 in Milan, an event with over 20 million visitors, over 150 participants and around 5 000 events held over 184 exhibition days.

Annex 11: Printouts from the applicant’s website ‘www.intensasanpaolo.com’, obtained using the internet archive Wayback Machine, concerning the availability of prepaid cards and savings bankbooks – ‘Flash Visa Paywave’, ‘Libretto Flash’ (Flash bankbook) – offered by the applicant. The printouts show how the webpage looked on several dates in 2013 and 2014.

Annex 12: Printouts from the website of Banca ITB ‘www.bancaitb.it’, obtained using the internet archive Wayback Machine, containing instructions in Italian on how to recharge prepaid bank cards of the applicant, such as ‘Superflash’, ‘Flash Visa’, ‘Flash Maestro’ and ‘Flash Tifoso’. The printouts show how the webpage looked on two dates in 2013 and 2014.

Annex 13: A printout from the website ‘www.cartedipagamento.com’, obtained using the internet archive Wayback Machine, showing the availability of various bank cards, including the applicant’s ‘Flash Visa payWave’. The printouts show how the webpage looked on 19/02/2014.

Annex 14: A leaflet in Italian referring to ‘Superflash’. In its observations the applicant explains that the document concerns the opening of 11 ‘Superflash’ stores in Italy in 2011 and 2012. It also mentions a promotional musical event ‘Music Flash’.

Annex 15: Advertising materials consisting of brochures and promotional letter layouts in Italian from different banks within the applicant’s banking group offering, among others, the applicant’s bank cards ‘Superflash’, ‘Flash Visa payWave’ and ‘Flash People’, some also listing the conditions and characteristics of the cards. Some of the documents refer to the bank cards as ‘new’. The documents are either undated or dated 2011.

Annex 16: A list of positive national opposition decisions (France, Romania, Portugal, Sweden) and EUIPO opposition decisions in relation to ‘FLASH’ marks.

Preliminary remarks regarding some of the EUTM proprietor’s arguments

 

The EUTM proprietor argues that the applicant did not submit translations of some of the evidence of use (i.e. Annexes 2, 3, 11-15) and that, therefore, this evidence should not be taken into consideration.

However, the applicant is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) of Regulation (EC) No 2868/95, as applicable to the present proceedings). In this regard, the nature of the documents which have not been translated and are considered relevant for the present proceedings must be taken into account. In particular, samples of letters prepared for customers who have purchased ‘Flash’ banking cards, information sheets related to the prepaid card ‘Flash People’, printouts from third-party websites, and advertising material are either self-explanatory insofar as the signs in question are, in some instances, clearly displayed on the documents, or can be understood in conjunction with the applicant’s observations filed together with the evidence and that contain a partial translation, or at least a description of the evidence. The Cancellation Division considers, therefore, that there is no need to request a full translation. 

The EUTM proprietor argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods and services for which the earlier marks are registered and on which the invalidity application is based.

The EUTM proprietor’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Assessment of the evidence

 

According to Rule 40(6) of Regulation (EC) No 2868/95 in conjunction with Rule 22(3) of Regulation (EC) No 2868/95, as applicable to the present proceedings, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

Place of use

Apart from some items of the evidence mentioning certain activities of the applicant outside of Italy, the evidence clearly shows that the principal place of use is Italy, i.e. a Member State of the European Union. This can be inferred from the language of the documents (e.g. samples of letters prepared for customers of the prepaid cards ‘Flash’ in Annex 2, information sheets related to the prepaid cards ‘Flash People’ in Annex 3, printouts from the website of the applicant and websites of third parties in Annexes 11-13, and advertising material in Annex 15). Furthermore, other items of the evidence directly refer to locations in Italy (e.g. Social Report of 2011 in Annex 5 mentions ‘Superflash’ branches in Turin, Milan and Naples; press release dedicated to the applicant’s participation at Expo 2015 in Annex 8 refers to Milan, and the report in Annex 9 provides information on the applicant’s activities in Italy).

Therefore, the evidence relates to the relevant territory.

Time of use

Although certain items of the evidence refer to events before or after the relevant period(s), many of the documents submitted fall within, or can safely be linked to use, within the relevant period(s).

The Cancellation Division notes the EUTM proprietor’s argument that several items of the evidence are undated. This argument must be rejected as unfounded because the majority of the evidence is in fact dated or contains date references, such as the dates when the printouts were made or extracted from the Wayback Machine etc.

Therefore, the evidence of use indicates the time of use.

Nature of use

In the context of Rule 22(3) of Regulation (EC) No 2868/95 as applicable to the present proceedings, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in accordance with its function, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. 

Use of the signs as a trade mark

The evidence shows that the applicant marketed certain retail banking services under the signs ‘FLASH’ and ‘FLASH PEOPLE’. This can be inferred from the sample letters prepared to the customers who obtained the prepaid cards ‘Flash’ in Annex 2, information sheets relating to the prepaid bank card ‘Flash People’ in Annex 3, extracts from the applicant’s website showing different prepaid bank cards in Annexes B-J. The signs at issue are displayed on the bank cards and are mentioned in the descriptions of the services.

It is, therefore, considered that the evidence contains sufficient indications of use of the signs at issue in a trade mark sense with respect to certain goods and services.

Use of the signs as registered

According to Article 18(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1 (formerly Article 15(1), second subparagraph, point (a) EUTMR): use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 64(2) and (3) EUTMR, Article 18 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the evidence shows use of the sign ‘FLASH’, written in a rather standard font, either alone or together with other elements, such as ‘Carta Omnia Flash’, ‘Flash Expo’, ‘Expo Flash’, ‘Flash La Statale’, ‘Superflash’ and ‘Flash Visa payWave’, as seen in Annexes C, D, E, F, H, I, J, 2, 4 etc.

Some of the additional elements present in the actual manners of use, for example ‘Expo’, ‘carta’ or ‘super’, are descriptive or laudatory indications informing the consumers about the nature, purpose or a (desirable) characteristic of the services at issue.

With respect to the distinctiveness of the word ‘FLASH’, it is noted that the word in question has no directly descriptive or generic meaning for the public in the relevant territory and, therefore, has a distinctive capacity to identify and distinguish the services at issue from those of other undertakings (03/12/2012, R 2402/2011-2, ‘FLASH’; 22/06/2020, R 845/2019-5, ‘Flash’, § 56).

In view of the normal degree of distinctiveness of the term ‘FLASH’, the additional elements used in some instances, such as ‘Visa’ and ‘payWave’, albeit distinctive, do not alter the distinctive character of the sign as registered, as these manners of use nonetheless show use of the house mark, ‘FLASH’, plus additional words designating a separate line/sub-brand of services, or constitute use of independent marks (22/06/2020, R 845/2019-5, Flash, § 58).

The evidence also shows use of the sign ‘FLASH PEOPLE’. It is shown, for example, on a bank card in Annex G:

The sign ‘FLASH PEOPLE’ is also mentioned as such in Annexes 3, 5 and 15, including as ‘Carta Flash People’ where the term ‘Carta’ is clearly descriptive in relation to prepaid bank cards and services related thereto.

 

Therefore, despite the arguments of the EUTM proprietor, the evidence shows use of the signs as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. 

 

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use. 

The documents filed contain some indications of the applicant’s activities revolving around certain goods and services marketed under the signs at issue. In particular, the applicant states that the trade marks were used in connection with savings account and saving book ‘FLASH’; prepaid cards ‘FLASH’, ‘FLASH Visa payWave’, ‘FLASH PEOPLE’, ‘Omnia FLASH Al Portatore’, ‘FLASH Expo’, ‘FLASH La Statele’; prepaid cards, bank account, mortgage, loans, and investment plans ‘SUPERFLASH’.

However, the Cancellation Division accepts the EUTM proprietor’s arguments that the evidence falls short on several aspects related to the requirement of extent of use. Although the applicant furnished, in particular, a series of Annual Reports devised by the applicant’s company that provide a general overview of its commercial and financial activities, no evidence was submitted to prove the extent of use of each of the earlier marks.

It is acknowledged that the requirement for the extent of use does not mean that the applicant has to reveal the entire volume of sales or turnover figures. It is sufficient to submit evidence which proves that the minimum threshold for a finding of genuine use has been passed (11/05/2006, C-416/04 P, Vitafruit, EU:C:2006:310, § 72).

Nevertheless, the evidence must contain sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. 

The nature and characteristics of the market of goods and services at issue must be considered when assessing the requirement of extent of use.

In this respect, it is noted that because of the nature of financial services, the applicant indeed cannot be expected to submit invoices or copies of contracts signed with customers, since they may contain commercially sensitive data, or simply be lengthy documents containing the conditions for rendering the retail banking services. This point was made by the Board in decision ruling on cancellation action No 15 076 C (revocation) against the earlier mark ‘FLASH’, by which the Board established genuine use in relation to part of the registered services (22/06/2020, R 845/2019-5, Flash, § 68-69). However, in addition to promotional documents and other indirect evidence of use, the submissions in the abovementioned cancellation action included an affidavit with detailed information in relation to the number of contracts, per year, during the period from 2013 to 2017, undersigned by customers in relation to ‘Flash’ banking services, such as bank accounts, saving bankbooks, prepaid and rechargeable bank cards, etc.

In contrast, the evidence furnished in the present proceedings does not clearly indicate the number of customers, or the number of contracts undersigned by the customers, during the relevant period(s) of use.

Whilst the evidence does contain some mentions of the number of customers, they either relate to the total number of the customers of the applicant’s company, such as the document presenting the company INTESA SANPAOLO in Annex 1, or refer to isolated instances of use, such as the press release and the reports regarding the applicant’s participation at Expo 2015 in Milan in Annexes 8-10. Admittedly, the evidence contains indications of the number of cards issued and the number of transactions executed in relation to this event (i.e. 60 000 cards and over 2 million transactions with the applicant which was ‘the sole Global Banking partner’ of Expo 2015). Nevertheless, the evidence in Annex 10 also states that Expo 2015 was held over 184 exhibition days, which roughly equals half of a calendar year.

Use does not have to be made during a minimum period of time to qualify as ‘genuine’. In particular, use does not have to be continuous throughout the relevant period of 5 years. It is sufficient if use was made at the very beginning or end of the period, provided the use was genuine (16/12/2008, T-86/07, Deitech, EU:T:2008:577).

It is in the light of the abovementioned principles that it has to be assessed whether use that was limited to roughly half a year within first of the two relevant periods (i.e. from 27/07/2011 to 26/07/2016) applying to both of the earlier marks at issue, namely ‘FLASH’ and ‘FLASH PEOPLE’, amounts to sufficient extent of use.

The evidence suggests a seemingly high number of financial transactions. However, they pertain to a short period of time. The isolated character of this instance of use is emphasised by the fact that a specific prepaid card, called ‘Expo Flash’, was issued in relation to Expo 2015 in Milan, suggesting that such cards would not be put to use outside of this event.

It is considered that merely half a year of use is too short a period to show sufficient duration and frequency of use, in a highly saturated market of financial products in the relevant territory.

Furthermore, it is noted that the second relevant period only applying to the earlier mark ‘FLASH’, runs from 05/03/2009 to 04/03/2014. The evidence relating to Expo 2015 in Milan falls outside of this relevant period.

The smaller the commercial volume of the exploitation of the mark, the more necessary it is for the invalidity applicant to produce additional evidence to dispel any doubts as to its genuineness (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 37).

In principle, the absence of direct evidence, for example documents proving actual sales under the mark, may be counteracted by indirect/circumstantial evidence of use. Here, however, aside from product descriptions and information sheets, or promotional information on handling certain prepaid cards, there are no other commercially relevant quantitative indications in the evidence that would provide sufficient basis for a conclusion that use was not merely token.

It remains to be noted that the evidence contains some indications of bank branches and/or ‘SUPERFLASH’ stores in several locations in Italy. However, the reference to the branches and stores is too general an indication as to establish the commercial volume of use.

Although the evidence shows that the ‘SUPERFLASH’ range of products of the applicant is designed for young people, or students, this factor does not offset the abovementioned shortcomings of the evidence in terms of extent of use. Nor is the welcome questionnaire carried out among 333 respondents, as mentioned in Annex 7, a sufficiently important indication of the commercial volume of use.

All in all, in the absence of sufficient evidence regarding the commercial volume of use and bearing in mind the limited frequency and duration of use, it cannot be concluded from the material submitted and without resorting to probabilities and presumptions, that the marks were genuinely used during the relevant period(s) or that the applicant seriously tried to acquire and maintain a commercial position in the relevant market. Whilst the evidence contains limited indications of use for certain financial products, the evidence is not conclusive in this regard.

Therefore, the Cancellation Division considers that the applicant has not provided sufficient indications concerning the extent of the use of the earlier marks.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

As mentioned above, According to Rule 40(6) of Regulation (EC) No 2868/95 in conjunction with Rule 22(3) of Regulation (EC) No 2868/95, as applicable to the present proceedings, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the earlier trade marks for the goods or services in respect of which they are registered and on which the application is based. These requirements are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). The applicant must thus prove each of these requirements. However, the sufficiency of the evidence as to the place, time, extent and nature of use has to be determined by considering the evidence submitted in its entirety.

The Cancellation Division has evaluated the evidence submitted in an overall assessment. For the reasons given above, the applicant has not fulfilled the requirement of extent of use.

The Cancellation Division concludes that the evidence furnished by the applicant is insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during the relevant period(s). It follows that it is unnecessary to continue the examination of proof of use with respect to use in relation to the registered goods and services.

Therefore, the application must be rejected pursuant to Article 64(2) EUTMR, insofar as it is based on earlier European Union trade mark registration No 4 324 877 ‘FLASH’ and European Union trade mark registration No 9 293 093 ‘FLASH PEOPLE’.

The examination of the invalidity application continues on the basis of earlier European Union trade mark registration No 9 617 887 ‘SUPERFLASH’, which is not under the requirement of use, as explained hereinabove.

LIKELIHOOD OF CONFUSION — ARTICLE 60(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. 

a) The goods and services

 

In relation to earlier European Union trade mark registration No 9 617 887 ‘SUPERFLASH’, the services on which the application is based are the following: 

Class 38: Telecommunications.

The contested goods and services are the following: 

Class 9: Optical devices, enhancers and correctors; Apparatus, instruments and cables for electricity; Safety, security, protection and signalling devices; Devices for treatment using electricity; Information technology and audiovisual equipment; Diving equipment; Recorded content; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers; Scientific research and laboratory apparatus, educational apparatus and simulators; Navigation, guidance, tracking, targeting and map making devices.

Class 36: Pawnbrokerage; Real estate services; Financial and monetary services, and banking; Valuation services; Insurance services; Fundraising and sponsorship; Safe deposit services; Provision of prepaid cards and tokens.

Class 38: Telecommunication 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. 

Contested goods in Class 9 

 

The contested information technology and audiovisual equipment encompasses, as a broad category, communications equipment which includes means to enable remote communication, such as computer networking-, broadcasting-, data- and point-to-point communications equipment, antennas and aerials.

The contested recorded content encompasses, as a broad category, software for telecommunication purposes.

Owing to rapid developments in the field of information technology, in particular the growing importance of the internet, the markets for communications equipment, IT hardware and software on the one hand, and telecommunications services on the other, have clearly become interlinked. Goods such as modems, telephones, smartphones, computers, network routers and/or servers are used in close connection with telecommunication services because they are, or can be, absolutely necessary for performing these services and, from the viewpoint of the consumer, they are indispensable for accessing them. They are, moreover, regularly marketed together. Nowadays, computers are generally networked and their autonomous use is actually the exception to the rule; the rule being that communications equipment, computers and software, insofar as they enable access to those services or provide the ability to perform them, renders them complementary (25/04/2017, R 1569/2016-1, § 22-23; 15/10/2018, T-444/17, life coins / LIFE et al., EU:T:2018:681, § 37).

Therefore, the contested information technology and audiovisual equipment; recorded content are similar to the applicant’s telecommunications in Class 38, given their complementary character; although their nature is different, their purpose, consumers, distribution channels and usual providers are, or may be, the same.

However, the remaining contested goods in this class have no relevant connection to the applicant’s services in Class 38.

Telecommunications services include mainly services that allow at least one party to communicate with another, as well as services for the broadcasting and transmission of data, in particular transmission of digital files and electronic mail, providing user access to global computer networks, radio and television broadcasting, video-on-demand transmission, providing internet chatrooms and online forums, telephone and voice mail services, teleconferencing and videoconferencing services. These services are provided by telecommunication network operators, broadcasting companies, internet service providers and other businesses that have the technical equipment and knowledge required for the provision of access to voice and/or data communication services.

There is a fundamental difference in the nature of these services when compared to any of the remaining goods in Class 9, since goods are tangible whereas services are intangible. Furthermore, there is a vast difference in the purposes of the applicant’s telecommunications and the contested optical devices, enhancers and correctors; apparatus, instruments and cables for electricity; safety, security, protection and signalling devices; devices for treatment using electricity; diving equipment; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers; scientific research and laboratory apparatus, educational apparatus and simulators; navigation, guidance, tracking, targeting and map making devices. These goods and services do not originate from the same producers or providers and they do not satisfy the needs of the same public. Nor do they move through the same channels of distribution. Specifically with respect to the contested navigation, guidance, tracking, targeting and map making devices which include navigational devices for global positioning purposes, such as on-board computers for vehicles, the Cancellation Division notes that they are not similar to the applicant’s telecommunications either. The notion of telecommunication services does not bring naturally to mind that of satellite systems but rather that of, for example, emails, the internet or similar networks. These goods and services are not complementary: there is no indispensable or important relationship between the contested goods and the applicant’s services in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (19/05/2016, R 258/2009-1 & R 265/2009-1, GALILEI / GALILEO et al., § 42). While some vehicles now include Wi-Fi equipment which can establish telecommunications, these operate separately from the GPS (global position system). The latter is a space-based navigation system operated through satellites that provides geolocation and time information to the GPS receiver. The GPS does not require the user to transmit any data, and it operates independently of any telephonic or internet reception. Although these technologies may enhance the usefulness of the GPS positioning information, they are not complementary to them. Therefore, navigation apparatus cannot be considered similar to telecommunications (19/12/2017, R 657/2017-4, drivePro (fig.) / DrivePad LE SITE DES CONDUCTEURS (fig.) et al., § 18).

It follows that the remaining contested goods in this class are dissimilar to the applicant’s services.

 

Contested services in Class 36 

None of the contested services in this class has any relevant connection to the applicant’s services in Class 38. The fact that certain financial and monetary services, and banking; fundraising and sponsorship services etc. can be provided remotely, such as banking services on an online platform or by telephone, fundraising by means of telephone calls or websites etc., does not mean that telecommunications are indispensable for the provision, or use, of the financial services. Nor are the consumers likely to expect that the provision of these services lies under the responsibility of the same undertaking, in view of the entirely different technical equipment that the provision of these services entails, as well as – or even more importantly – the required professional knowledge and know-how. As the matter of fact, telecommunication services in this sense are purchased by the providers of the financial services, and not at the end users of the financial services. It is also worth mentioning that financial services are provided in a regulated market in which the operators are licensed and monitored.

In the same vein, there are no relevant commonalities between the applicant’s services in Class 38 and the contested real estate services. Although real estate agents publish listings and offers online, so that consumers can conveniently view and choose the property for purchase or rent, it clearly does not mean that the provision of access to such a website is also effected by the same undertaking.

Since the services under comparison do not share any factor in common, they are dissimilar.

 

Contested services in Class 38 

 

The contested telecommunication services are synonymous and, therefore, identical to the applicant’s telecommunications.

 

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question. 

 

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

The relevant public’s degree of attention varies from average to above average, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

 

 

c) The signs

 

SUPERFLASH
Earlier trade mark	Contested sign

 

 

The relevant territory is the European Union.  

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The contested sign is a composite mark comprising a stylised depiction of the word ‘FLASH’ and another element featuring the letters ‘LKXA’ and a colourful figurative element, including an irregular shape and two dots, all placed within a black elongated shape. The stylisation of the word ‘FLASH’, albeit notably departing from a standard script, does not eclipse the word as such. Nor does the stylisation possess any particular distinctiveness in itself.

As regards the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). It can be reasonably assumed that the relevant public will immediately recognise the word ‘SUPER’ in the earlier mark. This term is readily identifiable in the initial part of the mark even though there is no graphical separation that would single it out. It is also noted that the term ‘SUPER’ is so extensively used in marketing language that the relevant public throughout the pertinent territory understands its meaning as referring to ‘high grade of quality’ (09/12/2009, T‑486/08, Superskin, EU:T:2009:487, § 33). The word ‘SUPER’ is descriptive in relation to the quality of the services at issue, and at the same time it is both laudatory and commonplace in the course of trade. It follows that the element ‘SUPER’ of the earlier mark is devoid of any distinctive character.

For part of the relevant public, the letters forming the remaining part of the earlier mark, ‘FLASH’, are a meaningful word too. As mentioned above, the same word is present in the contested sign.

In some of the relevant languages, the word ‘FLASH’ refers to a lighting device of camera equipment used when a photograph is taken in a dark place, known either because it is in the dictionary or because a very similar word exists in the dictionary or because the English word is commonly used. This is the case, for instance, for the Slovak and Polish-speaking public. In addition, it cannot be excluded that, among the professional public in these language areas, this word could be associated with some kinds of data storage devices, such as ‘flash memory’, ‘flash drives’ which would affect the distinctiveness of this element for part of the relevant goods and services, insofar as they are stored on, or provided by the means of, such a memory device.

In other languages, such as Italian, French and Spanish, the word ‘FLASH’ also has other meanings. It can refer, inter alia, to a brief sequence of news in French (nouvelles flash) and Italian (notizie flash) or to a discount or promotion offered for a short period of time in French (vente flash), and it has a wide variety of different meanings in English such as ‘a sudden occurrence or display; a very brief space of time; etc.’. The Cancellation Division accepts the EUTM proprietor’s argument that, for this part of the public, the word ‘FLASH’ would be allusive in relation to the services of the earlier mark as it could relate or refer to something quick/brief.

However, for another part of the relevant public in the European Union where the general public is not widely exposed to English or other foreign languages, such as the public at large in the Slavic and Baltic language areas (e.g. Czech Republic, Bulgaria, Lithuania and Latvia), the word ‘FLASH’ is meaningless and, therefore, distinctive for all of the relevant goods and services.

It is admittedly true that the characteristics of the market to which the relevant goods and/or services pertain may facilitate the understanding of foreign terms. In the present case, the relevant goods and services belong to the information technology and telecommunications sector. Nevertheless, this does not mean that the average consumer of the public at large in the abovementioned language areas can be safely assumed to be familiar with the meaning of the word ‘FLASH’. It has to be borne in mind that, besides business customers which can be expected to have good command of English as a foreign language especially in the field of information technology and telecommunications, the goods and services at issue here also target the public at large. Nor did the EUTM proprietor put forward a convincing line of arguments and evidence in this respect.

The EUTM proprietor argues that there are other trade mark registrations containing the word ‘FLASH’. However, its arguments are mainly focused to financial services in Class 36. In contrast, the earlier mark at issue in the present assessment covers telecommunications services in Class 38. For the sake of completeness, it is noted that some of the third-party trade mark registrations referred to by the EUTM proprietor are also registered for services in Class 38. In any event, 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, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Consequently, the evidence does not demonstrate that the relevant public under analysis here has been exposed to widespread use of, and has become accustomed to, trade marks which include the element ‘FLASH’. Under these circumstances, the EUTM proprietor’s claims must be set aside.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

In view of the above considerations, the comparison of signs will proceed in relation to the part of the relevant public for which the common element between the signs, ‘FLASH’, is meaningless and distinctive to an average degree, in order to consider the perception of consumers in part of the European Union which is more prone to confusion, such as the public at large in the Slavic and Baltic language areas (e.g. Czech Republic, Bulgaria, Lithuania and Latvia).

Turning to the contested sign, the Cancellation Division agrees with the EUTM proprietor that the second element of the contested sign is distinctive. The letters ‘LKXA’ form a fanciful, invented term for the relevant public under analysis. Also the colourful figurative element is arbitrary and thus distinctive in relation to the goods and services at issue. However, the black elongated shape of the contested sign is a mere carrier of the other elements and has no distinctive character in itself.

Neither of the signs has an element that can be clearly considered dominant (visually more outstanding). This is because the earlier mark is a word mark which cannot have a dominant element by definition. With respect to the contested sign, it is noted that whilst it comprises several elements, none of them is visually more important than the others. On the one hand, the relatively fine letters of the element ‘FLASH’ are counteracted by the fact that this element occupies a large proportion of the sign. On the other hand, the smaller size of the second component is counteracted by the fact that it is depicted in intense and contrasting colours.

 

Visually, the signs coincide in that they share the letters ‘FLASH’, albeit depicted in a stylised manner in the contested sign. The common element, ‘FLASH’, is readily perceptible in the earlier mark on account of the fact that the mark’s first element, ‘SUPER’, will be immediately recognised. Moreover, since the differentiating element in the earlier mark, ‘SUPER’, lacks distinctiveness, this difference has a low impact on the comparison.

Notwithstanding the normal degree of distinctiveness of the differentiating component featuring the colourful figurative element and the letters ‘LKXA’ in the contested sign, the Cancellation Division finds that the signs are visually similar at least to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the language areas under analysis, the pronunciation of the signs coincides in the sound of the letters ‛FLASH’, present identically in both signs. The pronunciation of the earlier mark differs in the sound of the non-distinctive word ‘SUPER’. The pronunciation of the contested sign differs in the sounds of the letters ‘LKXA’, admittedly distinctive and resulting in a relevant aural difference between the signs, since these letters are likely to be sounded out one by one. Nevertheless, considering that the shared element is distinctive for the public under analysis, the signs are considered to be similar aurally at least to a low degree.

Conceptually, the signs as a whole do not have any clear meaning for the public under analysis. Since it can be reasonably assumed that no specific semantic content will be attached to the differentiating component featuring the colourful figurative element and the letters ‘LKXA’ in the contested sign, the conceptual comparison of the signs is reduced to a common element that is meaningless and that is characterised as having a high grade of quality in the earlier mark, a concept embedded in the non-distinctive element, ‘SUPER’. Therefore, whilst the signs are conceptually not similar, the impact of this aspect should not be overrated.

 

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) Distinctiveness of the earlier mark

 

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

 

The applicant did not explicitly claim that the earlier mark, ‘SUPERFLASH’, is particularly distinctive by virtue of intensive use or reputation.

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for the services at issue from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion 

Part of the contested goods and services are identical or similar to the services of earlier European Union trade mark registration No 9 617 887 ‘SUPERFLASH’. These goods and services are directed at the public at large and business customers whose degree of attention in relation to the purchases in question varies from average to above average.

The comparison of signs is focused on part of the public in the European Union which is more prone to confusion, such as the public at large in the Slavic and Baltic language areas (e.g. Czech Republic, Bulgaria, Lithuania and Latvia), as detailed in section c) in this decision. For the public under analysis, the signs display at least a low degree of similarity on the visual and aural levels. From the conceptual perspective, the signs are not similar, although the impact that this aspect has on the present assessment is limited.

The somewhat remote similarity between the signs on the visual and aural levels, and the at-least-average degree of attention of the relevant public must be viewed in conjunction with other factors that are relevant for the global assessment of likelihood of confusion. Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, it must be emphasised that the inherent degree of distinctiveness of the earlier mark is average for the public under analysis and this affords it a normal scope of protection.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Here, the public under analysis is likely to mentally register the fact that the signs share the element ‘FLASH’, distinctive for the goods and services. Although there are differentiating elements in each of the signs, they are incapable of putting sufficient distance between the trade marks in the context of identical or similar goods and services, and the public under analysis may think that the contested sign is a sub-brand of the earlier mark, configured in a different way to denote a new product/service line, or vice versa.

 

In its observations, the EUTM proprietor argues that there are many trade marks that include the element ‘FLASH’ and that the earlier marks have peacefully co-existed therewith. In support of its argument the EUTM proprietor refers to several trade mark registrations in the European Union.

According to case-law,

 

… the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the [Cancellation] Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the [proprietor of] the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical.

(11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86)

Formal coexistence of certain marks in national or Union registries is not per se particularly relevant. It also needs to be proven that the marks coexist in the market, which could indicate that consumers are used to seeing the marks without confusing them. Last but not least, the Office will in principle be restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Cancellation Division consider evidence of the coexistence of other marks in the market (and possibly in a Register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the applicant’s mark which might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, for example, different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the EUTM proprietor must be rejected as unfounded.

 

Conclusion

 

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public in the European Union that perceives the common element between the signs, ‘FLASH’, as distinctive, such as the public at large in the Slavic and Baltic language areas (e.g. Czech Republic, Bulgaria, Lithuania and Latvia).

Therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration No 9 617 887 ‘SUPERFLASH’. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

 

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to those of the earlier trade mark.  

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the application based on this Article and directed against these goods and services cannot be successful.

In relation to the remaining contested goods and services, the applicant’s argument that the earlier trade marks, all characterised by the same verbal component, ‘FLASH’, constitute a ‘family of marks’ or ‘marks in a series’ still needs to be addressed. In the applicant’s view, this is likely to give rise to a likelihood of confusion insofar as consumers, when encountering the contested mark which contains the same verbal component as the earlier marks, will be likely to believe that the goods and services identified by that mark also come from the applicant.

The concept of the family of marks was exhaustively analysed by the Court in the Bainbridge case (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65). 

 

When an invalidity application is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may arise because of the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

 

Firstly, the proprietor of a series of earlier registrations must submit proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

 

In the present case, the applicant failed to prove that it uses a family of ‘FLASH’ marks, or, moreover, that it uses this family in the same fields as those covered by the contested trade mark.

The evidence submitted by the applicant, as seen above, shows some use of marks comprised of, or containing, the element ‘FLASH’. Nevertheless, since the applicant failed to prove genuine use of earlier European Union trade mark registrations No 4 324 877 ‘FLASH’ and No 9 293 093 ‘FLASH PEOPLE’, these rights cannot constitute a valid basis for the invalidity application.

Under these circumstances, the applicant’s claims regarding the family of marks must be dismissed.

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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

 

Oana-Alina STURZA

Solveiga BIEZA

Andrea VALISA

 

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.