CANCELLATION No 11 053 C (INVALIDITY)

New Balance Athletics, Inc., 100 Guest Street, 02135 Boston, Massachusetts, United States of America (applicant), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Sonu Gangaram Balani Balani, Anup Suresh Balani Balani and Amrit Suresh Balani Balani, Albareda 32, 35008 Las Palmas de Gran Canaria, Spain (EUTM proprietors), represented by Rafael Ortega Pérez, Diego A. Montaude, 7, 1º Of 11, 35001 Las Palmas de Gran Canaria, Spain (professional representative).

On 26/04/2017, the Cancellation Division takes the following

DECISION

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

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

REASONS

On 22/06/2015 the applicant filed an application for a declaration of invalidity against European Union trade mark No 13 200 803 (‘the contested eutm’), filed on 26/08/2014 and registered on 06/01/2015, for the figurative sign hereunder:

The request is directed against some of the goods covered by the contested EUTM, namely:

Class 9: Measuring, detecting and monitoring instruments, indicators and controllers.

Class 14: Jewellery; gemstones, pearls and precious metals, and imitations thereof.

The application is based on European Union trade mark registration No 2 231 413 ‘NEW BALANCE’ (word mark) (‘the earlier EUTM’), filed on 18/05/2001 and registered on 23/07/2002 for watches in Class 14. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

On 22/06/2015, the applicant filed a request for a declaration of invalidity against the contested EUTM on the basis of relative grounds. In essence, the applicant argued that the conflicting signs are confusingly similar to the extent that the most distinctive element of contested EUTM is identical to the earlier mark. The applicant further stated that the contested goods in Class 9 - namely, measuring, detecting and monitoring instruments, indicators and controllers - and the EUTM proprietor’s watches share the same purpose and nature and, in addition, they can be regarded as competing goods. Moreover, the earlier watches display similarities with the contested jewellery, gemstones and pearls (including imitations thereof) as they all target the same public and are goods which are likely to be sold in the same sales establishments. Thus, the applicant concluded that, based on the similarity of the signs and the goods at issue, there is a likelihood of confusion.

On 02/10/2015, the EUTM proprietors requested the applicant to submit proof of use of the earlier EUTM. They also contested the claimed similarity between the marks and goods in conflict.

On 12/01/2016, the applicant submitted its reply to the EUTM proprietors’ observations reiterating its previous arguments on the likelihood of confusion between the marks.

As the EUTM proprietors did not file any observation in response, on 15/04/2016 the parties were informed that the adversarial part of the proceedings was closed and that a decision would have been taken in due course.

On 18/07/2016, the parties were informed that a further examination of the file showed that the Office did not expressively invite nor inform the applicant to submit proof of use of the earlier mark in accordance with Article 57(2) and (3) EUTMR. Thus, as requested by the EUTM proprietors on 02/10/2015, the applicant was invited to submit proof of use of the earlier EUTM No 2 231 413 for all the goods on which the application for invalidity has been based.

On 19/10/2016, following a request of the applicant, the Office granted an extension of the time limit to submit proof of use, namely until 18/12/2016.

The applicant did not file any proof of use of the earlier EUTM within the time limit set out by of the Office.

PROOF OF USE

According to Article 57(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall 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 publication 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 42(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 shall be rejected.

On 02/10/2015, the EUTM proprietors requested the applicant to submit proof of use of the trade mark on which the application is based, namely European Union trade mark No 2 231 413.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

On 18/07/2016, the applicant was given three months to submit proof of use. On 13/10/2016, the applicant requested an extension of the time limit. The Office granted the applicant a two-month extension to furnish proof of use.

Nonetheless, the applicant has submitted no evidence concerning use of the earlier trade mark on which the application for invalidity is based. Nor has it argued that there are proper reasons for non-use.

According to Rule 40(6) EUTMIR, if the applicant does not submit such proof before the time limit expires, the Office shall reject the application.

Therefore, the application must be rejected pursuant to Article 57(2) EUTMR.

COSTS

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

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

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

The Cancellation Division

Andrea VALISA

Pierluigi M. VILLANI

José Antonio GARRIDO OTAOLA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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