CANCELLATION No 13 606 C (INVALIDITY)

Hillyer Group, LLC, 2275 West County Line Road, Suite 248, Jackson, New Jersey 08527, United States of America (applicant), represented by Fieldfisher LLP, Riverbank House, 2 Swan Lane, London EC4R 3TT, United Kingdom (professional representative)

a g a i n s t

Swissmobility Brand International Ltd., Quastisky Building P.O. Box 4389, Road Town

Tortola, British Virgin Islands (EUTM proprietor), represented by Maucher Jenkins, Urachstr. 23, 79102 Freiburg im Breisgau, Germany (professional representative).

On 28/09/2018, the Cancellation Division takes the following

DECISION

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

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 13 354 601 for the figurative sign shown below:

namely, against all of the goods in Classes 8, 9, 14, 28, 22 and 25. The application is based on non-registered trade marks used in the course of trade in the United Kingdom, Denmark, Spain and France ‘SWISS MOBILITY’ (word mark) for the following goods:

Electronic device carrying cases and holders for computers, cameras, personal digital assistants, music players, earphones, and telephones; camera cases; camera cases adapted or shaped to contain a camera; carrying cases for portable electronic devices; cases adapted for computers; cases adapted for personal mobile music players; cases adapted for electronic equipment; cases adapted for mobile phones; cases adapted for photographic equipment; laptop carrying cases; holders adapted for mobile phones; holders for electrical components, namely holders for cell phones, holders for mobile phones, electronic tablets holders, holders for electric coils, electronic cables holders; bags adapted for carrying photographic apparatus power devices and other charging accessories, namely chargers, USB chargers, battery chargers, wireless chargers, car chargers, USB cables, chargers for smartphones, chargers for mobile phones and for electronic devices, namely mobile phones, smartphones, electronic memory devices, electronic imaging devices used by consumers, in Class 9.

Trunks and travelling bags; luggage, backpacks, briefcases, purses, shoulder bags; carrying cases; travelling cases; train cases; portfolio cases; overnight cases; note cases being briefcases; all-purpose sport bags; bags made of plastics materials; casual bags; game bags; gym bags; hand bags; luggage bags; portable bags being luggage; school bags; shoulder bags; small bags for men; work bags; articles of luggage; luggage bags; travel luggage; small backpacks; baby backpacks; schoolchildren’s backpacks; folding briefcases; saddle bags adapted for use with briefcases; portfolio cases [briefcases], in Class 18.

The applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that it was the owner of an earlier EUTM but that it was mistakenly allowed to be cancelled in 2016. It acknowledges that it cannot rely on this cancelled EUTM but it argues that this does show that the applicant has been using the brand since August 2008 at the very latest. The applicant states that it is the owner of two international registrations with designations to the EU which have been opposed by the EUTM proprietor on the basis of the contested EUTM in the present case and that is the reason for bringing the present application. The applicant puts forward that its predecessors in title sold products under the applicant’s rights, which were primarily phone and laptop cases but more recently mobile phone accessories such as battery packs and charging cables, and that this use began in 2007. The applicant states that the sales made were to its distributors and retailers. In the witness statement it provides figures for the years 2007 to 2012 for total sales in USD as it states that it is a US based company, but that all sales were in fact made in EUR or GBP but were converted to USD for its own records, but that it could not provide complete records of sales by its predecessor in title. The applicant states that the gap in wholesales in 2011 and 2012 was because Interasian ceased producing SWISS MOBILITY products in 2010 before selling the brand to the present applicant Hillyer. It contends that use of the earlier right was made in the EU prior to the filing of the contested sign and submits evidence in this regard and claims it is sufficient to prove use in the course of trade prior to the filing of the contested sign. Moreover, it argues that the use is of more than mere local significance as the sales of goods has been made since 2007 to distributors with a retail presence throughout Europe or to multiple distributors across the territories of the EU. The applicant summarises the relevant law of passing off in the United Kingdom and cites examples of case law in which this concept was expounded on. The applicant argues that the evidence submitted shows that it possesses goodwill which meets the first criteria of the classical trinity. It argues that the consumers of the applicant’s goods, when faced with the goods of the EUTM proprietor will believe that they come from the applicant as the differences between the signs are so minimal and that therefore, the use of the contested goods would lead to a clear misrepresentation to consumers who would believe that these goods came from the applicant. The applicant argues that the goods in conflict are either identical or similar or complementary or the same companies produce the goods. The applicant puts forward that it will suffer damage due to the consumers confusing the origin of the goods and not being able to distinguish the goods of both parties. Therefore, the applicant argues that the conditions for a successful action under the law of passing off have been established and that the application must be upheld in full and the contested EUTM invalidated in its entirety.

In support of its observations, the applicant filed the evidence to prove the scope and existence of its earlier non-registered trade marks on which the application is based, which will be listed in detail below in the following section of the present decision.

The EUTM proprietor argues that the applicant did not substantiate its earlier rights. The EUTM proprietor puts forward that a third party (Cellective/Interasian) had stopped production and sales of certain products (computer cases), that this same third party abandoned all trade marks with the logo which was perhaps used to market those products in the past in the US only. It argues that none of the evidence whatsoever proves that sales also occurred in the UK, and moreover, it claims that there is no evidence at all for Denmark, Spain or France in the past. The EUTM proprietor further argues that the applicant was not involved in the sale or promotion of any goods in the past. The EUTM proprietor comments on the applicant’s argument that another company (Smart IT) started to offer new products (external battery packs for mobile phones) in 2013/2014 using a new logo that the sales figures are very low for the time prior to the filing of the EUTM on 13/10/2014 and the evidence submitted is not relevant to substantiate the claimed figures. The EUTM proprietor claims that not a single product was sold in the UK, Denmark, Spain or France, and even if they were, the applicant was not involved in these sales. The EUTM proprietor puts forward that the only apparent involvement of the applicant is that the applicant claims to have paid some money in 2011 to clear the rights concerning the marks, at the time unused sign ‘swiss mobility’. However, the EUTM proprietor argues that none of the former rights were upheld until the present date in the EU, and that this invalidity application is the applicant’s last attempt to salvage a mark that has never been used. The EUTM proprietor contests the applicant’s contention that any insignificant trade, which is not even supported by solid evidence, would be sufficient to annihilate an EUTM. The EUTM proprietor argues that there is not one single piece of evidence to substantiate any sales in the relevant territories or in relation to the claimed goods of the non-registered trade marks, or any sales figures broken down by territory or good. Moreover, it contests the trustworthiness of the world wide sales figures given as they were provided by the applicant’s CEO from its own recollection about sales in 2007 and that CEO is involved in more than 60 different companies and submits evidence to back this up. Moreover, the EUTM proprietor also contests the retail figures as Interasian was not involved in retailing, but only in wholesaling and it appears that Mr Margaritis estimated these figures by doubling the wholesaling figures. The EUTM proprietor makes arguments to refute all of the evidence and claims that there is no concrete evidence that any goods were sold in the relevant territory. The EUTM proprietor contests the probative value of the witness statement as it comes from the interested party itself and denies that the applicant has any goodwill in the sign or that any misrepresentation could occur with the contested EUTM. The EUTM proprietor denies that the signs and goods in conflict are identical or similar, or that even the goods for which the earlier right has been used have even been proven in the relevant territory. Moreover, it denies that no damage to the applicant could occur as it has never sold any products under the sign and the sign itself has changed over the years, as has the company using it, although it denies that any use was made in the EU. It points out that the company Smart IT has only licensed the products in 2015 which was after the filing of the EUTM but that the applicant has not even proved this. The EUTM proprietor contests the purchase order as it is not signed, and points out that one of the invoices is dated outside the relevant time period, another involves two parties (one buying and one selling) that are not involved in the proceedings or identified and others do not show a shipping date and as such it contests that they were shipped before the filing date of the EUTM. It further contests that these goods were actually sold to the UK, Danish, Spanish or French markets, and no sales are shown for 2013, 2015 or 2016. The EUTM proprietor denies the existence of the unregistered trade marks claimed by the applicant and requests that the application be rejected in its entirety.

The applicant contests the EUTM proprietor’s arguments and repeats and confirms its previous arguments. The applicant states that the rights to the non-registered trade marks were passed from the original owners to it and that the use of the signs for the goods has been continuous and that it owns valid rights to the signs and for the goods claimed. The applicant claims that it has sold the goods in the EU and that Smart IT is the licensee who sells the goods branded under the earlier right in the EU and it submits a copy of the lease agreement dated 03/07/2013. The applicant also submitted a document to prove how the earlier, now cancelled, EUTM was cancelled mistakenly. It contests all of the arguments put forward by the EUTM proprietor and insists that it has used its rights and that it is the EUTM proprietor that is trying to piggyback of the applicant’s rights. The applicant points out that it has provided evidence to show sales in the UK. The applicant states that it does not have detailed records of sales made by its two predecessors as these companies have ceased to exist but that the evidence submitted showed that they were actively promoting and selling the SWISS MOBILITY goods from 2006. The applicant claims that there was due diligence in the preparation of the witness statement and that the finances and sales figures were reviewed carefully and that it should be taken into consideration. The applicant further argues that, in any respect, the goods branded under the second generation sign SWISS MOBILITY were being sold before the filing date of the EUTM and therefore, the applicant has a valid earlier right and the evidence is sufficient to prove this. The applicant insists that it has used its earlier rights in the course of trade or more than mere local significance and that it has the right to prohibit the use of the contested EUTM and contests all of the arguments of the EUTM proprietor in this regard, while confirming the applicant’s own previous arguments.

The EUTM proprietor confirms and repeats its previous arguments. It contests the additional evidence submitted by the applicant and insists that the applicant has failed to establish that it owns an earlier right that can prohibit the use of the contested EUTM.

Preliminary remarks

Relevance of the statutory declaration

The applicant submitted a witness statement. As far as witness statements and other documents having a similar effect which emanate from the applicant are concerned, Rule 22(4) EUTMIR (the version in force at the time of filing of the application and applicable mutatis mutandis to cancellation proceedings by virtue of Rule 40(5) EUTMIR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

The prior EUTM and other rights of the applicant

The applicant argues that it was the owner of an earlier EUTM but that it was mistakenly allowed to be cancelled in 2016. It acknowledges that it cannot rely on this cancelled EUTM but it argues that this does show that the applicant has been using the brand since August 2008 at the very latest. The applicant states that it is the owner of two international registrations with designations to the EU which have been opposed by the EUTM proprietor on the basis of the contested EUTM in the present case and that is the reason for bringing the present application.

The fact that the owner held or still holds other rights to the sign is not relevant for the present proceedings, as the Cancellation Division can only take into consideration the rights relied upon, which in the present case are non-registered trade marks. Moreover, the fact that an EUTM or international registration with a designation to the EU exists does not prove that the unregistered rights have actually been used in the course of trade. Therefore, the registration of said marks cannot be viewed as evidence of any real use in the course of trade without concrete evidence to back up this assertion. As such, this argument is rejected.

NON REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE (Article 60(1)(c) EUTMR IN CONJUNCTION WITH ARTICLE 8(4) EUTMR)

Under Article 60(1)(c) EUTMR, an application for a declaration of invalidity of a European Union trade mark shall be met where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the applicant acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

In addition, it should be taken into account that in cancellation proceedings the applicant also has to prove that the sign was used in the course of trade of more than local significance at another point in time, namely at the time of filing of the invalidity request. Such condition stems from the wording of Article 60(1)(c) EUTMR which states that a European trade mark shall be declared invalid ‘where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled’ (see decision of the Cancellation Division of 05/10/2004, No. 606 C ‘ANKER’, and 03/08/2011, R 1822/2010-2, Baby Bambolina (fig.), § 15). Once proved, this requirement is considered still to be fulfilled at the time the decision on invalidity is taken unless there is evidence to the contrary (e.g. a company name is invoked but the company has ceased to exist).

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the application for invalidity based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing either the registration or the validity of a European Union trade mark.

The applicant invoked Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR on the basis of a non-registered trade marks ‘SWISS MOBILITY’ (word mark) used within the course of trade in the United Kingdom, France, Spain and Denmark.

In the present case, the contested trade mark was filed on 13/10/2014. Therefore, the applicant was required to prove that the signs on which the invalidity application is based were used in the course of trade of more than local significance in the United Kingdom, France, Spain and Denmark before 13/10/2014 and until the time of filing of the invalidity request 31/08/2016.

The evidence consists of the following:

• Annex A: A printout from the EUIPO eSearch Database concerning cancelled EUTM 7 150 162.

• Annex B-E: Printouts from the Internet, extracted on 18/08/2016, concerning products produced by Stanley Black & Decker Inc., Apple Inc., The North Face Inc., and Quicksilver Inc.

• Witness Statement of John Margaritis, Chief Executive Office and co-owner of the applicant dated 15/08/2016 in which he provides inter alia, the history of the brand and speaks of the first generation ‘SWISS MOBILITY sign’, namely used by its predecessors in business and the ‘second generation SWISS MOBILITY sign’, namely, used by the applicant and its licensee’ and that the use of these figurative signs is claimed to prove use for the non registered word marks claimed as a basis of the present application.

• Exhibit JM1: Selection of emails between the development staff at Cellective discussing the development of the SWISS MOBILITY brand dated between March 2007 and January 2008.

• Exhibit JM2: A representation of the original SWISS MOBILITY logo.

• Exhibit JM3: Images of the original line of SWISS MOBILITY products bearing the original logo which it claims were sold between 2006 and 2010.

• Exhibit JM4: Copy of the Spring 2007 SWISS MOBILITY catalogue which it states was used in Europe.

• Exhibit JM5: Printouts from the USPTO concerning prior US marks owned by the applicant which were registered in 2006 and 2008.

• Exhibit JM6: Printouts from eSearch Online concerning the prior EUTM which has not been cancelled, but which was applied for in 2008.

• Exhibit JM7: A copy of the purchase agreement of the company Interaisan which had previously bought the company Cellective (the predecessors of the applicant) by the present applicant Hillyer dated 30/09/2011.

• Exhibit JM8: A copy of the ‘second Generation SWISS MOBILITY mark’ which was developed by the applicant.

• JM9-JM10: Copies of the two international registrations for the second generation sign of SWISS MOBILITY with designations to the EU filed in 2015 and copies of further EUTM applications for a number of different SWISS MOBILITY marks.

• JM11: Printouts from www.fommy.co.uk and www.bonanzamarket.co.uk which it claims shows goods which bear the original SWISS MOBILITY logo and have not been produced since June 2010 but which are still available on these websites.

• JM12: Images of SWISS MOBILITY product being promoted and offered for sale by Smart IT.

• JM13-JM14: Copies of emails dated between 21/08/2013 and 11/08/2014 which show the development of the revamped SWISS MOBILITY brand between the applicant and Smart IT, as well as the first design guidebook for the second generation SWISS MOBILITY mark which it states was produced together with Smart IT in late 2012 or early 2013.

• JM15: Purchase order from Cellective (predecessor of the applicant) to Aegis Vision Ltd in the UK who were their first distributors in the EU for the sale of SWISS MOBILITY cases, specifically, the Sentinel universal vertical case.

• JM16: Copies of 2 invoices billed by Pacific Design Works LLC with an address in the US to the company Ascendeo Iberia S.L., with an address in Spain for Swiss Mobility Power Packs, the invoice dated 06/06/2014 is for the amount of 8,325.60 USD and the invoice dated 11/07/2014 is for the amount of 4,889.60 USD.

• JM17: Copies of 4 invoices billed by Pacific Design Works LLC with an address in the US to the company Bigben Interactive (H.K.) Ltd, with an address in Hong Kong (and in some cases the goods are to be shipped to France while in other cases to Hong Kong) for Swiss Mobility Power Packs, the invoice dated 02/05/2014 which was to be shipped to France is a sample which was not billed for (0.00). The invoice dated 23/06/2014 which is to be shipped to Hong Kong and is for the amount of 4,095.42 USD. The invoice dated 29/08/2014 is again to be shipped to Hong Kong and is for the amount of 6,885.60 USD. The invoice dated 31/10/2014 is also shipped to Hong Kong and is for the amount of 6,885.60 USD.

• JM18: 4 invoices billed by Pacific Design Works, LLC to Data Select Limited with an address in the United Kingdom for Swiss Mobility power packs. The invoice dated 18/04/2014 is for the amount of 7,275.30 USD. The invoice dated 07/05/2014 is for 2,315.28 USD. The invoice 06/05/2014 is for 200.79 USD and the invoice dated 24/11/2014 is for 6,260.40 USD.

• JM19: 6 invoices billed by Pacific Design Works, LLC to Eiikon ApS with an address in Denmark for Swiss Mobility power packs. The invoice dated 31/03/2014 is for the amount 4,116.00 USD. The invoice dated 24/06/2014 is for 3,792.80 USD. The invoice dated 18/06/2014 is for 3,521.60 USD. The invoice dated 15/08/2014 is for 2,877.60 USD. The invoice dated 29/08/2014 is for 3,617.60 USD and the invoice dated 29/10/2014 is for 2,184.00 USD.

• JM20: A brochure bearing the sign regarding power pack goods which is undated.

• JM21: Pictures of goods being displayed for sale with the signs and over the goods. There is an indication that the goods are being shown at the International CES in Las Vegas, Nevada, United States of America from 07-10/01/2014 and there is also information about the products which are power packs.

• JM22: printouts from the internet, such as from www.prnewswire.com with a date of extraction of 19/08/2016 which states that Xentris announces that it will distribute Swiss Mobility Products and bears a date 05/10/2007. Also a printout from blog.treonauts.com containing a review of a Swiss Mobility Legion Organizer Case from 2008.

On 01/08/2017 the applicant submitted further evidence in response to observations by the EUTM proprietor.

However, the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. Therefore, the Cancellation Division will describe some of the pieces of evidence marked as confidential only in the most general terms without divulging any such data. The evidence consists of the following:

• Annex A: Copy of a trade mark license agreement dated 03/07/2013 between the applicant and Smart IT.

• Annex B: A letter explaining the reason for the mistaken cancelling of the applicant’s cancelled EUTM.

The invalidity application is based on non-registered trade marks ‘SWISS MOBILITY’ (word mark) used within the course of trade in the United Kingdom, Denmark, Spain and France.

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgments of 24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

It should be noted that the evidence relating to use should be analyzed as a whole rather than a piece by piece assessment and all the circumstances of the specific case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with other documentation and information. This is contrary to the rather piece by piece assessment as undertaken by the proprietor.

As far as the time of use of the sign is concerned, the applicant must prove that use took place before the filing of the EUTM application or the priority date if relevant (judgment of 29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 166-168). Moreover, it must be clear from the evidence that the use continues on the date of the filing of the invalidity application and afterwards. In this context, Rules 19(1) and 2(d) EUTMIR (the version in force at the time of filing of the invalidity application - now Articles 7(1) and 7(2) EUTMR) expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent shall provide evidence of its acquisition, continued existence and scope of protection of that right and this provision also applies to invalidity proceedings based on Article 8(4) EUTMR.

The evidence submitted by the applicant, on the whole, is very weak and it is questionable in general as to whether the applicant has indeed obtained a right to a non-registered trade mark in the UK, France, Spain or Denmark before the filing of the EUTM. Much of the evidence consists of undated brochures, or catalogues for which no distribution or circulation figures have been provided, or any proof of their distribution at all, emails about the creation and designs of trade marks but without much concrete proof of the goods bearing said trade marks being sufficiently sold to customers, and other types of secondary evidence or evidence relating to third party companies. The concrete evidence of actual sales of goods is minimal.

Moreover, it is noted that the applicant, in relation to the period between the filing of the EUTM (13/10/2014) and the filing of the application for invalidity (31/08/2016) did not submit much evidence at all to show the continued existence of the rights. In fact, in regards to the second period of time (between the filing date of the EUTM and the application for invalidity) the only evidence submitted was one invoice billed by Pacific Design Works LLC with an address in the US to the company Bigben Interactive (H.K.) Ltd, with an address in Hong Kong for battery packs for the amount of 6,885.60 USD, one invoice billed by Pacific Design Works, LLC to Data Select Limited with an address in the United Kingdom for Swiss Mobility power packs dated 24/11/2014 for 6,260.40 USD, and an invoice billed by Pacific Design Works, LLC with an address in the US to Eiikon ApS with an address in Denmark for Swiss Mobility power packs dated 29/10/2014 for 2,184.00 USD. The three invoices are dated more or less at the time of the filing of the EUTM on 13/10/2014 (or very close to that time) so it is not a clear indication that the use of the signs continued throughout the second period and up to the filing of the invalidity request or that it is still in use. Furthermore, only one invoice was billed for the second relevant period to one client each in Denmark and the UK for very small amounts, with the other invoice being billed to a company in Hong Kong and the goods being shipped to Hong Kong so it does not show use in the relevant territory. This evidence is insufficient to prove a continued existence or a sufficient scope of sales up to the filing of the invalidity request.

It would appear from the evidence as a whole that the original owners of the non-registered marks used the sign minimally for different types of bags from about 2007-2012, although no real proof of sales was submitted for these goods and as such the turnover figures provided cannot be backed up with independent evidence, and the present applicant has used the sign minimally in relation to battery packs from about 2012-2014. The use shown has mainly been by undated catalogues or brochures for which no distribution figures have been provided, overall turnover figures in USD without a real breakdown of the territories and the goods sold or secondary evidence to back up the figures provided, a small number of invoices for very low amounts for common everyday relatively inexpensive goods, and sales by a third party company in the US to one company in each territory with no further proof of sales. Moreover, the invoices, as mentioned, are billed to only one company in each territory and therefore, the use is merely local as it is confined to only one city in each territory. No further, or supplementary evidence, to show sales to different consumers, or end consumers, in different parts of the relevant territories has been provided or any real breakdown of the figures and the goods. One of the criteria for a successful action under Article 8(4) EUTMR is that the use of the non-registered mark is not merely local and therefore, the applicant has not proven this criterion.

Therefore, the evidence as a whole is insufficient, and particularly the evidence of the second time period is insufficient to show the continued scope and existence of the rights. Moreover, there is no real evidence whatsoever for the use of the marks ‘SWISS MOBILITY’ (word mark) on which the present application is based. Therefore, the Cancellation Division considers that the evidence, when viewed as a whole, is insufficient to prove that there was sufficient prior use in the course of trade that was of more than mere local significance.

For the sake of completeness, the Cancellation Division also notes that the applicant bases its application on earlier non-registered trade marks used in the course of trade in the United Kingdom, Denmark, France and Spain. However, the applicant has only put forward arguments in relation to the United Kingdom law of passing off and the requirements under the UK law. At no point did the applicant mention under which national law in Denmark, France and Spain that it intended to rely, nor did it submit any extracts from the law or case law in this respect. The applicant moreover, has not put forward any arguments on how the national laws should be applied, whether these laws have provisions for the protection of non-registered trade marks, and the scope of any such protection against subsequent marks under the relevant national laws in Denmark, France or Spain. Therefore, the applicant would also have failed to prove one of the conditions under Article 8(4) EUTMR, namely that, pursuant to the law governing it, prior to the filing of the contested trade mark, the applicant acquired rights to the sign on which the application is based, including the right to prohibit the use of a subsequent trade mark. However, this point is only mentioned for the sake of completeness as the application has already failed, as previously mentioned, as the evidence relating to the relevant territories of the UK, France, Spain and Denmark is insufficient to prove sufficient use or that the use of the sign was of more than mere local significance.

Conclusion

Consequently, the application, as based on the non-registered trade marks ‘SWISS MOBILITY’ (word marks), in the United Kingdom, France, Spain and Denmark, has to be rejected in its entirety.

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

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

The Cancellation Division

Oana-Alina STURZA

Nicole CLARKE

Irina SOTIROVA

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.