CANCELLATION No C 30 834 (INVALIDITY) 

 

Ego Pharmaceuticals Pty Ltd, 21-31 Malcolm Road, 3195 Braeside, Victoria, Australia (applicant), represented by Stevens Hewlett & Perkins, 1 St Augustine's Place, BS1 4UD Bristol, United Kingdom (professional representative)

 

a g a i n s t

 

Sunsense AS, c/o Åsulv Tønnesland, Rådyrvegen 16, 4737 Hornnes, Norway  (EUTM proprietor), represented by Arnesen IP Advokatfirma, Strandvejen 125, 2900 Hellerup, Denmark (professional representative).

On 24/08/2021, 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 14/12/2018, the applicant filed a request for a declaration of invalidity against European Union trade mark No 13 389 011 ‘SUNSENSE’ (word mark), (the contested EUTM). The request is directed against all the goods and services covered by the EUTM, namely all the registered goods and services in Classes 9, 14 and 35. The application is based on the following three earlier marks:

(1) European Union trade mark registration No 6 277 024 ‘SUNSENSE’ (word mark), (‘Earlier Mark 1’);

(2) European Union trade mark registration No 2 619 633 ‘SUNSENSE’ (word mark), (‘Earlier Mark 2’);

(3) UK trade mark registration No 1 361 592 ‘SUNSENSE’ (word mark), (‘Earlier Mark 3’).

The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and with Article 8(5) EUTMR.

 

A. SUMMARY OF THE PARTIES’ ARGUMENTS AND EVIDENCE

 

In the statement of grounds appended to the invalidity application, the applicant argues that there is a likelihood of confusion on the part of the public on account of the similarity of the goods and the identity of the signs. It further claims that the earlier marks enjoy an enhanced level of distinctiveness and reputation amongst the relevant consumers and that use without due of the contested EUTM would take unfair advantage of, or be detrimental to, their distinctive character. It puts forward that its goods are ‘rigorously tested and sold in a highly regulated environment’, whereas the proprietor’s goods are ‘largely unregulated and are not required to meet any internationally recognized standards in terms of accuracy or efficacy’. ‘The implications of wrongful association with a less effective or reliable complementary product are profound for both consumers and the applicant’s business alike’. The applicant concludes that the contested EUTM has to be invalidated in its entirety. The application was accompanied by printouts from https://euipo.europa.eu/eSearch detailing the particulars of the contested EUTM and of Earlier Marks 1 and 2 as well as by printouts from https://trademarks.ipo.gov.uk detailing the particulars of Earlier Mark 3.

 

The EUTM proprietor requests the applicant to provide proof of genuine use of the earlier marks. It argues that the applicant did not submit any evidence to prove the alleged enhanced distinctiveness and reputation of the earlier marks and therefore, the claim, as based on Article 8(5) EUTMR, should be rejected as unfounded. It further contends that there is no similarity, not even to a low degree, between the goods¹ and consequently the applicant’s claim as based on Article 8(1)(b) EUTMR should also be set aside. The proprietor made available evidence aimed at showing the adherence to regulations, strict quality control and high level standards pertaining to its products (Exhibits A to G, which will be listed and assessed by the Cancellation Division further down in the decision, only to the extent necessary and/or relevant for the outcome of the case).

The applicant submitted observations in reply and evidence to prove the genuine use and enhanced distinctiveness/reputation of the earlier marks. It maintains that there exists ‘a genuine likelihood of confusion’ between the marks and puts forward detailed arguments as regards the similarity of the goods (which will be detailed and analyzed further down, in section C. of the present decision). The applicant further contends that it has established its case under Article 8(5) EUTMR ‘by virtue of the enhanced level of distinctiveness its ‘SUNSENSE’ brand enjoys within the European Union and, most importantly, the potential for damage to its repute by virtue of the proprietor’s use of an identical mark’. The applicant requests for the invalidity application to be upheld and the contested EUTM to be invalidated in its entirety.

As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The evidence consists of the following documents²:

Annex 1: Witness Statement given by the Scientific and Operations Director of the applicant and providing information on the applicant’s company, the ‘SUNSENSE’ skincare brand, its launch in the European Union, the number of products sold globally and the turnover generated, the sales within the EU, the total international marketing and selling costs incurred by the applicant’s company, the research and development investments prior to and after the launch of the ‘SUNSENSE’ brand. The statement further details the contents of the accompanying exhibits which can be summarized as follows:

 Exhibit VMJ01: Internal document showing examples of ‘SUNSENSE’ ( ) branded skincare and sunscreen products (UVA&UVB broad spectrum lotion, lip balm, invisible tint finish, anti-ageing face and sport gel).

 Exhibit VMJ02: Examples of marketing materials promoting the ‘SUNSENSE’ products (sunscreens, sheer tint, lip balm, sport gel, toddler milk) in the UK during the period 2010-2016 and showing, inter alia, that ‘SunSense’ is ‘Australia’s No.1 sunscreen !’, ‘the No. 1 sunscreen brand in pharmacy’, ‘The UK’s most prescribed sunscreen’, ‘The UK’s No.1 prescribed sunscreen’ or ‘The UK’s Best LUVed Prescription Sunscreen’.

 Exhibit VMJ03: Internal documents containing a summary of global sales by volume and corresponding turnover for the company as a whole, of global sales of ‘SUNSENSE’ branded goods and of EU specific sales (given globally) between 1996 and 2019 (all amounts given in AUD). According to the Witness Statement, the EU sales relate to Cyprus, Malta and the UK.

 Exhibit VMJ04: Internal document containing a breakdown of the international marketing and selling costs (in AUD) between June 1991 and June 2018. According to the Witness Statement, ‘a significant proportion of these costs relate to the company’s flagship ‘SUNSENSE’ sunscreen brand’.

 Exhibit VMJ05: Extract from the applicant’s UK website (‘FAQ’ section), retrieved in September 2019, mentioning, inter alia, that ‘SunSense’ is ‘the UK’s No.1 prescribed sunscreen’ and providing information on the applicant’s UV wrist bands and how they work. According to the Witness Statement, the level of effectiveness of the applicant’s products is subject to their correct application and usage and, in addition to detailed instructions and directions contained on the ‘SUNSENSE’ sunscreen products, the applicant also markets promotional UV wrist bands to assist its EU users. It is further mentioned that said bands turn blue when exposed to heightened UV levels and act as a reminder to reapply sunscreen.

 Exhibit VMJ06: Schedule of the applicant’s worldwide trade mark registrations for ‘SUNSENSE’, including the earlier marks on which the application is based.

 Exhibit VMJ07: Screenshots from searches conducted in September 2019 via internet search engines (Google UK, Google Australia, Google China, Google Cyprus, Google Singapore, Google South Africa, Bing UK, Yahoo UK, Amazon UK, Amazon US) showing references to the applicant’s products. According to the Witness Statement, ‘it is highly unlikely’ that the proprietor of the contested EUTM was not aware of the applicant’s ‘SUNSENSE’ brand prior to the launch of its UV detection/measuring wrist bands and associated services and ‘adequate due diligence would have been availed the proprietor or their legal advisors of numerous references to the commercialization’ of the applicant’s ‘SUNSENSE’ brand and the supporting IP rights.

 Exhibit VMJ08: Screenshots of ‘SUNSENSE’ social media posts which have been ‘followed’ or ‘liked’ by Mr V.M., who is, according to the Witness Statement, the CEO/COO of the proprietor’s company. According to the Witness Statement, the evidence is aimed at showing that the EUTM proprietor has been previously aware of the applicant’s company. It is further mentioned that the activity of Mr V.M. ‘ceased and references were deleted in May 2018’, following a letter from the applicant.

 Exhibit VMJ09: Printouts from cancercouncilshop.au, sunsmart.com.au, gizmodo.com.au, laroche-posay.com.au, globalcosmeticsnews.com, loreal.com and wired.com concerning, inter alia, la Roche-Posay UV patch (a flexible, ultra-thin and connectable UV sensor designed to measure sun exposure and meant to be used in conjunction with the UV Patch app), a partnership between Garnier and Tesco to launch a sun safe UV patch or a clip-on sensor for tracking the exposure to UV rays (offered under L’Oréal’s skincare brand La Roche-Posay and designed in collaboration with Swiss industrial design Yves Behar). According to the Witness Statement the evidence is aimed at showing ‘partnerships between cosmetic/pharmaceutical manufacturers producing sunscreen protection products, including UV detection devices, serving the same function as the proprietor’s products.

Annex 1: Examples of UK promotional materials for the applicant’s products, pertaining to the period 2013 to 2018. The vast majority of the documents originate from the applicant’s authorized UK supplier, Crawford Healthcare Ltd. (and were already submitted as Exhibit VMJ02).

Annex 2: Digital and print media examples of the UK ‘SUNSENSE Sun Sensible’ campaign for the period 2013-2014 (part of which were already filed as Exhibit VMJ02).

Annex 3: Examples of historical screenshots of the websites sunsense.co.uk (including the online shop) and crawfordhealthcare.com, dated between 2014 and 2018. The evidence features ‘SUNSENSE’ ( ) branded goods and includes references to ‘SUNSENSE’ being ‘The UK’s No.1 prescribed sunscreen’.

Annex 4: Examples of historical screenshots showing the website of the applicant’s Cypriot supplier, Cazacor Trading Ltd, in April, June and August 2018 and featuring, inter alia, ‘SUNSENSE’ products.

Annex 5: Examples of invoices and bills of lading, dated between 2016 and 2018 and relating to, among others, ‘SUNSENSE’ product customer orders in Cyprus, Malta and the UK.

In its response, the EUTM proprietor maintains in essence that the invalidity application should be dismissed. It argues that the applicant failed to prove that its trade marks are reputed and reiterates that the goods are not similar and therefore there is no likelihood of confusion. Further arguments are put forward as regards the choice of the denomination ‘SUNSENSE’ and the proprietor’s good faith when applying for the registration of the contested EUTM. The proprietor submitted (as Exhibit A a) additional evidence, which will be listed and assessed further down in the decision, only to the extent necessary and/or relevant for the outcome of the case.

In their last exchange of observations, each of the parties advances arguments or reiterates previous ones to support its respective stance and/or to rebut the other party’s claims. The EUTM proprietor also filed some additional evidence (Exhibit I), which will be listed and assessed further down, if required for the outcome of the case.

Preliminary remark on Earlier Mark 3

The invalidity application is based on, inter alia, Earlier Mark 3, in relation to which the applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and with Article 8(5) EUTMR.

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and with Article 8(5) EUTMR worded in the present tense, must also be fulfilled at the time of decision taking. It follows that Earlier Mark 3 no longer constitutes a valid basis of the application for invalidity.

 

The application must therefore be rejected as far as it is based on this earlier right.

The examination of the invalidity application will therefore continue on the basis of Earlier Marks 1 and 2.

 

B. PROOF OF USE

 

Proof of use of Earlier Marks 1 and 2 was requested by the  EUTM proprietor. However, at this point, the Cancellation Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, § 72). The examination of the invalidity request will proceed as if genuine use of Earlier Marks 1 and 2 had been proven for all the goods invoked, which is the best light in which the applicant’s case can be considered and which is without prejudice to the EUTM proprietor, as it will be shown further down below, in sections C. and D. of the present decision.

 

C. 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

 

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other. 

 

The goods on which the application is based are the following: 

 

Earlier Mark 1

Class 3: Preparations for the care of skin; sunscreen, sunblock after-sun; preparations for protection of the skin; moisturisers, emollients and anti-aging preparations.

Earlier Mark 2

Class 5: Sunscreen and sunblock preparations, lotions, creams and gels; preparations for protection of the skin; all being medicated or for medical purposes.

The contested goods and services are the following: 

 

Class 9: Checking (supervision) and measuring apparatus and instruments; electronic sensors, including electronic sensors for measuring and checking of ultra-violet radiation dose and intensity; wearable electronic sensors for measuring and checking of ultra-violet radiation dose and intensity; data processing equipment, also in the form of devices for processing and visualising data received from aforesaid electronic sensors eg via sound, display or wireless connection to a mobile device; computer software for use in measuring and checking ultra-violet radiation dose and intensity.

Class 14: Jewellery, horological and chronometric instruments, all the aforesaid goods also containing a sensor for measuring and checking ultra-violet radiation.

Class 35: Advertising; business management; business administration; office functions; wholesale and retail services in relation to apparatus and instruments for checking (supervision) and measuring, electronic sensors, including electronic sensors for measuring and checking of ultra-violet radiation dose and intensity, wearable electronic sensors for measuring and checking of ultra-violet radiation dose and intensity; wholesale and retail services in relation to data processing equipment, also in the form of devices for processing and visualising data received from aforesaid electronic sensors eg via sound, display or wireless connection to a mobile device, computer software for use in measuring and checking ultra-violet radiation dose and intensity; wholesale and retail services in relation to jewellery, horological and chronometric instruments, and jewellery, horological and chronometric instruments containing a sensor for measuring and checking ultra-violet radiation.

As a preliminary remark, the Cancellation Division agrees with the applicant in that, according to Article 33(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 9

The applicant contends that, although the nature and method of use of the goods under comparison are different, they are nonetheless complementary ‘by virtue of a shared intended purpose, shared consumer, shared distribution channels and, as a result, a shared perception of origin (amongst consumers)’. It is further explained that the proprietor’s products are intended to highlight over exposure to potentially harmful UV radiation, whereas the applicant’s goods directly mitigate the harmful effects of UV exposure. Further references are made to the proprietor’s website where the respective products would be, according to the applicant, ‘linked’. The applicant inserts in its observations of 13/09/2019 screenshots of the proprietor’s website detailing the features of the ‘SunSense’ app and showing, inter alia, that ‘With SunSense you can plan your day outside and stay safe in the sun. Choose your skin type, age, which SPF’s your sunscreens have and set the clock to the time period you plan to be in the sun and SunSense will give you advices on how you can stay safe in the sun’. The applicant further argues that there is a convergence between everyday consumer products available in supermarkets, drug stores etc. and electronic devices and gives as an example in support of its claims, an intelligent fridge-freezer manufactured by the company Samsung which would perform functions such as keeping an inventory of the contents, reminding the user of items requiring replenishment etc. It further refers to the fact that the company L’Oréal is ‘actively engaged in the production of its own wearable UV sensor’. The applicant also refers to the UK-based chain of pharmacies Boots the Chemist as an example of the fact that it is common place to find ‘complimentary products offered under the same brand name in different areas of the store’. This would support, in the applicant’s view, the fact that there is confusion amongst customers, even if the goods are not offered in the same section of a shop.

The Cancellation Division cannot concur with the applicant.

It is recalled at the outset that the comparison of the goods and/or services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the invalidity application is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). As such, the applicant’s arguments on the actual use of the proprietor’s goods and the references to the latter’s website have no bearing on the comparison at hand, which will be carried out based on the wording indicated in the respective lists. The same is valid as regards the applicant’s references and evidence relating to the fact that it is offering promotional UV wrist bands ‘to assist its EU users’.

Turning to the goods under comparison, the applicant’s marks are registered for beauty care preparations intended to enhance or protect the appearance of the human body as well as for skincare/protection preparations with medical properties in Classes 3 and 5, respectively. On the other hand, the purpose of the contested goods in Class 9 is to measure, check, process or visualize data. Admittedly, the proprietor’s goods are, or include, goods (such as electronic sensors, wearable electronic sensors, computer software or data processing devices) which are used for measuring or checking ultra-violet radiation dose and intensity or for processing and/or visualizing data relating thereto. While to this extent there is, broadly speaking, a link to the field of sun protection, such a connection is too remote to allow for a conclusion that their purpose is the same as that of the applicant’s skin care/skin protection preparations for medical or cosmetic purposes.

Moreover and contrary to the applicant’s claims, the goods at issue are not complementary.

Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). The connection between the goods/services must be established with sufficient certainty. When the connection between the goods/services is not close enough for each to be indispensable (essential) or important (significant) for the use of the other, no complementarity can be found. Furthermore, when assessing whether or not the consumer would usually expect there to be a link between the goods/services, it is appropriate to take into account the economic reality on the market as it currently exists (16/01/2018, T-273/16, METAPORN / META4 et al., EU:T:2018:2, § 41-42).

In the present case, the proprietor’s goods are not indispensable for the use of the applicant’s ones or vice-versa. The mere fact that the proprietor’s devices for checking ultra-violet radiation dose may be worn in combination with the applicant’s sunscreen preparations does not render the goods complementary. Indeed, complementarity has to be clearly distinguished from use in combination where goods are merely used together, whether by choice or convenience, but can be used also without the other or with different goods (e.g. bread and butter). Where their use together is merely optional (as in the present case) and not indispensable or important, the necessary close link is missing (28/10/2015, T-736/14, MoMo Monsters / MONSTER et al., EU:T:2015:809, § 29).

In addition, the goods under comparison do not usually share the same commercial origin or distribution channels. The examples provided by the applicant with a view to proving that the goods at issue originate from the same manufacturers are not conclusive. It is true that an established trade custom, such as when manufacturers expand their businesses to adjacent markets, is of particular importance for concluding whether goods of a different nature have the same origin. However, in such situations, it is necessary to determine whether such expansion is common in the industry or, conversely, whether it may occur in exceptional cases only. The evidence made available by the applicant points to the conclusion that, even if some cosmetic companies have started to market wearable devices for tracking exposure to UV rays, this is however not the rule in the cosmetic/pharmaceutical industry and rather applies only to (economically) successful undertakings (L’Oréal, Garnier).

As regards the applicant’s argument on the distribution channels, the Cancellation Division points out that nowadays modern supermarkets, drugstores and department stores sell goods of all kinds and the relevant public is aware that the goods sold in these places come from a multitude of independent undertakings. Therefore, the point of sale is less decisive when deciding whether the relevant public considers that goods share a common origin merely because they are sold at the same outlet. It is only where the goods in question are offered in the same section of such shops, where homogeneous goods are sold together, that this will favour similarity.

Bearing in mind the foregoing considerations, it must be considered that the contested goods in Class 9 are dissimilar to the applicant’s goods in Classes 3 and 5.

Contested goods in Class 14

The contested EUTM is registered in this class for jewellery, horological and chronometric instruments, all the aforesaid goods also containing a sensor for measuring and checking ultra-violet radiation.

Along similar lines of reasoning to what has been stated above when comparing the contested goods in Class 9 with the applicant’s skin care/skin protection preparations for medical or cosmetic purposes, the goods at issue have a different nature, purpose and method of use and are neither complementary nor in competition. Furthermore, they do not originate from the same manufacturers and are distributed through different channels in trade. The mere fact that the contested goods in this class are directed at the public at large, just as the applicant’s goods are, is obviously not sufficient for a finding of similarity between them.

Therefore, the contested goods in Class 14 are also found to be dissimilar to the goods of the Earlier Marks 1 and 2.

Contested services in Class 35

The contested EUTM is registered in this class for business support services and retail/wholesale of specific goods. Contrary to the applicant’s claims, none of these services displays relevant connections with the goods of Earlier Marks 1 and 2.

The contested advertising consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that the applicant’s goods may appear in advertisements is insufficient to reach a finding of similarity. Therefore, the contested advertising is dissimilar to the goods of Earlier Marks 1 and 2.

The contested business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with the running of a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. The contested business administration services are meant to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s Board of Directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since these enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies. The contested office functions are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the operation of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information in computer databases, invoicing, and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. The nature, purpose and method of use of business management, business administration and office functions clearly differ from those of the applicant’s goods in Classes 3 and 5. Furthermore, they are neither complementary nor in competition and do not share the same commercial origins or distribution channels. Therefore, the contested services at issue are also found dissimilar to all of the applicant’s goods in Classes 3 and 5.

The same conclusion of dissimilarity must be reached as regards the contested retail and wholesale services of specific goods³.

Wholesale services refer to the business of selling of goods in large quantities and at low prices, whereas retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Apart from being different in nature from the applicant’s goods in Classes 3 and 5, since services are intangible whereas goods are tangible, they also serve different needs. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

 

Similarity between retail/wholesale services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail/wholesale services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since the goods sold at retail/wholesaled are dissimilar to the applicant’s goods, as it has been explained above when comparing the contested goods in Classes 9 and 14 to the applicant’s ones. Reference is made to those finding which are valid and applicable mutatis mutandis to the present comparison. In addition, the goods concerned are not sold in the same specialist shops, or the same sections of department stores or supermarkets. Admittedly, like most goods, they can now be found in large retail stores. However, in such outlets the goods at issue are sold in specialist departments which, even though they may be close, are nonetheless separate. In such circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51).

To conclude, all of the contested services in Class 35 are found dissimilar to the applicant’s goods covered by Earlier Marks 1 and 2.

 

b) Conclusion 

 

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

 

This finding would still be valid even if Earlier Marks 1 and 2 were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks the evidence submitted by the applicant in this respect does not alter the outcome reached above.

 

As stated in section B. above, the examination of the invalidity application proceeded on the assumption that the earlier marks have been genuinely used for all the goods in Classes 3 and 5. Given that the application is not well founded under Article 8(1) EUTMR in conjunction with Article 60(1)(a) EUTMR, there is no need to examine the evidence of use submitted by the applicant.

 

D. REPUTATION – ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

 

The applicant claimed that Earlier Marks 1 and 2 have a reputation in the European Union.

According to Article 60(1)(a) EUTMR, a European Union trade mark will be declared invalid on application to the Office where there is an earlier mark, as referred to in Article 8(2) EUTMR, and the conditions set out in Article 8(1) or (5) EUTMR are fulfilled.

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier registered trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which registration is sought are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds of refusal of Article 8(5) EUTMR are applicable in the context of invalidity proceedings only when the following conditions are met.

 

(a) The signs must be either identical or similar. 

 

(b) The earlier trade mark must have a reputation. The reputation must be prior to the filing of the contested trade mark and must still exist at the time of filing of the invalidity request; it must exist in the territory concerned and for the goods and/or services on which the application for a declaration of invalidity is based. 

 

(c) Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. 

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for declaration of invalidity under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

 

a) Reputation of Earlier Marks 1 and 2

 

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In invalidity proceedings, an invalidity applicant relying on reputation must prove that its earlier right has acquired reputation by the filing date of the contested EUTM, taking account, where appropriate, of any priority claimed (Article 60(1) EUTMR, second subparagraph).

 

In addition, the reputation of the earlier mark must still exist at the time when the decision on the invalidity request is taken, given that the conditions set out in the first subparagraph of Article 60(1) EUTMR are formulated in the present tense. Therefore, the applicant should also prove the reputation of the earlier mark at the time of filing of the invalidity request, in which case, and unless there is proof to the contrary, the Cancellation Division will assume that it continues to exist at the time when the decision on invalidity is taken.

 

The contested EUTM was filed on 21/10/2014. Therefore, the applicant was required to prove that Earlier Marks 1 and 2 had acquired a reputation in the European Union prior to that date and that it continued to exist at the time of filing of the invalidity request, that is, on 14/12/2018. The evidence must also prove that the reputation was acquired for the goods for which the applicant has claimed reputation (see list in Section C. a) above).

 

The application is directed against all the goods and services of the contested EUTM (see list in Section C. a) above).

 

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

 

The evidence filed by the applicant has been listed in section A. above.

Having evaluated all of the documents before it, the Cancellation Division agrees with the EUTM proprietor that the evidence is clearly insufficient to demonstrate that Earlier Marks 1 and 2 have acquired a reputation in the relevant territory, for the goods on which the application is based and for which the applicant claimed reputation.

As already stated above, reputation requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see to that effect, judgment of 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

Furthermore, it must be recalled that, as follows from Article 95(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the applicant. Exceptions to this rule apply where particular facts are so well-established that they can be considered as universally known and, thus, are also presumed to be known to the Office (e.g. the fact that a particular country has a certain number of consumers, or the fact that food products target the general public). However, whether or not a mark has passed the threshold of reputation established by the Court in General Motors (14/09/1999, C‑375/97, Chevy, EU:C:1999:408) is not in itself a pure question of fact, since it requires the legal evaluation of several factual indications, and, as such, the reputation of the earlier mark may not be simply assumed to be a universally known fact.

The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (emphasis added) (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SALSA (fig.) et al.).

It has to be noted from the outset that part of the evidence (such as Exhibit VMJ09) concerns other matters and as such bears no relevance to the assessment of the alleged reputation of the earlier marks.

The remaining documents consist essentially of a Witness Statement from the applicant’s Scientific and Operations Director, internal documents providing information on the applicant’s products, turnover, global sales, EU sales, international marketing and selling costs, a schedule of the applicant’s trade marks, results of internet searches, UK marketing/promotional materials, digital and print media examples for the UK, historical screenshots of the applicant’s UK website and of the websites of the applicant’s UK and Cypriot distributors as well as invoices and bills of lading pertaining to the UK, Cyprus and Malta.

It is noted at the outset that the applicant has submitted, inter alia, evidence relating to the United Kingdom (UK) with a view to demonstrating the reputation of Earlier Marks 1 and 2. However, it follows from Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, worded in the present tense, that the conditions for applying it must also be fulfilled at the time of taking the decision. As the UK is no longer a member of the EU, the evidence relating to its territory cannot be taken into account to prove the reputation of the earlier marks ‘in the EU’.

As for the remaining documents, admittedly the invoices/bills of lading relating to Malta and Cyprus (Annex 5) show some use of the ‘SUNSENSE’ marks in these territories. The applicant also made available some historical screenshots of the website of its Cypriot distributor featuring, inter alia, ‘SUNSENSE’ products (Annex 4). However, this evidence dates from 2016 to 2018 and thus pertains to a period after the filing date of the contested EUTM (21/10/2014). Moreover, reputation is a knowledge threshold requirement and the evidence on file essentially falls short of providing any indications on the extent of recognition of the marks by the relevant public. There is no consumer survey or other direct evidence as regards the knowledge of the marks among the public. Furthermore, the information on the scale of the promotional activities undertaken by the applicant (Exhibit VMJ04) is given globally and there is no additional evidence to support the latter’s assertions that ‘a significant proportion of these costs relate to the company’s flagship ‘SUNSENSE’ sunscreen brand’. More importantly, the document concerned originates from the applicant itself and it is thus endowed with less probative value than evidence from independent sources. The same is valid as regards the internal documents in Exhibit VMJ03.

Under these circumstances, it is considered that despite showing some use of the earlier marks in Cyprus and Malta, the evidence is essentially flawed in that it does not provide information that clearly shows the actual degree of recognition of the marks in the relevant territory in relation to the goods for which reputation was claimed prior to the filing date of the contested EUTM. In other words, the materials submitted do not serve to corroborate the applicant’s statements and support a conclusion that the earlier marks were known by a significant part of the relevant consumers for the goods concerned.

Therefore, in the absence of additional independent and objective evidence (for instance, opinion polls and market surveys) that could enable the Cancellation Division to draw solid conclusions about the degree of recognition of the earlier marks by the relevant public, the market share held by the marks, the position they occupy in the market in relation to competitors’ goods, the duration, extent and geographical area of their use or the extent to which they were promoted, it is concluded that the evidence does not demonstrate the degree of recognition of Earlier Marks 1 and 2 by the relevant public for the goods claimed. Under these circumstances, the Cancellation Division concludes that the applicant failed to prove that the earlier marks have a reputation.

 

b) Conclusion

As seen above, for the application to be successful under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, the earlier trade mark must have a reputation. Since it has not been established that Earlier Marks 1 and 2 have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the application must be rejected.

For the sake of completeness, it is noted that subsequent to the filing of the invalidity application on 14/12/2018, the applicant appears to question the circumstances in which the EUTM proprietor applied for the contested EUTM (see details in section A. above, particularly the Witness Statement filed on 13/09/2019 and Exhibits VMJ07 and VMJ08).

To the extent where the applicant’s intention was to also rely on the grounds of Article 59(1)(b) EUTMR (namely that the EUTM propreitor was acting in bad faith when applying for the contested EUTM) then such grounds should have been invoked at the moment the application for a declaration of invalidity was filed. Any claims made by the applicant at a later stage of proceedings cannot broaden the scope of the cancellation request. Once the cancellation request is filed, the earlier rights on which it is based and the grounds invoked cannot be extended. The same considerations apply as in opposition proceedings. Even less can such an extension be allowable in view of the fact that the pendency of cancellation proceedings prevents parallel proceedings before EUTM Courts and they result in decisions with res iudicata effect, Article 128(2) and Article 63(3) EUTMR (see decision of Fourth Board of Appeal R 1517/2007-4 of 21/12/2009, paragraph 20).

Final Conclusion

Since the applicant did not succeed on any count, the application for a declaration of invalidity must 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

Nicole CLARKE

Oana-Alina STURZA

Michaela SIMANDLOVA

 

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.