CANCELLATION No 17 968 C (INVALIDITY)

44IP Limited, Bourse, Qui-si-Sana Seafront, SLM 3113 Sliema, Malta (applicant), represented by Beck Greener LLP, Fulwood House 12 Fulwood Place, WC1V 6HR London, United Kingdom (professional representative)

a g a i n s t

Hamilton International AG (Hamilton International SA) (Hamilton International Ltd), Mattenstrasse 149, 2503 Biel/Bienne, Switzerland (EUTM proprietor), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative).

On 12/12/2019, 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 European Union trade mark No 13 496 013 ´HAMILTON´ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; compact discs; DVDs and other digital recording media; devices for converting compressed sound files (MP3); calculating machines and equipment for the processing of information; software; computer games software for mobile devices; computer and digital music players; electronic game software for mobile phones, computers and digital music players; computers; laptops; palmtops; mobile computers; personal computers; computers worn on the wrist, tablet computers; mobile radios; mobile telephones; mobile computers; mobile telecommunications apparatus and terminals; mobile data apparatus and receivers; wearable mobile phones; digital music players; mobile phones and advanced mobile phones with extended functionality (smartphones); telecommunications apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images, including cell phones and mobile phones with advanced extended features (smartphones); smartphones in the shape of a watch; electronic handheld devices for accessing the Internet and sending, receiving, recording and storing short messages, e-mails, phone calls, faxes, images, sounds, music, text and other digital data, and for video conferencing; handheld electronic devices for receiving, storing and the wireless transmission of data or messages; electronic handheld devices to monitor and organize personal information; electronic handheld devices for universal search [GPS] and display of maps and navigation information; electronic handheld devices for detecting, storing, tracking, monitoring and transmission of data on the activity of the user, namely position, route, distance, heart rate; covers for computers, mobile phones and laptops; optical apparatus and instruments including eyeglasses, sunglasses, lenses, spectacle cases, cases for sunglasses and magnifiers; batteries for computers and electronic equipment; batteries and batteries for watches and chronological instruments

Class 14: Precious metals and their alloys and goods made of these materials or plated therewith included in this class, namely figurines, trophies; jewellery, namely rings, earrings, cufflinks, bracelets, charms, brooches, chains, necklaces, tie pins, jewelry boxes, cases; precious stones; semi-precious stones (gemstones); horological and chronometric instruments, namely watches, watches that communicate data to smartphones, watchbands that communicate data to smartphones, chronographs, clocks, watch bracelets, clocks, alarm clocks and parts and fittings for the aforesaid goods, namely needles, anchors, rockers, barrels, watch cases, watch straps, watch dials, clockworks, watch chains, watch movements, watch springs, watch glasses, cases for watchmaking.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

Before proceeding to summarize the parties´ arguments and list the submitted evidence, it is noted that there is a confidentiality request in relation to the submissions filed by the EUTM proprietor on 13/04/2018 and 08/02/2019 and filed by the applicant on 09/10/2018, thus the parties express a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest regarding the submissions filed by the proprietor on 13/04/2018 and filed by the applicant on 09/10/2018 has not been sufficiently justified or elaborated upon. Therefore, the Cancellation Division does not consider these submissions confidential. In any event, the Cancellation Division will summarize the submissions and describe the evidence in general terms, without disclosing commercially potentially sensitive information.

On the other hand, regarding the submissions filed by the proprietor on 08/02/2019, the proprietor requested (on 26/02/2019) to keep certain commercial data contained in the evidence (invoices) confidential vis-à-vis third parties and provided explanation for that request. Therefore, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The applicant (in its application and submissions, dated 29/11/2017) argues that the proprietor has filed and registered the EUTM in bad faith. It also explains that the proprietor apart from being the owner of the contested sign is also a proprietor of European Union trade mark No 103 200 ´HAMILTON´ (word mark), registered for goods in Class 14, which covers a larger scope of protection in comparison to the goods in Class 14 of the contested EUTM. It is stated that a revocation for non-use is filed against the proprietor´s EUTM No 103 200.

The applicant explains that it is a Maltese company which holds and administers certain trade mark rights and other intellectual property relating to the famous racing driver Lewis Hamilton. The applicant filed a European Union trade mark application No 14 365 837  `LEWIS HAMILTON´ (for goods and services in Classes 14 and 35), which is a subject of opposition proceedings, initiated by the EUTM proprietor on the basis of the contested EUTM.

It is claimed that the filing of the contested EUTM constitutes an attempt of the proprietor to artificially extend the grace period of its EUTM No 103 200 for the goods in Class 14 and therefore the contested EUTM is filed in bad faith, as the goods in Class 14 of the contested sign are entirely included in the list of goods of the earlier EUTM No 103 200 of the proprietor.

It is claimed that even if the proprietor has made any use of its EUTM No 103 200 such use has only been in respect of watches. It is further stated that the EUTM should also be declared invalid based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(f) EUTMR, as the registration of the EUTM improperly impedes fair competition and free movement of goods in the European Union, which makes it in direct conflict with public policy.

The applicant attaches printouts of the proprietor’s EUTMs registration data and a printout from www.hamiltonwatch.com, showing watches bearing the EUTM.

The EUTM proprietor (in submissions, dated 11/04/2018 and 13/04/2018) argues that the filing of the contested EUTM was not made in bad faith. The list of the goods for which the contested EUTM is registered is extended and the purpose of filing of the contested EUTM was not to avoid the consequences of non-use of EUTM No 103 200, as the trade mark ´HAMILTON´ has been genuinely used over the last five years. The proprietor attaches a list of evidence in support of its claim, which largely consists of the following (the documents will be further detailed in the decision, if applicable):

• A witness statement of Mr. S. D., CEO of the proprietor. It is stated that ´Hamilton´ has been established in the USA in 1892 and it has a very long history of accurate time-keeping. It is claimed that it is well-known for its watches, which have been sold in the EU since at least 1950s. It is claimed that it contains a large collection of watches including jewellery watches and other time pieces like chronographs. It is further stated that the products have been used in the air forces, navy, military, in movies, in sports, etc.

• Press clippings from Germany, Spain, France, Italy and the United Kingdom, dated between 2012 - 2018, showing watches bearing the sign ´HAMILTON´.

• A photograph of a bracelet bearing the mark ‘HAMILTON’.

• Several invoices, bearing the sign on the top, invoicing some items, inter alia, wrist straps, explained by the proprietor to be in connection with ´HAMILTON´ watch products. A list of invoices, prepared by the proprietor, explained to be issued in connection with jewellery products bearing the ´HAMILTON´ trade mark.

It is stated that the purpose of filing the EUTM was to update Hamilton´s trade mark portfolio for protecting new technological innovations, such as smartwatches.

The applicant (in submissions, dated 09/10/2018) further refers to the dispute pending before the Court of Justice of the EU, C-371/18 (Sky v SkyKick). It concerns a preliminary ruling on a request by the High Court of Justice (United Kingdom), on an infringement case, concerning counterclaims for invalidity of marks based on bad faith. The applicant considers the case relevant to the present proceedings and that it could be taken into consideration for the suspension of the proceedings. The questions, presented to the Court in the quoted case concern the following areas:

• whether a trade mark could be declared invalid on the lack of sufficient clarity in the specification of the goods and services;

• whether a term such as ‘software’ is too general;

• whether the registration of the trade mark, applied for without any intention to be used for the specified goods and services, constitutes bad faith;

• based on the answer to the above, whether a trade mark can be partially invalidated.

The applicant further makes a breakdown of the goods for which the EUTM is registered in Class 14, explaining that they are identical to those covered by EUTM No 103 200 of the proprietor, and they merely duplicate and specify the previous list. It is also claimed that the burden should be on the proprietor in claims of this kind to demonstrate its intentions for filing of the EUTM with proper evidence. The applicant further develops on the evidence of use submitted by the proprietor, analyzing the separate pieces of documents and mainly claiming that they do not prove use for the goods the EUTMs of the proprietor are registered for (apart from watches).

It further argues against the claim of the proprietor that the application is related to update of the ‘HAMILTON’ portfolio for protecting new innovations like smartwatches. The applicant claims that the proprietor provides no supporting documentation which could explain the ‘new technological innovations’ which had justified the expansion. The intention of the proprietor could never have been to protect new technological innovations as smartwatches, as there is no indication that the proprietor is trying to expand in that area.

It is stated that the proprietor has no proper justification to obtain the contested registration and this is in direct contravention of the public and general interest, as the proprietor has no intention to use both of its marks in relation to any other products but ‘wrist watches’. The applicant finally concludes that, based on the ruling of the Court to the questions in the above quoted case, the EUTM should be declared wholly or partially invalid.

In support of its observations, the applicant filed the following evidence:

• A comparison of the list of the goods in Class 14 of the contested EUTM and the earlier EUTM of the proprietor, pointing to identity of the goods;

• A judgment, dated 06/02/2018, of the High Court of Justice, Case No: HC-2016-001587, concerning reference to the Court of Justice of the EU.

• A separate observations document, elaborating further on the evidence submitted by the proprietor and largely stating that the proprietor has not shown ‘proper use of its trade mark for “jewellery”’.

The EUTM proprietor in its submissions, dated 08/02/2019, states that the preliminary ruling in the abovementioned case C-371/18 would not be applicable to the case at issue for the reasons that the goods for which the EUTM is registered are sufficiently clear and precise and that the proprietor intends to use the EUTM for all the goods it was registered for. It, therefore, considers that a suspension of the present proceedings is not necessary.

It further states that the goods applied for in Class 14 were only partially identical to those of EUTM No 103 200, and additional goods were also included, mostly as a result of the technological advances made in the horological field. It states that the new goods in Class 14 are specifically enumerated. It also refers to the Court’s judgment in case C-307/10 (19/06/2012, IP Translator, EU:C:2012:361), to explain that the general headings are no longer recommendable, but rather the registration individually of the goods that will be marketed. It rebuts the applicant’s arguments concerning the use of the EUTM and it explains that the EUTM is still in its grace period. It further affirms that the applicant itself admits the use of the sign for certain goods. Finally, in regard to the attacks against the submitted evidence of use, the proprietor files additional evidence. The evidence largely consists of (and will be further detailed if needed):

• list of stores, where it is possible to find ‘HAMILTON’ products;

• invoices, concerning sales of some ‘HAMILTON’ goods, which appear to be watches (some specifics of the goods are provided, such as material and characteristics of the strap).

The proprietor states that these invoices have already been submitted before, however, it is noted that it is a new set of invoices which are different than the previous ones, already listed above.

Further references (where necessary) to the parties arguments will be made below.

Preliminary remarks

In regard to the EUTM proprietor’s additional evidence submitted on 08/02/2019

The additional evidence submitted by the proprietor does not concern the requirements on the assessment of Article 59(1)(b) or Article 59(1)(a) EUTMR in conjunction with Article 7(1)(f) EUTMR, as it will be seen further below. As the information that these documents contain does not concern the intention of the proprietor or any indication in regard to contradiction of the EUTM with public policy or to accepted principles of morality, they would not change the findings of the present decision and therefore the Cancellation Division does not find it necessary to reopen the proceedings for another round of observations regarding this evidence.

In regard to the request for suspension of the proceedings

The Cancellation Division considers that the suspension of the proceedings, based on the case pending before the Court, namely C-371/18 (Sky v SkyKick), is not necessary in the current case.

The questions submitted to the Court for preliminary ruling and their respective answers would not concern the present case, since as it will be seen further below the list of the goods of the contested sign is specific. Even though the contested EUTM contains the term ´software´, this term is in Class 9, which is a not a class for which the earlier EUTM No 103 200 was registered, and respectively the goods in this class are not a subject concerning the claims of re-filing, on which the application for invalidity is based. Furthermore, the answers to the remaining questions would not be applicable to the case at issue, as will be seen further below. Therefore, the request for suspension is set aside and the Cancellation Division proceeds with the present decision.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(b) EUTMR

General principles

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

The applicant in the present proceedings claims that the contested EUTM (filed on 25/11/2014), registered for goods in Classes 9 and 14 is a repeat filing of the earlier EUTM No 103 200 (filed on 01/04/1996), registered for goods in Class 14, both of them registered for the word mark ‘HAMILTON’. Therefore it claims that there is a dishonest intention at the time of filing of the contested EUTM.

The contested EUTM covers goods in Classes 9 and 14, already listed in section ´Reasons´ above and EUTM No 103 200 covers the following goods:

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, imitation jewellery, precious stones; horological and chronometric instruments, cases for watches (presentation), watches, parts of watches, movements for watches.

The latter registration covers the class heading of Class 14 in the version of the Nice Classification when the application was filed, namely the 7^th edition, which included in that version ´precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments´. The list of goods of EUTM No 103 200 also covers some goods, like movements for watches, which were not specifically mentioned in the class heading of Class 14.

The contested EUTM covers list of goods in accordance to the Nice Classification, 10^th edition. It includes goods in Class 9, which were not covered at all by the EUTM No 103 200. It, furthermore, covers goods in Class 14. Some of the terms are identically phrased as the ones covered by EUTM No 103 200, such as precious metals and their alloys, but others are further specified and narrowed down from the broader categories they belong to by the term ´namely´. The use of the word ‘namely’ in the list of goods is acceptable but must be understood as a restriction to the specific goods listed thereafter (judgment of 04/10/2016, T-549/14, Castello / Castellò (fig.) et al., EU:T:2016:594, § 71). Therefore, the term ‘namely’, which is used in the proprietor’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed. For instance the term horological and chronometric instruments, namely watches, watches that communicate data to smartphones, watchbands that communicate data to smartphones, chronographs, clocks, watch bracelets, clocks, alarm clocks, provides protection solely for the specific horological and chronometric instruments that are listed after the term ‘namely’. The contested EUTM also includes some goods that are not covered by the earlier EUTM in Class 14, such as semi-precious stones (gemstones).

It is also noted that EUTM No 103 200 is subject of cancellation proceedings No 17 967 on the basis of Article 58(1)(a) EUTMR, initiated by the applicant of the present proceedings.

Furthermore, the applicant in the present proceedings is also the applicant of European Union trade mark application No 14 365 837  ‘LEWIS HAMILTON’ (for goods and services in Classes 14 and 35), which is a subject of opposition proceedings brought by the EUTM proprietor on the basis of the EUTM, contested in the current procedure.

Assessment of bad faith

Bad faith may apply if it transpires that the EUTM proprietor never had any intention to use the contested EUTM, for example if the EUTM proprietor filed repetitive applications to avoid the consequences of revocation for non-use of its earlier EUTM registrations, whether in whole or in part (03/06/2010, C‑569/08, Internetportal, EU:C:2010:311, § 51; 13/12/2012, T‑136/11, Pelikan, EU:T:2012:689, § 27).

Consequently, since the Court admitted that a repeat application for the same EUTM may be considered as a case of bad faith, the question which arises is, at the outset, whether the contested EUTM is ‘a repeat application’ for the earlier European Union trade mark filed in order to avoid loss of the rights attaching to that mark’ (‘Pelikan’, § 28). In this regard, two issues must be addressed. The first is whether the contested EUTM is actually a ‘repeat trade mark application’. In the affirmative, the second issue is whether the objective circumstances of the filing disclose any dishonest intentions of the EUTM proprietor.

It is obvious at the case at issue that both EUTMs of the proprietor are word mark ´HAMILTON´ and thus they are identical. It was noted above that some of the goods in Class 14 are also identical.

The second issue to be addressed is whether there was a ‘mere’ repeat application, made without any commercial logic and with the purpose of extending the 5 year grace period of the proprietor’s previously registered EUTM No 103 200 ´HAMILTON´, which is protected for identical goods and in the same territory and to circumvent the use requirement of the marks in opposition and/or cancellation proceedings.

The EUTM covers goods in Class 9 which were not included in the list of EUTM No 103 200. It also covers some goods in Class 14 included in the previous EUTM and others that are narrowed down by using the term ´namely´, as pointed above. The proprietor explains that the intention behind the filing of the EUTM is to update the ´HAMILTON´ portfolio for protecting new technological innovations such as smartwatches.

The Cancellation Division notes that, applying for a large variety of goods and services is a fairly common practice for companies trying to obtain a European Union trade mark registration and does not depart from accepted principles of ethical behaviour or honest commercial and business practices. This may be related to goods that the proprietor already markets or others that it plans to market in the future (Pelikan, § 54).

Furthermore, it is noted that in Class 14 of the contested EUTM, the list (in comparison to EUTM No 103 200) was edited. Although it contains some goods identically phrased in the previous EUTM (such as precious metals), in its larger part it is meant to cover more specific goods than the list covered by the previous EUTM and thus clarifying and narrowing these goods by further listing them exclusively from the general category they belong to. It appears that with the contested EUTM the proprietor has specified the goods which it intends the new mark to cover instead of using the entire broader category, as it was done in EUTM No 103 200 (see in that regard Pelikan, § 42). As mentioned above it also includes some goods that are not covered by the earlier EUTM, such as semi-precious stones (gemstones).

At the same time the EUTM indeed covers goods in Class 14, which are oriented towards the use of ´smart´ technology (as it was claimed by the proprietor to be the reason for filing), such as watches that communicate data to smartphones, watchbands that communicate data to smartphones. It is also noted that the list of goods in Class 9 also covers the respective technological items that would be used with (and be complementary to) the abovementioned goods in Class 14 (and logically produced by the same company), such as mobile phones and advanced mobile phones with extended functionality (smartphones). It is also taken into account that the EUTM reflects goods that were (or at least becoming) market reality in the area of technological innovation when the EUTM was filed, while the ´smart´ technology was merely not present on the market for general use when the previous proprietor’s EUTM No 103 200 was filed. It follows that the list of goods in Class 14 of the contested EUTM is not a mere repetition of the list of goods in the same class of EUTM No 103 200 and that the selection of goods in the list of the contested mark does not lack commercial logic. It might as well be that in the near future the contested registration serves to avoid the need to make two renewals, as the proprietor may focus on the specific goods that it is interested in marketing (see in that regard Pelikan, § 37).

Consequently, and taking into account the specific terms used in the list of goods of the contested EUTM, the latter cannot be regarded as a mere repeat application made in bad faith for the sole purpose of avoiding the consequences of revocation of the previous EUTM in particular for the goods in Class 14.

The applicant largely contests the pieces of evidence of use, submitted by the proprietor and it concludes that the evidence does not prove use for more than just wrist watches. It also states that there are not any pieces of evidence showing that the proprietor would use the EUTM for smartwatches.

In the first place it is recalled that it is for the invalidity applicant to establish the circumstances which make it possible to conclude that an application for registration of a European Union trade mark was filed in bad faith, the good faith of the EUTM proprietor being presumed until proven otherwise (08/03/2017, Formata, T-23/16, EU:T:2017:149, § 45). Where EUIPO finds that the objective circumstances of the particular case relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith applying to the application for registration of the mark at issue, it is for the proprietor thereof to provide plausible explanations on the objectives and commercial logic pursued by the application for registration of that mark

(23/05/2019, Ann Taylor, T-3/18, ECLI:EU:T:2019:357, § 36).

Secondly, it is noted that the present proceedings are not concerned with revocation for non-use so that the proprietor bears the burden to prove that it used the contested EUTM or the previous one for any of the goods registered. Nevertheless, the proprietor submits pieces of evidence (reference is made to the first submission made by the proprietor), which show that the contested sign has a presence in the press, as can be seen on a number of magazine clippings from several Member States, from 2012 to 2018, showing watches bearing the sign ´HAMILTON´. Furthermore, the proprietor is not required to prove that it is currently producing or manufacturing smartwatches, as this could be a further production expansion (as explained by the proprietor). The lack of evidence for production of smartwatches does not indicate a lack of commercial logic for filing the EUTM and cannot be a signal for dishonest market behaviour.

Furthermore, the applicant points out that there is a cancellation proceeding No 17 967 (revocation for non-use) against the proprietor’s EUTM No 103 200. However, the revocation action concerns another sign of the proprietor and the status of said proceedings does not concern (as it does not show) the intention of the proprietor when filing the EUTM at issue (see in that regard Pelikan, § 45).

The applicant states that it administers certain trade mark rights and other intellectual property relating to the famous racing driver Lewis Hamilton. It also claims that European Union trade mark application No 14 365 837 ´LEWIS HAMILTON´ (for goods and services in Classes 14 and 35), is opposed by the EUTM proprietor on the basis of the contested EUTM. In regard to that statement, the following has to be noted; the fact that the contested EUTM consists of the element ‘Hamilton’, that happens to be the surname of Lewis Hamilton, could not show dishonest intention in the case at issue. Furthermore, a prior right to a name is not a right that could be basis on the ground of Article 59(1)(b) EUTMR, but it concerns Article 60(2) EUTMR, which was not invoked in the present proceedings.

Finally the fact that the proprietor has filed a notice of opposition per se is not an indicator of possible bad faith on the part of the EUTM proprietor (04/05/2011, R 1354/2010‑1, yello, § 17), as this is a regular act of protecting one´s intellectual property rights.

Following from the above, the Cancellation Division is of the view that the sequence of events does not demonstrate that the application for the EUTM was made in order to avoid the consequences entailed by total or partial revocation of the earlier trade mark for reasons of non-use. Furthermore, the circumstances of the case do not establish that the proprietor attempted to deceitfully expand the grace period granted by the EUTM regulation to put a trade mark to genuine use.

As observed above and taking into account all the evidence and circumstances of the case, the Cancellation Division may not assess the issue of bad faith by assuming that the applicant´s unilateral statement is accurate, in the absence of proper documentation supporting the allegation that a repetition of the identical filing was to circumvent the EUTM system.

In light of the above principles and of the circumstances and facts presented by the applicant, the Cancellation Division considers that the applicant failed to prove its allegation that the EUTM proprietor was acting in bad faith when filing the contested EUTM.

Therefore, it is concluded that the contested EUTM does not contravene Article 59(1)(b) EUTMR and the applicant´s claim has to be set aside.

The Cancellation Division will further proceed with the assessment of the application on the grounds of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(f) EUTMR.

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

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards the assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to the registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Public policy or accepted principles of morality, Article 7(1)(f) EUTMR

Article 7(1)(f) EUTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality. The rationale of Article 7(1)(f) EUTMR is to preclude trade marks from registration where granting a monopoly would contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society. The Office considers that ‘public policy’ and ‘accepted principles of morality’ are two different concepts, which often overlap.

The wording of Article 7(1)(f) EUTMR is very broad and allows a great deal of room for interpretation. This article clearly imposes a duty on the Office to exercise a degree of moral judgment in assessing the suitability of signs to be granted trade mark protection. It can be extremely difficult to ascertain when a sign crosses the boundary from being merely irreverent or distasteful to being seriously abusive and likely to cause deep offence. In this regard, signs which severely offend the religious sensitivities of a substantial group of the population are also best kept off the register, if not for moral reasons, at least for reasons of public policy, namely the risk of causing public disorder (see decision of 6/07/2006, R 495/2005-G, ‘SCREW YOU’, para. 14 et ss).

Signs likely to be perceived by the relevant public as being contrary to public policy or to accepted principles of morality are not the same in all Member States, inter alia for linguistic, historic, social and cultural reasons (see judgment of 20/09/2011, T-232/10, EU:T:2011:498, Soviet coat of arms, § 32).

The assessment of whether a sign is contrary to public policy or to accepted principles of morality must be carried out with reference to the perception of that sign, when being used as a trade mark, by the relevant public within the European Union or part of the Union. That part may, in some circumstances, be comprised of a single Member State (Soviet coat of arms, § 50).

In the present case, the applicant merely argues that by the filing of the EUTM the proprietor improperly impedes fair competition and free movement of goods in the EU, which makes it in direct conflict with public policy. However, neither of those behaviour was proven by the applicant, nor they are subject of assessment under the provision of Article 7(1)(f), as detailed above. Furthermore, there is no well-known fact that would show that the element ´HAMILTON´ contradicts the public policy or the accepted principles of morality. In absence of any argument or evidence that the contested EUTM itself contravenes the public order or morality, the applicant’s claim has to be set aside.

Therefore, it is concluded that the contested EUTM does not contravene Article 59(1)(a) in conjunction with Article 7(1)(f) EUTMR and the applicant´s claim has to be set aside.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should 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

Irina SOTIROVA

Richard BIANCHI

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.