CANCELLATION No 13909 C (INVALIDITY)

Comeo, 4 Route de Brionne, 27290 Glos sur Risle, Goleta, France (applicant), represented by Cabinet Jakubowicz Mallet-Guy Associés, 18/20, rue Tronchet, 69006 Lyon, France (professional representative)

a g a i n s t

KSB SE & Co. KGaA, Johann-Klein-Str. 9, 67227 Frankenthal, Germany (EUTM proprietor), represented by Grünecker Patent- Und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative).

On 29/01/2019, 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 13 892 203, COMEO (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 7: Pumps, as mentioned in this class; motors other than for land vehicles; units consisting of pumps and motors; parts of machines, pumps and motors as mentioned in class 7; machine bases; holders; bearing mountings; guide pipes and according accessories for machines, pumps and motors.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the proprietor´s mark was registered in breach of Article 7(1) (a) EUTMR as it has no distinctive character. The imputed mark comes up in Google searches. Its continued use constitutes an act of counterfeiting, parasitism and unfair competition.

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

• French certificate of registration of the applicant´s mark COMEO for goods in class 7.

• TM view extracts in respect of the applicant´s mark and the proprietor´s mark respectively, both for COMEO in Class 7, together with translations of the goods in Class 7.

• Bailiff report revealing an internet search which demonstrates the presence of the proprietor´s mark COMEO.

• Letter from the proprietor in response to a letter from the applicant.

In its subsequent observations, the applicant contends that the imputed mark is not distinctive as the same word mark is already registered for like goods in France, that it should not have been registered by the proprietor for this reason, and that the consequences of its registration are, inter alia, infringement. The applicant further asserts that it is the correct party to make the application and that its application is well-founded.

The EUTM proprietor argues that the application for invalidity pursuant to Article 59(1)(a) in conjunction with Article 7(1)(a) is not well founded or grounded.

Article 7(1)(a) precludes registration of marks which do not conform to the requirements of Article 4 which itself provides that EUTM´s may consist of any sign, particularly words, including personal names, designs, letters, numerals, colours, the shape of goods or the packaging, or sounds, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings; and being represented on the register of European trade marks, in a manner which enables the competent authorities and the public to determine the clear, precise subject matter of the protection afforded to its proprietor, as is the case with the imputed word mark here. This provision refers to the abstract capacity of a sign to serve as a badge of origin, regardless of the goods and services. The mark in question is a word mark with no meaning (as evidenced by some extracts from a dictionary in five different languages).

Furthermore, whether or not an earlier trade mark might exist is not relevant to this ground, and no other grounds were correctly invoked, claimed or substantiated. In this regard, the EUTM proprietor also makes the point that the application was not filed in the name of the proprietor of a prior trade mark.

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 assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to 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).

Article 7(1)(a) EUTMR

Article 59 EUTMR concerns absolute grounds of refusal and serves to prevent the registration of European Union trade marks contrary to the public interest. As there is no particular requirement to show a legal interest in bringing proceedings, a formalistic approach to interpreting the scope of the invalidity request would contravene the legislator’s intention as expressed in these provisions (24/03/2011, T 419/09, AK 47, EU:T:2011:121, § 21 and 22).

However, a request or application for cancellation must contain an indication of the grounds on which it is based, that is to say, an identification of the specific provisions of the EUTMR that justify the requested cancellation, as laid down in Articles 58, 59, 60, 81, 82, 91 or 92 EUTMR i.e. Article 7(1) in conjunction with Article 4 here.

To be capable of constituting a trade mark for the purposes of Article 4 EUTMR, the subject matter of an application for a trade mark must satisfy three conditions:

(a) it must be a sign;

(b) it must be capable of distinguishing the goods or services of one undertaking from those of others;

(c) it must be capable of being represented on the Register in a way that allows the competent authorities and the public to determine the clear and precise subject matter of protection.

Article 4(a) EUTMR refers to the capacity of a sign to distinguish the goods of one undertaking from those of another.

Unlike Article 7(1)(b) EUTMR, which concerns the distinctive character of a trade mark with regard to specific goods or services, Article 4 EUTMR is merely concerned with the abstract ability of a sign to serve as a badge of origin, regardless of the goods or services. Only in very exceptional circumstances is it conceivable that a sign could not possess even the abstract capacity to distinguish the goods or services of one undertaking from those of another. An example for the lack of abstract capacity in the context of any goods or services could be the word ‘Trademark’.

The proprietor correctly asserted that the provisions of Article 7(1)(a) in conjunction with Article 4 EUTMR regard the abstract ability of a mark to be registered, and that the applicant did not give any reason why the mark in question has no such capacity.

Furthermore, the applicant did not make out any other identifiable claim in the application or the reasoned statement with it, such as would be capable of giving rise to the invocation of any other ground.

In its subsequent observations, the applicant attempts to make out a case based on alternative or additional grounds. However, while the applicant may limit the grounds on which the application was initially based, it cannot enlarge the scope of the application by claiming any additional grounds during the course of the proceedings. (Proceedings Guidelines for Examination in the Office, Part D, Cancellation).

Conclusion

In the present case, the invalidity applicant based its request on Article 7 (1)(a), EUTMR but did not provide any pertinent facts or arguments in its regard.

The applicant did not show that the contested mark did not conform to the requirements of Article 4 pursuant to Article 7(1)(a) EUTMR, or make out any other case in an identifiable manner at the material time. It follows that the application as constituted must fail.

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

Martin Lenz

Keeva DOHERTY

Anne-Lee Kristensen

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.