CANCELLATION No 19 815 C (INVALIDITY)

Ald Automotive, S.A., Ctra. De la Coruña, Km. 17, 100, 28231 Las Rozas (Madrid), Spain (applicant), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Emmanko A.G., Postrasse 24, 6300 Canton of Zug, Switzerland (EUTM proprietor), represented by Marinos Papadopoulos, 122 Vassilissis Sofias Ave, 11526 Athens, Greece (professional representative).

On 30/04/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 15 027 402 is declared invalid for some of the contested services, namely:

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services.

Class 36: Insurance services; provision of prepaid cards and tokens; valuation services.

Class 39: Parking and vehicle storage.

Class 42: Testing.

3. The European Union trade mark remains registered for all the remaining goods and services, namely:

Class 9: Navigation, guidance, tracking, targeting and map making devices.

Class 36: Real estate services.

Class 39: Packaging and storage of goods; mooring.

Class 42: Design services; IT services; science and technology services; authentication and quality control.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 15 027 402  . The application is based on Spanish trade mark registration No 3 582 872  . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that, given the similarity (almost identity) between the signs and the identity or similarity between the goods and services, there is a likelihood of confusion.

The EUTM proprietor argues that, the applicant has already filed an application for invalidity previously against the same contested sign (cancellation No 14 064 C), and due to deficiencies in this application, the applicant has decided to withdraw it. It is also stated that there are three other cancellation proceedings filed by the applicant against other marks of the EUTM proprietor and that this activity shows malpractice on behalf of the latter.

It is claimed that the applicant has based its claim imprecisely on Article 60(1)(a) EUTMR in connection with Article 8(1) EUTMR, when it was supposed to claim Article 8(1)(b) specifically, as Article 8(1)(a) is not applicable to the case at issue. It is concluded that the legal ground is not clearly specified.

The EUTM proprietor further states that the EUTM was registered on 30/05/2016 with a priority from the date of its application (namely 21/01/2016), while the earlier mark has a registration date 18/04/2016 but does not have a priority date.

The proprietor also claims that the applicant did not provide any evidence of use of its mark and that it has started using it after the application and registration date of the contested sign. Furthermore, the sign was not used as registered. On the other hand, the EUTM proprietor has been using domain names carflexi.com and car-flexi.com since 2012. It also claims that its domain names are protected under the legal systems of a number of countries, such as under the Greek law which allows the protection of a domain name as a distinctive title/sign. Therefore, the EUTM proprietor states that it has established rights prior to the applicant’s mark. It also claims that the contested sign has been extensively used and enjoys a high degree of awareness of the relevant public.

It further explains that while the applicant is a car-fleet owner, the EUTM proprietor is the owner of a website and operates as an aggregator available to consumers in the process of their search for car-hire services. Therefore, the applicant and the EUTM proprietor have different areas of activity.

According to the EUTM proprietor there are noticeable differences in the structure of the signs in comparison due to the colours, stylisation and the presence of the figurative element only in the earlier mark. It is stated that the final letter ‘I’ in the contested sign would render the pronunciation between the signs very different as it adds one more syllable to the contested sign. Finally, the part ‘flex’ in the earlier mark would be perceived as a reference to ‘flexibility’, while the part ‘flexi’ of the contested sign- as a reference to ‘flexi-time’ and therefore there is a conceptual difference between the signs. It is stated that the earlier mark has a weak distinctive character, as there are previous national registrations containing the element ‘CARFLEX’. The level of attention of the relevant public is claimed to be high. It is explained that given the different goods and services in the case at issue and the lack of overlap in the distribution channels, the similarity between the signs is insufficient to lead to likelihood of confusion.

In support of its observations, the EUTM proprietor filed the following evidence:

• Application for invalidity and correspondence in cancellation proceedings No 14 064 C.

• Printouts from TMView of two trade mark registrations containing the element ‘CARFLEX’

• Search Report, dated 01/02/2016, concerning the EUTM.

• Printouts from www.carflex.es, showing inter alia, some offers for car rental.

• A list of domain names, originating from Softit AB, and from https://whois.icann.org showing the domain names registered on the EUTM proprietor’s name; several letter from a Swiss attorney, Google and Softit explaining the online presence of the EUTM proprietor’s activity, including advertising via use of domain names, websites ad keywords containing CarFlexi; printout, originating form Google and displaying diagrams of search results of ‘CarFlex’ versus ‘CarFlexi’.

• Printouts from the website www.carflexi.com, which appears to provide some car rental booking services.

• Printouts from www.enmanko.com, www.aldaautomotive.es, Wizz Air Hungary, the latter depicting the sign in regard to booking airport car rental.

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

Preliminary remarks

In regard to the claimed deficiencies in the application

The grounds of the application are clearly marked in the application form indicating that the application is based on Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR. The further citing of the text of Article 8 EUTMR in the submissions does not in any way change the fact that the grounds are validly pointed out and the application for invalidity was therefore found to be admissible. Consequently, the proprietor’s arguments in this regard must be rejected.

In regard to the reference to other proceedings

It is noted that the application for invalidity filed against the EUTM by the same applicant in previous proceedings (cancellation No 14 064 C) was withdrawn.

Pursuant to Article 63(3) EUTMR, an invalidity or revocation application is inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its own merits by an EUTM court or by the Office and a final decision has been taken. However, the defence of res judicata only applies where there is a previous final decision on the substance in a counterclaim or cancellation application. The bar to admissibility does not apply, for instance, when a cancellation application was withdrawn before the corresponding decision became final (decision of 12/05/2014, R1616/2013-4, PLAYSEAT, §13) or when the previous final decision declared the application inadmissible and did not adjudicate on the substance. As no final decision on substance was taken in the previous case cited No 14 064 C, res judicata does not apply and the application for invalidity was found to be admissible.

As far as the other applications for invalidity of the applicant concerning marks of the EUTM proprietor are concerned, these do not in any case concern the present procedure, and these applications are, or will be assessed on their own merits. The fact that a party initiates invalidity proceedings does not lead directly to a determination of bad faith as the owner of valid trade mark rights is entitled to protect its legal interests. Moreover, bad faith on the behalf of the applicant is not a valid defence in invalidity proceedings.

In regard to the priority claims and the use of the signs in conflict

The EUTM proprietor claims that while the contested sign has a priority date, this is not the case of the earlier mark and the latter was registered only after the priority date of the EUTM.

However the EUTM was applied for on 21/01/2016 and registered on 02/06/2016 and has no priority claimed. The mark on which the application is based was applied for on 21/10/2015 and registered on 18/04/2016. Pursuant to Article 8(2)EUTMR, as the applicant’s mark has an application date prior to the application date of the EUTM, the former is indeed an earlier mark and therefore is a valid basis for invalidity application under Article 60(1)(a) EUTMR.

As far as the claim that the earlier sign was not used, or was not used as registered is concerned, the Cancellation Division notes that, according to Article 64(2) and (3) EUTMR, the earlier mark can only be subject to the use obligation when it has been registered for not less than five years on the date of the application for a declaration of invalidity.

The present application for a declaration of invalidity was filed on 09/02/2018. As noted above, the earlier mark is registered on 18/04/2016. Therefore, the request for proof of use, even if the EUTM’s proprietor claim could be considered as such, which it cannot as it was not requested on a separate page, would be inadmissible as the earlier mark had not been registered for five years at that date. Respectively, whether the earlier sign is used and how it is used is irrelevant for the present proceedings.

Finally, as far as the claim for use of the contested sign and the awareness that it has gained is concerned, the Cancelation Division notes that the right to an EUTM begins on the date when the EUTM is filed and not beforehand. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts related to the EUTM which happened before its filing date are irrelevant because the applicant’s rights, insofar as they predate the EUTM, are prior to the EUTM proprietor’s rights.

As far as the proprietor’s claim of different areas of operation of both parties is concerned, it is noted that the goods and services covered by both signs are compared further below in the way they appear in the registration documents, as this is the relevant point to be considered when evaluating the existence of identity or similarity between them.

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.

1. 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 and services on which the application is based are the following:

Class 35: Business management related to vehicles, sales promotion for others related to vehicles.

Class 36: Financial advice and consultancy services, vehicles insurances.

Class 37: Maintenance, servicing and repair of vehicles.

Class 39: Vehicle hire, automobile vehicle renting services.

Class 42: Vehicle roadworthiness testing.

The contested goods and services are the following:

Class 9: Navigation, guidance, tracking, targeting and map making devices.

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services.

Class 36: Insurance services; provision of prepaid cards and tokens; real estate services; valuation services.

Class 39: Packaging and storage of goods; parking and vehicle storage, mooring.

Class 42: Design services; IT services; science and technology services; testing, authentication and quality control.

Contested goods in Class 9

The contested goods in this class are not similar to any of the applicant’s services Apart from being different in nature, as goods are tangible while services are intangible, they serve different needs and respectively the purpose is different. They are neither complementary nor in competition and the origin and distribution channels are not usually the same. These are, therefore, considered to be dissimilar.

Contested services in Class 35

The contested advertising, marketing and promotional services; business analysis, research and information services; business assistance, management are identical to the applicant’s business management related to vehicles or sales promotion for others related to vehicles because the applicant’s services are included in, or overlap with, the contested services. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the applicant’s services.

The contested business administrative services are similar to the applicant´s business management related to vehicles as they coincide in their purpose (to ensure better development of a business), as well as in in their provider and relevant public.

The contested commercial trading and consumer information services are similar to a low degree to the applicant’s sales promotion for others related to vehicles as they coincide in their purpose (e.g. to provide the relevant information to ensure better position on the market) and relevant public.

Contested services in Class 36

The contested insurance services include as a broader category the applicant’s vehicles insurances. Since the Cancellation Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the applicant’s services.

The contested provision of prepaid cards and tokens; valuation services are at least similar to the applicant’s financial advice and consultancy services, as they are all being in their essence financial services and they share provider, end user and distribution channels.

The contested real estate services comprise real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of information related thereto. This mainly involves finding a property, making it available for potential buyers and acting as an intermediary. Consumers clearly distinguish real estate agents’ services from those of financial institutions. They do not expect a bank to find housing or a real estate agent to manage their finances. Financial and banking services do not have the same nature, the same intended purpose or the same method of use as real estate services. Furthermore, as regards the fact that the services in question might be found in the same distribution channels, it is clear that real estate services are not, in principle, provided on the same premises as financial services (judgment of 17/09/2015, T-323/14, Bankia / BANKY, EU:T:2015:642, § 34-38). Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service.

It must therefore be concluded that these services are dissimilar even if financial services are essential or important for the use of real estate. The consumers would not attribute responsibility for both services to the same company (judgment of 11/07/2013, T-197/12, Metro, EU:T:2013:375, § 47-51). Furthermore, the contested services are not similar to the insurance services (which explicitly concern vehicles) of the applicant or to the remaining services on which the application is based as they have no relevant points of contact that would justify a level of similarity to be found. It is, therefore, considered that the contested real estate services are dissimilar to all of the applicant´s services.

Contested services in Class 39

The contested parking and vehicle storage are services that provide parking of a car and essentially the renting of a parking place/garage. These services are considered similar to a low degree to the opponent´s automobile vehicle renting services, as they coincide in provider, distribution channels and relevant public.

However, no similarity can be found between the contested packaging and storage of goods and mooring services and the applicant´s services in all classes, as they do not have any relevant points of contact that could justify finding a level of similarity between them. These are therefore found to be dissimilar.

Contested services in Class 42

The applicant’s vehicle roadworthiness testing is a kind of service by which vehicles are inspected whether they conform to certain regulations for safety, emissions or both, and is furthermore provided by companies/entities specialised (certified) in inspecting vehicles. The contested testing includes, as a broader category, the applicant’s vehicle roadworthiness testing. Since the Cancellation Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the applicant’s services.

However, the remaining contested design services; IT services; science and technology services; authentication and quality control do not have any relevant points of contact with the applicant’s services that could justify finding a level of similarity between them. Even though some of them may have the same subject (e.g. automotive design services for vehicles and the applicant’s car related services, such as vehicle roadworthiness testing or vehicle hire) this is not sufficient to find similarity, as they would clearly not originate from the same provider and they have no other criteria in common that would lead to a level of similarity to be justified. Therefore the remaining contested services are found to be dissimilar to all of the applicant’s services.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar to varying degrees are directed at the public at large, as well as at business customers with specific professional knowledge or expertise (e.g. those searching for business management solutions).

Furthermore, the relevant financial services target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

Taking into account the above, it is considered that the degree of attention of the relevant public will vary from average to high depending on the price, specialised nature, or terms and conditions of the services purchased.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark, depicted in red, consisting of the element ‘CarFlex’, written in rather standard, slightly italicized typeface, preceded by a depiction of two lines with a common intersecting point (which is folded over) that does not however convey any particular meaning. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, it is likely that the relevant public would pay more attention to the element ‘CarFlex’ of the earlier mark than to the figurative depiction before it.

The contested mark is a figurative mark, consisting of the element ‘CarFlexi’, written in rather standard typeface with the letters ‘C’ and ‘F’ in orange and the remaining ones in blue.

It is noted that the elements ‘CarFlex’ and ‘CarFlexi’ do not exist in the Spanish language and part of the public would not associate them with any meaning. Therefore, for this part of the public their distinctiveness is average.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is likely that part of the relevant public would dissect the elements ‘CarFlex’ of the earlier mark and ‘CarFlexi’ of the contested sign, respectively to the components ‘Car’ and ‘Flex’ in the earlier mark and ‘Car’ and ‘Flexi’ in the contested sign for the following reasons:

Part of the public, familiar with the English language will perceive the component ‘car’ present in both signs in the meaning this word has in English, namely as a type of a motor vehicle. Respectively, the components ‘Flex’ in the earlier mark and ‘Flexi’ in the contested sign are likely to be related to the Spanish word ‘flexible’ in the meaning of, inter alia, ‘that adapts easily to the opinion, the will or the attitude of or other/s; susceptible to changes or variations according to circumstances or needs’ (‘que se adapta con facilidad a la opinión, a la voluntad o a la actitud de otro u otros’, susceptible de cambios o variaciones según las circunstancias o necesidades’, information extracted from https://dle.rae.es/?id=I5IQtvP). However, it could not be concluded that the component ‘Flexi’ in the contested sign would be largely perceived as a reference to ‘flexitime’, even by the part of the public familiar with English, as it would be more intuitive to the relevant public to connect it to meaning in its own language, while any relation to ‘flexitime’ would require additional mental steps. Due to lack of any evidence for such a perception by the relevant public, the EUTM proprietor’s claim for the concept of the component ‘Flexi’ has to be set aside.

Therefore, the component ‘Car’ in the signs (when understood) would be perceived as reflecting the purpose of some of the services, as in some way related to vehicles (for instance parking and vehicle storage and automobile vehicle renting services) for which its distinctiveness would be lower than average; and for others the component would be distinctive (e.g. provision of prepaid cards and tokens and financial advice and consultancy services). The component ‘Flex(i)’ in the signs, when understood, would be perceived as reflecting the quality of the provided services, as in being adaptable to the needs of the customer. It is, therefore, considered that in this case the distinctiveness of the component would be lower than average.

However, due to these components having the same concept in both signs, their degree of distinctiveness is the same, irrespective of whether their meanings will be perceived or not (in relation to the services) by different parts of the public, and therefore it has no impact on the comparison.

The signs have no elements that can be considered more dominant (i.e. visually eye-catching) than the others.

Visually, the signs coincide in the sequence ‘CarFlex*’, present in both signs. The signs differ in the last letter ‘i’ of the contested sign, which has no counterpart in the earlier mark, as well as in the figurative element of the earlier mark and the colours of the signs. The typeface used in the signs, contrary to the EUTM proprietor’s claims, is rather standard and therefore it will not contribute to relevant differences between the signs.

Taking into account what has been stated above regarding the distinctiveness of the different elements/ components of the signs in comparison, the signs are considered visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the sequence of letters ‘CarFlex*’, present identically in all signs and differs in the sound of the last letter ‘i’ of the contested sign. It is true, as claimed by the EUTM proprietor, that the earlier mark has two syllables and the contested one has three. However, contrary to the EUTM proprietor’s conclusion, the fact that the signs coincide in the entire mentioned sequence, which forms the sole verbal element of the earlier mark in its entirety, and differ only in the last letter of the contested sign, renders the signs aurally similar to a high degree

Conceptually, for part of the public the signs will be perceived as referring to the concepts conveyed by their components ‘Car’ and ‘Flex/i’, and the figurative element of the contested sign does not introduce any concept capable of altering the conceptual perception of the signs. Therefore, the signs are conceptually at least highly similar for this part of the public.

However, for part of the relevant public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for that part of the public.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. As it was explained above, the components ‘Car’ and ‘Flex’ have a lower than average distinctiveness for a part of the relevant public and for some of the relevant services (as long as the component ‘Car’ is concerned). However, the combination of these components (even when they are understood) does not form a grammatically correct phrase, but is rather unusual for the relevant public. Therefore, the connection between any characteristics of the services and the actual mark as a whole is not direct and immediate, but is sufficiently vague. Therefore, the distinctiveness of the earlier mark must be seen as only slightly lower than average for the public that would perceive a meaning in both components mentioned above (and for part of the relevant services); and its distinctiveness is considered to be average for the rest of the relevant services and for the relevant public that would not see a meaning in one or both of the components mentioned above.

5. Global assessment, other arguments and conclusion

As concluded above, the contested goods are dissimilar to the applicant’s services and the contested services are partially identical, partly similar to different degrees and partially dissimilar to the applicant’s services. The degree of attention may vary from average to higher than average when choosing the relevant services.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

It was established above that the signs are visually and aurally similar to a high degree and conceptually (the latter, for a part of the public) at least highly similar. Furthermore, as analyzed above, the earlier mark is considered to enjoy an average or slightly lower than average degree of distinctiveness for the public in the relevant territory.

In its observations, the EUTM proprietor argues that the earlier trade mark has a weak distinctive character since other trade marks include the element ´CARFLEX´. In support of its argument the EUTM proprietor refers to two trade mark registrations in Germany and the United Kingdom.

The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Consequently, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the element ´CARFLEX´. Therefore, the EUTM proprietor’s claim has to be set aside.

Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the case at issue the high similarity between the signs offsets any lesser degree of similarity between some of the services.

Finally, the EUTM proprietor refers to previous decisions of the Court and previous Office decisions to support its arguments for a finding of low similarity between the signs and a lack of likelihood of confusion. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. Furthermore, it shall be noted that the Cancellation Division takes into account all the principles analysed and developed by the applicable case-law of the Court. Nevertheless, it is noted that the signs in comparison in the case at issue have commonalities, analysed in detail above, that are not present in the cases quoted by the EUTM proprietor, and which trigger higher levels of similarity between the signs at issue than in the cited cases. Therefore, the arguments of the EUTM proprietor have to be set aside.

Bearing in mind what has been said above and especially that the sole verbal element of the earlier mark is entirely included in the sole element of the contested sign, it is concluded that the relevant public could believe that the services in question come from the same undertaking or economically linked undertakings even when the level of attention is high.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s Spanish trade mark registration.

Pursuant to the above, the contested trade mark must be declared invalid for the services found to be identical or similar, including even those found to be similar to a low degree to the services of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the application is based on this article and directed against these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Natascha GALPERIN

Irina SOTIROVA

Nicole CLARKE

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.