CANCELLATION No 19 701 C (INVALIDITY)

Lilly A/S, Bugattivej 2, 7100 Vejle, Denmark (applicant), represented by Plesner, Amerika Plads 37, 2100 Copenhagen Ø, Denmark (professional representative)

a g a i n s t

Nanjing LilySilk Trading Company Ltd., Luocun Old Industry Park, Tanyuan Road, Dongshan Street, Jiangning District, Nanjing, People’s Republic of China (EUTM proprietor), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 03/07/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 15 140 304 is declared invalid for some of the contested goods and services, namely for the following goods:

Class 25: Shirts; short-sleeve shirts; ready-made clothing; trousers; coats; skirts; underwear; dressing gowns; pyjamas; pajamas; underpants; brassieres; layettes [clothing]; caps [headwear]; neckties; scarves; pocket squares; sleep masks.

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

Class 24: Silk [cloth]; bed covers; quilts; mattress covers; sheets [textile]; bed linen; pillowcases; bed blankets; bed clothes; tablecloths, not of paper; door curtains; handkerchiefs of textile; ticks [mattress covers]; sleeping bag liners; travelling rugs [lap robes]; velvet; lingerie fabric.

Class 35: Direct mail advertising; advertising; radio advertising; television advertising; pay per click advertising; web site traffic optimization; search engine optimization; import-export agency services; provision of an on-line marketplace for buyers and sellers of goods and services; marketing.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 15 140 304 for the figurative mark , namely against all the goods in Class 25 and part of the services in Class 35. The application is based on European Union registrations No 580 282 and No 4 892 782, both for the word mark ‘LILLY’ in relation to which the applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR.

The application is also based on the non-registered trade mark ‘LILLY’ used in the course of trade in Denmark in relation to which the applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion since the goods were identical or very similar and the signs were similar. It pointed out that the element ‘SILK’ of the contested sign was descriptive and the earlier mark ‘LILLY’ and the first element ‘LILY’ of the contested sign were very similar. It therefore concluded that the contested sign ‘LILYSILK’ would be perceived as a variation of the earlier mark to identify a new line of goods. Regarding the grounds based on Article 8(5), it argued that the earlier mark ‘LILLY’ was reputed in Denmark and the use of the contested sign would take unfair advantage or be detrimental to the repute or distinctive character of the earlier mark.

The EUTM proprietor requested the applicant to submit evidence of use of its earlier marks. It also gave information on the EUTM proprietor’s company, which is present in several countries around the world and specialises in silk goods made by Chinese silk masters. It also argued that there was no likelihood of confusion given that the signs were visually, aurally and conceptually not similar.

The applicant submitted evidence of use of the earlier marks and reiterated its arguments in relation to Article 8(1)(b) and 8(5) EUTMR. It also referred to some opposition decisions where the Opposition Division found that there was a likelihood of confusion between the earlier mark ‘LILLY’ and the contested signs ‘LILI COSTA’, ‘LILY SHOES’, ‘LILI’S NYC FINE FOODS’ (fig.) and ‘LILI’S NYC FINE FOODS THE AMERICAN COFFEE Co.’ (fig.) respectively.

The EUTM proprietor did not submit any observations in reply to the applicant’s evidence of use and arguments.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The request has been filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the date of the application for a declaration of invalidity (EUTM No 580 282 registered on 31/08/2001 and EUTM No 4 892 782 registered on 16/04/2007).

The application for a declaration of invalidity was filed on 05/02/2018. The date of filing of the contested trade mark is 24/06/2016. The applicant was, therefore, required to prove that the trade marks on which the application is based were genuinely used in the European Union from 05/02/2013 to 04/02/2018 inclusive. Since the earlier marks were registered more than five years prior to the date of filing of the contested mark, use of the earlier marks had to be shown also for the period from 24/06/2011 to 23/06/2016 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the application is based, namely:

EUTM No 580 282

Class 25: Religious and festive occasions clothing, footwear and headgear.

EUTM No 4 892 782

Class 35: Retail services in the field of clothing, footwear and headgear for religious events and festive occasions, as well as in connection with bridalwear and bridal goods.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 04/05/2018, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 09/07/2018 to submit evidence of use of the earlier trade marks.

On 09/07/2018, within the time limit, the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Items 1-11: copies of Lilly catalogues together with press articles, in Danish, for the period 2001 to 2016, relating to the territory of Denmark. They show, inter alia, ‘LILLY’ religious and festive occasion clothing, footwear and headgear (wedding dresses, men suits, shoes, marriage veils, bridesmaid/kids dresses and footwear, evening dresses).

• Items 12-20: copies of Lilly catalogues together with press articles from the period 2001 to 2016, concerning various European countries such as Germany, France, Hungary, the Netherlands, Poland, Finland, Sweden, the United Kingdom. They show, inter alia, ‘LILLY’ religious and festive occasion clothing, footwear and headgear (wedding dresses, men suits, shoes, marriage veils, bridesmaids’/kids’ dresses and footwear, party dresses).

• Item 21: printouts from the applicant’s website www.lilly.dk, printed on 07/11/2013, about the history of the company that was founded in 1946 and specialises in wedding dresses, evening dresses, bridesmaid dresses, communion dresses and men’s clothing.

• Item 22: printouts, dated 03/02/2015, from the applicant’s website www.lilly.eu/where-to-buy with a list of ‘LILLY’ shops in the European Union (Denmark, Germany, Ireland, Greece, Spain, France, Italy, Hungary, Malta, the Netherlands, Austria, Poland, Romania, Finland, Sweden and the UK).

• Item 23: survey from Gallup A/S, dated November 2000, conducted in Denmark about the brand awareness of ‘LILLY’. It shows a very high degree of brand awareness in the population in general (87 %). It mentions ‘with regards to brand name wedding dresses, LILLY is the only proper brand to be found on the market. This is especially true as LILLY has a ‘Top of Mind’ awareness level of 65 % among the entire population, which is an indication of a strong brand’.

• Items 24-27: copies of previous Opposition decisions (B 1 284 324, B 2 129 826, B 2 684 788, B 2 689 605, all filed by the applicant against trade mark applications containing the element ‘LILI’ or ‘LILY’).

• Item 28: overview of ‘LILLY’ marketing costs in the European Union for the period 2008-2012 (in Danish krone (DKK)).

• Item 29: overview of ‘LILLY’ turnover in various European countries for the period 2008-2012 (in DKK).

• Items 30-41: copies of invoices issued by the applicant and addressed to clients in the European Union (Belgium, Germany, Spain, France, Italy, Austria, Finland, Sweden, etc.) for the period 2005-2016. They show sales of a range of goods falling into the category of religious and festive occasions clothing, footwear and headgear (bridal clothing and footwear, bridesmaids’ clothing and footwear, evening clothing, bridal veils, men’s and boys’ suits, baptism clothing (hats), etc.).

• Item 42: a web knowledge survey, including a statement, the results and the questions, conducted by Megafon A/S, in June 2018, regarding the brand awareness of ‘LILLY’ in Denmark. It is concluded that: ‘the survey shows a very high degree of brand awareness for ‘LILLY’ in the population in general. Thus four out of five (81 %) know of the brand. This is very convincing, primarily in regards to the competitors, with ‘Pronovias’ being the second most recognized brand. However, only 2 % know of this brand. This implies that with regards to brand names for wedding dresses, LILLY is the only proper brand to be found on the market. This is especially true as LILLY has a ‘Top of Mind’ awareness level of 57 % among the entire population, which is an indication of a strong brand.’

Assessment of genuine use for EUTM No 580 282

Time of use

Although some documents are dated before or after the relevant periods, the invoices, catalogues and press articles dated within the relevant periods contain sufficient indication concerning the time of use.

Place of use

The documents show use in Denmark but also in many European countries. Therefore, the evidence relates to the relevant territory.

Nature of use: use as a trade mark and as registered

The mark was clearly used to identify the commercial origin of the goods, that is, it was used as a trade mark.

The documents show use of the word mark ‘LILLY’ as registered or in stylised characters that do not alter the distinctive character of the earlier mark as registered.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Given the nature of the goods and the specific relevant market (bridal goods, which are not used on a daily basis and are quite expensive), the invoices dated 2011-2016 (within the relevant periods), sent to clients in several European countries, provide sufficient information concerning commercial volume, length of period and frequency of use.

Use in relation to the registered goods

The earlier mark is registered for religious and festive occasions clothing, footwear and headgear in Class 25. The evidence shows that the mark has been used for these goods. Therefore, the applicant has shown use for all the goods for which the mark is registered.

Conclusion

The evidence of use in its entirety sufficiently indicates the time, place, extent and nature of use of the applicant’s trade mark for the goods for which it is registered and on which the application is based.

Assessment of genuine use for EUTM No 4 892 782

Use for the relevant services

The earlier mark is registered for retail services in the field of clothing, footwear and headgear for religious events and festive occasions, as well as in connection with bridal wear and bridal goods in Class 35.

The services offered by a retailer to the end consumer consist of selecting an assortment of goods offered for sale, the advice rendered to the client about the goods, as well as additional services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425, § 34).

The sale of one’s own goods is not a service, but only the natural use of the mark for the goods. Even if it is not per se excluded that retail services are dedicated to goods produced by or on commission of the service provider, retail services do not consist in the mere act of selling goods at retail, but include, in addition to the legal sales transaction, as stated above, all activities carried out by the trader for the purpose of encouraging the conclusion of such a transaction. In the case in question, the applicant has not demonstrated that it offers and provides such services to third parties (27/09/2016, R 1896/2015-4 and R 1959/2015-4, ORIGINE GOURMET, § 41).

Although the applicant has provided a list of shops selling ‘LILLY’ goods, including some ‘LILLY’ shops, the mere fact that the applicant may market its own goods cannot serve as evidence of public and outward use of the trade mark with a view to ensuring an outlet for the services concerned.

The Court has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The Cancellation Division concludes that the evidence is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period mark in relation to the above mentioned retail services.

Therefore, the application must be rejected pursuant to Article 64(2) EUTMR insofar as it is based on earlier EUTM No 4 892 782.

The examination of the application will continue on the basis of earlier EUTM No 580 282.

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 on which the application is based and for which use has been proved are the following:

Class 25: Religious and festive occasions clothing, footwear and headgear.

The contested goods and services are the following:

Class 25: Shirts; short-sleeve shirts; ready-made clothing; trousers; coats; skirts; underwear; dressing gowns; pyjamas; pajamas; underpants; brassieres; layettes [clothing]; caps [headwear]; neckties; scarves; pocket squares; sleep masks.

Class 35: Direct mail advertising; advertising; import-export agency services; provision of an on-line marketplace for buyers and sellers of goods and services.

Contested goods in Class 25

The contested shirts; short-sleeve shirts; ready-made clothing; trousers; coats; skirts; layettes [clothing]; neckties; scarves; pocket squares overlap with the applicant’s religious and festive occasions clothing. Therefore, they are identical.

The contested caps [headwear] overlap with the applicant’s religious and festive occasions headgear. Therefore, they are identical.

The contested underwear; underpants; brassieres; dressing gowns; pyjamas; pajamas are at least similar to an average degree to the applicant’s religious and festive occasions clothing. They have the same nature (pieces of clothing), methods of use, distribution channels and producers and they target the same public.

The contested sleep masks are similar to a low degree to the applicant’s religious and festive occasions clothing given that they may coincide in their providers and distributions channels.

Contested services in Class 35

The contested direct mail advertising; advertising; import-export agency services; provision of an on-line marketplace for buyers and sellers of goods and services are not similar to the applicant’s religious and festive occasions clothing, footwear and headgear.

Advertising services consist 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. Import and export agency services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. The provision of an on-line marketplace for buyers and sellers of goods and services relate to the on-line sale of goods in general.

Apart from being different in nature, since services are intangible whereas goods are tangible, the goods and services in conflict serve different needs. Furthermore, they have different methods of use and are neither in competition nor necessarily complementary. The fact that some goods may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods being advertised.

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 goods found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is average.

3. The signs

LILLY
Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Since the signs are composed of elements that are meaningful in English and in view of the considerations below regarding the distinctiveness of the elements of the signs and the conceptual comparison of them, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is the word mark ‘LILLY’, which will be perceived as a female name or an allusion to a lily (a type of flower). Since it has no meaning in relation to the goods, it is distinctive to an average degree.

The contested mark consists in the word ‘LILYSILK’ depicted in standard upper-case letters inside a rectangular background with rounded corners. A stylised flower (lily) is depicted before the verbal element and the flower stem underlines the word ‘LILYSILK’.

As regards the verbal element ‘LILYSILK’, although it is composed of one verbal element, the relevant consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58), namely into the elements ‘SILK’ (a fine, strong, soft lustrous fibre produced by silkworms in making cocoons and collected to make thread and fabric; thread or fabric made from the fibre produced by the silkworm) and ‘LILY’ (a bulbous plant with large trumpet-shaped, typically fragrant, flowers on a tall, slender stem). The element ‘LILY’ has no meaning in relation to the goods and therefore it is distinctive to an average degree, whereas the element ‘SILK’ is non-distinctive since it indicates that the goods are made of silk.

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). In the present case, although the figurative element of the contested sign, a stylised lily, is distinctive, the consumers will pay less attention to the figurative devices of the contested sign and will perceive them as a secondary decorative component.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the earlier mark ‘LILLY’ and the distinctive verbal element of the contested sign ‘LILY’ coincide in the letters ‘L-I-L-Y’ and only differ in the additional letter ‘L’ of the earlier mark. The signs further differ in the non-distinctive element ‘SILK’ and the figurative elements of the contested sign, as described above. Therefore, the signs are visually similar to an average degree.

Aurally, the earlier mark ‘LILLY’ and the distinctive verbal element of the contested sign ‘LILY’ are aurally identical. The pronunciation differs in the sound of the non-distinctive element ‘SILK’ of the contested sign. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark ‘LILLY’ will be perceived as a female first name or an allusion to a lily (a type of flower). Although the element ‘LILY’ of the contested sign conveys the concept of the flower, this concept being reinforced by the depiction of a lily, ‘LILY’ is also a female first name (spell with one or two ‘L’) that is derived from the flower. Therefore, the signs are conceptually similar to an average degree.

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.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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).

The goods are partly identical and partly similar to varying degrees. The degree of attention of the public is average.

The inherent distinctiveness of earlier mark is normal.

The signs are visually and conceptually similar to an average degree and aurally similar to a high degree on account of the similarities between the earlier mark ‘LILLY’ and the distinctive verbal element ‘LILY’ of the contested sign. Given that the differences between the signs are essentially confined to the non-distinctive element ‘SILK’ and the figurative decorative elements of the contested sign, the Cancellation Division considers that the differences between the signs are not sufficient to counteract the similarities.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (silk clothing and headgear) (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration No 580 282. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to those of the earlier trade mark, including those similar to a low degree given the relevant similarities between the signs.

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

Since the cancellation application is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its reputation as claimed by the applicant even for identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the earlier mark for dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

For the sake of completeness, the EUTM proprietor submitted some documents to show use of the contested mark however this evidence is immaterial to these proceedings. Furthermore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the applicant, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

REPUTATION — ARTICLE 60(1)(c) IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

According to Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, a European Union trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, where there is an earlier mark as referred to in Article 8(2) EUTMR and the conditions set out in paragraph 5 of that Article are fulfilled (that is, where the contested trade mark is identical with, or similar to, the earlier trade mark and it is registered for goods or services which are identical to, 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 European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the 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 for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The applicant’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark and still exist at the time of the application for invalidity; it must exist in the territory concerned and for the goods and/or services on which the application is based.

• Risk of injury: 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 under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The application may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the present case, the EUTM proprietor has not claimed explicitly to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

According to Article 16(1) EUTMDR, the applicant may present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of invalidity proceedings.

In particular, according to Article 16(1)(b) EUTMDR in conjunction with Article 7(2)(f) EUTMDR, when the application is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the applicant must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

1. Reputation of the earlier trade mark

According to the applicant, the earlier trade mark has a reputation in the European Union and particularly in Denmark.

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 the present case, the contested trade mark was filed on 24/02/2016. Therefore, the applicant was required to prove that the trade mark on which the application is based had acquired a reputation in the European Union prior to that date. In addition, the reputation must exist until the decision on the application for invalidity is taken. The evidence must also show that the reputation was acquired for the goods for which the applicant has claimed reputation and for which use has been proved, namely:

Class 25: Religious and festive occasions clothing, footwear and headgear.

The application is directed against the following remaining services:

Class 35: Direct mail advertising; advertising; import-export agency services; provision of an on-line marketplace for buyers and sellers of goods and services.

In order to determine the mark’s 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 mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 09/07/2018 the applicant submitted the evidence listed above in the proof of use section.

The abovementioned evidence indicates that the earlier trade mark has been used in Denmark for a substantial period of time since the applicant’s company was founded in 1946. The sales figures, marketing efforts and the references to the trade mark ‘LILLY’ in the specialised press suggest that the trade mark has a consolidated position in the market of wedding dresses. Furthermore, the applicant has submitted two surveys dated respectively November 2000 (conducted by Gallup A/S) and June 2018 (conducted by Megafon A/S). Reputation has to be proved at the moment the application is filed (24/02/2016) and it must still exist when the decision on invalidity is taken. Evidence of reputation with regard to a later point in time than the relevant date might nevertheless allow the drawing of conclusions as to the reputation of the earlier mark at the relevant date (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 31;17/04/2008, C‑108/07 P, Ferro, EU:C:2008:234, § 53; 15/12/2005, T‑262/04, Briquet à pierre, EU:T:2005:463, § 82). The possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is usually built up over a period of years and cannot simply be switched on and off. Moreover, certain kinds of evidence such as opinion polls are not necessarily available before the relevant date. In the present case, the survey dated June 2018 demonstrates a sufficiently high degree of recognition (‘LILLY’ has a top-of-mind awareness level of 57 % among the entire population in relation to wedding dresses, which is an indication of a strong brand. In marketing, top-of-mind awareness refers to a brand being first in customers’ minds when thinking of a particular industry or category). Furthermore, the survey dated November 2000 already showed a top-of-mind awareness level of 65 % among the entire population. Therefore, the survey dated 2018 is relevant to the extent that it confirms the remaining evidence and the survey conducted in 2000. Furthermore, it indicates that the reputation of the earlier mark persisted after the filing date of the contested mark and at the time of this decision. Therefore, the surveys, together with the remaining evidence, suggest that the market conditions have not substantially changed between 2000 and 2018 and indicate that the earlier trade mark has acquired a certain degree of recognition among the relevant public on the relevant date, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation in Denmark for wedding dresses. The Court has clarified that for an earlier European Union trade mark reputation throughout the territory of a single Member State may suffice (06/10/2009, C‑301/07, Pago, EU:C:2009:611).

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

2. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

3. The ‘link’ between the signs

As seen above, the earlier mark enjoys some degree of reputation in Denmark and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

In the present case, the earlier mark enjoys some degree of reputation in Denmark for wedding dresses in Class 25. These goods are directed at the public at large.

Contested services in Class 35

Regarding the contested services direct mail advertising; advertising; import-export agency services in Class 35, those services are so different to the applicant’s reputed goods that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

As explained above in the comparison of the goods and services, advertising services consist 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. 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. Import and export agency services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements and they are provided by specialised companies.

The goods and services in conflict do not have the same nature, purpose, method of use, their providers/producers are different and they are neither in competition nor necessarily complementary. Furthermore, there is no overlap between the relevant sections of the public. Each trade mark targets a different type of public. While the contested services are aimed at professionals, the earlier trade mark was found to have a reputation only among the general public. Given that the public for the contested trade mark is completely distinct from the relevant section of the public among which the earlier trade mark enjoys a reputation, no association will be made between the signs.

Moreover, the earlier mark has not acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. Finally, in relation to the services at issue, the applicant has not put forward any example that would allow the Cancellation Division to consider that use of the contested trade mark would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier trade mark.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Cancellation Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the application for invalidity is not well founded under Article 8(5) EUTMR and must be rejected in relation to the contested direct mail advertising; advertising; import-export agency services in Class 35.

Contested services in Class 35

Regarding the contested provision of an on-line marketplace for buyers and sellers of goods and services in Class 35, they relate to the on-line sale of goods and they are directed at the public in general. An online marketplace (or online e-commerce marketplace) is a type of e-commerce site where a product or a service information is provided by multiple third parties, whereas transactions are processed by the marketplace operator. Online marketplaces are the primary type of multichannel e‑commerce and can be a way to streamline the production process. Therefore, there is a link between these services and the applicant’s wedding dresses, which are likely to be sold on-line, and these goods and services are therefore likely to have the same commercial origin. Furthermore, they target the same public.

Taking into account the similarities between the signs (they are visually and conceptually similar to an average degree and aurally similar to a high degree), the inherent distinctiveness of the earlier mark together with its reputation in Denmark and the proximity between the goods and services intended for the same public, the Cancellation Division considers that a link between the signs cannot be excluded.

Although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96)

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the applicant must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the applicant should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

However, in the present case, the applicant’s arguments in support of the risk of injury are only general assertions that the use of the contested sign would allow the EUTM proprietor to benefit from the goodwill of the earlier mark as a result of its intensive use, promotion and selling power, and that use of the contested mark for goods that are not under the applicant’s control may have a negative impact on the reputation acquired and will dilute the distinctiveness of the applicant’s trade mark.

The applicant has not put forward any examples that would allow the Cancellation Division to understand satisfactorily that there is a likelihood of such unfair advantage taking place. Certainly, the applicant cannot merely contend that unfair advantage would be a necessary consequence flowing automatically from use of the contested sign, in view of the reputation of the earlier mark and, in the present case, its similarity to the contested mark. As a rule, general allegations of unfair advantage, as made by the applicant, are not sufficient in themselves. Moreover, the applicant failed to consider the services at issue.

The applicant who invokes the protection granted by Article 8(5) EUTMR is required to provide evidence that use of the later mark would be detrimental to the distinctive character or the repute of the earlier mark. To that end, the applicant is not required to demonstrate actual and present harm to its mark. When it is foreseeable that such injury will proceed from the use that the proprietor of the later mark may make of its mark, the applicant cannot be required to wait for it actually to occur in order to be able to prohibit that use. The applicant must, however, prove that there is a serious risk that such an injury will occur in the future by providing prima facie evidence of a future risk of detriment, which is not hypothetical.

As regards the applicant’s arguments that it has no control over the quality of the EUTM proprietor’s services, the Cancellation Division considers that this is insufficiently detailed as it does not explain why, how or to what extent the contested trade mark would be detrimental to the repute of the earlier mark.

Furthermore, the distinctiveness of a mark cannot simply be diluted because the earlier mark has a reputation and is similar to the contested mark as this would involve an automatic and indiscriminate recognition of a likelihood of dilution for all trade marks of repute and would negate the purpose of the condition of proving detriment.

It is possible that an extremely strong reputation may, exceptionally, constitute in itself an indication of the future, non hypothetical risk of the mark applied for, as such, taking unfair advantage in relation to each of the goods and services that are not similar to the goods and services in respect of which the earlier mark is registered (02/10/2015, T‑625/13, DARJEELING collection de lingerie (fig.) / DARJEELING et al., EU:T:2015:742, § 134, § 139). However, in the present case, the degree of reputation proven is not exceptionally high and this does not apply.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30).

This is confirmed by Article 7(2)(f) EUTMDR which establishes that, when the application is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the applicant must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the facts, evidence and arguments submitted by the applicant is in no way suffice to substantiate how the use of the contested mark in relation to the contested services in Class 35 would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier mark for wedding dresses in Class 25, the application is considered not well founded under Article 60(1)(c) in conjunction with Article 8(5) EUTMR.

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

According to Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, upon application by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, a registered European Union trade mark shall be declared invalid where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

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

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

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

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

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

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

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

The right under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(2)(d) EUTMDR, if the application for invalidity is based on an earlier right within the meaning of Article 8(4) EUTMR, the applicant must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the applicant to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the applicant ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the applicant must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The applicant must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the applicant may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the applicant must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the applicant merely mentioned the Danish Consolidate Trade Marks Act Section 3(1)(ii) without providing the content (text) of the legal provision in the original language or providing such evidence by making a reference to that source for the online substantiation (Article 7(3) EUTMDR). Therefore, it did not submit sufficient information on the legal protection granted to the type of trade sign invoked, namely the non-registered trade mark ‘LILLY’. Furthermore, the applicant did not submit any information on the conditions to be fulfilled for the applicant to be able to prohibit the use of the contested trade mark under the laws in Denmark.

Therefore, the application for invalidity is not well founded under Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

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

Carmen SÁNCHEZ PALOMARES

Frédérique SULPICE

Julie, Marie-Charlotte HAMEL

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.