CANCELLATION No 34 609 C (INVALIDITY)

One-Lux Limited, 3 Merchants Park, Aldridge, Walsall WS9 8SW, United Kingdom (applicant), represented by Swindell & Pearson Ltd, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative)

a g a i n s t

Kevin Lee, 36 Rakehill Road, Leeds W Yorkshire LS15 4AJ, United Kingdom (EUTM proprietor), represented by Harrison IP Limited, 3 Ebor House, Millfield Lane, Nether Poppleton York YO26 6QY, United Kingdom (professional representative).

On 30/06/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 15 250 707 , all in Class 11. The application is based on the non-registered trade marks ‘SOLO’ and ‘One-LED SOLO’ used in the course of trade in Germany, Ireland, Luxembourg, Malta, the Netherlands and the United Kingdom. The applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed an application for invalidity on 03/04/2019. It requested that the contested trade mark be declared invalid in its entirety based on the fact that it holds earlier non-registered trade marks (as mentioned above) which are protected under Article 60(1)(c) EUTM in combination with Article 8(4) EUTMR.

In support of its claims, the applicant submitted evidence of use of its non-registered trade marks, as listed and analysed below. It claimed that the marks had been used in the course of trade, of more than local significance, across the European Union and the United Kingdom for a number of years prior to the filing date of the contested EUTM.

The EUTM proprietor replied on 29/08/2019. It denied that the invalidity applicant had made a sufficient case for the contested EUTM to be declared invalid. In particular, it claimed that the applicant had not complied with the requirement as set out in the Office’s Guidelines to outline and prove the national laws on the basis of which the use of its non-registered marks would allow it to prevent the use of the contested EUTM. Furthermore, the EUTM proprietor asserted that the evidence of use submitted consisted of internal documents issued by the applicant itself which did not prove public use in the course of trade and had a reduced probative value. It stressed that the invoices showed minimal sales and did not convincingly support the sales set out in the Witness Statement. It contended that the evidence did not establish use at the date of the filing of the invalidity application. It explained that it was not necessary to put forward any arguments as regards the likelihood of confusion given the multiple flaws of the evidence of use. However, it added that the goods at issue were dissimilar and highlighted the differences between the signs and the fact that many trademarks registered in the EU for goods in Class 11 include the element ‘SOLO’, which reduces the likelihood of confusion between the trade marks at issue.

The applicant replied on 16/01/2020. It indicated that the invalidity action was maintained only in relation to the non-registered marks as far as they were used in the course of trade in the United Kingdom and Ireland and it submitted evidence in support of the applicable law namely passing-off. It explained how the requirements of passing-off namely, goodwill, misrepresentation and damage, were fulfilled in this case. It rebutted the EUTM proprietor’s argument regarding the deficiencies of the evidence of use in particular as regards the lack of public use and the insufficient extent of use. It added that the evidence was corroborated by a Witness Statement.

In its last observations dated 26/03/2020, the applicant put forward that its former arguments were maintained. Furthermore it argued that the applicant’s clarifications concerning the applicable law had been submitted only at the prompting of the EUTM proprietor. It claimed that those clarifications were still not enough to provide the Cancellation Division with a concise and coherent outline of the relevant laws applicable in the UK and Ireland. It pointed out that the Witness Statement did not magically make up for the low quality and probative value of the evidence. Finally it reiterated its arguments regarding the diluted nature of the term ‘SOLO’ in consequence of which the threshold for misrepresentation or likelihood of confusion was higher in the sense that small differences could suffice to exclude misrepresentation on the part of the relevant public.

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

Pursuant to Article 60(1)(c) EUTMR, an EU trade mark shall be declared invalid on application to the Office where there is an earlier mark as referred to in Article 8(4) EUTMR.

Pursuant to Article 8(4) EUTMR, upon opposition 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, the trade mark will be rejected 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;

2. 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 opponent acquired rights to the sign on which the opposition 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.

While national law applies when determining whether a particular right is recognised and protected under the national law, whether its holder is entitled to prohibit the use of a subsequent trade mark and what conditions need to be met under national law for the right to be successfully exercised, the requirement of ‘use in the course of trade of more than mere local significance’ is to be interpreted in the context of EU law (European standard).

These abovementioned conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the claim 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.

Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

Therefore, the question whether the use of a non-registered sign is of more than mere local significance will be answered by applying a uniform European standard (18/04/2013, T-506/11 and T-507/11, Peek & Cloppenburg, EU:T:2013:197, § 19, 47-48).

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration or invalidating a registered European Union trade mark. An earlier right of that kind must be reserved for signs with a real and actual presence on their relevant market.

To be capable of invalidating a registered trade mark, the sign relied on in invalidity proceedings must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory.

In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance.

Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166), or the priority date if relevant. Furthermore, in invalidity proceedings, the applicant also has to prove that the sign was used in the course of trade of more than local significance at another point in time, namely at the time of filing of the invalidity request (05/10/2004, 606 C, and 03/08/2011, R 1822/2010-2, Baby Bambolina (fig.), § 15).

In the present case, the contested trade mark was filed on 21/03/2016 and the invalidity request was filed on 03/04/2019. Therefore, the applicant was required to prove that the non-registered marks on which the application is based were used in the course of trade of more than local significance in the United Kingdom before and up to those dates. The evidence must also show that the applicant’s signs have been used in the course of trade for the following goods, as claimed by the applicant.

Emergency lighting; emergency lighting apparatus; emergency lighting installations; battery powered fluorescent emergency lighting units; battery powered incandescent emergency lighting units; lighting and emergency lighting components; LED safety lamps; LED lamps; LED lighting assemblies for illuminated signs. Power modules; lighting conversion modules; LED drivers; lighting ballasts; batteries for lighting; batteries for emergency lighting; battery leads; microwave detectors; microwave connectors; electric switching apparatus; apparatus and instruments for switching electricity.

On 03/04/2019 and 05/04/2019, the applicant filed the following evidence:

• Witness Statement of Ms GM as the Managing Director of the EUTM proprietor One-Lux Limited since October 2008, indicating that the company first used the trade mark ‘SOLO’ at the beginning of 2014 for a light emitting diode (LED) lamp and driver kit used primarily for emergency lighting. She explains that the goods are promoted primarily through brochures, email marketing and tradeshows rather than via press advertisements. The statement includes the following table which indicates the number of invoices issued in the period from 01/07/2014 to 20/03/2016 as well as the number of products and the corresponding values.

The following exhibits are annexed to the Witness Statement:

• Exhibit GM1: electronic version of a 24-page document in English entitled ‘Product Guide 2014’ whose cover page includes the indication ‘ONE LUX’. The brochure includes several products designated by several trade marks out of which one, in the category ‘Emergency’, is referred to as follows:

• 

The description refers to an emergency lighting lamp kit. The last page of the brochure features the date of 11/03/2014.

• Exhibit GM2: invoice dated 31/03/2014 to the attention of one-Lux Ltd in the United Kingdom for the printing of 3 000 copies of a 24-page promotional booklet.

Ms GM puts forward that the invoice refers to the brochure submitted as GM1 and that the majority of the 3 000 copies were distributed during an exhibition held in Frankfurt in March-April 2014 whereas 1 000 copies were returned to the United Kingdom and distributed to electrical wholesalers, distributers and lighting manufacturers predominantly in the United Kingdom. She adds that the brochure was reprinted twice in 2016 and 2018 for the participation of the company to the 2016 and 2018 editions of the same exhibition.

• Exhibit GM3: extracts from the Light+Building Show’s website (http://light-bulding.messefrankfurt.com) dated March 2016 and from the EUTM proprietor’s website dated April 2016 obtained with the internet archive Wayback machine. The event is referred to as ‘the world’s leading trade fair for lighting and building services technology’. The extract from the EUTM proprietor’s website mentions its participation to the 2016 Light+Building Show. These documents do not mention trade marks. Ms GM indicates that the ‘SOLO’ products were exhibited.

• Exhibit GM4: extracts from the EUTM proprietor’s website at www.one-lux.com providing details of the goods sold by the company, dated December 2014, February 2015 and July 2015 obtained with the Wayback machine. They mention several products including the ‘ONE-LED SOLO’ non maintained LED Lamp and Driver kit.

• Exhibit GM5: Extract from the website https://onelux.createsend.com/t/ViewEmail printed in March 2019 consisting of a 3-page document concerning the ‘One-LED SOLO Non Maintained 3-hr Emergency LED solution’. According to the Witness Statement, this document was sent by e-mail in the context of a marketing campaign in February 2015. A list of recipients identified only by their first names is annexed together with a number which according to Ms GM’s explanation is the number of times they opened the document.

• Exhibit GM6: 54 invoices dated 2014 and 2015 to the attention of companies in Ireland (10), Luxembourg (1 invoice), the Netherlands (2 invoices) and the United Kingdom (40). The sign ‘ is displayed in the header and products described as ‘One-Led SOLO N/M Emergency 3W are mentioned in all invoices. The net unit price of the product is approximately GBP 32. The quantities of these products in each invoice vary from 1 unit to several hundreds.

Preliminary remark

Article 10(6) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. However, as far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. The probative value of such statements depends on whether or not they are supported by objective evidence or evidence originating from independent sources.

Assessment of the evidence

As previously mentioned, under Article 8(4) EUTMR, the existence of an earlier non-registered trade mark or of another sign gives grounds for invalidity if the sign satisfies, inter alia, the following conditions: it must be used in the course of trade and the use must be of more than mere local significance.

The condition of use in the course of trade of more than local significance is apparent from the very wording of Article 8(4) EUTMR (reiterated in Article 7(2)(d) EUTMDR), and must, therefore, be interpreted in the light of EU law.

As far as the time of use of the sign is concerned, the opponent must prove that use took place before the filing of the EUTM application or the priority date if relevant, namely, in the present case, 21/03/2016 (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 166-168). This applies mutatis mutandis to invalidity proceedings.

Moreover, it must be clear from the evidence that the use continues on the date of the filing of the invalidity request, namely up to 03/04/2019.

Article 7(2)(d) EUTMDR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent must provide evidence of its acquisition, continued existence (emphasis added) and scope of protection. Failure to prove the existence, validity and scope of protection of the earlier mark or right within that period will lead to the opposition being rejected as unfounded. The Boards of Appeal have established that these provisions applied mutatis mutandis to cancellation proceedings. The Boards of Appeal considered that since for signs invoked under Article 8(4) EUTMR, use constitutes the factual premise justifying the existence of the right, the same factual premise must still exist, and be proved, on the date of filing of the invalidity request (30/07/2010, 3 728 C, § 25-28; 03/08/2011, R 1822/2010-2, BABY BAMBOLINA (FIG. MARK); 23/10/2013, T-581/11, Baby Bambolina, EU:T:2013:553).

In the present case, none of the documents submitted suggest that any use of the applicant’s non-registered trademark (let alone use of more than local significance) took place in at least the last three years previous to the filing of the invalidity application.

The only document which bears a date in 2019 is the extract from the website https://onelux.createsend.com/t/BiewEmail consisting of a brochure emailed to customers in the framework of a marketing campaign (Exhibit GM5). However, it is clear that the date in question is the printing date of this document from the internet and indeed the Witness Statement indicates that the campaign took place in February 2015. The document includes figures to which the applicant refers as the number of times the customers opened those documents but no dates are mentioned.

According to the Witness Statement, the use of the ‘SOLO’ trade marks started in 2014. The invoice for 3 000 brochures (out of which 1 000 were allegedly distributed to 1000 customers in the UK) is dated 2014. The invoices (Exhibit GM6) and the extracts from the applicant’s website obtained with the Wayback machine (Exhibit GM4) are dated in 2014 and 2015.

The dates of 2016 and 2018 are mentioned in the Witness Statement.

Use in 2016 is hardly relevant because it was still much before the date of filing of the application for invalidity. Additionally, the information provided in the Witness Statement is intrinsically not revealing in terms of use of the ‘SOLO’ or ‘One-Led SOLO’ marks apart from not being corroborated by objective evidence. Indeed the table with the number of invoices, number of products sold and amounts of sales concerning the UK is for the period from 01/07/2014 to 20/03/2016 as a whole and does not include a breakdown by year. Neither the invoices nor any other documents corroborate sales or any use in 2016.

Ms GM also indicates in her statement that the ‘SOLO’ products allegedly presented at the 2014 exhibition in Frankfurt were also presented at the same event in 2018 (and 2016). Firstly, the exhibition of products at fairs in Germany is of hardly any relevance as regards use in the relevant territories which are Ireland and the UK. In addition, the statement is not corroborated by any other document either. The publication on the applicant’s website referring to its participation to the Frankfurt Exhibition of March 2016 (Exhibit GM3) does not refer to any specific products (while it is clear from the 2014 brochure of Exhibit GM1 that the applicant markets a lot of products under other trade marks). No documents support that the ‘SOLO’ products were still in the applicant’s catalogues as from 2016. Finally, no documents prove the applicant’s participation to the exhibition in 2018.

Therefore, the documents do not establish any use of the marks ‘SOLO’ or ‘One-LED SOLO’ between the date of the latest invoice (16/11/2015) and the date of filing of the invalidity application on 03/04/2019. In view of the length of this period (more than 3 years), there is no room for presuming that the use continued.

In particular, as regards the market concerned, namely the lighting market which is subject to constant technological and regulatory changes, it cannot be taken for granted that a product which was available under a certain trade mark at a certain date is still available and marketed under the same trade mark several years later.

Genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

It follows from the above that the applicant has not proved use in the course of trade of a sign of more than mere local significance up to the date of filing of an application for a declaration of invalidity.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the application must be rejected as unfounded.

Considering the above, it is not necessary to address the other contentions of the parties as summarised in the section concerning their arguments. However, in view of the EUTM proprietor’s claims regarding the fact that the applicant submitted the information regarding the applicable national law only in reply to its criticism in this regard and that this evidence should not be taken into account, the Cancellation Division finds it useful to clarify that pursuant to Article 16(1) EUTMDR, the applicant shall present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of invalidity proceedings. Therefore, the applicant may submit arguments and evidence in support of the application at any time prior to the closure of the proceedings.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Marta CHYLIŃSKA

Catherine MEDINA

Jessica LEWIS

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.