CANCELLATION No C 41 080 (INVALIDITY)

 

‘International Masis Tabak’ LLC, 10 Hrant Vardanyan Str., 0802 Masis, Ararat Region, Armenia (applicant), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative)

 

a g a i n s t

 

Khairat Al Manafie Company, 27 Syborni boulevard, Varna 900, Varna, Lebanon  (EUTM proprietor), represented by Ionut Lupsa, Calea 13 Septembrie no. 90, 1.02, 050726 Bucharest, Romania (professional representative).

 

On 23/09/2020, the Cancellation Division takes the following

 

 

DECISION

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

 

2.	European Union trade mark No 16 322 901 is declared invalid in its entirety.

  

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 16 322 901 MASIS (word mark), (the EUTM) ), filed on 07/02/2017 and registered on 26/06/2019.

The request is directed against all the goods covered by the EUTM namely: matches; articles for use with tobacco; tobacco and tobacco products (including substitutes); personal vaporisers and electronic cigarettes, and flavourings and solutions therefor, in Class 34.

The application is based on the following international trade mark registrations:

1. No 864 053 subsequently designating the EU in 2012 (statement of grant of protection in 2013). The mark was registered for the following goods in Class 34: manufactured and raw tobacco, tobacco products, cigarettes.

2. No 1 121 322 designating Cyprus, Estonia, Latvia, Lithuania and Sweden in 2012. The mark was registered for the following goods in Class 34: tobacco;

3. No 863 552  designating Estonia in 2005. The mark was registered for the following goods in Class 34: manufactured and raw tobacco, tobacco products, cigarettes;

4. No 856 630 subsequently designating Bulgaria and Cyprus in 2012. The mark was registered for the following goods in Class 34: tobacco manufactured and raw, tobacco products, cigarettes.

The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR – likelihood of confusion in relation to the marks laid out above and also the ground of Article 59(1)(b) - bad faith of the EUTM proprietor.

SUMMARY OF THE PARTIES’ ARGUMENTS AND EVIDENCE

The applicant’s arguments:

The applicant ‘International Masis Tabak LLC’ and ‘Grand Tobacco LLC’ are companies registered in Armenia and they belong to the same group ‘Grand Tabak’, part of ‘Grand Holding’. Cigarette production in Armenia was represented by two companies, which are introduced by the common name: ‘Grand Tabak’. ‘Grand Tobacco’ was established in 1997 and became the first enterprise of ‘Grand Holding’.

The ‘Masis’ mark is considered to be one of the first Armenian brands and was allegedly launched in 1924 by ‘Armtabak’ which, according to the Armenian Soviet Encyclopaedia, was the only cigarette and/or tobacco producing industrial association in the Soviet Armenia (one of the 15 republics of the former Soviet Union). After the collapse of the Soviet Union the ownership of all trade marks of ‘Armtabak’ was held by ‘Grand Holding's’ two companies ‘International Masis Tabak’ and ‘Grand Tobacco’ LLC.

‘Grand Tobacco’ was established in the main building of ‘Armtabak’, where the applicant presently has its headquarters. ‘Grand Tobacco’ inherited the rights which previously belonged to ‘Armtabak’, such as ‘Akhtamar’ (from 1949) and ‘MASIS’ (1920s).

The applicant started its operations in 2002 with the first slims and super slims produced in the region.

Khairat Al-Manafie Company (the EUTM proprietor) did not only file the challenged EUTM application MASIS in bad faith but also filed a number of applications for the applicant’s major intellectual property rights before the EUIPO and in other countries. The EUTM proprietor filed the following three EUTM applications reproducing the applicant’s most famous trade marks:

 EUTM No. 16 322 976 DOMINANT filed on 07/02/2017 and registered on 10/07/2019 in connection with products in Class 34, against which an invalidity action is pending on the same grounds as in the present case.

 EUTM No. 16 322 901 MASIS registered for goods in Class 34 on 26/06/2019 object of the present invalidity action.

 EUTM No. 16 382 954 TRIUMPH filed on 24/04/2017 for goods in Class 34 and refused after an opposition filed by a third party.

The applicant also states that the EUTM proprietor also filed five Community Design applications identically reproducing five of the applicant’s tobacco packaging, all being invalidated by the applicant or its affiliated company Grand Tobacco:

Invalidity action No.	Contested RCD No.	Reproduction of the contested RCD	Reproduction of the earlier Design belonging to the applicant or affiliated company
10806	003993591-0001
10808	003559384-0006
10818	003559384-0011
10805	003559384-0001
10804	03559384-0009
10819	3559384-0001

The applicant states that it owns 100 trade marks worldwide that include MASIS and submits a table mentioning 81 Armenian trade mark registrations which include the respective term, all earlier to the contested mark.

The applicant claims that it never had any relationship with the EUTM proprietor. However, in view of the fact that the proprietor operates in the same sector in the tobacco industry in which the applicant is extremely active and is present in the most important Tobacco Fairs worldwide, the applicant considers that it would be impossible that the EUTM proprietor ‘could reasonably ignore the existence of the DOMINANT prior registrations in the name of MASIS’. The Cancellation Division believes that the reference to DOMINANT marks instead of MASIS is possibly related to the parallel invalidity case involving the respective DOMINANT marks.

The applicant states that its watching service revealed in 2017 some fraudulent trade mark filings in Romania, EU, Serbia, Turkey and Iraq. Since most of the trade marks are formed of typical Armenian words and were taken form ‘Armtabak’ ‘which comes from 1920s’, the applicant began filing oppositions or invalidity actions. The applicant mentions that eleven oppositions have been filed in Romania, seven invalidations of RCD and three oppositions against EUTM applications have been filed before the EUIPO, while ‘ten applications were filed’ in Iraq (the applicant has not explained the nature of such applications).

The applicant accuses the EUTM proprietor for applying ‘for the applicant’s marks’ mainly for Middle East country markets. In Iraq, in 2017, the EUTM proprietor applied for the registration of the applicant’s main trade marks: DOMINANT, NOY, MASIS, GLORIA, TIP TOP, BLACK TIP, TRIUMPH, GARNI, EREBUNI, VAN and AKHTAMAR. The applicant’s watching service revealed those applications from the Iraqi Trademark Gazette and, consequently, in Iraq the applicant initiated lawsuits for seven marks DOMINANT, NOY, MASIS, TRIUMPH in the name of International Masis Tabak LLC and GARNI, EREBUNI, VAN in the name of Grand Tobacco’.

The applicant claims that the ‘MASIS’ mark is registered in more than 50 countries including Jordan, Iran, Iraqi Kurdistan, Syria, Turkey, Georgia, Russia, Belarus, Saudi Arabia, China, Switzerland, Kazakhstan, Kyrgyzstan, as well as designated in all European Union Member States through International Registrations. It further explains that the first ‘Trademark Law’ in Armenia was adopted in 1997 having no regulation for the Soviet trade marks. This meant that all the Soviet trade marks had to be re-registered. Therefore, after the collapse of the USSR the first registration of the trade mark ‘Masis’ was done on 03/09/1997.

The applicant underlines that ‘Masis’ is not an “appellation” and /or a “source of origin” or a geographical indication for any goods, even for tobacco in Armenia or worldwide. From 2002 the applicant began producing new cigarette products devoted to ‘MASIS’, which, the applicant states, were called ‘ARARAT’ “as the synonym of ‘MASIS’”.

The applicant filed the following exhibits:

1&2 Invalidity decisions issued by EUIPO in the design cases mentioned in the above table.

3 Extract from E-search regarding EU Trade mark Registration No. 016322901 MASIS.

4 Extract from E-search regarding EU Trade mark Application No. 016382954 TRIUMPH.

5 A copy of various MASIS registration certificates (from Armenia, WIPO, Iran, Jordan, Kurdistan, UAE, Syria, Russia, Saudi Arabia, Kuwait, along with their corresponding English translations). Amongst these documents there are two certificates from Armenia which state that the expressions ‘INTERNATIONAL MASIS TABAK’ and ‘MASIS’ are well known marks since 2004 and 2009 respectively.

6 Copy from the Armenian Encyclopaedia about the tobacco industry in this country. It is specified that ‘In Armenian SSR, the start of tobacco production was in 1924, when based on ‘Aramazd’, ‘Masis’ and ‘Hrazdan’ workshop-studios of ‘Haykop’ consuming company, Yerevan Tobacco Factory was established (See Yerevan Tobacco Factory)’. ‘In 1978, there were produced 10,4 billion cigarettes and spills of ‘Akhtamar’, ‘Arinberd’, ‘Salyut’, ‘Sevan’, ‘HTS’, ‘Hrazdan’, ‘Masis’, ‘Avrora’, ‘Hayastan’ and of other types, 5,3 billion units without filter, 2,9 billion units of high quality cigarettes with filter, as well as 6,8 billion units of acetate filters.’; (emphasis added)

Copies of ‘the generations of the Trade mark Masis’: the applicant specifies that the mark ‘MASIS’ has a historical meaning for Armenians, since the first tobacco station in Armenia was formed in 1922 in ‘Masis’ station, which is now called ‘Masis’ city. The tobacco products of the applicant, labelled with trade mark ‘Masis’ “have 7 generations” and the applicant submits the cigarette images of the different generations. The applicant claims that ‘before us there were more than 6 generations of ‘MASIS’ cigarettes, from which today have been preserved only 4, two of which have been used by us’ (The cigarette images of the Soviet generations are attached also in Exhibit 6). The first goods that have been produced under the name ‘MASIS’ were the Armenian cigarettes ‘MASIS’ of 2nd Grade Makhorka ¼ pound Tobacco since the 1920s.

7. Documents evidencing the presence of the applicant in International Exhibitions, amongst which are hand dated pictures taken from Tabak EXPO Paris, 2007 showing the stand of the applicant, or invoices and registration forms such as from Inter-tabak, Dortmund, September 2011, Inter-tabak, Dortmund, September 2012 , Inter-tabak, Dortmund, September 2013, Inter-tabak, Dortmund, September 2014, World Tobacco Expo, Munich 2011 and World Tobacco Middle East Exhibitions in 2013 and 2014. This evidence shows different trade marks being presented in the respective exhibitions, but not the mark ‘Masis’.

8 Documents regarding a court case in Iraq along with a partial English translation. From the documents it appears that there was a conflict with the EUTM proprietor, who had filed a trade mark application for registration of the trade mark ‘MASIS’. This mark was later refused by the Iraqi Office because of the similarity with the applicant’s marks in the Iraqi market (the applicant claimed that the reputation of its marks was a key-factor but from the existing documents this statement could not be validated). The decision rendered was appealed by the proprietor who won, the later decision was further appealed and the court decided that three experts who gave their opinion over the similarity between the marks were not trade mark attorneys as required by the Iraqi law. There is no follow up for the respective case.

9 Copy of documents allegedly filed by the EUTM proprietor before the Iraq authorities. The applicant explains that the applications for trade marks GLORIA, TIP TOP, and BLACK TIP have been suspended by the State Registrar of the Republic of Iraq because of bad faith. The applicant further claims that during the referred lawsuits, the EUTM proprietor’s advocates presented falsified documents of trade marks, one for trade mark Triumph No 17 320 issued by OSIM (Romanian Patent and Trademark Office), showing that the Romanian application had been registered in Romania and another issued by the EUIPO showing that the trade mark DOMINANT No M 2017 00691 had been registered as an EUTM. Likewise an allegedly fake registration Certificate apparently issued by OSIM was filed for the trade mark NOY No 150640.

10 Copy of the decision of the Fifth Board of Appeal of 18/11/2019, R2537/2018-5 in which it is stated in paragraph 45 ‘It must be observed that, the possible existence of bad faith is not only assessed by reference to trade marks used in the European Union. This has been expressly confirmed by the Court of Justice in the Malaysia Diary case (27/06/2013, C-320/12, Malaysia Dairy, EU:C:2013:435). Since then, various cases dealt with the issue of bad faith by reference to non-EU trade marks (cf. 01/02/2012, T-291/09, Pollo Tropical chicken on the grill, EU:T:2012:39, 05/05/2017, T-132/16, VENMO, EU:T:2017:316, 29/11/2018, T-681/17, KHADI / KHADI, EU:T:2018:858 and 14/05/2019, T-795/17, NEYMAR, EU:T:2019:329).’

The applicant considers that in view of the multiple filings reproducing the applicant’s trade marks and designs including part of the applicant’s company name, the dishonest intention should be considered as sufficiently proved. Since the challenged mark shares identically the term ‘Masis’, it shall be concluded that the signs are confusingly similar, as said term is reproduced either as the main mark, in a figurative sign or as a part of a package as the house mark in the prior marks.

The EUTM proprietor did not submit any reply to the invalidity action, nor did it file any evidence, despite being expressly invited by the Office to do so.

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

General principles 

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

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

Thus, Article 59(1)(b) EUTMR meets the general interest objective of preventing trade mark registrations that are abusive or contrary to honest commercial and business practices (03/06/2010, Internetportal und Marketing, C 569/08, EU:C:2010:311, § 36 and 37). Such registrations are contrary to the principle that the application of EU law cannot be extended to cover abusive practices on the part of a trader which do not make it possible to attain the objective of the legislation in question (14/12/2000, Emsland-Stärke, C 110/99, EU:C:2000:695, § 51 and 52, and 07/07/2016, LUCEO, T 82/14, EU:T:2016:396, § 52).

In that regard, if, insofar as it characterises the applicant's intention at the time of filing the application for registration of an EU trade mark, the concept of bad faith, within the meaning of Article 59(1)(b) EUTMR, constitutes a subjective element, it must be determined in the light of the objective circumstances of the case (11/06/2009, Lindt Goldhase, C 529/07, EU:C:2009:361, § 42).

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

It is for the applicant for a declaration of invalidity who intends to rely on Article 59(1)(b) EUTMR to establish the circumstances which make it possible to conclude that an application for registration of a European Union trade mark was filed in bad faith, the good faith of the applicant being presumed until proven otherwise (08/03/2017, Formata, T 23/16, EU:T:2017:149, § 45).

This being so, where EUIPO finds that the objective circumstances of the particular case relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith applying to the application for registration of the mark at issue, it is for the proprietor thereof to provide plausible explanations on the objectives and commercial logic pursued by the application for registration of that mark (23/05/2019, Ann Taylor, T-3/18, ECLI:EU:T:2019:357, § 36).

The owner of the trade mark is best placed to provide EUIPO with information on his intentions at the time of applying for registration of that mark and in order to provide it with evidence capable of convincing it that, in spite of the existence of objective circumstances suggesting dishonest intentions, those intentions were legitimate (09/11/2016, Representation of a pattern of wavy, crisscrossing lines, T 579/14, EU:T:2016:650, § 136, and 05/05/2017, VENMO, T 132/16, EU:T:2017:316, § 51 to 59).The wording of Article 59(1)(b) EUTMR does not require that the invalidity applicant has an earlier right; therefore, in principle, an earlier right is not required in order to find bad faith.

The notion of invalidating a trade mark when it was filed in bad faith is not substantially different from that of requiring the use made by a third party, in order to be able to benefit from the specific limitations of the effects of an EUTM referred to in Article 14 EUTMR, to be in accordance with ‘honest practices in industrial or commercial matters’. Both Article 14 EUTMR and Article 59(1)(b) EUTMR are designed to penalise commercial dishonesty and they may be considered in parallel (13/11/2007, R 336/2007-2, Claire Fisher / Claire Fisher, § 23 and 14/02/2012, T-33/11, Bigab, EU:T:2012:77, § 36).

Primarily, it is noted that bad faith can take many forms. It does not necessarily imply any degree of moral turpitude. A European Union trade mark applicant can act in bad faith within the meaning of Article 59(1)(b) EUTMR even though it believes that it is morally and legally entitled to act as it has done (04/06/2009, R 916/2004‑1, Gerson, § 53).

In order to determine whether a trade mark applicant is acting in bad faith, it is necessary, inter alia, to examine whether he intends to use the mark applied for. In that context, it should be noted that the essential function of a trade mark is to ensure that the consumer or end-user can identify the origin of the product or service concerned by allowing him to distinguish that product or service from those of different origin, without any confusion (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 45).

Moreover, in the context of the overall analysis undertaken pursuant to Article 59(1)(b) EUTMR, account may also be taken of the origin of the contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as a European Union trade mark, and the chronology of events leading up to that filing (14/02/2012, T‑33/11, Bigab, EU:T:2012:77, § 21 to 23).

The applicant proved that it was active in the field of cigarettes and tobacco prior to 2017 (the filing date of the EUTM). Furthermore, the earlier marks invoked by the applicant cover all or just some of the following goods in Class 34 manufactured and raw tobacco, tobacco products, cigarettes. The contested goods are matches; articles for use with tobacco; tobacco and tobacco products (including substitutes); personal vaporisers and electronic cigarettes, and flavourings and solutions therefor, in the same Class 34. It is clear that the contested EUTM covers, in the same class as the earlier marks, identical and similar goods.

The applicant also proved that it has a large portfolio of trade marks which include the term MASIS and that the vast majority of such trade marks are prior to the filing date of the contested sign. It is worth noting that many of these trade mark registrations are protected in Armenia and the applicant did not file evidence of these registrations in Lebanon (the country of origin of the EUTM proprietor). Nevertheless, there are also many trade mark registrations which include the term MASIS and that are protected in neighbouring countries: Jordan, Kurdistan, UAE, Syria, Russia, Saudi Arabia, Kuwait and also some registrations at WIPO, designating multiple states from different continents, including all or just some of the EU member states. In this sense the Cancellation Division notes that the international registrations invoked in the case at issue all contain the same term MASIS as in the contested mark, within the expression INTERNATIONAL MASIS TABAK or MASIS TABAK (earlier mark no 4). The reproductions of the invoked earlier marks (listed above in the ‘Reasons’ section) are not very clear, making the respective expressions illegible, but they are seen in the representations attached by the applicant of which some extracts are copied below.

According to the disclaimers contained by the first two marks, the expression INTERNATIONAL MASIS TABAK is protected, whereas the last IR in which the expression is the most visible out of all four IRs does not contain a disclaimer. The third IR contains a disclaimer that states except for the word "GLORIA", the expression "INTERNATIONAL MASIS TOBAK" and the abbreviation "IMT" are considered to be as non-protected elements. Therefore the Cancelation Division will not refer to this trade mark as it understands that the term MASIS is not protected therein.

	Disclaimer: Except for the expression "INTERNATIONAL MASIS TABAK" and the abbreviation "IMT", all other words are considered to be non-protected elements.
	Disclaimer: All records except abbreviation "IMT", expression "INTERNATIONAL MASIS TABAK" and the word "Gallant" are considered to be as non-protected elements.
	Disclaimer: except for the word "GLORIA", the expression "INTERNATIONAL MASIS TOBAK" and the abbreviation "IMT" are considered to be as non-protected elements.

For the sake of clarity, it is not a necessary condition for the finding of bad faith that the cancellation applicant actually possess concrete enforceable rights in the European Union prior to the filing of the contested application. It is sufficient that the applicant has a legitimate right to a sign, which is the case here, since the term MASIS - which it is one of the applicant’s flagship trade marks and part of its company name (at least the most important and distinctive part) - is identical to the contested mark and as the applicant’s products are put on the market under this particular denomination. Furthermore, the evidence shows that the expressions ‘MASIS’ (figurative or not) or ‘INTERNATIONAL MASIS TABAK’ were used by the applicant or its predecessors for many years before the EUTM proprietor filed for the EUTM registration to such an extent that they became well known, at least in Armenia.

Admittedly, the applicant did not provide evidence of the presence of any of its marks in Lebanon. It is also true that from the evidence filed by the applicant (in particular Exhibit 7) that the mark MASIS does not appear to be present in the international trade fairs attended by the applicant, the exception being that it is included in the company name of the applicant ‘International Masis Tabak’. However, the applicant presented its other trade marks in such international trade fairs, trade marks which were subsequently filed by the EUTM proprietor as EUTMs or RCDs. Therefore, the filing of the contested EUTM was not a singular event. The EUTM proprietor’s behaviour of filing multiple EUTM and RCD applications similar or identical to the applicant’s trade marks and designs and for the same or similar goods appears to show the proprietor’s knowledge of the applicant’s business, trade mark portfolio and success on the tobacco market marks as it is outside the realm of coincidence that it would file so many trade marks that coincide with the applicant’s marks without prior knowledge of same.

In other words, taking into account the large amount of trade marks registered by the applicant in the neighboring markets and worldwide, the well-known character of the applicant’s trade mark MASIS and of its company name before the filing date of the EUTM, at least in Armenia, the EUTM proprietor’s knowledge of the applicant’s business and its industrial property rights becomes apparent especially judging by how many of such trade marks and designs were subsequently ‘copied’ by the EUTM proprietor. Therefore, it is the opinion of the Cancellation Division that the facts and evidence submitted in the case at hand allow for the presumption that the EUTM proprietor must have known that the invalidity applicant had been using the signs ‘MASIS’ (figurative or not) and ‘INTERNATIONAL MASIS TABAK’ as its primary marks to identify the commercial origin of at least some of its goods, prior to 07/02/2017, the filing date of the EUTM.

If the EUTM proprietor knows about the applicant’s rights, even though they were not yet registered in Europe, and if it becomes apparent, for example, that the EUTM proprietor filed the contested EUTM not to use it, but only to prevent a third party from entering the market, it may be an indication of bad faith (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 46-47).

In order to determine whether there was bad faith, the central element to be considered is the EUTM proprietor’s intention at the time of filing. This is a subjective factor which has to be determined by reference to the objective circumstances of the case. As mentioned by the Advocate General Sharpston, ‘bad faith relates to a subjective motivation on the part of the trade mark applicant – a dishonest intention or other ‘sinister motive’ – which will none the less normally be established by reference to objective criteria; it involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against such standards’ (Opinion of the Advocate General, 12/03/2009, C-529/07 (Lindt Goldhase, EU:C:2009:361, § 60).

Account must also be taken of whether the EUTM proprietor’s filing intentions may be in pursuit of legitimate objectives. This may be the case, for example, if at the time of filing the contested EUTM, the EUTM proprietor had legitimately already been using the contested EUTM. However, in this case there is no evidence that the proprietor has ever sold or was ever involved in the sector of the contested goods, nor is there any evidence that the proprietor was using the contested sign prior to its filing.

The EUTM proprietor has not provided evidence or explained how, from an infinity of denominations available on the market, it selected precisely the name ‘MASIS’ to register it as an EUTM, denomination, said denomination being the most distinctive element of the applicant’s company name and one of the latter’s flagship marks, all this bearing in mind that both parties are, supposedly (in the absence of contrary information on the actual business of the EUTM proprietor) direct competitors on the tobacco market which has a limited amount of producers. The EUTM proprietor did not provide any explanation or evidence which could prove that its conduct in filing so many similar or identical trade mark registrations and designs to those of the applicant’s earlier rights was justified or followed a legitimate commercial logic in order to counter the clear evidence of bad faith submitted by the applicant. The probability of all these events happening together as a product of chance is highly unlikely.

In this context, the Cancellation Division fails to see the commercial logic on the part of the EUTM proprietor when applying for the contested mark other than a deliberate intention to create an association with the famous company name and trade mark of the applicant and thus to piggyback off of its attractive force and/or to even prevent the applicant from pursuing its business on the EU market. This conclusion is supported by the actions of the EUTM proprietor itself. By filing multiple trade mark and RCD applications and registrations which are identical or similar to the applicant’s earlier rights, amongst them the contested mark, the EUTM proprietor has effectively created an obstacle to the applicant’s expansion into the European Union market. This could effectively prevent the applicant from carrying out its business activities in the EU.

Taking all the above into account, the Cancellation Division concludes that there is sufficient evidence that the EUTM proprietor used its knowledge of the applicant’s business and industrial property rights and its registration of ‘MASIS’ for no other purpose than that of seeking to block the applicant’s access to protection of and, potentially, its ability to use, its ‘MASIS’ marks in the EU.

The applicant accused the EUTM proprietor of submitting false documents in the court proceedings in Iraq mentioned in Exhibit 9. These are serious accusations and the Office is not in the position to investigate this but must rely on the evidence submitted by the parties in inter party proceedings. What the Cancellation Division can state at this point is that, after checking the information provided in the respective documents (which can be checked since they refer to registered EUTMs or national trade marks), is that they indeed provide some erroneous information and data. For example, the registration or the application numbers of the marks given for the most part do not correspond to the claimed Romanian trade marks or EUTMs as can be seen from a cursory search of the register, or correspond to different signs owned by the same or other owners.

The Office cannot rule whether or not the respective documents originated from the EUTM proprietor. In any event this matter can be set aside in view of the sufficient other evidence regarding the bad faith of the EUTM proprietor when filing for the contested EUTM. In the circumstances and in view of the evidence submitted by the applicant, the burden of proof has effectively shifted from the applicant to the proprietor in the sense that the latter should have been able to safely explain and demonstrate the reasons for such a situation.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful on the grounds of bad faith pursuant to Article 59(1)(b) EUTMR and the European Union trade mark should be declared invalid for all the contested goods. Since the application is fully successful on the grounds of bad faith of the EUTM proprietor, there is no need to further examine the other ground of the application, namely Article 8(1)(b) EUTMR in conjunction with Article 60(1)(a) 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. Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant 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 applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

The Cancellation Division

Nicole CLARKE

Ioana MOISESCU

Birgit FILTENBORG

 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.