CANCELLATION No 26 443 C (INVALIDITY)

Ventas Coffee Hungary Kereskedelmi és Szolgáltató Kft., Erzsébeti út 5/b, Hódmezővásárhely 6800, Hungary (applicant), represented by Danubia Szabadalmi És Jogi Iroda Kft., Bajcsy-Zsilinszky út 16, 1368 Budapest, Hungary (professional representative)

a g a i n s t

Khairat Al-Manafie Company, Zuqaq al-Balat Ahmed Tabarra street Bedon building Second floor, Beirut, Lebanon (EUTM proprietor), represented by Bogdan Alecu, Brasov, strada Paducelului 18, 600012 Brasov, Romania (professional representative).

On 30/07/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 16 323 008 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 16 323 008 ‘MATRIX’. The application is based on European Union trade mark registration No 3 128 006 ‘MATRIX’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

Preliminary remark

Pursuant to Article 60(1)(a) EUTMR in connection with Article 8(1)(a) EUTMR, upon application by the proprietor of an earlier trade mark, a trade mark shall be declared invalid if it is identical to the earlier trade mark and the goods or services for which the trade mark is registered are identical to the goods or services for which the earlier trade mark is protected.

The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR, which covers situations where there may be a likelihood of confusion due to similarity between the signs and the goods/services, or identity of only one of these two factors. However, Article 8(1)(a) EUTMR covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services.

The specific conditions under these provisions are interconnected. Therefore, an application of invalidity based only on Article 8(1)(b) EUTMR that meets the requirements of Article 8(1)(a) EUTMR will be dealt with under the latter provision.

DOUBLE IDENTITY — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(a) EUTMR

A double identity exists when an earlier trade mark is identical with the contested trade mark and the goods or services for which the latter is registered are identical with the goods or services for which the earlier trade mark is protected. The wording of Article 8(1)(a) EUTMR clearly requires identity between both the signs concerned and the goods/services in question. Whether there is double identity is a legal finding to be established from a direct comparison of the two conflicting signs and the goods/services in question.

1. The goods

The goods on which the application is based are the following:

Class 34: Tobacco, smokers’ articles; matches.

The contested goods are the following:

Class 34: Articles for use with tobacco; matches; tobacco and tobacco products (including substitutes); personal vaporisers and electronic cigarettes, and flavourings and solutions therefor.

Contested goods in Class 34

The contested articles for use with tobacco; matches; tobacco and tobacco products (including substitutes); personal vaporisers and electronic cigarettes, and flavourings and solutions therefor are identical to the applicant’s tobacco, smokers’ articles; matches either because they are identically included in both list of goods or because the contested goods are included in one of the applicant’s broader categories.

2. The signs

MATRIX	MATRIX
Earlier trade mark	Contested trade mark

The signs are identical.

3. Conclusion

The goods and the signs are identical. Therefore, the cancellation application must be upheld pursuant to Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR for all the contested goods.

The application is well founded on the basis of the applicant’s European Union trade mark registration No 3 128 006. It follows that the contested trade mark must be declared invalid for all the contested goods.

Since the application is fully successful on the grounds of Article 8(1)(a) EUTMR, 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(1) and (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

Frédérique SULPICE

Ana MUÑIZ RODRIGUEZ

Pierluigi M. VILLANI

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.