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CANCELLATION DIVISION |
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CANCELLATION No 20 825 C (INVALIDITY)
Riviera-Airport S.p.A., Viale Generale Disegna, 17038 Villanova d'Albenga (SV), Italy (applicant), represented by Dentons Europe Studio Legale Tributario, Piazza degli Affari, 1, 20123 Milan, Italy (professional representative)
a g a i n s t
Aéroports de la Côte d'Azur S.A., rue Costes et Bellonte - BP-3331, 06206 Nice Cedex 3, France (EUTM proprietor), represented by Bird & Bird, Centre d'Affaires Edouard VII, 3, square Edouard VII, 75009 Paris, France (professional representative).
On 30/07/2019, 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 European Union trade mark No 
(figurative mark)
(the EUTM).
The request is directed against all the services
covered by the EUTM, namely all the services in Classes 35, 37, 39,
41 and 43 (listed below).
The applicant invoked Article 59(1)(b) EUTMR, Article
59(1)(a) EUTMR in connection with Article 7(1)(b), 7(1)(c), 7(1)(g)
and 7(1)(i) EUTMR. The applicant also invoked Article 60(1)(c) EUTMR
in connection with Article 8(4) EUTMR based on the following rights
used in the course of trade in Italy: 1) non-registered trade mark
‘Riviera Airport’; 2) non-registered trade mark ‘RivierAirport’;
3) registered corporate name ‘Riviera-Airport’; 4) trade name
‘Riviera Airport’; 5) domain name www.rivierairport.it; 6) domain
name www.riviera-airport.it; 7) domain name
www.new-riviera-airport.com.
The contested services are the following:
Class 35: Business assistance, management and administrative services; Advertising, marketing and promotional services; Business analysis, research and information services.
Class 37: Vehicle repair, maintenance and refuelling.
Class 39: Packaging and storage of goods; Vehicle parking and storage; Transport; Parking and vehicle storage, mooring.
Class 41: Publishing and reporting; Education, entertainment and sport services; Education, entertainment and sports.
Class 43: Restaurant services; Provision of food and drink.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant filed an application for invalidity on 22/03/2018. It filed the following evidence and explanations:
The Applicant and the Riviera Airport (Exhibits 1 to 19)
The applicant is an Italian company established on 29/09/1988, which manages the airport of Villanova d'Albenga, better known as ‘Riviera Airport’. The airport is located in the Liguria region, in Italy, and it is named after the renowned Riviera. It offers private jets as an interesting alternative to the overcrowded airports in the area and is the home port of Piaggio Aerospace, the only remaining aircraft manufacturer in Italy.
Over the years the airport operated under different names, including “Aeroporto Villanova d'Albenga”, “Aeroporto Clemente Panero”, “Riviera Airport”, “RivierAirport” and “Aeroporto della Riviera”.
In 2002 the applicant registered the domain name www.rivierairport.it which has
continuously and actively been used by the applicant since then.
In 2015, the company Aeropolis S.r.l. acquired 99,5% of the shares of the applicant and under this new private ownership, in 2016 the applicant commenced a large-scale project plan to create a contemporary concept for the airport under its most attractive sign, among the pre-existing signs, namely ‘Riviera Airport’.
To this extent, the applicant started to promote and distributed printed copies of
a plan for modernization and relaunch of the ‘Riviera Airport’, in particular to the aviation authorities in Italy and in the Principality of Monaco, as well as to key players in the aviation sector in Europe and USA, including ACA (the EUTM proprietor’s company). Also, in 2016 the applicant registered the further domain names www.riviera-airport.it and www.new-riviera-airport.com. In this context, on 27/09/2016, the applicant sent an email newsletter to over 500 potential clients worldwide.
The project related to ‘Riviera Airport’ was also presented by means of a design
plan and a master plan, which were developed in collaboration with the companies OBR (Open Building Research) and Milan Ingegneria.
In support of these observations, the applicant filed the following evidence (1 to 19):
Exhibit 1: (5 pages) Excerpt from the Chamber of Commerce, Industry, Handicrafts and Agriculture Riviere di Liguria - Imperia La Spezia Savona showing company registration details for “Aeroporto di Villanova d’Albenga S.p.A.” and its official abbreviations “A.V.A. S.p.A.” and “Riviera-Airport S.p.A.”.
Exhibit 2: (2 pages) Excerpt from Wikipedia of 05/02/2018 showing the entry for ‘Riviera Airport’ (https://en.wikipedia.org/ wiki/Riviera_Airport, mentioning ‘last edited on 2 October 2017, at 14:36’).
Exhibit 3: (2 pages) Excerpt from Wikipedia of 18/01/2018 showing the entry for ‘Riviera’ (https://en.wikipedia.org/wiki/Riviera) mentioning, inter alia, that it is an Italian word which means ‘coastline’ and that the two areas currently known in English as ‘The Riviera’ without additional qualification are ‘the French Riviera (Côte d'Azur) and the Italian Riviera (Riviera Ligure). It is further mentioned that ‘Riviera’ may be also applied to any coastline, especially one that is sunny, topographically diverse and popular with tourists, such as ‘Riviera Maya’, ‘American Riviera’, ‘Red Sea Riviera’, etc.
Exhibit 4: (1 page) Picture of the old terminal of the airport showing the inscriptions ‘RIVIERAIRPORT’ and ‘Aeroporto Villanova d’Albenga’. According to the applicant, the picture is from 2004.
Exhibit 5: (2 pages) Extract from Whois database showing domain name registration details for www.rivierairport.it. It can be seen it was created on 30/01/2002 and is in the name of Ava s.p.a.
Exhibit 6: (1 page) Brochure (undated, according to the applicant from 2004) referring to ‘Aeroporto Villanova d’Albenga S.p.a.’ and ‘Villanova d’Albenga International Airport’ indicating in the contact information the website www.rivierairport.it and the e-mail address rivierairport@info.it.
Exhibit 7: (4 pages) Invoice dated 03/04/2002 issued by ‘Ingraf’ to ‘Aeroporto Villanova S.p.a.’ for registration of the website www.rivierairport.it and 10 e-mail addresses and another invoice dated 03/01/2014 issued by ‘Ingraf’ to ‘Aeroporto Villanova S.p.a.’ for the creation of the website www.rivierairport.it and e-mail hosting services for 2014.
Exhibit 8: (9 pages) Several invoices, and translations in English, dated in 2007, 2009, 2011 and 2013, issued by the Municipality of Villanova d’Albenga to Aeroporto Villanova d'Albenga S.P.A. in connection with yearly tax on advertising space for ‘Riviera Airport’. The advertising medium is indicated as ‘advertising box’, the description of the display is ‘Airport Riviera Airport’ and the location is ‘Airport’.
Exhibit 9: (1 page) Flyer in relation to the 71st Monaco Grand Prix Formula 1 in 2013 advertising the ALBENGA AIRPORT, Italy. The contact information indicates, inter alia, the website www.rivierairport.it and the e-mail address ops@rivierairport.it.
Exhibit 10: (4 pages) Three e-mails dated 20/10/2016, 14/12/2016 and 16/12/2016 showing correspondence between Mr. Toussaint (the applicant’s director) and the Government of the Principality of Monaco in relation to presentation of the plan for the modernisation of ‘Riviera Airport’. A copy of the first page of the design report/plan is attached and is dated 12/10/2016.
Exhibits 11, 12: (5 pages) Extract from Whois database showing domain name registrations for www.riviera-airport.it (created on 16/11/2016, last update on 11/04/2017, in the name of ‘Aeroport Villanova d'Albenga’) and for www.new-riviera-airport.com (created on 23/09/2016, last update on 11/04/2017, in the name of Alexander Kerscher of Counterpart GmbH, Germany).
Exhibit 13: (1 page) Screenshot of 15/02/2018 of the home page of www.new-riviera-airport.com.
Exhibit 14: (2 pages) Copy of an e-mail dated 27/09/2016 advertising the new airport serving Monaco showing the website www.new-riviera-airport.com.
Exhibit 15: (2 pages) Statistical analysis conducted by Active Trail regarding the e-mail newsletter of Exhibit 14 of 27/09/2016. It can be seen that the e-mail was sent to 571 recipients, of which 228 opened it once and 334 were unopened.
Exhibit 16: (3 pages) Printout showing that the website www.new-riviera-airport.com has not been altered since 27/09/2016.
Exhibit 17: (4 pages) E-mail dated 30/09/2016 sent to the applicant by the company OBR (Open Building Research) in relation to in-progress design plan for ‘Riviera Airport’.
Exhibit 18: (8 pages) Invoices dated 30/06/2016, 31/12/2016 and 27/01/2017 issued to A.V.A. S.p.A. by the company Milan Ingegneria in relation to the drafting and technical assistance in the development of the master plan for ‘Riviera Airport’ (with translations in English).
Exhibit 19: (45 pages) Riviera Airport Design report dated 08/11/2016 outlining the project for modernisation and setting forth the design and architectural master plan for Riviera Airport.
Background of the proceedings: relationship with the EUTM proprietor (Exhibits 20 to 30)
The applicant argues that it established and maintained for many years a business relationship with the EUTM proprietor, Aéroports de la Côte d'Azur (“ACA”), which operates the airport with the same name “Aéroports de la Côte d'Azur”. In the business activities, the different airports part of ACA group (Nice, Cannes and Saint-Tropez), use trade marks with the same figurative elements (a stylised palm tree).
In the autumn of 2012, the applicant and a subdivision of ACA, entered into an agreement providing for collaboration between the two companies. In this context, between 2012 and 2013, officers and employees of ACA, including its president, visited the Riviera Airport.
In 2013, the applicant availed itself of ACA as a consultant. The applicant explains that in this consultant role, ACA was involved in the promotion and advertising of the new project for Riviera Airport, in connection with the 71st Grand Prix de Monaco and that in the beginning of 2014 the consultancy agreement between the parties terminated because of a decrease of the traffic at Riviera Airport.
The applicant became aware that shortly after the termination of the agreement, ACA promptly registered the domain name www.riviera-airport.com. The applicant argues and filed some evidence (Exhibit 26, listed below) that this domain name has never been utilised.
Whilst promoting the relaunching of Riviera Airport and its project, the applicant contacted the EUTM proprietor in good faith to propose a possible neighbourly cooperation in February 2017. To this extent, on 21/02/2017 the applicant delivered by hand to the EUTM proprietor two copies of the Riviera Airport design master plan. On 21/02/2017, immediately after receiving the applicant’s letter, the EUTM proprietor (ACA) rushed to submit an application for the registration of the contested EUTM (filed on 22/02/2017).
After that, the EUTM proprietor (ACA) started to hamper the applicant’s project, also sending cease and desist letters, requesting the cease of use of the sign ‘Riviera Airport’ and claiming the exclusive rights on the basis of the contested EUTM applications just filed.
In support of these observations, the applicant filed the following evidence (Exhibits 20 to 30):
Exhibit 20: (3 pages) Screenshot from ACA’s website showing it has airports in Nice, Cannes and Saint-Tropez.
Exhibit
21: (11 pages) Extract from TM View showing ACA’s trade
mark applications:
filed in 2011,
filed
on 01/02/2017 and
filed in 2010.
Exhibit 22: (27 pages): ACA Annual Report 2015, mentioning inter alia that in the last few years (2011-2015) it has offered its services to an average of 10-12 million passengers per year.
Exhibit 23: (2 pages) Invitation for a press conference to be held on 30/11/2012 in relation to International Airport ‘Clemente Panero’ in Villanova D’Albenga (with translation in English). The only reference to ‘Riviera airport’ is in the e-mail address for confirming presence, namely Please confirm your attendance by sending an email to ops@rivierairport.it. It can be seen that amongst the speakers are representatives of both AVA SpA and the EUTM proprietor’s company.
Exhibit 24: (6 pages) Email dated 28/05/2013 (subject ‘previous and current sponsoring actions’) between representatives of the applicant (Mr. Pasqualini) and the EUTM proprietor (Ms. Alessandra del Buono) (with translation in English) in relation to their collaboration for the 71st Grand Prix de Monaco. There are references to Albenga Airport and its availability for the Grand Prix and to the website www.rivierairport.it (the same flyer as in Exhibit 9).
Exhibit 25: (2 pages) Extract from Whois showing domain name registrations for www.riviera-airport.com (created on 26/07/2014 in the name of the EUTM proprietor).
Exhibit 26: (8 pages, in French) Affidavit dated 22/06/2017 by Mr. Fabien de Matteis, in which it is affirmed that the website www.riviera-airport.com has not been used.
Exhibit 27: Letter (in French) dated 20/02/2017 sent by the applicant to the EUTM proprietor proposing a meeting to present the new Riviera Airport plan and possible mutual cooperation.
Exhibit 28: (3 pages) Affidavit by Mr. Julien Roberts, an employee of the applicant, in which it is affirmed that he personally delivered a letter and two copies of the Riviera Airport design master plan to the EUTM proprietor’s office on 21/02/2017.
Exhibit 29: (2 pages, in French) Cease and desist letter by the EUTM proprietor sent to the applicant on 19/05/2017.
Exhibit 30: (2 pages, in French) Cease and desist letter sent by the EUTM proprietor to the applicant on 23/05/2017.
The applicant then proceeds to examine the factors of bad faith pursuant to Article 59(1)(b) EUTMR. It argues that the contested trade mark was filed (on 22/02/2017) and registered in bad faith by the EUTM proprietor. In particular, the applicant claims that the marks are identical and/or confusingly similar and that the parties operate in the same field (airport services). In addition, the EUTM proprietor knew that the applicant was launching a new plan for the airport, which provided for the use of the name ‘Riviera Airport’. The EUTM proprietor never used the contested sign and the contested EUTM was filed only to prevent the applicant from continuing to use the corresponding sign and expanding its business.
As a subordinate line of arguments, the applicant requests the declaration of invalidity of the EUTM pursuant to Article 59(1)(a) EUTMR in connection with Article 7(1)(b), 7(1)(c), 7(1)(g) and 7(1)(i) EUTMR. It argues that the sign ‘RIVIERA AIRPORTS’ conveys obvious and direct information regarding the geographical origin of the services. Moreover, ACA’s airport (EUTM proprietor’s) is not actually located on the Riviera, but it is on the Cote d’Azur, which is at most known as the ‘French Riviera’ by English speakers. Therefore, the EUTM is likely to mislead the public about the origin of the services and the location of the airports.
In relation to Article 60(1)(c) in conjunction with Article 8(4) EUTMR, the applicant refers to, amongst others, Exhibits 4 to 19 and argues that they demonstrate prior use of the sign ‘RIVIERA AIRPORT’ by the applicant. According to the applicant, the fact that the airport business is, by its own nature, non-local and internationally oriented, should be duly taken into account and the use of the sign to distinguish the services related to an airport shall be considered of more than local significance. The applicant also identifies the Italian law relied upon and filed some evidence in relation to the relevant provisions and jurisprudence. The applicant filed the following documents (Exhibits 31 - 37):
Exhibit 31: (2 pages) Article 2(4) of Legislative Decree no. 30 of 10/02/2005 (original version and English translation).
Exhibit 32: (4 pages) Article 12(1)(b) of Legislative Decree no. 30 of 10/02/2005 (original version and English translation).
Exhibit 33: (2 pages) Article 2571 of the Italian Civil Code (in Italian and English).
Exhibit 34: (2 pages) Article 2598(1) of the Italian Civil Code (in Italian and English).
Exhibit 35: (2 pages) Article 22(1) of Legislative Decree no. 30 of 10/02/2005 (in Italian and English).
Exhibit 36: (7 pages) Supreme Court (Corte di Cassazione) decision no. 21847 of 15/10/2014.
Exhibit 37: (9 pages) Court of Turin (Tribunale di Torino), decision no. 3597 of 28/05/2013.
The EUTM proprietor submitted observations and evidence in reply. It argues that the invalidity application is ungrounded and should be rejected. The EUTM proprietor explains it is the second largest airport operator in France with facilities at three locations in the southeast of France (Nice, Cannes and Saint-Tropez), on the Mediterranean coastline, known as Cote d’Azur or Riviera. On the other hand, the applicant operates on the Italian side of the Riviera coastline and the airport ‘Aeroporto di Villanova d’Albenga’, also shortened to, and known to the public as ‘AVA’, is a tiny local airport that has been operating under this name for decades and has never been opened to standard passenger traffic and has been almost unused over the last years. It was recently purchased by an outside investor, with the project of modernizing the airport to open it to commercial flights and make it more attractive.
The
EUTM proprietor claims that the registration of the contested EUTM
was not made in bad faith. In particular, it claims that the
applicant is trying to mislead the Office in making it believe that
it would have conducted its business under the corporate name
‘Riviera Airport S.p.A.’, whereas the entire applicant’s
evidence refers to the use of the name “Aeroporto Villanova
d’Albenga S.p.A.”, sometimes shortened to “AVA S.p.A.”. The
applicant itself identifies the airport as ‘Aéroport de Villanova
d'Albenga’ and not as ‘Riviera S.p.A.’. The applicant changed
its corporate name and added ‘Riviera Airport S.p.A.’ in July
2017, after it initiated opposition proceedings against ACA’s
EUTMs. According to the EUTM proprietor, the applicant did not
present objective evidence showing that it is the owner of the sign
‘Riviera Airport’ or that it has any rights based on the use of
the sign for the purposes of Article 8(4) EUTMR. The fact that ACA
sent a cease and desist letter to the applicant is not sufficient in
itself to establish bad faith. The EUTM proprietor’s airport
services are rendered under the name “Aéroports Côte d’Azur”,
which is commonly understood by the relevant international public as
Riviera. Such reference to the name Riviera is therefore essential
for ACA, and ACA has always had a legitimate interest in the use and
reservation of the name Riviera for conducting its business. This is
the reason why the EUTM proprietor filed marks such as French TM No.
92 423 745
filed
in 1992, French mark ‘Gateway to the Mythical French Riviera’,
the domain name www.riviera-airport.com in 2014 and issued a magazine
called ‘Riviera News’. According to the EUTM proprietor, this
establishes that ACA has always showed a clear interest in the use
and protection of the name Riviera in the course of its business and
it has no dishonest intention, as it seeks to consolidate prior
existing and legitimate interest in the use and protection of the
name ‘Riviera airports’. The EUTM proprietor adds that the reason
why the applicant contacted it and arranged a meeting to present its
“project Riviera Airport”, was to make sure that ACA would have
no objection to and would authorise the intended use of the name
‘Riviera Airport’ as the applicant’s new brand, in replacement
of the name it has enjoyed for decades, ‘Aeroporto Villanova
d’Albenga’. The EUTM proprietor argues it is not attempting to
monopolize the terms ‘Riviera’ or ‘airport’ of their own and
that the applicant would still be in a position to use them in their
generic meaning, to conduct its business.
The EUTM proprietor proceeds to analyse the application on the grounds of Article 7(1)(b), 7(1)(c), 7(1)(g) and 7(1)(i) EUTMR. It argues that the term ‘riviera’ remains vague and will not be perceived by the public as having a strict and precise geographical meaning. Also, the mark has further complexity than the mere combination of the words ‘riviera’ and ‘airports’ due to the use of the coloured elements. According to the EUTM proprietor, the contested EUTM is not deceptive either. The geographical origin is irrelevant in relation to the services for which the contested EUTM is registered. In fact, ACA is located and has commercial operations on a coastline, and more precisely on the Mediterranean coastline, also commonly known as Riviera. Therefore, the applicant’s claim that the contested EUTM would be misleading is groundless. As to Article 7(1)(i) EUTM, it is not applicable, since the contested EUTM does not consist of or contain symbols such as badges, emblems and escutcheons of public interest.
In relation to Article 8(4) EUTM, the EUTM proprietor argues that the applicant failed to prove the necessary requirements, namely it failed to provide: clear and sufficient identification of the applicable Italian law; evidence that any earlier rights have been acquired and evidence of use of more than local significance. The EUTM proprietor makes a detailed analysis, including of the documents filed by the applicant (namely, of Exhibits 4 - 19 and 23, 25, 27) and argues that it clearly shows that the necessary requirements are not met.
In support of its observations, the EUTM proprietor filed the following documents (Annexes 1 - 16):
Annex 1: Extracts showing registration details for 1.1) FR trade mark No 10 3 761 479 ‘Gateway to the mythical French Riviera’ filed in 2010; 1.2) FR mark No 92 423 745 ‘RIVIERA AIRPORTS CCI Cóte d’Azur’ (fig.) filed in 1992; 1.3) Graphic Chart for Aéroports de la Cóte d’Azur - extracts.
Annex 2: 2.1) Whois database extract for the domain name www.riviera-airport.com, registered on 26/07/2014 in the name of AEROPORTS DE LA COTE D’AZUR and 2.2) Covers of the news magazine ‘Riviera News’ dated in the period 1998 to 2005.
Annexes 3 - 11: Article 2571 of Italian Civil Code; Articles 2, 8, 12 and 22 of the Italian Decree n°30/2005; Opposition Division decisions B 2 252 321 and B 2 389 966; copies of decision of the General Court in case T-124/09 of July 7, 2010 and joined cases T-321/11 and T-322/11; Italian Supreme Court decision n°91/1958; Court of Turin, decision of 15/06/2011; Court of Rome decision of 27/02/2004 and Court of Bologna, order of 06/06/2006.
Annex 12: Wikipedia extract showing the entry for the Italian town of Villanova d’Albenga.
Annex 13: Newspaper article from ‘SAVONA NEWS’ dated 21/04/2017 regarding the Villanova d’Albenga airport.
Annex 14: Extracts from dictionaries showing definitions for ‘Riviera’.
Annexes 15 and 16: Extracts from the official Company Register and a copy of Corporate certificate of AVA S.p.A. showing change of name recordal of 19/07/2017 inserting ‘Riviera Airport S.p.A.’.
In its observations in reply, the applicant maintains its position that the EUTM proprietor acted in bad faith. The applicant addresses the points raised by the EUTM proprietor and argues, inter alia, that it confirmed that it had knowledge of the Riviera Airport project and of the applicant’s intention to use the sign ‘Riviera Airport’. Furthermore, the applicant denies the EUTM proprietor’s assertions that the aim of the meeting between the parties was to make sure that ACA would authorise the use of the name ‘Riviera’. To the contrary, the aim of the meeting was discussing a possible cooperation between the two airports in the future. According to the applicant, the EUTM proprietor has never used or has planned to use the contested trade mark and it is clear that no commercial logic justified the filing of the application for the registration of the contested EUTM. The EUTM proprietor filed the contested EUTM being well aware of the prior use of the sign by the applicant and its plans to use it more extensively. In the applicant’s view the changing of the corporate denomination into ‘Riviera Airport S.p.A.’ was totally legitimate, consisting of a natural step in the modernization process of the company.
The applicant analyses the (similar) signs, for which the EUTM proprietor alleged prior use and concludes that they are irrelevant for the proceedings. In relation to Article 8(4) EUTMR, the applicant refutes the arguments provided by the EUTM proprietor and alleges that it duly proved and demonstrated that it had acquired rights to the sign at issue prior to the date of application of the contested EUTM, it used the signs in the course of trade of more than mere local significance and that it has the right to prohibit the use of a subsequent trade mark. The applicant proceeds to list and give explanations in relation to the evidence of use filed and in relation to the respective provisions of Italian law. As to Article 7 EUTMR, the applicant maintains its arguments that the contested EUTM is descriptive and deceptive. In connection with the EUTM proprietor’s analysis and arguments on the evidence provided by the applicant, the applicant provides a counter-analysis of the evidence and refutes the EUTM proprietor’s arguments as groundless and irrelevant. The applicant requests that the contested trade mark should be declared invalid.
The applicant filed the following evidence (Exhibits 38 to 46):
Exhibit 38: (1 page) Translation into English of Exhibit 27.
Exhibit 39: (4 pages) Newspaper article regarding the name ‘Nice-Monaco’.
Exhibit 40: (1 page) Screenshot of the homepage of www.sainttropez.aeroport.fr.
Exhibit
41: (2 pages) Extract from INPI database showing that the FR
trade mark No. 92 423 745
has expired.
Exhibit 42: (1 page) Screenshot of a webpage showing the date (27/05/2004) of the picture submitted as Exhibit 4.
Exhibit 43: (2 pages) Translation into English of Exhibit 10.
Exhibit 44: (5 pages) Tribunale di Milano decision of 24/06/2016.
Exhibit 45: (2 pages) Wayback machine report (summary on MIME-types Count) regarding the domain name rivierairport.it for 2002 - 2017.
Exhibit 46: (1 page) Translation into English of highlighted texts of Exhibits 36, 37 and 44 (Italian case-law).
In its final submissions, the EUTM proprietor repeats all its previous arguments. In addition, it provides some additional arguments in relation to the applicant’s latest submission. In particular, it mentions that the change of name of the applicant to ‘Riviera Airport’ was made after the filing of the contested EUTM and that the applicant continues to be known to the public with its other names (AVA, Aeroporto di Villanova d’Albenga, Aeroporto Clemente Panero). The EUTM proprietor claims that it has always shown a clear interest in the use and protection of the name ‘Riviera’ in the course of its business and the registration of the contested EUTM is not a mere alleged attempt to block the applicant. The registration of the contested EUTM aims at consolidating its rights and protection in association with the name ‘Riviera’. In support of its arguments, the EUTM proprietor mentions that although each of its airports has its own name, it operates its business under the name ‘AEROPORTS DE LA COTE D'AZUR’ and files a copy of its registration as a trade mark (Annex 17). According to the EUTM proprietor the fact that it would not be currently using the contested EUTM is irrelevant precisely because of the invalidity proceedings. Furthermore, it is not trying to monopolize the term ‘Riviera’ or ‘airport’ itself, as it will not be able to do so. The EUTM proprietor registered a semi-figurative mark including these terms and its rights cover the sign taken as a whole, and not the terms included in such a sign taken individually. In conclusion, the EUTM proprietor claims that the application should be rejected as ungrounded.
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).
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).
The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.
Outline of the relevant facts
Reference is made to the facts and evidence set out above in section ‘Summary of the Parties’ Arguments’.
Assessment of bad faith
The applicant essentially argues that at the moment of the filing of the contested mark, the EUTM proprietor acted in bad faith for the following reasons:
- The EUTM proprietor was aware of the existence and use of the applicant’s ‘Riviera Airport’ at the time of filing of the contested EUTM (filed on 22/02/2017), since a business relationship between the parties existed at least between the autumn of 2012 and the beginning of 2014.
- The applicant had an agreement providing for collaboration between the two companies in the area of aviation. Between 2012 and 2013, officers and employees of ACA, including its president, visited the Riviera Airport. In 2013 the applicant was acting as a consultant for the EUTM proprietor in the promotion and advertising of the new project for Riviera Airport in connection with the 71st Grand Prix de Monaco. The agreement between the parties terminated in 2014 because of a decrease of the traffic at the Riviera Airport.
- Shortly after the termination of the agreement, on 26/07/2014 the EUTM proprietor promptly registered the domain name www.riviera-airport.com.
- In February 2017, whilst promoting the relaunching of Riviera Airport and its project for modernisation, following the delivery of copies of the Riviera Airport design master plan by the applicant on 21/02/2017, the EUTM proprietor filed the contested EUTM on 22/02/2017.
- The EUTM proprietor had full knowledge of the applicant’s project and intention to use, amongst the names already used in the past, of the name ‘Riviera Airport’.
- The fact that EUTM proprietor filed the contested EUTM one day after the meeting between the parties reflects its dishonest intentions and the only purpose of the EUTM proprietor is to prevent the applicant from launching its project. The EUTM proprietor started to hamper the applicant’s project, sending cease and desist letters to the applicant (on 19/05/2017 and on 23/05/2017).
- Therefore, the application was filed in bad faith.
Having carefully examined the documents submitted, the Cancellation Division considers that the evidence filed is insufficient for granting a declaration of invalidity based on bad faith. The applicant has not proven that the EUTM proprietor, when filing the application for the contested EUTM, was acting in bad faith and that its sole intention was to prevent the applicant from using its sign within the EU market.
The applicant claims that it was established in 1988 and that it manages the airport of Villanova d'Albenga in Italy operated under different names, such as “Aeroporto Villanova d'Albenga”, “Aeroporto Clemente Panero”, “Riviera Airport”, “RivierAirport” and “Aeroporto della Riviera”. In addition, the applicant claims that it had a business relationship with the EUTM proprietor before the filing date of the contested EUTM, which entailed the promotion of the applicant’s sign ‘Riviera Airport’ by the EUTM proprietor, as well as presentation of a project for modernisation in relation to the relaunching of Riviera Airport.
However, the documents filed by the applicant in proof of its alleged continuous use of the sign ‘Riviera Airport’ are not particularly convincing. Exhibit 1 consists of an excerpt from the respective chamber of commerce and industry and does not contain any relevant information about the use of the sign on the market, or about the date of the entry of the official company abbreviation ‘Riviera-Airport S.p.A.’ into the register. In reply to the EUTM proprietor’s allegation (and documents filed by it, Annexes 15 and 16), showing that the applicant changed its corporate name and inserted ‘Riviera Airport S.p.A.’ in July 2017, i.e. after the date of filing of the contested EUTM, the applicant explained that this was totally legitimate and a natural step in the modernisation process of the company. The applicant also added that the EUTM proprietor already knew of the applicant’s plans to use it more extensively and of its prior use in the past. While it becomes clear that the EUTM proprietor was indeed informed about the new project and planned use (Exhibits 27, 28, filed by the applicant, and not disputed by the EUTM proprietor), it is very difficult to ascertain, on the basis of the documents filed by the applicant, that it used the name ‘Riviera Airport’ in the past in relation to airport services or any other commercially relevant services.
An analysis of the remaining pieces of evidence filed by the applicant confirms this finding. In particular, Exhibits 2 and 3 are excerpts from Wikipedia, which is not a truly reliable source of information, because Wikipedia can be edited at any time and nearly anyone with Internet access can write and make changes to Wikipedia articles. Moreover, as also pointed out by the EUTM proprietor, the entry about ‘Riviera Airport’ wherein it is mentioned that the Aeroporto Villanova d’Albenga has always been known in its home region as ‘Riviera Airport’ was edited after the date of filing of the contested EUTM, namely on 25/07/2017, according to the source quoted in Wikipedia. Exhibits 4 and 42 (a photograph of 2004 of an airport terminal displaying the names ‘Aeroporto Villanova d’Albenga’ and ‘RIVIERAIRPORT’) cannot be taken as evidence of continuous use. Examined in combination with the remaining pieces of evidence, for example, Exhibit 8, which contains invoices (dated in 2007, 2009, 2011 and 2013) issued by the Municipality of Villanova d’Albenga to Aeroporto Villanova d'Albenga S.P.A. in connection with the payment of yearly tax on advertising space for ‘Riviera Airport’, it cannot be concluded that the name under which services were provided in those years is ‘Riviera Airport’ and not any other name. The fact that the applicant paid an advertising tax does not demonstrate that the ‘advertising box’ was actually displayed during those years.
Likewise, Exhibits 5, 6, 7 showing an undated brochure, domain name registration details for www.rivierairport.it created on 30/01/2002 and invoices for domain name registration and e-mail hosting are not sufficient to show commercial use of ‘Riviera Airport’ or ‘RIVIERAIRPORT’. In the absence of any additional information or documents regarding the actual exploitation or the extent of use of the domain name, such as screenshots demonstrating its content or that it was active, or traffic statistics, number of visits, etc., it cannot be considered that these documents show real use. The same is valid about the brochure which, aside from being undated, prominently promotes ‘Aeroporto Villanova d’Albenga S.p.a.’ and ‘Villanova d’Albenga International Airport’; it is only the much smaller address details at the end of the page that indicate the website www.rivierairport.it and the e-mail address rivierairport@info.it. There is no information on file in relation to the distribution of the brochure. Even if it is assumed that it is dated in 2004, as pointed out by the applicant, this brochure is of little, if of any evidential value at all, as it does not show the nature or extent of use and it is not backed up by other supplementary evidence. Also, the Cancellation Division notes that Exhibit 7 contains invoices for the creation of the website www.rivierairport.it both in 2002 and in 2014. In the absence of any additional information or explanation from the applicant why the website had to be created twice, i.e. in 2002 and again in 2014, it can only be assumed that it was not in regular use. As to Exhibit 45 showing the Wayback machine report (summary on MIME-types Count) regarding the domain name rivierairport.it for 2002 – 2017, the Cancellation Division notes that it does not shed any additional light or evidence that would be relevant for the proceedings, such as content of information available on the website, its actual public use, number of visits to the website, etc.
The advertising flyer enclosed as Exhibit 9 in relation to the 71st Monaco Grand Prix Formula 1 in 2013 advertises the ALBENGA AIRPORT – Italy. Again, it is only the address details at the bottom of the page that indicate the website www.rivierairport.it and the e-mail address rivierairport@info.it preceded by the inscription ALBENGA AIRPORT (LIMG) and a telephone number. The applicant did not file any evidence either about the actual distribution of the brochure, the number of clients it attracted or the number of passengers who used the airport services for the event; there are no screenshots from the website showing its content at the time, for example, from the Wayback machine. Such information cannot be extracted either from Exhibits 23 or 24, (invitation for a press conference to be held on 30/11/2012 and Email correspondence dated 28/05/2013). Again, both exhibits seem to refer to International Airport ‘Clemente Panero’ in Villanova D’Albenga and Albenga Airport and the only reference to ‘Riviera airport’ is in the contact e-mail and website address. No relevant information can be extracted in relation to any actual use or the extent, volume and dimension of such use. The only information about distribution of the brochure can be extracted from the e-mail correspondence of Exhibit 24, in which a representative of the EUTM proprietor confirms to a representative of the applicant, that she personally sent ‘a statement issued by us that was forwarded by Stefanella to 320 contacts to announce the Grand Prix and the availability of the Airport of Albenga’. In the following lines of this e-mail, reference is made also to AVA Airport. However, there is no reference to ‘Riviera airport’. In addition, the applicant did not file any evidence showing, for example, the contents of the press conference, any reactions in the media about it. As mentioned, it did not file either any information about actual use during the Grand Prix event.
The remaining exhibits filed by the applicant with the purpose of proving use of the sign ‘Riviera Airport’, namely Exhibits 10 to 19, refer to the period 2016 - 2018 and only concern the creation, design, promotion and similar activities related to the investment and relaunch plan of ‘Riviera Airport’. There is no information or evidence on file showing that actual use in relation to any commercial services took place during this period. Indeed, some of these documents predate the filing of the contested EUTM. Nevertheless, just like the rest of the evidence already analysed in the previous paragraphs, this evidence does not show actual use of the sign, it merely shows plans for such use in the future.
As mentioned above, it follows from the evidence showing prior contact between the parties (e.g. Exhibits 23, 24, 26, 27, 28, 29 and 30) that at the time of filing the contested EUTM, the EUTM proprietor was aware of the existence of the invalidity applicant’s mark and its project to relaunch it, as well as, supposedly, of the existence of the website www.rivierairport.it and the email address ops@rivierairport.it (Exhibit 10).
However, as stated in case-law, the fact that the EUTM proprietor knows or must know that the invalidity applicant has been using an identical/similar sign for identical/similar goods or services for which a likelihood of confusion may arise is not sufficient for a finding of bad faith (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 40).
Furthermore, the fact that the EUTM proprietor knew of the invalidity applicant’s intention to use an identical or similar trade mark for identical or similar goods or services is not sufficient in itself to assume bad faith. If the use of a sign is merely planned, the only arguments which can apply are those which apply in cases of actual prior use, which has not been fulfilled in this case (23/06/2010, R 993/2009‑1, SLIME, § 19).
As seen from the analysis above, in the present case, the evidence filed by the applicant is insufficient to demonstrate prior use. The applicant failed to submit strong and solid evidence demonstrating that it used an identical or a similar mark for identical/similar services in Italy. Even if it is assumed that some prior use existed, the Cancellation Division cannot determine, on the basis of the evidence filed, the duration, frequency and the commercial volume of such use. The applicant failed to submit any financial information about ‘Riviera Airport’, such as annual reports, turnover, revenue figures or number of passengers. The fact that the relevant market for ‘Riviera Airport’ consists of an international public of niche customers, mostly owners or operators of private jets, as argued by the applicant, does not mean that the applicant cannot provide, for example, financial reports or data that were presented to the relevant authorities. The lack of any relevant evidence on file showing the alleged prior continuous and extensive use during a period stretching at least as far back as 2002 cannot be replaced by the argument of occupying a niche market.
The fact that the EUTM proprietor knew of the project for modernisation of the airport and its relaunch under the name ‘Riviera Airport’ before filing the contested EUTM does not necessarily speak in favour of bad faith. Neither does the alleged lack of use of the contested EUTM on the part of the EUTM proprietor (Exhibits 25, 26) or the sending of cease and desist letters (Exhibits 29, 30) show that it acted in bad faith.
As
seen from the evidence on file the contested EUTM has a similar
structure to other trade marks filed by the EUTM proprietor in 2010,
2011 and 2017 (applicant’s Exhibit 21), all of which include the
same figurative element resembling a stylised palm tree and have a
similar structure. Also, the EUTM proprietor filed information about
a trade mark that existed in the past and contained the terms
‘Riviera Airports’
(Annex
1). This mark was filed in 1992 in the name of Aéroport
International Nice-Côte d'Azur,
which is presently operated by the EUTM proprietor. Furthermore, the
EUTM proprietor filed some evidence showing that it registered in
2014 the domain name www.riviera-airport.com
and used the term ‘Riviera’ in the period 1998 to 2005 for the
news magazine ‘Riviera News’ (Annex 2). All these elements in the
behaviour of
the EUTM proprietor speak in favour of legitimate interests of use.
The applicant argues that the EUTM proprietor registered the domain name www.riviera-airport.com in 2014, immediately after the termination of the consultancy agreement between the parties. The Cancellation Division hereby notes that the only document filed by the applicant in order to prove the business relationship between the parties consists of email correspondence (Exhibit 24). As already analysed above, this document refers to International Airport ‘Clemente Panero’ in Villanova D’Albenga, AVA and Albenga Airport and the only reference to ‘Riviera airport’ is in the contact e-mail and website address in the attached flyer. This exhibit (or any of the remaining pieces of evidence) does not support the applicant’s assertions that the applicant and the EUTM proprietor entered into an agreement in 2012 and this agreement was terminated by the applicant in 2014. The applicant did not provide any evidence of the existence of such consultancy agreement or any other agreement imposing any rights, obligations and conditions of any kind on any of the parties involved. The e-mail correspondence can show, at best, that there was some kind of a punctual collaboration between the parties in relation to a specific event (the 71st Grand Prix) and probably plans for future collaborations between the Nice Cote D’Azur Airport and the Airport of Albenga/ AVA Airport.
In addition, the fact that the EUTM proprietor registered in 2014 a domain name www.riviera-airport.com, which is highly similar to the applicant’s domain name www.rivierairport.it registered in 2002, does not trigger a presumption of bad faith. The applicant was obviously aware of the existence of this domain name since 2014 and seemingly did not undertake any steps to defend its rights. At least, it did not file any evidence in that respect. As to the argument and evidence (Exhibit 26) that the EUTM proprietor never used this domain name, the Cancellation Division notes that while in other circumstances this may be taken as an indication of possible bad faith, the circumstances of the present case are different. It suffices to mention that the applicant too failed to demonstrate the actual and public use of its domain name www.rivierairport.it. Apart from a couple of mentions as a website address, there is no information about its public use, visits, contents, length of use, etc. Therefore, the Cancellation Division is unable to draw any relevant conclusions in this respect.
The applicant claims that when filing the contested mark the EUTM proprietor knew of the applicant’s prior trade mark/domain name and that the EUTM proprietor acted dishonestly in filing the trade mark and is trying to prevent the applicant from using the sign within the EU market. As mentioned, the applicant failed to demonstrate prior use with solid and convincing evidence. Also, as mentioned the fact that there was prior knowledge is not sufficient in itself for a finding of bad faith. In order to determine whether there was bad faith, the intentions of the EUTM proprietor at the time of filing must be taken into account.
As to the EUTM proprietor’s intention, the Cancellation Division is of the opinion that it cannot be established with certainty whether the proprietor’s sole objective was to prevent the applicant from using the sign in the EU market.
It was already mentioned that the applicant did not demonstrate that there was a duty on the part of the proprietor to refrain from applying for the EUTM. The evidence simply shows a short cooperation between the parties in 2013 and a presentation of the project for the new Riviera Airport one day before the filing date of the contested EUTM. No further evidence is available in relation to the exact relationship between the parties and whether such relationship concerned the contested sign.
For an invalidity declaration to be pronounced on the basis of bad faith, there must be no doubt about the dishonest intentions of the EUTM proprietor at the time of filing. The applicant has the burden to prove the soundness of the facts on which it bases its allegation, in particular as regards the assumption that the EUTM proprietor acted dishonestly when filing the EUTM. As seen, however, in the present case the evidence does not allow the Cancellation Division to ascertain whether the relationship between the parties created a close enough link to suggest that it is fair to expect the EUTM proprietor not to file an application for the contested EUTM application.
As to the applicant’s allegations that the EUTM proprietor is trying to prevent the applicant from continuing to use the corresponding sign and is sending cease and desist letters, it is noted that the sending of warning notices per se is not an indicator of possible bad faith on the part of the EUTM proprietor. In the present case, after filing an application for the registration of a trade mark, the proprietor’s intention to enforce this right against any identical and/or similar sign covering identical and/or similar goods and services cannot, given the circumstances, be considered as proof of unfair behaviour of the proprietor.
The overall assessment of bad faith must bear in mind the general principle that the ownership of a European Union trade mark is acquired by registration and not by prior adoption by way of its actual use. Particularly when the invalidity applicant is claiming rights to a sign which is identical or similar to the contested EUTM, it is important to remember that Article 59(1)(b) EUTMR moderates the ‘first-to-file’ principle, according to which a sign may be registered as an EUTM only in so far as this is not precluded by an earlier mark with effect either in the European Union or in a Member State. Without prejudice to the possible application of Article 8(4) EUTMR, the mere use of a non-registered mark does not prevent an identical or similar mark from being registered as an EUTM for identical or similar goods or services (14/02/2012, T‑33/11, Bigab, EU:T:2012:77, § 16-17; 21/03/2012, T‑227/09, FS, EU:T:2012:138, § 31-32).
The Cancellation Division therefore concludes, in the context of an overall assessment of the facts and evidence submitted that the applicant failed to provide sufficient evidence showing that the proprietor had applied for the EUTM in bad faith. Article 95(1) EUTMR, second sentence, explicitly states that in invalidity proceedings pursuant to Article 59 EUTMR, the Office will limit its examination to the grounds and arguments submitted by the parties. Therefore, the invalidity application is rejected insofar it is based on Article 59(1)(b) 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)
In the present case, the applicant invoked the following rights used in the course of trade in Italy: 1) non-registered trade mark ‘Riviera Airport’; 2) non-registered trade mark ‘RivierAirport’; 3) registered corporate name ‘Riviera-Airport’; 4) trade name ‘Riviera Airport’; 5) domain name www.rivierairport.it; 6) domain name www.riviera-airport.it; 7) domain name www.new-riviera-airport.com.
Under Article 60(1)(c) EUTMR, a European Union trade mark shall be declared invalid on application to the Office where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled.
According 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 applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) 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 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.
These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the invalidity action 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.
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 preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing either the registration or the validity of a European Union trade mark.
Regarding an application for invalidity based on Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, the invalidity applicant must show the earlier sign’s use in the course of trade of more than local significance by the filing date of the contested EUTM (or the priority date if relevant). In addition, 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. This condition stems from the wording of Article 60(1)(c) EUTMR, which states that an EUTM will be declared invalid ‘where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled’ (decisions of 05/10/2004, 606 C, and 03/08/2011, R 1822/2010-2, Baby Bambolina (fig.), § 15).
A right of opposition or invalidity action of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign or the validity of a registered mark, the sign relied on in an opposition or invalidity action 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. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition or invalidity is protected. Finally, as mentioned above 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 and 166) and at the at the time of filing of the invalidity request.
As mentioned above, the applicant invoked Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR on the basis of seven earlier rights (listed above), used in the course of trade in Italy for the following services (as indicated by the applicant in the invalidity application):
Airport services. Service activities related to air transportation. Vehicle parking and storage; Transport; Parking and vehicle storage. Business assistance, management and administrative services; Business analysis, research and information services; Advertising, marketing and promotional services. Vehicle repair, maintenance and refuelling; Packaging and storage of goods; Publishing and reporting.
In the present case, the contested trade mark was filed on 22/02/2017. Therefore, the applicant was required to prove that the signs on which the invalidity application is based were used in the course of trade of more than local significance in Italy prior to that date (22/07/2017) and, also, at the time of filing of the invalidity request (22/03/2018).
On 22/03/2018 and on 31/08/2018 the applicant submitted arguments and evidence. All the pieces of evidence submitted by the applicant have already been listed above in the section ‘Summary of the Parties’ Arguments’ and will not be listed here again.
As mentioned above, the condition requiring use of the sign in the course of trade is fundamental in order to enjoy any protection against the registration or validity of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.
The Court of Justice ruled that the ‘use of the sign in the course of trade’ within the meaning of Article 8(4) EUTMR refers to the use of the sign ‘in the course of a commercial activity with a view to economic advantage and not as a private matter’ (12/11/2002, C-206/01, Arsenal, EU:C:2002:651, § 40; 25/01/2007, C-48/05, Opel, EU:C:2007:55, § 18; 11/09/2007, C-17/06, Céline, EU:C:2007:497, § 17).
Having examined all the evidence in detail, the Cancellation Division notes that the evidence submitted by the applicant is insufficient to prove that the earlier signs were used in the course of trade of more than local significance in connection with the services on which the invalidity application is based before the relevant dates and in the relevant territory.
The evidence filed by the applicant in order to demonstrate prior use has been analysed in detail above in the section on bad faith. The same findings equally apply here. The applicant failed to provide a convincing picture of use of the applicant’s signs prior to the filing of the contested trade mark. Although the applicant commenced plans for such use, as shown by Exhibits 10 to 19 referring to the period 2016 – 2018, no evidence was filed of actual and public use that resulted into an economic activity.
In support of its observations, the applicant argues that it should be taken into consideration that:
…the Court of Justice also ruled that deliveries made without charge may be taken into account in order to ascertain whether the requirement for use of the earlier right in the course of trade has been met, since those deliveries could have been made in the context of a commercial activity with a view to economic advantage, namely to acquire new outlets (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 152).
In the present case, the Cancellation Division notes that the applicant filed evidence that it presented its plans and project to the Principality of Monaco and to the EUTM proprietor with the aim of seeking possible collaboration. However, there is no further or supporting evidence showing what this cooperation entailed and/or whether through these meetings the applicant has seriously tried to acquire a commercial position in the relevant market. There is no evidence either showing, for example, whether and when the project is going to start, there is no plan or outline for its implementation.
Even if it assumed that the evidence suggests that some use of the signs or preparations for such use have been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR. The documents filed do not provide the Cancellation Division with information concerning the commercial volume, the duration, and the frequency of use, both before the date of filing of the contested mark and also after that date and up to the date of filing of the invalidity request. The evidence, as a whole, does not allow the Cancellation Division to ascertain the extent of use. There is no information in relation to turnover, revenue or advertising expenses, or other documents indicating that the signs were used to the necessary extent. The applicant has not demonstrated that it had established a significant presence on the relevant Italian market with the invoked non-registered trade marks, domain names, corporate and trade names prior to and at the relevant dates.
Considering all the above, the Cancellation Division concludes that the evidence submitted by the applicant is insufficient to prove that the earlier signs were used in the course of trade of more than local significance in the relevant period and territory.
Given that at least one of the necessary requirements of Article 8(4) EUTMR in connection with Article 60(1)(c) EUTMR is not met, the application must be rejected as unfounded.
ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR
According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.
Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.
As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.
However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.
Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).
The
contested EUTM was filed on 22/02/2017 and registered on
15/03/2018. It consists of the figurative mark
registered for the services listed above in Classes 35, 37,
39, 41 and 43. Therefore, the relevant point in
time in respect of which the assessment must be made is the filing
date, namely 22/02/2017.
The relevant public for these services is both the professional public and the public at large. The attentiveness of these consumers will range from average to higher than average.
As the contested mark contains words in English, the relevant public is to be found among English-speaking consumers in the European Union. In addition, the word ‘riviera’ exists either as such or as an imported word in many other EU languages as well, such as in Italian, Danish, Bulgarian, etc. and the word ‘airport’ will also be understood by a significant part of the EU public because it is a basic English word. Therefore, the relevant public is not limited only to the English-speaking consumers but at a wider section of the public in the European Union.
Descriptiveness – Article 7(1)(c) EUTMR
Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.
It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).
By prohibiting the registration as EU trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).
According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which the contested EUTM is registered (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 24).
In accordance with case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (PAPERLAB, loc. cit., § 25).
According to the applicant:
- ‘Riviera’ is an Italian word which means ‘coastline’, ultimately derived from Latin ripa, through Ligurian rivea. It came to be applied as a proper name to the coast of Liguria, in the form riviera ligure, then shortened to Riviera.
- The term “Riviera” (used alone) only refers to the Italian coastline, at least among Italian, English and German speakers.
- In light of the above, the sign ‘Riviera Airports’ immediately informs consumers without further reflection that the services applied for are from an airport located on the Riviera.
- The descriptive character of the trade mark is also confirmed by the EUTM proprietor itself in its observations, where it is argued that the term “riviera” refers to the Italian - and allegedly the French coastline.
The Cancellation Division considers that the applicant failed to prove that, at the time of filing, the sign taken as a whole, immediately informed the relevant consumer in the European Union without further reflection, of any characteristics of the services for which the mark is registered.
The Cancellation Division considers that the expression ‘Riviera Airports’ does not directly describe characteristics of the services. The extract from Wikipedia provided by the applicant, apart from identifying the word ‘Riviera’ as an Italian word which means "coastline" also mentions that the two areas currently known in English as ‘The Riviera’ without additional qualification are ‘the French Riviera (Côte d'Azur), part of the southern coast of France and the Italian Riviera (Riviera Ligure), part of the coast of Italy. It is further mentioned that ‘Riviera’ may be also applied to any coastline, especially one that is sunny, topographically diverse and popular with tourists, such as ‘Riviera Maya’, ‘American Riviera’, ‘Red Sea Riviera’, etc. Therefore, the ‘geographical’ meanings that can be attributed to the term ‘riviera’ without a qualifier in front of it, are the coast of Liguria, Italian coastline in general and/or the French Côte d'Azur. The same or similar information can be found in the dictionary extracts filed by the EUTM proprietor as Annex 14.
Therefore, it has not been proven and the applicant failed to present evidence demonstrating that the expression ‘Riviera Airports’ defines a sufficiently specific geographic place. Rather, it may be taken to indicate airports situated somewhere in the coast of Liguria, the Italian coastline or the French Côte d'Azur. This, discarding the additional definition mentioning that ‘Riviera’ may be also applied to any coastline, especially one that is sunny, topographically diverse and popular with tourists. Consequently, the applicant failed to prove that the term ‘Riviera’ is sufficiently precise so that the relevant public will perceive it as a given geographical place.
It may only suggest that some of the EUTM proprietor’s services are provided from airports located on the Riviera (Italian coast, French coast, etc., depending on its particular perception). In this sense, there is not a sufficiently direct and specific relationship between the sign and the services in question to enable the public concerned immediately to perceive, without further thought, a direct description of one of the characteristics of the services, namely their geographical origin.
Nevertheless, even if it is assumed that part of the relevant public may associate the term ‘Riviera’ with a specific geographical location, in the present case, it should be emphasized that the contested EUTM is a figurative trade mark which does not exclusively consist of verbal elements but also includes figurative elements, namely a fanciful device resembling a palm tree in green and blue colour and a representation of the term ‘Riviera Airports’ in two levels, in different size and colours. The Cancellation Division considers that the additional figurative elements, especially the palm tree device, add sufficient distinctive character to the contested mark.
Terms or signs that are non-distinctive, descriptive or generic may be brought out of the scope of a refusal based on article 7(1)(c) EUTMR if combined with other elements that make the sign as a whole distinctive. In other words, refusals based on Article 7(1)(c) EUTMR may not apply to signs consisting of a non-distinctive, descriptive or generic element combined with other elements that take the sign as a whole beyond a minimum level of distinctiveness.
In the present case, these figurative elements clearly offset any descriptive character the word elements may have, and render the mark as a whole distinctive.
The Cancellation Division therefore concurs with the EUTM proprietor’s opinion that the contested mark as a whole is fanciful, whether or not the words ‘Riviera Airports’ would be meaningful in relation to the services at issue.
Consequently, it follows that the EUTM has not been registered contrary to Article 7(1)(c) EUTMR in relation to the contested services.
Non-distinctiveness – Article 7(1)(b) EUTMR
Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered. Thus Article 7(1)(b) EUTMR pursues the aim, which is in the common interest, of ensuring that signs serve to identify the product and/or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings.
The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T-79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T-320/03, Live richly’, EU:T:2005:325, § 65).
In essence the applicant argues that because the mark is a descriptive term indicating the coast of Liguria, it cannot be monopolised by a single entity and, it is also devoid of any distinctive character for those services. However, as reasoned above, the Cancellation Division does not consider the mark descriptive in relation to the services, and it is therefore distinctive. Most importantly and as mentioned above, the contested EUTM is a figurative trade mark which includes additional figurative elements, and those endow the contested trade mark with sufficient distinctive character.
The applicant did not provide any other evidence or convincing arguments which prove that the contested EUTM is devoid of distinctive character in relation to the services.
Therefore, the applicant has failed to submit, substantiate or prove its claim that the mark is devoid of distinctive character under Article 7(1)(b) EUTMR in relation to the services for which it is registered.
Deceptiveness – Article 7(1)(g) EUTMR
Pursuant to Article 7(1)(g) EUTMR, trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services shall not be registered.
According to case-law, this ground for invalidity presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (04/03/1999, C‑87/97, Cambozola, EU:C:1999:115, § 41). Thus, a mere theoretical possibility that the public may be mistaken does not itself fall within an objection pursuant to Article 7(1)(g) EUTMR (decision of 17/04/2007, R 1102/2005-4, “SMARTSAUNA”, § 32).
In addition, Article 7(1)(g) EUTMR “implies a sufficiently specific designation of potential characteristic of the goods and services covered by the trade mark. Only where the targeted consumer is made to believe that the goods and services possess certain characteristics, which they do not in fact possess, will he be deceived by the trade mark.” (24/09/2008, T‑248/05, I.T.@Manpower, EU:T:2008:396, § 65).
When assessing whether a given trade mark is deceptive or not, account should be taken of market reality, meaning the way the goods are normally distributed and purchased, as well as of consumption habits and the perception of the relevant public. The relevant public is normally composed of reasonably well-informed, observant and circumspect persons. The average consumer is usually reasonably attentive, and should not be regarded as easily vulnerable to deception.
The applicant argues that the contested mark could deceive the public because:
The EUTM proprietor’s airport is not actually located on the Riviera, but it is on the Cote d’Azur, which is usually translated into English as “French Riviera”.
The term “Riviera” (used alone) only refers to the Italian coastline, at least among Italian, English and German speakers.
The filing of the application shall be considered in any case an attempt to monopolize a term (“Riviera”) aimed to persuade (and, therefore, mislead) the public that EUTM proprietor offers its airport facilities also for the Italian Ligurian coastline, known as Riviera, in order to intercept the passengers headed to Italy.
The contested EUTM is misleading in relation to each and every service for which the same is registered, in the light of its descriptive character of a geographical location, which definitively included (or better, is) the Italian coastline.
Therefore, the EUTM is likely to mislead the public on the origin of the service and on the location of the airports where the service is offered.
The Cancellation Division notes, firstly, that the applicant has not demonstrated that the term “Riviera” (used alone) only refers to the Italian coastline. The only piece of evidence provided by the applicant in that respect is the Wikipedia extract (Exhibit 3), which actually says, inter alia, that the two areas currently known in English as "The Riviera" without additional qualification are the Italian Riviera and the French Riviera. Had the applicant meant the perception of the Italian or the German public, it should have filed evidence in that respect, which it did not.
Secondly, when assessing if a given trade mark is deceptive or not, when it comes to trade marks having certain ‘geographical’ connotations relating to the location of the applicant or the place of origin of the goods/services, as a general rule, the Office will not raise an objection on deceptiveness based upon the applicant’s geographical location (address). Indeed, such a geographical location bears, in principle, no relation to the geographical origin of the goods and services, that is to say, the actual place of production/offering of the goods and services covered by the mark.
In the present case, even if it is assumed that ‘Riviera’ will be perceived (which is not the case, and which has not been proven by the applicant) only as a reference to the Italian Ligurian coastline, the consumers would not have any specific expectation about the contested services. The applicant has not demonstrated the contrary. The applicant did not demonstrate either why the contested EUTM is misleading in relation to each and every service for which the same is registered.
It follows that the contested trade mark does not lead consumers to any clear expectation as regards any characteristic of the contested services. Consequently, the consumers cannot be deceived into thinking that the services, including the contested transport services in Class 39, possess any quality or geographical origin that they in fact do not possess. In any case, and as previously argued, the term ‘riviera’ does not denote a sufficiently specific geographic place. In addition, the Office’s practice is not to raise deceptiveness objections, where a non-deceptive usage of the mark is possible vis-à-vis the goods and services specified — that is to say, an assumption is made that non-deceptive use of the sign will be made if possible.
As seen above, it is a requirement of the application for invalidity to be successful under Article 59(1)(a) EUTMR in conjunction with Article 7(1)(g) EUTMR that the contested trade mark is liable to deceive the public. Since this has not been established, the application must, with regard to Article 59(1)(a) EUTMR in conjunction with Article 7(1)(g) EUTMR, be rejected.
Article 7(1)(i) EUTMR
Under Article 7(1)(i) EUTMR, trade marks shall not be registered which include badges, emblems or escutcheons other than those covered by Article 6ter Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given.
Apart from invoking this ground, the applicant did not provide any arguments or evidence as to why the contested trade mark would fall within the scope of Article 7(1)(i) EUTMR.
In the present case, the contested mark does not include any badge, emblem or escutcheon.
Consequently, the application must be rejected also with regard to Article 59(1)(a) EUTMR in conjunction with Article 7(1)(i) EUTMR.
Conclusion
In the light of the above, the Cancellation Division concludes that the invalidity application should be rejected in its entirety.
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
Plamen IVANOV |
Liliya YORDANOVA |
Oana-Alina STURZA |
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.
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