CANCELLATION No C 36 698 (INVALIDITY) 

 

Apple Inc., One Apple Park Way, Cupertino, California 95014, United States of America (applicant), represented by Locke Lord LLP, Marsveldplein 5, 1050 Brussels, Belgium (professional representative)

 

a g a i n s t

 

Zhang Chunxia, 9B, Tower 1, No. 36 Bldg., Chun Huang Si Ji Garden, Minzhi Street, Longhua New District, Shenzhen, Guangdong, People’s Republic of China (EUTM proprietor), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative).

On 14/04/2021, 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

 

On 16/07/2019, the applicant filed a request for a declaration of invalidity against European Union trade mark No 16 673 923 (figurative mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the goods in Class 11. The application is based on the following earlier rights:

1) Italian trade mark registration No 2 016 000 105 196 ‘SIRI’ (word mark);

2) German trade mark registration No 302 016 029 697 ‘SIRI’ (word mark);

3) European Union non-registered trade mark ‘SIRI’ and United Kingdom non-registered trade mark ‘SIRI’;

4) Well-known mark ‘SIRI’.

In relation to earlier rights 1 and 2, the applicant invoked Article 60(1)(a) EUTMR in conjunction with Articles 8(1)(b) and 8(5) EUTMR. In relation to earlier rights 3, the applicant invoked Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR. In relation to earlier right 4, the applicant invoked Article 60(1)(a) EUTMR in conjunction with Articles 8(1)(b) and 8(2)(c) EUTMR.  

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claims that there is a likelihood of confusion on the part of the public due to the high similarity of the signs and the identity or similarity of the goods covered by the EUTM and earlier rights 1 and 2, also considering the enhanced distinctiveness of these earlier rights.

Further, the applicant claims that, due to the significant reputation of earlier rights 1 and 2, the EUTM will take unfair advantage of, and/or be detrimental to, the distinctive character and/or the repute of these earlier rights without due cause.

In the submissions accompanying the application for declaration of invalidity, the applicant claims that it possesses rights in ‘SIRI’ as a non-registered mark used in the course of trade in the United Kingdom and that use of the EUTM should be prohibited by virtue of the law of passing-off. Furthermore, in the application form, the applicant claims earlier rights in European Union non-registered trade mark ‘SIRI’. However, other than the United Kingdom, the applicant’s submissions neither contain a reference to a non-registered trade mark used in the course of trade in any specific Member State, nor to any other national laws governing such rights, apart from a general statement that such mark has been used in the course of trade within the European Union since 2011 as indicating the goods and services of the applicant.

Lastly, in the submissions accompanying the application, the applicant claims that its ‘SIRI’ marks are well-known within the meaning of Article 6 bis of the Paris Convention, and because of the similarity of the EUTM to the applicant’s earlier marks, the use of the EUTM is liable to cause confusion on the part of the relevant public. It must be noted that the territory where such rights are claimed is not specified, nor are the goods or services indicated on which the application is based in this regard.

In the observations attached to the application for declaration of invalidity, the applicant makes reference to, and relies on, the evidence submitted to the Office in previous proceedings, namely the witness statement with exhibits TLP-1 to TLP-40 (total of 615 pages) that were submitted on 29/01/2018 in opposition B 2 957 598. In addition, the applicant submits four Annexes, containing the registration particulars of earlier rights 1 and 2 as Annex A, the decision of the EUIPO dated 19/12/2018 in opposition B 2 957 598 as Annex B, an overview of the goods and services under comparison in the present case as Annex C, and the provisions of Section 5(4)(a) of the UK Trade Marks Act 1994, as Annex D.

The evidence to be considered in the present assessment will be listed and analysed in the following sections of this decision.

On 21/10/2019, the EUTM proprietor requested an extension of the time limit for submitting his observations in reply. The Office granted the extension, however the EUTM proprietor did not submit any observations.

On 15/09/2020, the Office forwarded to the EUTM proprietor the evidence that was submitted in the previous proceedings and relied on by the invalidity applicant in the present case. The Office gave the EUTM proprietor a two-month time limit for submitting his observations. The EUTM proprietor did not reply to this communication of the Office either.

 

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public. 

 

a) The goods

 

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

 

1) Italian trade mark registration No 2 016 000 105 196

Class 9: Electrical outlets; dictating machines; television receivers; set top boxes; smart watches; wearable activity trackers; connected bracelets [measuring instruments]; smart glasses; alarms, alarm sensors, and alarm monitoring systems; residential security and surveillance systems; smoke and carbon monoxide detectors; thermostats, monitors, sensors, and controls for air conditioning, heating, and ventilation devices and systems; electric and electronic door and window locks and latches; remote controls for opening and closing garage door remote controls and openers; curtain, drape, window shade, and window blind remote controls and openers; lighting controls; electrical and electronic switches; components, parts and accessories included in this class for land vehicles, bicycles, motorcycles and mopeds; wearable computer peripherals; wearable computer hardware; peripherals for mobile devices; wearable digital electronic devices capable of providing access to the internet, for sending, receiving and storing of telephone calls, electronic mail, and other digital data; media players, audio speakers, telephone apparatus, telecommunication devices, and computers for use in motor vehicles; navigational instruments and devices; televisions; television monitors; remote control apparatus; computer hardware, computer peripherals, handheld digital electronic devices, and remote control devices for controlling the operations of televisions, video monitors, set top boxes, audio, video, and media players and recorders, game players, entertainment systems, home theatre systems, home automation hubs, and consumer electronic devices and displays; computer hardware, computer peripherals, handheld digital electronic devices, and remote control devices for controlling software applications and for searching, manipulating, controlling, storing, displaying, playing, and recording audio, video, and multimedia content, games, software applications, software application marketplaces, and program listings and guides.

Class 11: Apparatus for lighting, cooling, washing; plumbing; light bulbs, lighting fixtures, and lamps; ‎boilers, ‎heaters, water heaters and fireplaces; ‎toasters; ‎refrigerators and freezers; dishwashers; laundry washers ‎and dryers; hot tubs, bathtubs, showers, and sinks, and fixtures for the foregoing.

2) German trade mark registration No 302 016 029 697

Class 9: Smart watches; wearable activity trackers; connected bracelets [measuring instruments]; smart glasses; Alarms, alarm sensors, and alarm monitoring systems consisting of cameras, motion detectors and control devices; residential security and surveillance systems; smoke and carbon monoxide detectors; thermostats, monitors, sensors, and controls for air conditioning, heating, and ventilation devices and systems; electric and electronic door and window locks and latches; remote controls for opening and closing garages; remote controls for opening and closing doors; curtain, drape, window shade, and window blind remote controls and openers; lighting controls; electrical outlets; electrical and electronic switches; dictating machines; wearable computer peripherals; wearable computer hardware; peripherals for mobile devices; wearable digital electronic devices capable of providing access to the internet, for sending, receiving and storing of telephone calls, electronic mail, and other digital data; media players, audio speakers, telephone apparatus, telecommunication devices, and computers for use in motor vehicles; navigational instruments and devices; televisions; television receivers; television monitors; set top boxes; remote control apparatus; computer hardware, computer peripherals, handheld digital electronic devices, and remote control devices for controlling the operations of televisions, video monitors, set top boxes, audio, video, and media players and recorders, game players, entertainment systems, home theatre systems, home automation hubs, and consumer electronic devices and displays; computer hardware, computer peripherals, handheld digital electronic devices, and remote control devices for controlling software applications and for searching, manipulating, controlling, storing, displaying, playing, and recording audio, video, and multimedia content, games, software applications, software application marketplaces, and program listings and guides.

Class 11: Apparatus for lighting, heating, cooling, air ‎conditioning, humidifying, dehumidifying, ‎ventilating, cooking, ‎refrigerating, washing, ‎drying, water supply, and sanitary purposes; ‎light bulbs, lighting fixtures, and lamps; ‎‎furnaces, heaters, water heaters, humidifiers, ‎dehumidifiers, air conditioners, electric fans, ‎and fireplaces; ‎cooking ovens, stoves, ranges, ‎and toasters; refrigerators and freezers; ‎dryers; hot tubs, bathtubs, showers, and ‎sinks, ‎and fixtures for hot tubs, bathtubs, showers, ‎and sinks.‎

The contested goods are the following: 

 

Class 11: Lamps; Light-emitting diodes [LED] lighting apparatus; Fairy lights for festive decoration; Lights for vehicles; Germicidal lamps for purifying air; Cooking apparatus and installations; Refrigerating appliances and installations; Air conditioning installations; Air humid apparatus; Heating apparatus; Heating installations; Bath plumbing fixtures; Disinfectant apparatus; Purification installations for sewage.

The contested lamps; light-emitting diodes [LED] lighting apparatus; fairy lights for festive decoration; lights for vehicles are included in the broad category of the applicant’s apparatus for lighting covered by earlier marks 1 and 2. Therefore, these goods are identical.

The contested germicidal lamps for purifying air are special types of lamps which produce ultraviolet (UVC) light. This short-wave ultraviolet light disrupts DNA base pairing causing formation of pyrimidine dimers and leads to the inactivation of bacteria, viruses, and protozoa. They can also be used to produce ozone for water disinfection. Since the applicant’s apparatus for sanitary purposes covered by earlier mark 2 encompasses devices that remove germs in the ambient air and/or water, the contested germicidal lamps for purifying air are included in this broad category. For the same reasons, the contested disinfectant apparatus is included in the applicant’s apparatus for sanitary purposes covered by earlier mark 2. The goods under comparison are, therefore, identical.

The contested cooking apparatus and installations include, as a broad category, the applicant’s toasters covered by earlier mark 1, and apparatus for cooking covered by earlier mark 2. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested refrigerating appliances and installations include, as a broad category, the applicant’s refrigerators and freezers covered by earlier mark 1, and apparatus for refrigerating covered by earlier mark 2. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested air conditioning installations overlap with the applicant’s apparatus for cooling covered by earlier marks 1 and 2, and these goods are considered identical.

The contested air humid apparatus is included in the broad category of the applicant’s apparatus for humidifying covered by earlier mark 2. Therefore, they are identical.

The contested heating apparatus; heating installations include, as broad categories, the applicant’s boilers, ‎heaters, water heaters and fireplaces covered by earlier mark 1. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods. Furthermore, the abovementioned contested goods also are identical to the applicant’s apparatus for heating covered by earlier mark 2, either because they are identically contained in both lists (as synonyms) or because they overlap.

The contested bath plumbing fixtures are included in the broad categories of the applicant’s bathtubs, and fixtures for the foregoing covered by earlier mark 1, and apparatus for water supply and sanitary purposes covered by earlier mark 2. They are, therefore, identical.

The contested purification installations for sewage overlap with the applicant’s apparatus for sanitary purposes covered by earlier mark 2. The goods are, therefore, identical.

In view of the invalidity applicant’s claim to enhanced distinctiveness, and for reasons that will become apparent in the following sections of this decision, the Cancellation Division notes that none of the contested goods share any relevant factor with the applicant’s goods in Class 9.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

In Class 9, the two earlier marks essentially cover a range of apparatus and instruments for handling electricity, audio-visual and multi-media devices, activity trackers, alarms, monitoring instruments and safety apparatus, controls for ventilating/heating systems and for lighting systems, electric and electronic access control devices, electronic components for vehicles, computers and computer peripherals, telecommunication devices and navigation devices.

The applicant’s goods in Class 9 on the one hand, and the contested goods in Class 11 on the other hand, clearly differ by their natures and purposes. Furthermore, they do not satisfy the needs of the same public. With respect to the fact that the applicant’s goods include control devices for ventilating/heating systems and for lighting systems, the Cancellation Division finds that this connection does not lead to the finding of any relevant degree of similarity to the respective contested goods. The conceivable coincidence in the same channels of distribution does not automatically mean that the relevant public thinks that there is sufficient connection between them. It is highly unlikely that the control devices in Class 9 would be commonly purchased by the general public, as separate items. Rather, these are component parts of larger systems and installations that are usually acquired by manufacturers and other business customers. Moreover, the goods under comparison do not usually originate from the same manufacturers, given their different intended purposes. Nor are the goods complementary. Although the functioning of lamps, light-emitting diodes [LED] apparatus; air conditioning installations or some other goods in Class 11 can be controlled with the help of lighting controls; thermostats, monitors, sensors, and controls for air conditioning, heating, and ventilation devices and systems in Class 9, this does not mean that the goods are complementary. It can be convenient in certain cases to control the performance of one or the other parameter but simple convenience is not sufficient to conclude that one product is indispensable for the other (03/10/2013, R 1011/2012‑4, SUN (fig.) / SUN (fig.) et al., § 39).

Therefore, all of the contested goods are dissimilar to all of the applicant’s goods in Class 9.

 

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question. 

 

The Cancellation Division notes the applicant’s argument that the goods at issue are not of a specialist nature and rather target the general public. This argument is not accepted because some of the goods at issue, e.g. germicidal lamps for purifying air and air conditioning installations, are technically sophisticated, expensive or imply a high purchase involvement on the part of the public otherwise. Furthermore, goods such as purification installations for sewage mainly refer to large-scale installations that are intended for business customers, instead of the general public.

Therefore, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The relevant public’s degree of attention varies from average to above average, depending on the specialised nature of the goods, the frequency of purchase and their price.

 

c) The signs

 

SIRI
Earlier trade marks	Contested sign

 

The relevant territories are Italy and Germany.  

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier marks both consists of the word ‘SIRI’. The contested sign is a slightly stylised representation of the word ‘suria’. The stylisation of the contested sign is limited to a standard font of typing letters and has no distinctiveness in itself.

The words comprising the signs have no particular meaning for the vast majority of the public in the relevant territories. Although the word ‘SIRI’ may be associated with certain semantic content, for example where it is perceived as the plural form of the Italian word ‘Sirio’ referring to the inhabitants of Ancient Syria, or as referring to the Siri thesis related to the Cardinal Giuseppe Siri, it is reasonable to assume that such concepts are only known to a negligible part of the relevant public and, therefore, do not have a material bearing on the comparison of the signs in the present case.

The words under comparison are distinctive to an average degree in relation to the goods at issue.

Since neither of the signs has a meaning for the relevant public, the conceptual aspect does not influence the assessment of the similarity of the signs. In any case, the invalidity applicant’s conclusion about the conceptual similarity of the signs, namely, that the ‘strong visual and aural similarities’ between the signs ‘renders the two marks conceptually highly similar if not identical’, is not correct.

Visually, the signs coincide in three letters placed in the same order, ‘S-RI-’. They differ in the second letters of the signs, ‘I’ and ‘U’ respectively, and the additional fifth letter in the contested sign, namely ‘A’. The signs also differ in the stylisation of the contested sign which, admittedly, has a very low impact on the comparison, for the reason given above.

Therefore, the signs are visually similar to a low degree since they coincide in the first letter, which is the part with greatest impact, and also because substantial parts of the earlier marks are reproduced in the contested sign, namely three out of the four or five letters of each sign, respectively.

Aurally, for the Italian public, the contested sign is likely to be a two-syllable word, /su-ria/, and in German, it is likely to be enunciated in three syllables, for example as /su-ri-a/. The earlier marks are pronounced in two syllables, for example as /si-ri/. It follows that the pronunciations of the signs coincide in the sound of the letters ‘S-RI-’, present identically in all of the signs, whilst they differ in the sound of the vowel of the first syllable, ’I’ in the earlier marks and ‘U’ in the contested sign, and in the additional final letter ‘A’ of the contested sign, irrespective of the different pronunciation rules in the relevant territories.

It is worth noting that the invalidity applicant relied on an expert in phonetics to support its phonetic analysis of the signs and its claim that the signs are aurally highly similar. Whilst considering the argument of the applicant, the Cancellation Division maintains its contentions and finds the signs similar to a low degree. The vowel sequence is different in each of the words. That results in different intonations, rhythms and potentially also lengths of the pronunciations, and these differences will not pass unnoticed by the relevant public.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) Distinctiveness of the earlier marks

 

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

According to the invalidity applicant, the earlier marks are highly distinctive and enjoy a very high degree of reputation. The applicant claims that the evidence that it submits in this regard demonstrates that ‘SIRI’ is understood commonly throughout the European Union to refer to the famous intelligent voice-enabled personal assistant of the invalidity applicant’s company, Apple, which has been developed to work with an increasing range of household items. The applicant claims that the earlier marks have been heavily marketed and advertised in connection with Apple’s iPhone and iPad devices (amongst others) since October 2011. Consequently, the earlier marks have entered the public consciousness as being indelibly associated with the invalidity applicant and its goods and services and, therefore, benefit from enhanced distinctiveness.

This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442). 

 

List of evidence

The invalidity applicant relies on evidence submitted on 29/01/2018 in opposition proceedings B 2 957 598, as set out in the summary of the parties’ arguments hereinabove.

As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data. 

The evidence to be considered consists of the following documents.

Witness statement, dated 25/01/2018, signed by Thomas R. La Perle, acting as Director in the opponent’s Legal Department. The witness statement and the accompanying exhibits (indexed from TLP-1 to TLP-40) provide information on the following:

The witness statement explains that the opponent company, Apple, designs, manufactures, markets and sells mobile-communication and media devices, personal computers, smartwatches, portable digital-music players, as well as a variety of software, services, accessories, networking solutions, and third-party digital content and applications. In addition, Apple offers and renders a number of services, including computer services, technology services, music and other entertainment services, advertising and/or promotional services, retail services, as well as telecommunication-related services. Examples of Apple products and services include the iPhone, iPad, Mac, iPod, Apple Watch and Apple TV devices, a portfolio of consumer and professional software applications, the iOS, mcOS, tvOS, and watchOS operating systems, Siri, iCloud, Apple Music, Apple Pay, and a variety of other accessories, services, and support in general. Apple also sells and delivers digital content and applications through Apple Music, iTunes Store, App Store, Mac App Store, and iBooks Store.

Apple designs and manufactures the popular iPhone mobile and communication media device. Apple’s iOS operating system is pre-installed on iPhone devices. Periodic updates to the iOS software are available. The latest release is iOS 11.

In the witness statement it is also explained that ‘SIRI’ software and services are offered in connection with the iOS operating system. They were introduced in 2011 with the iPhone 4S device, the iOS 5 operating system and the iCloud service. Since then ‘SIRI’ has been an integral part of the iOS operating system. Each subsequent update of the iOS operating system after iOS 5 has featured ‘SIRI’ software and availability to receive related services.

‘SIRI’ software and services were also introduced in the iPad device in autumn 2012 and with the iPod touch device in September 2012.

In conclusion, Apple incorporates the ‘SIRI’ software and services across its entire line of proprietary system software: the iOS, mcOS, tvOS, and watchOS.

Therefore, consumers in the European Union have encountered the ‘SIRI’ software and services in iPhone, iPad, iPod, Apple Watch, Apple TV and Apple’s new HomePod devices, and in Mac computers.

Bearing in mind the considerable amount of evidence filed aimed at demonstrating the reputation of the earlier marks on which the application for declaration of invalidity is based and considering the above mentioned dates of introduction of the ‘SIRI’ software and services in Apple devices, only the most relevant evidence will be mentioned hereunder.

Exhibits TLP-1-3: Printouts from www.forbes.com featuring an article, dated 21/08/2012, ‘Apple Now Most Valuable Company in History’; printouts from www.telegraph.co.uk containing an article, dated 20/08/2012, ‘Apple worth more than any company in history’, announcing that Apple is the most valuable company in history in terms of market capitalisation; article from Business Insider dated 08/11/2017 illustrating that Apple was valued at over USD 900 billion; article from Fortune Magazine dated 2018 where Apple is the first in the list of the World most admired company.

Exhibit TLP-4: Articles from different webpages supporting the fact that ‘SIRI’ software is used in all Apple products/devices articles, such as: Apple Inc. printouts showing ‘SIRI’ in Apple TV, Apple watch, HomePod; www.macworld.co.uk dated 21/01/2018 and introduces the Siri-enabled HomePod ‘its long awaited SIRI speaker’; www.itpro.co.uk dated 24/01/2018 announcing the launch of Apple HomePod which ‘will interact with every HomeKit-enabled device, as well as every app and service that features integrations with SIRI’.

The following exhibits show ‘SIRI’ software and services in iPhone. They were introduced in 2011 with the iPhone 4S device, the iOS 5 operating system.

Exhibits TLP-5-7 and 9-18: Several Apple press releases about ‘SIRI’ since its launch in 2011. The trade mark ‘SIRI’ is displayed in all of them: 04/10/2011 announcing the launch of iPhone 4S ‘introduces Siri intelligent assistant that helps you to get things done just asking’. Available in several EU countries; 11/06/2012 Apple previews the iOS 6. Siri available and optimized in several EU languages; Apple Press release dated 10/06/2013 Apple unveils the iOS 7. Siri available and optimized in several EU languages (English, French and German); 08/06/2015 Apple previews the iOS 9 with improved Siri features; 13/06/2016 Apple previews the iOS 10 with improved Siri features; 05/06/2017 Apple previews the iOS 11. Improved Siri features, significant updates; 17/10/2011 Apple sold over four million iPhone 4S in three days after its launch on October 14. Including Siri; 12/09/2012 Apple introduces iPhone 5 with iOS6. Siri available. Available in EU countries; 24/09/2012 Apple sold over five million iPhone 5 in three days after its launch on September 21. Including Siri. Available in EU countries; 10/09/2013 Apple announces iPhone 5. Improved Siri features. Available in EU countries; 09/10/2013 Apple announced iPhone 5s and 5c, Siri included, available in several EU countries (Italy, Spain); 10/09/2013 Apple announces iOS 7. Siri available; 09/09/2014 Apple announces iPhone 6 and 6Plus. Available in selected EU countries (in France and Germany); 13/10/2014 Apple announces iPhone 6 and 6Plus will arrive in more EU countries; 07/09/2016 Apple introduces iPhone 7 and 7Plus. Siri available. Available in EU countries; 12/09/2017 Apple announces iPhone 8 and 8Plus. Siri available. Available in EU countries; 12/09/2017 Apple announces iPhone X. Available in EU countries.

Exhibits TLP-8, 19 and 21: Several articles dated 27/01/2015 from different webpages (www.9to5mac.com, www.idownload.com, www.cnet.com, www.computerworld.com, www.appleinsider.com) concerning the fact that Apple has sold over 1 billion iOS devices (iPhone, iPad and iPod); articles from different webpages demonstrating the great success and the sales of the iPhone device: in Hungarian without translation: dated 2012 www.hvg.hu about iPhone 4S; www.mobilarena.hu dated 2014 about iOS 8; www.szifon.com dated 2014 about iOS 8; 29/01/2015 www.ihungary.hu entitled ‘O Siri!’; in English from different web pages: 01/11/2007 www.time.com Invention of the Year: The iPhone; 10/05/2017 www.betanews.com entitled ‘Apple’s iPhone is the most popular smartphone in the world’; www.bgr.com ‘Sorry Android fans but iPhone is still the world’s most popular smartphone’; 07/03/2017 MensXP dated about the number of iPhone users in the World in 2017 – ‘we estimate total iPhone installed 715 million’; 29/06/2017 www.forbes.com ‘Apple has sold 1.2 billion iPhones over the past 10 years’; 01/08/2017 www.9to5mac.com ‘Apple announces it has now sold over 1.2 billion iPhones’.

The following exhibits show ‘SIRI’ software and services in iPad. They were introduced in autumn 2012.

Exhibits TLP-22-29: Several Apple press releases about iPad devices and ‘SIRI’ being available for these devices from 2012 forward: 07/03/2012 Apple launches new iPad; 23/10/2012 Apple introduces iPad mini; 19/03/2012 Apple sold three million of new iPad since its launch on March 16. Available in EU countries; 11/06/2012 Apple previews iOS 6. Optimized Siri features. EU countries. Announces that ‘SIRI’ will also be available in iPads in fall 2012; 22/10/2013 Apple announced iPad Air. Improved Siri. Available in EU countries; 05/11/2012 Apple sold three million new iPads in just three days since its launch on September 21. Available in EU countries; 16/10/2014 Apple introduced iPad Air 2. Available in EU countries; 21/03/2016 Apple introduced the all-new 9.7-inch iPad Pro; 05/06/2017 Apple introduced the all-new 10.5-inch iPad Pro and new 12.9-inch iPad Pro.

The following exhibits show SIRI software and services in iPod. They were introduced in September 2012 with the iPod nano.

Exhibit TLP-30: Apple Press release dated 12/09/2012 Apple introduced the new iPod touch and iPod nano. For the first time features Siri the intelligent assistant that helps you to get things done just by asking.

Exhibit TLP-31: Several articles from different webpages about iPod devices, explaining technical improvements: **/10/2012 www.pcadvisor.co.uk iPod touch review. 5^th generation iPod touch, Siri is also on board this latest iPod, and it works just as well as it does in iPhone. And with Siri new part of the package, we are more likely than ever to talk to our iPod; 24/10/2012 www.whathifi.com Apple iPod touch (5^th gen) Siri voice control in Apple iPod touch: iOS 6; www.engadget.com iPod touch review 2012 Siri software is here; 16/07/2015 www.pcmag.com ‘A visual History of the Apple iPod’; www.lifewire.com dated 19/10/2016, The History of the iPod touch. In the 5^th generation 2012, supports Apple’s voice-activated digital assistant.

Despite the fact that the trade mark ‘SIRI’ does not appear in all the articles above listed, the evidence is still very relevant in the sense that it all refers to the devices that integrate ‘SIRI’ software and services as this is preinstalled in the hardware. Furthermore, the success of such devices (and the related trade marks) is clearly demonstrated by these materials. As will become clear, this information is also pivotal to the reputation of the ‘SIRI’ marks at issue.

ExhibitTLP-20: Copies of several Forms 10-K Annual Reports as filed with the United States Securities and Exchange Commission from which it appears that the opponent’s annual sales figures in Europe, in 2016, were around USD 50 billion. They also show the Apple devices iPhone, iPad and iPod units sold.

Years	iPhone	iPad	iPod
2011	72.3 millions
2012	125 millions
2013	150.3 millions	71 millions
2014	169.2 millions	67.9 millions
2015	231.2 millions	54.8 millions
2016	211.8 millions	45.5 millions	26.4 millions
2017	216.7 millions	43.7 millions	14.4 millions

Exhibit TLP-32: Article from BBC News dated 05/05/2006 entitled ‘Apple flock worships new store 2006’ concerning the opening of the first Apple store in Europe, in London.

Exhibit TLP-33: The witness statement indicates that there were nearly 500 Apple Store retail locations worldwide, over 100 in the European Union: including 38 in the United Kingdom, 20 in France, 16 in Italy, 15 in Germany, 11 in Spain, 3 in Sweden and the Netherlands each and one in Belgium. The average revenue per store: $50.2 million in 2013, $51.5 million in 2012 and $43.3 million in 2013 and in support of these figures provides copies of several Forms 10-K Annual Reports as filed with the United States Securities and Exchange Commission (2012, 2013).

Exhibit TLP-34: Printouts from the Apple Web page with the addresses of the different Apple retail stores in Europe (Belgium, France, Germany, Italy, Netherlands, Sweden, Spain, United Kingdom). The trade mark ‘SIRI’ is not displayed but Apple products (iPhone, iPad and iPod) featuring SIRI software can be purchased in said stores.

Exhibit TLP-36: Several articles from different webpages about the recognition of the Apple products: Top 100 most valuable global brands 2011 Apple 1^st place; 07/05/2012 TIME.com 6 reasons Apple is so successful; 10/10/2012 www.forbes.com Best products Apple ever; 08/10/2011 NBC news Why Apple is now No. 1 company in the world.

Exhibit TLP-37: Printouts from www.alexa.com (an independent web trafficking rankings undertaking) featuring a statistical summary of website traffic per region. It lists the Apple website as one of the most visited websites in the world. Evidence relating to Europe in particular shows that is at number 36 in the list of most visited websites in the United Kingdom, and in the top 100 most visited in other EU countries.

Exhibit TLP-38: Collection of images illustrating use of the iPhone and Apple trade marks on facades, billboards, underground advertisements and publicity screens of different European cities (Paris, Berlin, Frankfurt).

Exhibit TLP-39: DVD containing five TV adverts in, inter alia, English, German and French, about iPhone4s, iPhone 6 and iPhone 7. In all of them the idea that ‘SIRI’ (explicitly mentioned or not) is Apple’s intelligent assistant that ‘helps you to get things done just asking’ is repeated.

Exhibit TLP-40: Apple’s annual advertising expenditures for promoting its products and the Apple trade marks worldwide from the fiscal year 2011 to 2015 (the amounts range between 933 million of USD in 2011 and almost two billion USD in 2015). The evidence in support of these statements consists of copies of the relevant pages from Apple Inc. Form 10-K Annual Reports (2012, 2013, 2015) as filed with the United States Securities and Exchange Commission.

Assessment of the evidence

Essentially, the evidence demonstrates the worldwide success achieved by Apple and related trade marks through a selection of printouts from the invalidity applicant’s websites and press releases and articles providing information on the invalidity applicant and its goods and services; press releases in relation to the launch of the invalidity applicant’s goods and services throughout the European Union and providing information on the impressive sales made thereof; printouts from Apple press info in relation to Apple products; printouts from various online articles announcing, among other things, the impressive volumes of Apple products sales.

It is noteworthy to recall that the more impartial and independent the information, the higher the probative value. The invalidity applicant submitted a considerable amount of documentation from several independent sources, such as an article from Business Insider dated 08/11/2017 illustrating that Apple was valued at over USD 900 billion or an online article from www.forbes.com dated 29/06/2017 revealing that ‘Apple has sold 1.2 billion iPhones over the past 10 years’.

Trade mark owners can use a combination of their marks together and under an umbrella brand which is the case here. It is evident that Apple or iPhone trade marks are leading brands in the European Union market and due to the success of Apple devices which include ‘SIRI’ software and services and their huge amount of sales, it is fair to say that ‘SIRI’, as an associated trade mark, has also become increasingly prominent in each new generation of iPhones and indeed in all the new devices such as Apple watch or the latest HomePod.

Despite the fact that ‘SIRI’ trade mark does not appear as such on the devices, it is patent from the notable amount of evidence filed that it is clearly incorporated on them. Moreover, it is not a requirement that the trade mark be displayed on the goods since clearly ‘SIRI’ is used to indicate the goods concerned and their origin as evidenced. Further, an important part of the evidence submitted, as listed above, clearly refers to ‘SIRI’, such as the TV adverts, which are clear evidence of the relevant role reached by ‘SIRI’ among Apple trade marks.

It is clear from the evidence that the ‘SIRI’ mark has been subject to long-standing and intensive use on Apple devices (iPod, iPad and iPhone) and in connection with certain hardware and software products, and therefore is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The brand studies, the marketing expenditure and the international rankings which place the trade mark among the most valuable global brands (e.g. Exhibits TLP-36 and 40) , the impressive and constantly increasing number of customers (Exhibits TLP-8,19 and 21), the various references in the press to its success (Exhibits TLP 1-3 and 36), shown by the evidence all unequivocally show that the trade mark ‘SIRI’, as mark related to Apple devices, enjoys a high degree of recognition among the relevant public in the European Union.

For the present assessment, the relevant territories only are Italy and Germany. In view of the above findings, it is considered that the same conclusions apply also to the individual Member States in question.

Based on an overall assessment of the evidence of reputation, the goods for which the ‘SIRI’ marks have been used and enjoy recognition among the relevant public are considered to correspond to some of the goods on which the invalidity application is based and for which reputation is claimed in relation to the two earlier marks at issue, namely:

Class 9: Television receivers; set top boxes; smart watches; wearable activity trackers; connected bracelets [measuring instruments]; components, parts and accessories included in this class for land vehicles, bicycles, motorcycles and mopeds; wearable computer peripherals; wearable computer hardware; peripherals for mobile devices; wearable digital electronic devices capable of providing access to the internet, for sending, receiving and storing of telephone calls, electronic mail, and other digital data; media players, audio speakers, telephone apparatus, telecommunication devices, and computers for use in motor vehicles; navigational instruments and devices; televisions; television monitors; remote control apparatus; computer hardware, computer peripherals, handheld digital electronic devices, and remote control devices for controlling the operations of televisions, video monitors, set top boxes, audio, video, and media players and recorders, game players, entertainment systems, home theatre systems, home automation hubs, and consumer electronic devices and displays; computer hardware, computer peripherals, handheld digital electronic devices, and remote control devices for controlling software applications and for searching, manipulating, controlling, storing, displaying, playing, and recording audio, video, and multimedia content, games, software applications, software application marketplaces, and program listings and guides.

However, the evidence exclusively relates to the abovementioned goods whereas there is no reference to the remaining goods in Classes 9 and 11 covered by the two earlier marks.

It is relevant to note that, in its submissions, the invalidity applicant summarises the products for which reputation is claimed as follows: i) ‘SIRI’ software which refers to software that enables a natural language user interface to answer questions, make recommendations, and perform requested actions; ii) ‘SIRI’ services which relate to (amongst other things) making calls, sending text messages and emails, scheduling meetings and reminders, making notes, searching the Internet, and getting directions; and iii) products and services associated with ‘SIRI’ software and services in relation to the Apple’s products, including household items.

Although the applicant implies that ‘SIRI’ software and services may be intended for use in relation to multimedia items, such as smart glasses, or voice-controlled devices, such as dictating machines, and household items, the evidence does not succeed in establishing that reputation is acquired in relation to these devices or appliances as such.

Consequently, in relation to the relevant earlier goods in Class 11 (i.e. in view of the outcome of the comparison of goods in section a) of this decision), the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meaning for any of these goods from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier marks must be seen as normal.

 

 

e) Global assessment, other arguments and conclusion 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eleventh recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

In the present case, the contested goods are identical to the invalidity applicant’s goods in Class 11 covered by the two earlier marks. The relevant goods are directed at the public at large and professionals, whose degree of attention in relation to the purchases in question varies from average to above average.

As explained in detail in section c) of this decision, the similarity between the signs is low from the visual and aural perspectives, whilst they are neutral on the conceptual level. However, the similarities between the signs do not outweigh the differences that are immediately perceptible in the overall impression produced by each of the signs. The impact of the undeniable fact that the signs coincide in some of the letters should not be over-estimated. Rather, the relevant public will pay more attention to the words in their entirety which display notable differences, despite the principle of imperfect recollection and the lack of a conceptual difference between the signs. Nor is there any reason to consider that the relevant public would think that the contested sign is a ‘sister’ registration to ‘SIRI’ that operates in a complementary manner, or that the public could perceive the contested sign as being used under licence from Apple, as asserted by the invalidity applicant.

The invalidity applicant refers to the principle of interdependence which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Cancellation Division has taken this principle into account when assessing the likelihood of confusion and the fact that the goods are identical cannot, in this case, compensate for the differences identified between the signs. Nor does the interdependency principle necessarily mean that a low degree of similarity between the signs is automatically offset by the fact that the goods are identical.

It is also important to note that, in relation to the invalidity applicant’s goods found identical to the contested goods, the earlier marks do not enjoy any degree of recognition among the relevant public. Therefore, for the purposes of the present assessment, it is the inherent distinctiveness of the earlier marks that has to be considered and it affords the earlier marks a normal scope of protection. As regards the fact that the earlier marks indeed have acquired enhanced distinctiveness through intensive use in relation to certain goods in Class 9, it has to be pointed out that these goods are dissimilar to the contested goods in Class 11, as shown in detail in section a) of this decision. It is necessary to recall that, under Article 8(1)(b) EUTMR, the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier marks.

On an overall assessment of all the relevant circumstances of the case, the Cancellation Division finds that there is no likelihood of confusion on the part of the relevant public.

Therefore, the cancellation application must be rejected, insofar as it is based on Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

WELL-KNOWN MARK – ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLES 8(1)(b) and 8(2)(c) EUTMR

In the application for declaration of invalidity, the applicant does not indicate any basis of trade mark invalidity in relation to Article 60(1)(a) EUTMR in conjunction with Articles 8(1)(b) and 8(2)(c) EUTMR, whilst, in the submissions accompanying the application, the applicant invokes earlier rights in a well-known mark ‘SIRI’ within the meaning of Article 8(2)(c) EUTMR and Article 6 bis of the Paris Convention and states that the contested EUTM should be declared invalid for the contested goods in accordance with Article 8(1)(b) EUTMR.

However, nothing in the applicant’s submissions, witness statement or the evidence submitted serves as an explicit indication of the territory, or territories, in which such a right is claimed. Nor are the goods and/or services indicated on which the application is based in this regard.

The Cancellation Division finds that, on the assumption that the applicant’s intention was to invoke the well-known marks ‘SIRI’ in Italy and Germany, in relation to the same goods as invoked under Article 8(1)(b) EUTMR with respect to the registered trade marks in these territories, the outcome of the application cannot be different to the one reached in the assessment in relation to Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR. No likelihood of confusion exists between the earlier well-known marks and the contested EUTM.

No other reasonable interpretation of the applicant’s claims can be made without going beyond the facts, evidence and arguments on file. In particular, if the applicant’s intention were to invoke a ‘well-known mark in the European Union’, the following must be noted.

According to Article 12(2)(a) and (c) EUTMDR, the application for a declaration of invalidity based on relative grounds shall contain a clear identification of the earlier right on which the application is based, namely:

(a) in the case of an application pursuant to Article 60(1) EUTMR, an identification of the earlier right on which the application is based, in accordance with Article 2(2)(b) EUTMDR, which shall apply mutatis mutandis to such an application;

(c) particulars pursuant to Article 2(2)(d) to (g) EUTMDR, which apply mutatis mutandis to such an application.

According to Article 2(2)(b)(ii) EUTMDR, where the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR, the notice of opposition shall contain the indication of the Member State(s) where the mark is well-known and a representation of the mark (emphasis added).

Article 8(2)(c) EUTMR defines well-known marks as ‘trade marks which, on the date of application for registration of the European Union trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the European Union trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention’ (emphasis added). It is clear that the protection of ‘well-known’ marks is recognised at a Member State level only. The European Union is not a valid indication of the Member State(s) in which the mark is well-known. Firstly, the ‘European Union’ is not a ‘Member State’. Secondly, there is no protection of well-known marks at a European Union level.

Lastly, on the assumption that the applicant seeks to rely on the well-known mark in each of the Member States of the European Union, such a claim would not in any event fulfil the requirements laid down in Article 2(2)(g) EUTMDR, which apply mutatis mutandis to an application for declaration of invalidity, namely the application does not contain an indication of the goods and/or services on which these grounds of the application are based.

Therefore, the application must be rejected insofar as based on a well-known trade mark ‘SIRI’.

REPUTATION – ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

 

The applicant claims that the earlier marks ‘SIRI’ have a reputation in Italy and Germany in relation to goods in Classes 9 and 11 covered by the two earlier trade mark registrations, as listed in section a) under Article 8(1)(b) EUTMR hereinabove.

According to Article 60(1)(a) EUTMR, a European Union trade mark will be declared invalid on application to the Office where there is an earlier mark, as referred to in Article 8(2) EUTMR, and the conditions set out in Article 8(1) or (5) EUTMR are fulfilled.

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier registered trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which registration is sought are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds of refusal of Article 8(5) EUTMR are applicable in the context of invalidity proceedings only when the following conditions are met.

 

(a) The signs must be either identical or similar.

(b) The earlier trade mark must have a reputation. The reputation must be prior to the filing of the contested trade mark and must still exist at the time of filing of the invalidity request; it must exist in the territory concerned and for the goods and/or services on which the application for a declaration of invalidity is based. 

 

(c) Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. 

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for declaration of invalidity under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The cancellation may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the present case, the EUTM proprietor did not submit any observations and did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

 

a) Reputation of the earlier trade marks

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

 

In invalidity proceedings, an invalidity applicant relying on reputation must prove that its earlier right has acquired reputation by the filing date of the contested EUTM, taking account, where appropriate, of any priority claimed (Article 60(1) EUTMR, second subparagraph).

 

In addition, the reputation of the earlier mark must still exist at the time when the decision on the invalidity request is taken, given that the conditions set out in the first subparagraph of Article 60(1) EUTMR are formulated in the present tense. Therefore, the applicant should also prove the reputation of the earlier mark at the time of filing of the invalidity request, in which case, and unless there is proof to the contrary, the Cancellation Division will assume that it continues to exist at the time when the decision on invalidity is taken.

 

The filing date of the contested EUTM is 03/05/2017. Therefore, the applicant was required to prove that the earlier marks had acquired a reputation in Germany and Italy prior to that date and that it continued to exist at the time of filing of the invalidity request, that is, on 16/07/2019.

The evidence submitted by the invalidity applicant to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

 

b) The signs

 

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

 

c) The ‘link’ between the signs

 

As seen above, the earlier marks are reputed in relation to certain goods in Class 9, and the signs are similar to the extent that, visually and aurally, they coincide in some letters. 

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

 

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

 

 the degree of similarity between the signs;

 

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

 

 the strength of the earlier mark’s reputation;

 

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

 

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

 

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

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

According to the Court of Justice of the European Union,

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

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

The Court of Justice has also noted,

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

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

In the present case, the signs are visually and aurally similar to a low degree, as they coincide in three out of four and five letters, and conceptually the signs are neutral.

The earlier marks are inherently distinctive for the relevant goods and, moreover, the applicant has proven that it has gained a reputation in Italy and Germany for part of the goods relied upon, namely, for part of the goods in Class 9.

Another factor to consider when assessing whether there is a ‘link’ between the signs are the relevant goods.

The contested goods are the following:

Class 11: Lamps; Light-emitting diodes [LED] lighting apparatus; Fairy lights for festive decoration; Lights for vehicles; Germicidal lamps for purifying air; Cooking apparatus and installations; Refrigerating appliances and installations; Air conditioning installations; Air humid apparatus; Heating apparatus; Heating installations; Bath plumbing fixtures; Disinfectant apparatus; Purification installations for sewage.

The Cancellation Division considers that, while the relevant section of the public for the goods covered by the conflicting marks is the same or overlaps to some extent, the contested goods are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public.

The contested goods are lighting apparatus and others being for ‘environmental control’ in the sense that they change the surrounding environment, for example, by illumination, thermic processing of food, heating, cooling, humidifying, drying, purifying or disinfecting air or water.

Taking into account the very different nature and purpose of the goods, it is unlikely that, when intending to purchase the contested goods, the relevant public would link them to a designation of origin that has a reputation for IT goods.

Furthermore, the similarity between the signs is tenuous. The degree of the earlier marks’ reputation demonstrated by the invalidity applicant does not imply that it is of such a strength that it could produce effects beyond the relevant market sectors and trigger a link between signs that are similar in completely different areas of the economy, such as the abovementioned sectors.

As consumers will not make the necessary mental association between the contested sign and the earlier marks, any link is unlikely to be formed in the context of goods in Class 11.

Taking into account and weighing up all the relevant factors of the present case, the Cancellation Division thus concludes that, when encountering the contested mark in the context of the goods in Class 11, it is unlikely that the relevant public will make a mental connection between the signs.

For the sake of completeness, the Cancellation Division notes that the applicant has not submitted evidence, or at least put forward a coherent line of argument, demonstrating why the relevant public would make a link nor what the detriment, or unfair advantage, would consist of, and how it would occur in relation to the contested goods in Class 11, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events. The mere assertion of the applicant that ‘SIRI’ software and services may be used in relation to Apple’s products, including household items, does not shed any light on how the relevant public would associate the contested sign to the earlier marks, in the context of the contested goods. The applicant’s submissions, the witness statement and the evidence refer to voice control of multi-media devices and the like, whilst there is no solid argument in relation to goods outside of the consumer electronics market sector.

Therefore, the cancellation application is not well founded under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR and must be rejected insofar as it is based on these grounds.

 

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

In the application for declaration of invalidity, as basis of trade mark invalidity in relation to Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, the applicant indicated a non-registered trade mark ‘SIRI’ in the territory ‘EUIPO’. This is understood as a claim to a non-registered trade mark in the European Union.

Article 8(4) EUTMR reflects the existence of such rights in Member States and grants the proprietors of non-registered marks the possibility of invalidating a registered EUTM where they would succeed in preventing use of that EUTM under the relevant national law, by showing that the conditions set by the national law for prohibiting use of the later EUTM are satisfied and the other conditions of Article 8(4) EUTMR are met.

As non-registered trade marks are not protected at European Union level, a ‘European Union non-registered trade mark’ is not an eligible basis for application for invalidity.

In the submissions accompanying the application, the applicant expressly refers to the applicant’s rights in ‘SIRI’ as a non-registered mark used in the course of trade in the United Kingdom and the tort of passing off in the United Kingdom. The submissions do not contain any other clear indication of a European Union Member State in which a non-registered trade mark or other sign used in the course of trade is claimed.

Whilst the applicant mentions the Republic of Ireland in its submissions, under point 101, this is a reference to ‘the common law tort of passing-off in the United Kingdom and the Republic of Ireland’ and is not considered as an explicit indication of the territory of the applicant’s rights. Furthermore, all the other submissions and arguments regarding passing off are exclusively provided in relation to the United Kingdom.

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that the United Kingdom non-registered trade mark ‘SIRI’ no longer constitutes a valid basis of the application for invalidity.

The application must therefore be rejected as far as it is based on this earlier right.

 

Therefore, the application must be rejected insofar as it is based on Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

CONCLUSION

In view of the above findings, the application for declaration of invalidity must 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

 

Oana-Alina STURZA

Solveiga BIEZA

Andrea VALISA

 

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.