CANCELLATION No 39 521 C (INVALIDITY)

Anghami, Po. Box 309, Ugland House, 1-1104, Grand Cayman, The Cayman Islands (applicant), represented by Promark, 62 avenue des Champs Elysées, 75008 Paris, France (professional representative)

a g a i n s t

Vividville Inc., 3440 Toringdon Way, Suite 205, 28277 Charlotte, North Carolina, United States of America (EUTM proprietor), represented by Cam Trade Marks and IP Services, St John's Innovation Centre Cowley Road, CB4 0WS Cambridge, United Kingdom (professional representative).

On 30/11/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 768 201 is declared invalid in its entirety.

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

REASONS

On 05/11/2019, the applicant filed an application for a declaration of invalidity against European Union trade mark No 17 768 201 for the figurative mark (the EUTM). The EUTM was filed on 03/02/2018 and registered on 31/05/2018.

The request is directed against all the goods and services covered by the EUTM, namely:

Class 9: Magnetic data carriers, recording discs; compact discs; DVD's and other digital recording media; mechanisms for coin-operated apparatus; computer software; fire-extinguishing apparatus; Photographic apparatus and instruments; Cinematographic machines and apparatus; Optical apparatus and instruments; Weighing apparatus and instruments; Nautical apparatus and instruments; Surveying apparatus and instruments; Measuring apparatus and instruments; Checking (supervision) apparatus and instruments; Signalling apparatus and instruments; Life-saving apparatus and instruments; Scientific apparatus and instruments; Teaching apparatus and instruments; Apparatus and instruments for controlling electricity; Apparatus and instruments for accumulating electricity; Apparatus and instruments for switching electricity; Apparatus and instruments for transforming electricity; Apparatus and instruments for regulating electricity; Apparatus and instruments for conducting electricity; Sound transmitting apparatus; Apparatus for the transmission of images; Apparatus for the reproduction of images; Sound reproduction apparatus; Apparatus for recording images; Sound recording apparatus; Cash registers; Calculators; Computers; Data processing equipment.

Class 35: Advertising; business management; business administration; office functions.

Class 38: Telecommunications.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 42: Industrial analysis and research services; Science and technology services; Research relating to technology; Scientific services and design relating thereto; Technological services and design relating thereto; Scientific research; Software design and development; Design and development of computer hardware.

The application is based on the following earlier rights:

(1) non-registered trade mark ‘ANGHAMI’ (word sign) used in the course of trade of more than mere local significance in the United Kingdom;

(2) non-registered trade name ‘ANGHAMI’ (word sign), used in the course of trade of more than mere local significance in France;

(3) domain names ‘anghami.net’, ‘anghami.org’ and ‘anghami.com’, used in the course of trade of more than mere local significance in France

respectively for the Internet platform that allows to stream, listen, download, share music and more generally multimedia content in relation to which the applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

The applicant also invoked Article 59(1)(b) EUTMR, namely that the EUTM proprietor was acting in bad faith when filing the trade mark application.

SUMMARY OF THE PARTIES’ ARGUMENTS AND EVIDENCE

In its submissions, the applicant explains that ‘Anghami’ is a well-known Lebanese company operating in the business of music, more specifically as an online platform and an application that allow users to listen, download and share multimedia content, namely music. According to the applicant, the company which allows listening to Arabic songs is operating in the Middle East and in North Africa through its website, platform and application. The applicant furthermore explains that the company’s application is available on the Google play store and Apple store and can also be downloaded from the EU. According to the applicant, the registration of the contested mark infringes the applicant’s earlier rights used in the course of trade. The applicant also claims that the contested trade mark has been registered in bad faith.

In support of its allegations the applicant files the following documents:

Annex 1: Press articles taken from different online newspapers:

www.forbes.com: article of 25/05/2018, providing information about the Top 10 streaming services by number of users, among which Anghami is also mentioned. According to the article Anghami is famous streaming music platform in Northern Africa and the Middle East with 33 million users in 2018.

www.bbc.co.uk: article of 31/08/2016 mentioning Anghami as the largest music streaming service in the Middle East (‘the Spotify of the East’s’).

www.billboard.com: article of 19/12/2017, reporting that Anghami, the Middle East and North Africa’s biggest streaming service has announced a new strategic partnership with the CEO and founder of SAL&Co with the objective to expend the reach of Anghami. The article also mentions that Anghami has over 57 million users around the region.

www.wsj.com: article of 22/03/2013 mentioning a Lebanese start-up Anghami, meaning ‘my tunes’ in Arabic, as a streaming music service provider for the Arab region. The article also reports that the company, established in 2012, will have one million users by April 2013 and can be compared to Spotify and Deezer music streaming services.

www.lexpress.fr: article of 02/02/2014 in French (with translation into English), mentioning Anghami as one of the start-ups that would deserve to be more known in France and Europe.

www.startupbrics.com: two articles in French (with translation into English) mentioning Anghami as one of the main streaming musical content in North Africa and Middle East and also explaining that the company Anghami took part in a famous trade fair called Le Web in Paris in 2013. According to the article Anghami was identified as one of the emerging start-up companies and also won a prize for it.

www.t3me.com: article of 10/12/2012, announcing the partnership between the companies Anghami and Dolby. The article is describing Anghami (a music streaming service in the Middle East) as a mobile app that delivers Dolby Pulse encoded content and features content from leading Arabic labels.

www.thenextweb.com: article of 26/05/2012 mentioning Anghami streaming services being available in the Middle East and North Africa. The article compares the company to the famous provider of the same services Spotify. The article also mentions that Anghami has signed deals with international labels including Sony Music and EMI and agreements with Warner. Furthermore, it mentions that Anghami will be available as a service worldwide, the availability of music will be limited regionally. International music will only be available in the Middle East, while Arabic music can be listened to worldwide.

Annex 2: License Agreements signed between several companies (as licensors) and Anghami (licensee):

- License Agreement of 15/03/2013, concluded between Anghami Ltd. and the French company Believe Digital SAS by which Anghami has been authorized to distribute globally Audio/Video repertoire as interactive and non-interactive streaming services including offline mode and under the form of various web and mobile applications directly to consumers;

- License Agreement of 19/02/2013, concluded between Anghami Ltd and a Dutch company Black Hole Recordings for the Audio and Video streaming with offline mode;

- License Agreement of 20/10/2015, concluded between Anghami Ltd and a British company PIAS Digital Ltd. for the Audio and Video streaming with offline mode;

- License Agreement of 13/07/2016, concluded between Anghami Ltd and a German company Kontor New Media GmbH for the Audio and Video streaming with offline mode;

- License Agreement of 22/07/2013, concluded between Anghami Ltd and Watary SAL for the Audio and Video streaming with offline mode;

- License Agreement of 01/06/2017, concluded between Anghami Ltd and Stars for Art production & Distribution Offshore for the Audio and Video streaming with 5offline mode.

Annex 3:

- Articles and brochures referring to Midem Conference (an event taking place from 03/06 to 06/06) which, according to the applicant, is one of the biggest fair trades in the world in the field of music and which takes place each year in Cannes, France. The applicant explains that the founder of Anghami was invited to this conference in the years 2015, 2016 and 2017:

www.yesicannes.com/fr: an article in French (not translated), reporting on the Midem Conference;

www.culture.newstank.fr: article of 08/06/2017 in French (partially translated), reporting on Midem 2017 event. The article mentions Anghami company as a streaming service located in the Middle East;

- Brochures concerning the Highlights of Midem 2015 event, taking place from 05-08/06/2015 in Cannes, France. From the brochures it is visible that one of the key personalities attending this event was also a co-founder & CEO of Anghami.

Annex 4: an Affidavit signed on 22/10/2019 by the CEO of Anghami, showing Anghami business figures for the period from 2012 until 2018. According to the Affidavit, Anghami is used in Europe in relation with a platform that allows to listen, stream and download multimedia content. The affidavit provides information about newly created accounts between the period from 2012 until 2018.

Annex 5: screenshots of ANGHAMI official website www.anghami.com with information about the company.

Annex 6: an article of 09/01/2013 taken from a website www.thenextweb.com, providing information about the shortlist lined up for The Europas 2013 event which, according to the article, honours the best start-ups from across Europe and which in 2013 was held on 22/01 in Berlin. According to the article, the company Anghami was nominated as a best Entertainment, Audio and Video Start-up. The Annex also includes an extract from Anghami Facebook page, mentioning this nomination.

According to the applicant, the enclosed evidence shows that the mark ‘Anghami’ has been continuously used since 2012, the date of its creation, in Europe for the services of downloading, streaming, listening of music and videos. In addition, the applicant claims that the turnover of the company is constantly increasing. The applicant explains that the company is ranked within the top ten music-streaming services and that a consequent number of clients coming from the EU have also subscribed to use this platform (i.e. 4,83% of the 101,254 accounts were created by Europeans and in 2018 4,1% accounts were created by Europeans). Furthermore, the applicant claims that it owns two domain names www.anghami.net and www.anghami.org, which are redirected to the website www.anghami.com. According to the applicant, the domain name anghami.com has been registered since 29/04/2010 in the name of the subsidiary of Anghami company ‘DigiMusic’ and been used in the EU and in France since 2012. In relation to the trade name ‘Anghami’ claimed to be used in the course of trade in France, the applicant claims that numerous consumers having their addresses in the EU have downloaded the application Anghami. In addition, Anghami has been mentioned in various newspapers originating from Europe. The applicant claims that the application Anghami is well known within the Arabic diaspora in Europe as it is the only one that allows listening to Arabic songs. In 2013, it was selected among several start-ups in the shortlist of the prize The Europa. In relation to the non-registered trade mark, used in the course of trade in the United Kingdom, the applicant claims that several press articles show its recognition of the trade mark Anghami in the UK as a web platform allowing to stream, download and listen to music and videos. According to the applicant, since the marks are highly similar and the goods and service of the trade marks are identical and highly similar, the use of the contested trade mark would lead the relevant consumer to likelihood of confusion.

In relation to the claimed earlier rights, the applicant filed the following evidence:

 Annex A: document showing that anghami.com has been registered since 29/04/2010 in the name of the company DigiMusic;

 Annex B: an attendance sheet for annual ordinary general assembly, showing that DigiMusic is partly owned by the company Anghami;

 Annex C: a print out from the French Intellectual Property Code (with translation into English), providing the text of the Article L711-4;

 Annex D: a decision of 18/10/2000, issued by the Paris Court of Appeal and the text of Article 413 concerning the litigation on domain names;

 Annex E: an extract from the book Industrial Property Law written by Jerome Passa. It explains the necessary conditions to be met for a trade name to constitute a valid earlier right under article L711-4 of the French Intellectual Property Code;

 Annex F: a decision of 26/03/2019 issued by the Paris Court of Appeal in which the court stated that a sign may not be adopted as a mark when infringing earlier rights, and in particular a trade name or company name, if there is a likelihood of confusion on the part of the public.’;

 Annex G: a certificate, proving the establishment of the Anghami company in Lebanon;

 Annex H: print-out from the website www.legislation.gov.uk, providing some sections of the UK Trade marks Act (provisions concerning relative grounds);

 Annex I: case law Reckitt and Colman Products Ltd v Borden Inc & Ors [1990] UKHL 12 (08 February 1990).

The applicant furthermore claims that the contested trade mark ANGHAMI has been registered in bad faith and should be cancelled. According to the applicant, the contested mark is highly similar to the applicant’s earlier rights as the transliteration in Arabic may either be perceived as such for the relevant public that speaks Arabic or as a decorative element for the relevant public that does not speak Arabic. The applicant again explains that the name ANGHAMI is used in the Middle East to designate an online platform and mobile application allowing to listen, stream and download music. This application is well known, as it is the only one and first one that streams Arabic music. It repeats its allegations concerning the use and the reputation of the trade mark Anghami in the Middle East and North Africa and states that the application is also available to European users that wish to listen to Arabic music. According to the applicant, given this long standing use and the extent of the use in the EU, the knowledge of the use of the sign ‘Anghami’ must be presumed. Furthermore, the applicant claims that the EUTM proprietor has no legitimate cause for registering the trade mark ANGHAMI since both, the applicant and its subsidiary DigiMusic already own several earlier marks Anghami in countries of the Middle East. Also, the applicant explains that the EUTM proprietor is an American company registered for an activity of “retail toys and textile”, an activity which has no link at all with the goods and services for which the contested trade mark is registered. It concludes that it is not common that a company operating in the field of retail store for toys or textile expands their activities to the services for which the EUTM is registered. Therefore, according to the applicant, the interest to designate such services is questionable as well as the adoption of the name ANGHAMI which Arabic transliteration means “tunes”. Finally, the applicant claims that the EUTM proprietor applied for other trade marks such as ‘RYAN’s WORLD’ (No 7 991 737) for the goods and services classes 3, 9, 16, 18, 21, 24, 25, 28, 30 and 41 and ‘fulla’ (No 17 980 372) for the goods and services in Classes 9, 30 and 41. Therefore, according to the applicant, it is clear from the submitted evidence that the EUTM proprietor registered the contested trade mark with a dishonest intention trying to impede the company Anghami to expand its activity in Europe and to protect its intangible assets within the European territory. Therefore, the contested mark ‘ANGHAMI’ has been registered in bad faith by its owner and should be cancelled.

In relation to the bad faith claims, the applicant filed the following evidence:

 Annex J: trade mark certificates, showing that the applicant owns several ‘ANGHAMI’ trade marks in the Middle East (i.e. certificate for Anghami trade mark registered in United Arab Emirates on 15/06/2016 for the services in Class 41, certificate showing the registration in Lebanon, Jordan, Cayman Islands);

 Annex K: extract of the North Carolina Trade Register, showing the Business Corporation Annual Report for the company Vividville Inc. for the year 2017;

 Annex L: a print-out from the EUIPO website, showing a copy of an application ‘RYAN’s WORLD’ No 17 991 737. According to the applicant, ‘Ryan’s World is designating a famous YouTube channel in which a kid Ryan is testing toys. The annex also contains a copy of the notice of opposition filed by the owner of the non-registered marks against the company Vividville Inc.;

 Annex M: a print-out from the EUIPO website, showing that the EUTM No 17 980 372 ‘fulla’ has been registered in the name of Vividville;

 Annex N: an extract from the website www.newboy.com, showing that in 2003 New Boy established its private label division and launched Fulla (a 11,5 inch fashion doll, which soon became the number one fashion doll in MENA region). The extract also shows that in 2006, New Boy publishing division also launched Fulla magazine;

 Annex O: an extract from the EUIPO website, showing that the EUTM No 5 470 588 ‘fulla’ has been filed in 2006 in the name of New Boy.

In its reply, the EUTM proprietor denies that the goods or services in question can be found similar or identical. It states that the applicant’s company is operating in the Middle East and in North Africa (rather than within the EU) through its website, platform and the application. The proprietor also states that the applicant failed to beyond doubt prove that the owner of the registration has had or is presumed to have had knowledge of prior use of the applicant’s mark within the EU. The proprietor furthermore states that, even if under the hypothesis that the proprietor may have entertained the possibility of use outside the MENA area (assuming knowledge of use within the MENA area), 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 service. Also, the EUTM proprietor states that it has not been proven that on the part of the EUTM proprietor there has been a dishonest intention. In relation to Article 8(4) EUTMR claims, the EUTM proprietor states that in the case of the earlier non-registered mark claimed to be used in the UK, it has not been proven that there is sufficient goodwill among the relevant public to support an action in passing off. In the proprietor’s opinion, the general statistics about the new App accounts ‘in the EU’ are too vague to give an accurate picture of the extent of knowledge of the App in the UK or of a turnover coming from the UK. Neither do licence agreements provide a picture of the actual market conditions. Therefore, according to the EUTM proprietor, it has not been established that the non-registered trade mark ‘Anghami’ has been used in the course of trade of more than mere local significance such that it confers on its proprietor the right to prohibit the use of a subsequent trade mark in the UK. The EUTM proprietor also states that in the case of a trade name claimed to be used in the course of trade in France, although some evidence is shown of recognition of the ‘Anghami’ trade name and its business in the French language and some exhibitions in France (principally the MIDAM festival in Cannes), invariably the App is described as something emanating from Lebanon or pertaining to the MENA region and not Europe or less France. Finally, as far as the domain name is concerned, the EUTM proprietor points out that the applicant’s domain name is a .com, registered in the USA, and not a .fr registered in France, and that an App and a domain name or web site are not the same or equivalent. In addition, the proprietor points out that no evidence has been supplied of actual use of the domain/website or App within France or of turnover coming from there. Therefore, according to the proprietor, it has not been established that the unregistered Anghami sign is a sign used in the course of trade of more than mere local significance such that it confers on its proprietor the right to prohibit the use of a subsequent trade mark in France.

The applicant in its reply states that when bad faith of the EUTM owner is established, the whole EUTM is declared invalid, even for goods and services that are unrelated to those protected by the invalidity applicant’s mark. It is therefore, not relevant to assess whether or not the contested goods and services are similar or identical to the goods and services of the applicant. The applicant also states that judging by the recent filings of the EUTM proprietor in Saudi Arabia and Syria, it can be assumed that the proprietor has a particular interest in the area of Middle East and Northern Africa. However, in this same area, also the applicant’s marks ‘Anghami’ have a strong reputation, notably for music streaming services. Therefore, the proprietor cannot deny that it has been aware of the existence of the applicant’s marks and services extensively provided throughout the MENA region. The applicant explains that it uses its legal name and several domain names all around the EU, through a website and an application that are available to all EU users. According to the applicant, its software application is available throughout the EU and can be downloaded by every single European consumer. Furthermore, the applicant again points out that it is necessary to examine other marks that the EUTM proprietor has been registering, for example the EUTM No 17 980 372 ‘fulla’ and the EUTM No 17 991 737 ‘Ryan’s World’. In fact, the only three trade marks that the applicant has registered in the EU are ‘Anghami’, ‘fulla’ and ‘Bryan’s World’, all being famous in the MENA region. According to the applicant these filings illustrate that the proprietor’s trade mark filing strategy is clearly fraudulent and that the proprietor’s sole objective is to preclude the rightful owners of those marks to peacefully use their marks, hoping that the rightful owners will accept to buy the marks at a very expensive price. Furthermore, the applicant also claims that the proprietor’s behaviour could be a typical parasitism behaviour which consists in taking unfair advantage from the fame and the reputation of a trade mark Anghami without due cause and to benefit from all the investments of a third party without costs. The applicant concludes, that the abusing filing pattern of filing for famous trade marks by the proprietor clearly diverges from the loyal and fair customs in trade. Therefore, according to the applicant, the contested mark has to be cancelled.

In relation to its claims, the applicant attaches the following additional evidence:

 Annex P: an extract from the website www.anghami.com, showing that users in Syria and Saudi Arabia, can subscribe for Anghami to listen, stream and download the music tracks for a lower rate;

 Annex Q: an extract from the applicant’s website www.anghami.com, providing information about Anghami music hub from which one can instantly play any Arabic and International songs or albums. According to the extract, the hub was founded in 2012 in Cayman Islands with affiliates and offices in Beirut and Dubai. It caters mainly for the Middle East and North African audience and is available across the continent bringing unlimited music to the Arab diaspora. According to the document, Anghami, today, is the number 1 Music platform in the MENA region with the largest catalogue comprising more than 30 Million songs available for more than 70 Million users;

 Annex R: an extract from EUIPO database, showing the registration of the mark ‘fulla;

 Annex S: an extract from Wikipedia, showing the entry for ‘Ryan’s World’, children’s You Tube channel;

 Annex T: an extract from the USA Intellectual Property Office Database, showing that the trade mark ‘New Boy’ has been filed at the office on 06/08/2018;

 Annex U: an extract from EUIPO database, showing the registration of the mark ‘New Boy;

 Annex V: documents showing that Vividville is the owner of only three trade marks in the EU, among which two are contested (Anghami and Ryan’s World).

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 (11/06/2009, 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.

Assessment of bad faith

One situation which may give rise to bad faith is when a commercial entity has obtained some degree of legal protection by virtue of the use of a sign on the market, which a competitor subsequently registers with the intention of competing unfairly with the original user of the sign.

These are precisely the circumstances on which the applicant relies in the present proceedings.

In this respect, the Court of Justice of the European Union (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 48 and 53) has stated that the following factors in particular should be taken into consideration:

(a) the fact that the EUTM proprietor knows or must know that a third party is using an identical or similar sign for an identical or similar product capable of being confused with the contested EUTM;

(b) the applicant’s intention of preventing that third party from continuing to use such a sign;

(c) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought; and

(d) whether the EUTM proprietor in filing the contested EUTM was in pursuit of a legitimate objective.

The abovementioned are only examples drawn from a number of factors which can be taken into account in order to determine whether or not the applicant was acting in bad faith when filing the application; account may also be taken of other factors (14/02/2012, T‑33/11, Bigab, EU:T:2012:77, § 20-21; 21/03/2012, T‑227/09, FS, EU:T:2012:138, § 36).

The applicant argues that the name ‘Anghami’ is used to designate an online platform and mobile application allowing to listen, stream and download music and it is mainly used in the Middle East and North Africa. According to the applicant, the application is well known as it is the first and the only one that streams Arabic music and it is also known and available in Europe. Therefore, according to the applicant, the EUTM proprietor must have known about the use of the applicant’s identical mark at the relevant point in time because of the long standing use (since 2012) and the extent of the use in the EU.

The relevant point in time, in which the intention of the EUTM proprietor must be assessed, is the filing of the contested mark. In the present case, the contested mark was filed on 03/02/2018 . The relevant question, therefore, is, whether or not at this point of time, the EUTM proprietor must have known about the applicant’s use of the trade mark.

As regards the EUTM proprietor’s awareness when filing the contested EUTM, it clearly follows from the principles established by the Court of Justice of the European Union (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361) that this does not mean only actual knowledge, but may refer to a presumption of knowledge in cases in which the EUTM proprietor must have known that a third party was using a sign that could result in likelihood of confusion. Therefore, even if the applicant has not provided specific evidence showing the proprietor’s actual knowledge of the applicant’s sign, such knowledge may be, under some circumstances, presumed.

In the present case, there are several indications that point to the conclusion that the EUTM proprietor must have known about the applicant’s use of the trade name and trade mark ‘Anghami’.

First, the name ‘Anghami’ has been featured in articles published before the filing date of the contested mark both in the EU and outside the EU at least since 2013 (Annexes 1, 3 and 6). According to the evidence on the file, the company was established in 2012 and the domain name exists since 2010. In 2013 Anghami was one of the emerging start-up companies which not long after that became one of the leading platforms for streaming music and one of the key players on this market. The article published on www.bbc.uk.com reports that in 2016 Anghami was the largest music streaming service in the Middle East. It was nominated among 10 other companies for the best entertainment, audio and video start-up across Europe at The Europas Startup Awards 2013 event in Berlin and also took part in a famous trade fair called Le Web start-up competition in Paris in 2013, which all show that the mark was not a stranger in the EU territory, even before the filing of the contested mark. Therefore, the Cancellation Division considers that there is sufficient information originating from independent sources which attests Anghami’s success and fame before the filing date of the EUTM.

Second, the documents in Annex J also show that the applicant is the owner of several trade marks registered in some of the countries outside EU (for example the Annex J shows that in the United Arab Emirates the mark ‘Anghami’ has been registered in 2016 and in Lebanon already in 2012 when the company was established). For the sake of clarity, it is not a necessary condition for the finding of bad faith that the cancellation applicant actually possessed concrete enforceable rights in the European Union prior to the filing of the contested application. Also, the fact that the mark was used and reputed outside of the EU and not within the EU does not preclude the finding of bad faith. In fact, use and reputation in territories outside of the EU were previously taken into account when assessing bad faith by the General Court. Consequently, the Cancellation Division considers that the fact that the applicant used its mark mainly in the Middle East does not make this circumstance irrelevant. The evidence shows that as of the date of filing of the contested EUTM the sign ‘Anghami’ acquired such a reputation to safely allow for a presumption of knowledge on the part of the EUTM proprietor. According to the Affidavit presented in Annex 4, more than 4% of the accounts have been created by the users living within the EU which represented more than 3 million accounts in Europe. Although, these numbers have only partially been supported by the articles in Annex 1 where the total amount of users has been mentioned, this evidence together with the remaining documents illustrates the fast growing popularity of Anghami.

Third, as the applicant correctly pointed out, it seems very unlikely to be a mere coincidence that a proprietor Vividville Inc, who is based in the United States of America, would apply for a trade mark that almost identically reproduces the applicant’s non-registered mark or trade name, which is an uncommon and unusual name in the relevant territory and which appears to be exclusively associated with the applicant. The EUTM proprietor provided no explanations or true reasons that would constitute legitimate expectations for filing the mark and there is no indication of any commercial logic underlying the filing of the application for the contested mark. The only argument that the proprietor provided in this regard is that the applicant did not provide sufficient information or evidence to support any allegation of dishonesty or bad faith in these filings. Considering all the above, the Cancellation Division concludes that the EUTM proprietor must have known about the applicant’s mark when applying for the contested mark.

However, the fact that the EUTM proprietor knew or must have known of the invalidity applicant’s use of the sign is not sufficient, in itself, for a finding of bad faith (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 40). In order to determine whether there was bad faith, the central element to be considered is the EUTM proprietor’s intention at the time of filing. The dishonest intention on the part of the EUTM owner is a subjective factor that has to be determined by reference to objective circumstances (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 42). As mentioned by the Advocate General Sharpston, ‘bad faith relates to a subjective motivation on the part of the trade mark applicant – a dishonest intention or other ‘sinister motive’ – which will none the less normally be established by reference to objective criteria; it involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against such standards’ (Opinion of the Advocate General, 12/03/2009, C-529/07 Lindt Goldhase, EU:C:2009:361, § 60).

The contested EUTM ‘ANGHAMI’ is registered for goods and services in Classes 9, 35, 38, 41 and 42, some of which are identical to the services provided by the applicant. It cannot be disputed that the EUTM almost identically reproduces the applicant’s company name (the only difference being the transliteration of the word ‘Anghami’ into Arabic), which is moreover quite an uncommon and unusual name in the relevant territory and which appears to be exclusively associated with the applicant. Although the word ‘anghami’ means ‘my tunes’ in Arabic, this word is inherently distinctive in the relevant territory. Therefore, the probability that two entities choose this same word to sell goods and provide services that overlap, at least to some extent, is extremely low.

As regards the intention of the EUTM proprietor when filing the mark, the applicant claims that the proprietor adopted an abusive trade mark filing strategy with an aim to impede the future registrations. According to the applicant, the American company detects trade marks that are famous and reputed in a certain area and files the exact same trade mark in an area where they are not yet registered. Therefore, according to the applicant, at the moment of filing the EUTM, the EUTM proprietor did not intend to use the mark and registered it only to take advantage of the renown of the applicant’s mark and is misusing the EUTM trade mark system to prevent the applicant from entering the EU market. To substantiate this claim, the applicant filed extracts from EUIPO eSearch, showing that in 2018, the proprietor filed for two other trade marks, which according to the applicant, are also famous (Annexes L-M).

The Cancellation Division agrees that the likelihood that the EUTM proprietor filed for marks which are completely unrelated without any knowledge of the business activities of the applicant and the mentioned unrelated companies is very unlikely. The filing of other marks in dubious circumstances or appearing as a misappropriation of other traders’ goodwill may give a strong indication of the intentions of the applicant of a certain mark (see by analogy, 25/02/013, R 2448/2010-4, AERMACCHI MILANO, § 22) and the fact remains that the EUTM proprietor has not provided any type of explanation or evidence that may justify the filing of the mentioned trade marks.

The applicant submitted sufficient documents to suggest that its mark possesses powers of attraction. It is true that the burden of proof on the existence of bad faith always lies with the cancellation applicant. However, when the latter demonstrates with concrete and persuasive evidence that the EUTM proprietor acted dishonestly when it applied for the contested EUTM, then the burden of proof is reversed. The Cancellation Division considers that this is the case here. In this context, the Cancellation Division fails to see which could have been the commercial logic on the part of the EUTM proprietor when applying for the contested mark other than a deliberate intention to create an association with the famous name ‘Anghami’. The EUTM proprietor must have known about the applicant’s mark/trade name and the circumstances of the present case point to that its company intended to use the attractive power of the applicant’s trade mark and to mislead its clients as to the commercial origin of its products/services, thus benefitting unfairly from the applicant’s name/mark.

Moreover, in filing and registering the contested trade mark, the EUTM proprietor has effectively put a potential obstacle in front of the applicant in his business activities on the European Union market.

Such behaviour on the part of the EUTM proprietor is far from qualifying as being in pursuit of a legitimate objective or within the sphere of accepted principles of ethical behaviour or honest commercial and business practices.

In the circumstances and in view of the facts and evidence submitted by the applicant, the burden of proof has effectively shifted from the applicant to the proprietor in the sense that the latter should have been able to safely explain and demonstrate the reasons for such a situation.

There is no simple, decisive test for establishing whether a trade mark application was submitted in bad faith’ (see Opinion of the Advocate General above cited, § 75). In the present case, in an overall assessment of all the facts and evidence, the Cancellation Division considers it reasonable to assume that when filing the contested EUTM, the proprietor’s aim was to usurp the applicant’s rights in the mark. Such an intention can never be considered compatible with accepted standards of honest or ethical conduct or in pursuit of a legitimate objective. In filing and registering the contested EUTM, the proprietor has effectively put a potential obstacle to the applicant in its business activities on the European Union market. Moreover the EUTM proprietor has not submitted any arguments or evidence that would allow the Cancellation Division to reach a different conclusion. Therefore, it must be found that the EUTM proprietor was acting in bad faith.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the contested EUTM should be declared invalid for all the contested goods and services. The protection of general interest in business and of commercial matters being conducted honestly justifies invalidating the EUTM for goods/services that are dissimilar to the goods/services of the applicant, even those that do not even belong to an adjacent or neighbouring market. Therefore, it seems only logical that the invalidity, once declared, should extend to all the goods and services covered by the contested EUTM.

Given that the application for a declaration of invalidity is entirely successful under Article 59(1)(b) EUTMR, it is not necessary to examine the remaining earlier rights and ground on which the application is also based.

COSTS

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

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

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

The Cancellation Division

Oana-Alina STURZA

Janja FELC

Vít MAHELKA

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.