CANCELLATION No 38 262C (INVALIDITY)

MeetingLinq B.V., Pilotenstraat 46, 1059 CR Amsterdam, the Netherlands (applicant), represented by Merk Echt B.V., Keizerstraat 7, 4811 Breda, the Netherlands (professional representative).

a g a i n s t

Parthen Meeting Essentials BV, Stroombaan 4, 1181 VX Amstelveen. The Netherlands (EUTM proprietor).

On 27/03/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 877 815 is declared invalid for some of the contested goods, namely:

Class 16: Paper badges; Paper name badges; Adhesive labels; Adhesive printed labels; Adhesive labels of paper; Label paper; Labels of paper; Printed matter; Stationery; Paper; Name cards.

3. The European Union trade mark remains registered for all the remaining goods and services, namely:

Class 16: Educational supplies; Cardboard; Printed event admission tickets.

Class 35: Publicity and sales promotion services; Advertising, marketing and promotional services; Customer loyalty services for commercial, promotional and/or advertising purposes; Promotional marketing; Advertising, marketing and promotional consultancy, advisory and assistance services; Arranging and conducting marketing promotional events for others; Event marketing; Promotion of special events; Promotion of sports competitions and events.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 17 877 815, Butterfly Badge (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:

Class 16: Paper badges; Paper name badges; Adhesive labels; Adhesive printed labels; Adhesive labels of paper; Label paper; Labels of paper; Printed matter; Stationery and educational supplies; Paper and cardboard; Printed event admission tickets; Name cards.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b)and (c) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that butterfly badges are a type of badges, cards or labels made of paper. The mark ‘Butterfly Badge’ is therefore directly descriptive of the goods at issue and would only be seen as a descriptive indication by the relevant consumers, namely the English-speaking average consumers in the European Union. Because the mark is descriptive it is also devoid of any distinctive character.

The applicant’s EUTM application No 15 025 525, ‘ButterflyBadge’ was refused for “paper badges” in class 16. The cases should be treated in the same way.

In support of its observations, the applicant filed the following evidence:

• Exhibit 1: Three web pages featuring the term “butterfly badge/s”.

• Details of EUTM registration no 15 052 525.

The EUTM proprietor did not reply.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Considerations common to all the grounds invoked in conjunction with Article 59(1)(a) EUTMR, namely Article 7(1)(b) and (c) EUTMR

Relevant public

The Cancellation Division considers that, having regard to the contested goods and considering the fact that the contested EUTM is an English term, the relevant public is the English-speaking average consumer, and professionals in the fields of e.g. conferences and events.

Relevant point in time

The Cancellation Division notes that the relevant point in time in respect of which the assessment on the claimed descriptive the sign ‘Butterfly Badge’ must be made is the filing date, namely 19/03/2018. In other words, it is necessary to establish whether the term ‘Butterfly Badge’ was seen as a descriptive term designating an essential feature or characteristic of the goods concerned at the filing date.

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Wrigley, EU:C:2003:579, § 31.)

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, ROBOTUNITS, EU:T:2003:315, § 34).

The applicant filed its application for declaration of invalidity on 16/09/2019 and provided three web sites to prove that the term “butterfly badge” is a descriptive term in relation to badges.

The only date that appear on the three web sites is the copyright date, namely 2020. It is assumed that this date was changed with the new year.

The filing date of the EUTM in question is 19/03/2018.

As stated above, although the facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

The EUTM 15 052 525, ButterflyBadge’ was refused on 26/07/2016 because the mark was found descriptive for “paper badges”. The examiner defined “butterfly badges” as “name cards that consist of a printed or printable sheet A-4 format of laminated paper, with a slot on the front attachment to a clip or neck.”

Therefore the pertinent information was available well before the filing of the present application.

The contested goods are the following:

Class 16: Paper badges; Paper name badges; Adhesive labels; Adhesive printed labels; Adhesive labels of paper; Label paper; Labels of paper; Printed matter; Stationery and educational supplies; Paper and cardboard; Printed event admission tickets; Name cards.

Butterfly badges are not only badges created from sheets of different sized papers (A4, A5 and A6 sheets). As can be seen in one of the web sites provided by the applicant, butterfly badges can be provided with labels, and are in fact name badges:

The Butterfly Badge is a popular product for producing robust double-sided badges quickly on standard desktop printers.

This 'Compact' Butterfly Badge stock is supplied on A5 sheets and used to create badges in landscape orientation of 114 x 97.5mm.

Each sheet has a peel-off label, twice the size of a badge. Once peeled, the label simply folds in half and sticks to itself to form a name badge.

The resulting badges already have holes at the top and rounded corners, so you don't even need badge holders. After printing, just clip on a lanyard and hand it over to your attendee. (Emphasis added).

https://conferencebadges.co.uk/accessories/Butterfly%20Badge%20(Compact%20size)

The following can therefore be concluded in respect of the contested goods:

The terms paper badge, paper name badges and name cards include butterfly badges. The mark is therefore descriptive of those goods.

It is clear from the web site quoted above that butterfly badges may feature labels. Furthermore, it is clear from butterfly badges are name label badges. The mark is therefore descriptive of adhesive labels, adhesive printed labels, adhesive labels of paper, labels of paper.

“Printed matter” is a wide term which includes printed butterfly badges, and the mark is therefore descriptive of those goods.

The term “stationery” includes office supplies such as name labels and badges, which includes butterfly badges. The mark is therefore descriptive of those goods.

“Educational supplies” are teaching materials such as books, course material and other types of instructional materials. The contested mark is not descriptive of the contested mark as the kind and purpose of those goods are different from those of butterfly badges.

Label paper is paper that is specifically used to create labels. Label paper are printable and self-adhesive for easy use. The label paper could specifically intended to be used for butterfly badges, or generally be apt for creating butterfly badges. The mark is therefore descriptive of those goods.

“Paper“ is a wide term that includes A4, A5 and A6 sheets of paper. Butterfly badges can be created from all sizes of printable paper sheets. It is therefore concluded that the mark is descriptive of “paper”.

Butterfly badges are made of printable sheets of paper for printing. While cardboard can be used for making badges, it is not a material that is used in normal printers and are not generally provided in A4, A5 and A6 format. The Cancellation Division therefore concludes that the mark is not descriptive of cardboard.

Butterfly badges and “printed event admission tickets” are very different goods with different purposes. Butterfly badges are used to identify a person, while admission tickets allow a person to get into a venue. The mark is therefore not descriptive of those goods.

In summary, the mark “BUTTERFLY BADGE” is therefore considered descriptive of the following goods:

Class 16: Paper badges; Paper name badges; Adhesive labels; Adhesive printed labels; Adhesive labels of paper; Label paper; Labels of paper; Printed matter; Stationery; Paper; Name cards.

Non-distinctiveness – Article 7(1)(b) EUTMR

As the request for invalidation under Article 7(1)(c) EUTMR was only partially successful, it is subsequently necessary to consider the application for invalidity under Article 7(1)(b) EUTMR for the remaining goods, namely:

Class 16: Educational supplies; Cardboard; Printed event admission tickets.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

The applicant mainly argues that because the mark ‘Butterfly Badge’ is descriptive of the goods, it is also devoid of any distinctive character for those goods. However, as reasoned above, the Cancellation Division does not consider the mark descriptive in relation to the goods, and it is therefore distinctive for the above mentioned goods.

The Applicant did not provide any other evidence or convincing arguments which prove that the contested EUTM is devoid of distinctive character in relation to those goods.

Therefore, the Applicant has failed to submit, substantiate or prove its claim that the mark is devoid of distinctive character under Article 7(1)(b) EUTMR in relation to the above mentioned goods.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is partially successful and the European Union trade mark should be declared invalid under Article 59(1) in conjunction with Article 7(b) and (c) for part of the contested goods, namely:

Class 16: Paper badges; Paper name badges; Adhesive labels; Adhesive printed labels; Adhesive labels of paper; Label paper; Labels of paper; Printed matter; Stationery; Paper; Name cards.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Robert MULAC

Anne-Lee KRISTENSEN

Janja FELC

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.