CANCELLATION No 38 362 C (INVALIDITY)

Shenzhen Newyes Technology Limited, Rm 203, 2/F, Bldg 15, Pingshan Industrial Zone, No.1285 Liuxian Ave, Pingshan Community, Taoyuan St., Nanshan Dist, Shenzhen, Guangdong Prov., People’s Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative)

a g a i n s t

Chen Xi, 2303 Unit A, Block 5, Shangpingyayuan, Bulong Rd., Longgang Dist., Shenzhen, Guangdong, People’s Republic of China (EUTM proprietor), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 04/08/2021, 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

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 18 007 105 for the word mark ‘newyes’. The application is based on European Union trade mark registration No 15 380 504 for the word mark ‘NEWYES’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and Article 8(5) EUTMR, as well as Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that its sign ‘NEWYES’ formed part of its previous name ‘NEWYES GROUP LIMITED’ and also formed part of some domain names. It argued that the goods manufactured are daily life electronic accessories, LCD writing tablets, smart homes, smart wearable devices and sports cameras, as well as knives and household products sold online via Amazon and advertised on the applicant’s website. To support its allegations, it submitted some documents to show use and reputation of the earlier mark (listed and assessed below). It also argued that the contested goods in Classes 8 and 16 were similar to the applicant’s pads for writing, electronic drawing boards, writing tablets and knives’ sharpeners, that the signs were identical and that the use of the contested mark without due cause took unfair advantage of, or was detrimental to, the distinctive character or repute of the applicant’s mark in relation to notebooks, pads and boards.

Furthermore, the applicant argued that the EUTM proprietor filed the contested EUTM in bad faith since he knew or must have known about the use of the applicant’s sign ‘NEWYES’ on account of its intensive use and reputation in Hong Kong and China. The applicant put forward that the presumption that the EUTM proprietor had this knowledge was based on general knowledge in the economic sector of boards, notebooks and writing tablets. It also argued that the dishonest intention of the EUTM proprietor was inferred from the fact that the contested goods in Class 16 covered the same goods as the applicant’s goods in electronic form (writing tablets) and the aim of the EUTM proprietor was to free-ride on the reputation of the applicant, take advantage of it and block the applicant’s business in the European Union.

The EUTM proprietor did not submit any observations in reply.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION 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.

1. The goods

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.

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

Class 9: Computers; tablet computers; Global Positioning System [GPS] apparatus; satellite navigational apparatus; integrated circuits; chips [integrated circuits]; batteries, electric; chargers for electric batteries; computer application software for mobile telephones; smartwatches; sensors and detectors.

Class 11: Water purification installations; disinfectant apparatus; solar thermal collectors [heating]; heaters for baths; taps [faucets]; air filtering installations; refrigerating apparatus and machines; lamps; automobile lights; stoves.

Class 14: Alloys of precious metal; jewellery; ornaments [jewellery, jewelry (Am)]; works of art of precious metal; clocks; wristwatches; straps for wristwatches; chronometric instruments; clocks and watches, electric; watches.

The contested goods are the following:

Class 8: Manicure sets, electric; depilation appliances, electric and non-electric; razors, electric or non-electric; hair clippers for personal use [electric and non-electric]; non-electric hand implements for hair curling; eyelash curlers; pedicure sets; manicure sets; ladles [hand tools]; spoons; police batons; crimping irons; curling tongs; fingernail polishers [electric or non-electric]; ear-piercing apparatus.

Class 10: Orthopaedic belts; vibromassage apparatus; massage apparatus; aesthetic massage apparatus; ear picks; cupping glasses; sphygmomanometers; thermometers for medical purposes; acupuncture needles; maternity belts; gloves for massage; feeding bottles; breast pumps; orthopaedic articles; surgical masks.

Class 16: Drawing pads; blackboards; drawing boards; marking pens; note books; pens; pads [stationery]; writing instruments; ball pens; chalk boards [blackboards]; drawing materials for blackboards; paper clasps; ink pens; ink for pens; writing or drawing books; small blackboards; whiteboards; dry-erase boards; paper.

Contested goods in Class 8

The contested goods are hand-operated tools and implements (mainly related to the beauty sector) and spoons; police batons.

The applicant argues that these goods are similar to the applicant’s knives’ sharpeners. However, the earlier mark is not registered for knives’ sharpeners but for goods in Classes 9, 11 and 14 that mainly encompass IT equipment in Class 9, apparatus and installations for sanitary purposes, heating, refrigerating, lighting, ventilating and water supply in Class 11 and jewellery; chronometric instruments and horological instruments and goods made of precious metal in Class 14.

These goods do not have the same nature, purposes or methods of use. Furthermore, they differ in their manufacturers, distribution channels and sales outlets and they are neither complementary nor in competition. The fact that most of them target the same public is clearly insufficient to render them similar. Therefore, they are dissimilar.

Contested goods in Class 10

The contested goods encompass orthopaedic, medical and massage apparatus, as well as articles for nursing infants. They are dissimilar to the applicant’s goods in Classes 9, 11 and 14 since do not have the same nature, purposes or methods of use. Furthermore, they differ in their manufacturers, distribution channels and sales outlets and they are neither complementary nor in competition.

Contested goods in Class 16

The contested goods encompass stationery and writing instruments; paper and different kinds of boards (blackboards; drawing boards; chalk boards [blackboards]; small blackboards; whiteboards, dry-erase boards). The applicant argues that these goods are similar to the applicant’s pads for writing, electronic drawing boards, writing tablets. However, these goods are not listed in the earlier mark’s list, which in Class 9 covers computers; tablet computers; Global Positioning System [GPS] apparatus; satellite navigational apparatus; integrated circuits; chips [integrated circuits]; batteries, electric; chargers for electric batteries; computer application software for mobile telephones; smartwatches; sensors and detectors.

Contrary to the applicant’s arguments, the contested goods in Class 16 are not similar to the applicant’s goods in Class 9, in particular to the applicant’s tablet computers. These goods do not have the same nature, purposes or methods of use (IT goods versus stationery and educational equipment). Although tablet computers have a touchscreen display and can be used for writing, they are different from the applicant’s boards in Class 16, which are not digital or electronic. Furthermore, these goods differ in their manufacturers and distribution channels and they are neither complementary nor in competition. The fact that they target the same public is clearly insufficient to render them similar. Therefore, they are dissimilar.

The same reasoning applies to the applicant’s goods in Classes 11 and 14, which encompass apparatus and installations for sanitary purposes, heating, refrigerating, lighting, ventilating and water supply in Class 11 and jewellery; chronometric instruments and horological instruments and goods made of precious metal in Class 14. These goods are dissimilar to the contested goods since do not have the same nature, purposes or methods of use. Furthermore, they differ in their manufacturers, distribution channels and sales outlets and they are neither complementary nor in competition.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the applicant in this respect does not alter the outcome reached above.

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

According to Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, a European Union trade mark must be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where there is an earlier mark as referred to in Article 8(2) EUTMR and the conditions set out in paragraph 5 of that Article are fulfilled (that is, where the contested trade mark is identical with, or similar to, the earlier trade mark and it is registered for goods or services which are identical to, similar to or not similar to those for which the earlier trade mark is registered), and where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the 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 for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The applicant’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark and still exist at the time of the application for invalidity; it must exist in the territory concerned and for the goods and/or services on which the application is based.

• Risk of injury: 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 under 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 application 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 has not claimed explicitly 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.

Reputation of the earlier trade mark

According to the applicant, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier marks are 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 the present case, the contested trade mark was filed on 09/01/2019. Therefore, the applicant was required to prove that the trade mark on which the application is based had acquired a reputation in the European Union prior to that date. In addition, the reputation must exist until the decision on the application for invalidity is taken. The evidence must also show that the reputation was acquired for the goods for which the applicant has claimed reputation, namely all the goods on which the application is based (see the list above in the comparison of the goods).

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 28/10/2019, the applicant submitted the following evidence:

• Annex 1: extract from eSearch relating to the applicant’s EUTM No 15 380 504 in the name of ‘NEWYES GROUP LIMITED’ and application dated 10/10/2019 for the change of name to ‘SHENZHEN NEWYES TECHNOLOGY LIMITED’ together with a declaration from the applicant confirming this change of name (in Chinese, translated into English);

• Annex 2: certification by Global Top Level Domain Name, dated 27/09/2019, relating to the domain name newyes.com registered on 02/11/2009 (expiry date 03/11/2028);

• Annexes 3 and 4: business license granted by the Chinese administration to the applicant on 09/06/2014 and ‘record registration’ of the company on 21/09/2016, in Chinese with its translation into English;

• Annex 5: certification by Global Top Level Domain Name, dated 27/09/2019, relating to the domain name newyesboard.com registered on 30/06/2017 (expiry date 30/06/2020);

• Annex 6: extracts from the applicant’s website www.newyesboard.com, with the company profile, referring to business writing pads;

• Annex 7: extracts from the applicant’s website www.newyes.com referring to paper goods, stationery, writing tablets, smart pens;

• Annex 8: extracts from the website www.globalsources.com presenting the applicant’s company, founded in 2012, and its goods;

• Annex 9: sales via Amazon of ‘NEWYES’ notebooks, pens, writing tablets, digital voice recorders, knives sharpener in the UK from August 2017 to June 2018 and writing tablet, vegetable fruit peeler, stainless steel vacuum cup, drawing board writing tablets in the UK from June 2018 to January 2019;

• Annex 10: sales via Amazon of ‘NEWYES’ knives’ sharpeners in France, Great Britain, Italy, Spain in 2018;

• Annex 11: sales via Amazon of ‘NEWYES’ goods to customers in Germany, Spain and Austria in 2017-2018;

• Annex 12: sales via Amazon of ‘NEWYES’ goods to customers in France, Italy and the UK in 2017-2019;

• Annex 13: online sales of ‘NEWYES’ goods to customers in Croatia, the Netherlands, Norway and Romania in 2017-2018;

• Annex 14: online list of sales of ‘NEWYES’ goods to customers in Denmark and Sweden in 2017-2018;

• Annex 15: online sales of ‘NEWYES’ goods to customers in Estonia, Latvia, Slovenia, Slovakia in 2018;

• Annex 16: online sales of ‘NEWYES’ goods to customers in Belgium, Czech Republic, Lithuania, Hungary, Austria, Finland in 2018;

• Annex 17: online sales of ‘NEWYES’ goods to customers in Bulgaria, Greece, Malta, Poland, Portugal in 2018.

The Cancellation Division finds that the evidence submitted by the applicant does not demonstrate that the earlier trade mark acquired a reputation.

Despite showing some use of the trade mark, the evidence provides very little information on the extent of use of the earlier mark. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. The applicant has provided no evidence on how intensive and long standing use of the mark has been in the relevant territory and on the proportion of the relevant section of the public who, because of the mark, identify the goods as originating from the applicant. The applicant could have submitted surveys on the mark’s recognition, opinion polls or statements from relevant chambers of commerce and industry or other trade and professional associations, press articles or other means of evidence originating from independent sources. As a result, the evidence does not demonstrate that the trade mark is known by a significant part of the relevant public. Under these circumstances, the applicant failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the application for invalidity to be successful under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the application for invalidity must be rejected as far as it is based on Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR.

In any case, the Cancellation Division also notes that the applicant did not provide any facts, arguments or evidence that could support the conclusion that 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.

ABSOLUTE GROUNDS FOR INVALIDITY: BAD FAITH – ARTICLE 59(1)(b) EUTMR

General principles

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

In invalidity proceedings pursuant to Article 59 EUTMR, the Office will limit its examination to the grounds and arguments submitted by the parties (Article 95(1) EUTMR, second sentence).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven (08/03/2017, T‑23/16, Formata (fig.), EU:T:2017:149, § 45).

The applicant argued that the EUTM proprietor knew or must have known about the use of the applicant’s sign ‘NEWYES’ on account of its intensive use and reputation in Hong Kong and China. The applicant put forward that the presumption that the EUTM proprietor had this knowledge was based on general knowledge in the economic sector of boards, notebooks and writing tablets. It also argued that the dishonest intention of the EUTM proprietor was inferred from the fact that the contested goods in Class 16 covered the same goods as the applicant’s goods in electronic form (writing tablets) and the aim of the EUTM proprietor was to free-ride on the reputation of the applicant, take advantage of it and block the applicant’s business in the European Union.

Assessment of bad faith

Case-law defines three factors particularly relevant for a finding of bad faith.

• Identity/confusing similarity of the signs: the EUTM allegedly registered in bad faith must be identical or confusingly similar to the sign to which the invalidity applicant refers. Although the fact that the marks are identical or confusingly similar is not in itself sufficient to demonstrate bad faith (01/02/2012, T‑291/09, Pollo Tropical chicken on the grill, EU:T:2012:39, § 90; 28/01/2016, T‑335/14, DoggiS, EU:T:2016:39, § 59-60), a dissimilar or not confusingly similar mark will not support a finding of bad faith.

• Knowledge of the use of an identical or confusingly similar sign: the EUTM proprietor knew or must have known about the use of an identical or confusingly similar sign by a third party for identical or similar goods or services.

There is knowledge, for example, where the parties have been in a business relationship with each other and, as a result thereof, the EUTM proprietor ‘could not have been unaware, and indeed knew, that the intervener had for a long time been using … the sign’ (11/07/2013, T‑321/10, Gruppo Salini, EU:T:2013:372, § 25), when the reputation of the sign, even as a ‘historical’ trade mark, is a well-known fact (08/05/2014, T‑327/12, Simca, EU:T:2014:240, § 50), or when the identity or quasi-identity between the contested mark and the earlier sign ‘cannot be mere coincidence’ (28/01/2016, T‑335/14, DoggiS, EU:T:2016:39, § 60).

• Dishonest intention on the part of the EUTM owner: this 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).

This intention may be inferred from all the objective situations of conflicting interests in which the EUTM proprietor has operated (11/07/2013, T‑321/10, Gruppo Salini, EU:T:2013:372, § 28). It may, inter alia, be inferred from the EUTM proprietor’s specific actions before the filing of the contested mark, from the contractual, pre-contractual or post-contractual relationship between the parties, from the existence of reciprocal duties or obligations, including the duties of loyalty and integrity arising because of the present or past occupation of certain positions in the business relationship, etc. (12/09/2019, C‑104/18 P, STYLO & KOTON (fig.), EU:C:2019:724, § 47; 11/02/2020, R 2445/2017‑G, Sandra Pabst, § 34 et seq.).

Therefore, the concept of bad faith involves a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other deceitful motive. It involves conduct that departs from accepted principles of ethical behaviour or honest commercial and business practices (14/05/2019, T‑795/17, NEYMAR, EU:T:2019:329, § 23).

It is in light of the foregoing that the Cancellation Division must examine whether the EUTM proprietor acted in bad faith when filing the contested EUTM.

Although the signs are identical, identity or confusing similarity of the signs is not in itself sufficient to show bad faith, where there are other relevant factors (01/02/2012, T‑291/09, Pollo Tropical chicken on the grill, EU:T:2012:39, § 90; 28/01/2016, T‑335/14, Doggis, EU:T:2016:39, § 90). The registration of an identical (or supposedly similar) sign is not a clear indication of an abusive or fraudulent intention. It is rather an indication that the EUTM proprietor intended to use its mark on the marketplace in accordance with the trade mark functions set out in the EUTMR. Moreover, for conflicts with similar/identical signs, the EUTMR foresees a different solution under Article 60 EUTMR, ‘Relative grounds for invalidity’. For this reason alone the case cannot be subsumed under the notion of ‘bad faith’ (14/06/2010, R 1795/2008‑4, ZAPPER-CLICK, § 19).

Regarding the proprietor’s (actual or presumed) knowledge of the use of the applicant’s sign, the invalidity applicant contended that the EUTM proprietor knew or must have known about the use of the applicant’s sign ‘NEWYES’ on account of its intensive use and reputation in Hong Kong and China and on the basis of general knowledge in the economic sector of boards, notebooks and writing tablets.

However, the applicant did not submit any document to prove that, at the time of filing of the contested EUTM, the EUTM proprietor was aware of any use by the invalidity applicant of an identical or highly similar sign.

Regarding the ‘presumption’ of knowledge of the proprietor, the Court of Justice of the European Union, when defining some of the relevant factors for assessment of bad faith, held that one of those factors is whether the EUTM proprietor knew or ‘must have known’ (emphasis added) about the previous use of the sign. Regarding the expression ‘must know’, a presumption of knowledge, by the EUTM proprietor, of the use by a third party of an identical or similar sign may arise, inter alia, from general knowledge in the economic sector concerned of such use, and that knowledge can be inferred, inter alia, from the duration of such use. The more that use is long standing, the more probable it is that the EUTM proprietor will, when filing the application for registration, have knowledge of it (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 39).

However, as shown above, the documents submitted by the applicant do not show reputation of the earlier sign or even intensive and/or long-standing use. As explained above, the evidence submitted does not allow the Cancellation Division to draw any solid conclusions about the degree of recognition of the mark by the relevant public, the market share held by the mark, the position it occupies in the market in relation to competitors’ goods, the duration, extent and geographical area of their use or the extent to which it was promoted. It must be therefore considered that the evidence does not show use of such significance as to raise expectations that the proprietor must have known of the applicant’s sign.

For the sake of completeness, the Cancellation Division notes that even if the fact that the proprietor had knowledge had been established, it would not have been sufficient to demonstrate that the EUTM proprietor was acting in bad faith when filing the trade mark. Knowledge of an identical or similar earlier sign for identical or similar goods or services is not sufficient in itself to support a finding of bad faith (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 40, 48-49). Similarly, the fact that the applicant knows or should know that, at the time of filing of its application, a third party is using a mark abroad that is liable to be confused with the mark whose registration has been applied for is not sufficient, in itself, to permit the conclusion that the applicant is acting in bad faith (27/06/2013, C‑320/12, Plastic bottle (3D), EU:C:2013:435, § 37).

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. This is a subjective factor which has to be determined by reference to the objective circumstances of the case.

Demonstrating bad faith implies proving that at the time of filing the EUTM proprietor was aware that it was causing harm to the invalidity applicant and that this harm was a consequence of its reproachable conduct from a moral or commercial view (21/04/2010, R 219/2009‑1, GRUPPO SALINI / SALINI, § 66).

The applicant’s claims regarding the dishonest intention of the proprietor (to free-ride on the reputation of the applicant’s registered mark, to take advantage of that reputation and to block the applicant’s business in the European Union), however, remain unsubstantiated.

As seen above, the evidence submitted is far from demonstrating the reputation of the applicant’s earlier mark.

One of possible indicators of the proprietor’s dishonest intention is if it subsequently becomes apparent that the owner’s sole objective was to prevent a third party from entering the market (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 44). However, the dishonest intention of the EUTM proprietor has not been proved. There is no evidence that would allow for a conclusion that the proprietor intended to block the applicant. Furthermore, the applicant did not make available any evidence that the EUTM proprietor had no intention of using the mark, nor had it demonstrated that the proprietor’s sole intention was to prevent a third party from entering the market (13/12/2012, T‑136/11, Pelikan, ECLI:EU:T:2012:689, § 57-60).

The documents submitted do not demonstrate that at the time of filing of the contested EUTM, the proprietor knew or must have known of the use of the applicant’s earlier mark. They are also insufficient to allow for a conclusion that the proprietor actually intended to prevent the applicant from entering the EU market or to show the proprietor’s dishonest intention at the moment of the filing the contested EUTM.

In the light of the above, the Cancellation Division concludes that the application should be rejected insofar as it is based on Article 59(1)(b) EUTMR.

COSTS

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

Since the 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

Marta Maria CHYLIŃSKA

Frédérique SULPICE

Pierluigi M. VILLANI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.