CANCELLATION No 37 297 C (INVALIDITY)

Synergies Development Limited, c/o Falcon, Chesterfield Suite, Chesterfield House, Victoria Street, Doulgas IM1 2LR, Isle of Man (applicant), represented by Newpatent, Puerto 34, 21001 Huelva, Spain (professional representative)

a g a i n s t

Tempocasa Holding Srl, Via Carolina Romani 1/11, 20091 Bresso, Italy (EUTM proprietor).

On 30/03/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 18 016 515 is declared invalid for some of the contested services, namely:

Class 35: Business assistance, management and administrative services; business analysis, research and information services; management of telephone call centers for others; consultancy services relating to the management of telephone call centers.

Class 38: Telecommunication services; provision and rental of telecommunications facilities and equipment; computer communication and internet access; telephone and mobile telephone services; broadcasting services; electronic news agency services; data communication by electronic means; communication of data by means of telecommunications; communication of information by electronic means; consultancy in the field of telecommunications; telecommunications consultancy; consultancy services relating to data communications; communication by radio; providing electronic telecommunication connections; providing information relating to wireless communication; provision of telecommunication tariff information; provision of reports relating to communications; providing high speed access to computer and communication networks; provision of private mobile radio services; provision of communications facilities for interchange of electronic data; providing facilities and equipment for video conferencing; supply of airtime for communication services; operation of satellite-to-earth receiver aerials; operating of electronic communications networks; message collection and transmission services; radio communication; radio telecommunications; reception of television programmes for onward transmission to subscribers; retransmission of images via satellite; information and advisory services relating to telecommunication services; radio information services; telecommunications access services; news agency services [transmission of news]; electronic communication services for transmission by means of cables; communication services provided electronically; providing communication services through the use of phone cards or debit cards; communication services for the delivery of emergency messages; communication services for the electronic transmission of images; communication services for the transmission of information by electronic means; radio telephone communication services; satellite communication services for business users; communications by telegraph; telematic communication services; wireless communications services; wireless broadband communication services; communication services by cable; network conferencing services; radio, telephone, telegraph communication services; advisory services relating to communications equipment; consulting services in the field of electronic communications; advisory and consultancy services relating to wireless communications and wireless communications equipment; information services relating to telecommunications; information services relating to electronic communication networks; on-line information services relating to telecommunications; interactive telecommunications services; telecommunications services using cellular radio networks; telecommunications services to obtain information from data banks; telecommunications services for the distribution of data; telecommunications services for facsimile transmission of information; telegraph telecommunications services; communication services by satellite; telecommunications services between financial institutions; telecommunications services between computer networks; electronic transmission of images (services for the -); electronic and telecommunication transmission services; voice and data transmission services; video communication services; providing video conferencing services; electronic transmission of documents (services for the -); electronic transmission of voices (services for the -); electronic transmission of information (services for the -); telephone services; transmission of sound and vision via satellite or interactive multimedia networks; transmission of sound, video and information; computer-aided transmission of text; transmission of information by teletypewriter, by satellite; telematic sending of information; transmission of information for business purposes; transmission of information by data communications for assisting decision making; transmission of information on optical telecommunication networks; transmission of vision via interactive multimedia networks; transmission of database information via telecommunications networks; transmission of information and images relating to pharmaceuticals, medicine and hygiene; information transmission by telematic codes; transmission of information via teletypewriter; transmission of information in the audiovisual field; transmission of information relating to pharmaceuticals, medicine and hygiene; transmission of information via national and international networks; transmission of information by electronic communications networks; transmission of short messages [SMS], images, speech, sound, music and text communications between mobile telecommunications devices; message sending; computer-aided transmission of sound; transmission of telegrams; digital transmission of data; digital transmission of data via the internet; digital transmission of voice; transmission and reception [transmission] of database information via the telecommunication network; data transmission and reception services via telecommunication means; transmission and receiving by radio; electronic transmission and retransmission of sounds, images, documents, messages and data; electronic transmission of messages and data; transmission of written communications (electronic -); secure transmission of data, sound or images; secured data, sound and image transmission services; cable transmission of sounds, images, signals and data; transmission of sound via satellite; satellite transmission; telephone communication services provided for hotlines and call centers.

Class 42: Scientific technological services; IT services; testing, authentication and quality control; design services.

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

Class 35: Advertising, marketing and promotional services; rental of sales stands; retail services in relation to alcoholic beverages (except beer); retail services in relation to coffee; retail services in relation to medical apparatus; retail services in relation to clothing; retail services in relation to furnishings; retail services in relation to sporting articles; retail services in relation to sporting equipment; retail services in relation to audio-visual equipment; retail services in relation to information technology equipment; wholesale services in relation to printed matter; wholesale services in relation to clothing; wholesale services in relation to lighting; wholesale services in relation to information technology equipment; wholesale services in relation to audio-visual equipment; wholesale services in relation to computer software; wholesale services in relation to computer hardware; retail services in relation to computer software; retail services via global computer networks related to foodstuffs.

Class 41: Education, entertainment and sport services; translation and interpretation; education, entertainment and sports.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the services of European Union trade mark No 18 016 515 , namely against all the services in Classes 35, 38 and 42. The application was based on European Union trade mark registrations No 14 983 035 for the word mark ‘SYNERGIES’ and No 2 807 857 for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a high degree of similarity between the signs at issue as well as identity, similarity or a close relationship between the goods and services protected by the signs, which created a high risk of confusion including a risk of association. It requested that the contested EUTM be declared invalid for all the contested services.

The EUTM proprietor did not 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.

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s EUTM No 14 983 035 for the word mark ‘SYNERGIES’.

1. The services

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 services on which the application is based are the following:

Class 35: Sourcing services, namely, locating various products for others which are of a designated quality and which are manufactured in compliance with international standards and work.

Class 39: Shipment and delivery of goods of assured quality.

Class 42: Quality control services for others; and development of computer software.

The contested services are the following:

Class 35: Business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; rental of sales stands; retail services in relation to alcoholic beverages (except beer); retail services in relation to coffee; retail services in relation to medical apparatus; retail services in relation to clothing; retail services in relation to furnishings; retail services in relation to sporting articles; retail services in relation to sporting equipment; retail services in relation to audio-visual equipment; retail services in relation to information technology equipment; wholesale services in relation to printed matter; wholesale services in relation to clothing; wholesale services in relation to lighting; wholesale services in relation to information technology equipment; wholesale services in relation to audio-visual equipment; wholesale services in relation to computer software; wholesale services in relation to computer hardware; retail services in relation to computer software; retail services via global computer networks related to foodstuffs; management of telephone call centers for others; consultancy services relating to the management of telephone call centers.

Class 38: Telecommunication services; provision and rental of telecommunications facilities and equipment; computer communication and internet access; telephone and mobile telephone services; broadcasting services; electronic news agency services; data communication by electronic means; communication of data by means of telecommunications; communication of information by electronic means; consultancy in the field of telecommunications; telecommunications consultancy; consultancy services relating to data communications; communication by radio; providing electronic telecommunication connections; providing information relating to wireless communication; provision of telecommunication tariff information; provision of reports relating to communications; providing high speed access to computer and communication networks; provision of private mobile radio services; provision of communications facilities for interchange of electronic data; providing facilities and equipment for video conferencing; supply of airtime for communication services; operation of satellite-to-earth receiver aerials; operating of electronic communications networks; message collection and transmission services; radio communication; radio telecommunications; reception of television programmes for onward transmission to subscribers; retransmission of images via satellite; Information and advisory services relating to telecommunication services; radio information services; telecommunications access services; news agency services [transmission of news]; electronic communication services for transmission by means of cables; communication services provided electronically; providing communication services through the use of phone cards or debit cards; communication services for the delivery of emergency messages; communication services for the electronic transmission of images; communication services for the transmission of information by electronic means; radio telephone communication services; satellite communication services for business users; communications by telegraph; telematic communication services; wireless communications services; wireless broadband communication services; communication services by cable; network conferencing services; radio, telephone, telegraph communication services; advisory services relating to communications equipment; consulting services in the field of electronic communications; advisory and consultancy services relating to wireless communications and wireless communications equipment; information services relating to telecommunications; information services relating to electronic communication networks; on-line information services relating to telecommunications; interactive telecommunications services; telecommunications services using cellular radio networks; telecommunications services to obtain information from data banks; telecommunications services for the distribution of data; telecommunications services for facsimile transmission of information; telegraph telecommunications services; communication services by satellite; telecommunications services between financial institutions; telecommunications services between computer networks; electronic transmission of images (services for the -); electronic and telecommunication transmission services; voice and data transmission services; video communication services; providing video conferencing services; electronic transmission of documents (services for the -); electronic transmission of voices (services for the -); electronic transmission of information (services for the -); telephone services; transmission of sound and vision via satellite or interactive multimedia networks; transmission of sound, video and information; computer-aided transmission of text; transmission of information by teletypewriter, by satellite; telematic sending of information; transmission of information for business purposes; transmission of information by data communications for assisting decision making; transmission of information on optical telecommunication networks; transmission of vision via interactive multimedia networks; transmission of database information via telecommunications networks; transmission of information and images relating to pharmaceuticals, medicine and hygiene; information transmission by telematic codes; transmission of information via teletypewriter; transmission of information in the audiovisual field; transmission of information relating to pharmaceuticals, medicine and hygiene; transmission of information via national and international networks; transmission of information by electronic communications networks; transmission of short messages [SMS], images, speech, sound, music and text communications between mobile telecommunications devices; message sending; computer-aided transmission of sound; transmission of telegrams; digital transmission of data; digital transmission of data via the internet; digital transmission of voice; transmission and reception [transmission] of database information via the telecommunication network; data transmission and reception services via telecommunication means; transmission and receiving by radio; electronic transmission and retransmission of sounds, images, documents, messages and data; electronic transmission of messages and data; transmission of written communications (electronic -); secure transmission of data, sound or images; secured data, sound and image transmission services; cable transmission of sounds, images, signals and data; transmission of sound via satellite; satellite transmission; telephone communication services provided for hotlines and call centers.

Class 42: Scientific technological services; IT services; testing, authentication and quality control; design services.

Preliminary remarks

An interpretation of the wording of the list of services is required to determine the scope of protection of these services. The term ‘namely’, used in the applicant’s list of services, in Class 35, to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

According to Article 33(7) EUTMR, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same class or in different classes in the Nice Classification.

Contested services in Class 35

The applicant’s trade mark is registered for sourcing services, which are described in the list itself as services for locating specific goods for others, in this case goods of a designated quality that are manufactured in compliance with international standards.

The activity of sourcing, also known as procurement, is a support service to businesses in the field of supply chain management, which consists in finding the most appropriate goods/suppliers for a company on the basis of specific requirements, and agreeing terms. This ensures that buyers receive goods, services or works at the best possible price, given such aspects as quality, quantity, time, and location.

The contested business assistance includes, as a broader category, the applicant’s sourcing services. Since the Cancellation Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the applicant’s services.

The contested business management and administrative services; business analysis, research and information services; management of telephone call centers for others; consultancy services relating to the management of telephone call centers are also intended to help companies to manage their business either on a higher level by setting out the strategy and/or direction of the company or to help them more specifically with the performance of business operations by organising people and resources efficiently so as to direct activities toward common goals and objectives. These services are usually rendered by either business consultants or outsourcing companies, which also offer procurement/sourcing and/or consultancy services in this field. Therefore, the abovementioned contested services target the same business public as the applicant’s sourcing services and are usually offered by the same companies through the same distribution channels. It follows that the services in question are similar to at least a low degree.

By contrast, the contested advertising, marketing and promotional services and rental of sales stands have nothing in common with the applicant’s sourcing services. These services differ in nature, purpose, usual providers and distribution channels. They are neither complementary nor in competition. Therefore, they are dissimilar. The remaining services of the applicant are transport and delivery in Class 39 and software development and quality control in Class 42, which are not any closer to the contested rental of sales stands and advertising, marketing and promotional services. The contested services are, therefore, dissimilar to all the applicant’s services.

The remaining contested services relate to the retail and wholesale of specific goods. Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale. The Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader to promote the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425, § 34). Wholesale is the sale of commodities in quantity, usually for resale. As previously mentioned, the applicant’s procurement services consist in selecting adequate suppliers for businesses. This is very different in nature and purpose from offering goods for retail or wholesale. These services are provided neither by the same companies nor through the same distribution channels. They are neither complementary nor in competition. The contested retail/wholesale services are not similar in terms of the factors used for comparison to the applicant’s services of transport/delivery in Class 39 or of quality control and software development in Class 42. In particular, retail companies or wholesale companies do not normally provide transportation services independently, but only for the goods purchased at their premises. The transport of goods remains purely ancillary to these companies’ core activity of selling. A retailer/wholesaler cannot be asked to satisfy another’s private transportation needs and, vice versa, transport companies do not sell goods.

Therefore, all the contested retail and wholesale services are dissimilar to the applicant’s services.

Contested services in Class 38

The contested services are all types of telecommunications services through various means, such as internet, television, radio. The telecommunication and computer industries have been converging and it is difficult to draw a clear line between them. The contested services are interrelated with the creation and maintenance of specific computer programs, without which many current telecommunications devices are useless. Computer and software related services play an essential role in the provision of present-day telecommunication services. Software programs contribute to the functioning of the services, making it possible for telecommunication operators to render their services and for users to access them. Therefore, the contested telecommunications services and the applicant’s development of computer software in Class 42 are complementary because the implementation of software is a necessary part of the telecommunication services in question. The services at issue are similar at least to a low degree given their complementary character and the fact that their distribution channels and the intended public may be the same (27/09/2016, T‑450/15, luvoworld / luvo et al., EU:T:2016:543, § 40-49; 10/06/2016, R 2399/2015‑4, ION (fig) / ION et al., § 42).

Contested services in Class 42

The contested IT services include, as a broader category, the applicant’s development of computer software. Since the Cancellation Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the applicant’s services.

Quality control services are identically contained in both lists of services, and the contested testing and authentication services are highly similar to the applicant’s quality control services as they are intended for the same purpose of ensuring quality and have the same nature, usual providers, distribution channels and target public.

The contested design services include the design of computer equipment. IT companies usually take care of all aspects of the development of their goods, from the design and production of the hardware to the development (programming) of the related software. Therefore, the contested design services usually coincide in their commercial origin, relevant public and distribution channels with the applicant’s development of computer software. These services are similar.

The contested scientific technological services are similar to the applicant’s quality control services for others as they are provided by the same companies in the field of engineering through the same distribution channels. These services also coincide in their nature as they require similar know-how and the use of similar equipment. Furthermore, they target the same (business) public.

2. 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.

In the present case, some of the services found to be identical or similar to varying degrees are directed at both the public at large and professionals, such as most of the contested telecommunication services in Class 38. For these, the public’s degree of attentiveness may vary from average to high, depending on the intended use, price or terms and conditions of the services.

The services in Classes 35 and 42 are directed at business customers with specific professional knowledge or expertise. This specialised public will pay an enhanced level of attention since business interests are concerned (21/03/2013, T‑353/11, eventer Event Management Systems, EU:T:2013: 147, § 37; 29/10/2015, T‑256/14, CREMERIA TOSCANA / La Cremeria et al., EU:T:2015:814, § 24). In particular, regarding the applicant’s development of computer software in Class 42, it must be pointed out that, when a consumer does not purchase a standard product that is already commercially available, but instead turns to a supplier that specialises in the design, creation and development of computer programs, they are looking to obtain a product that meets a specific need. This involves significant interaction with the supplier and the product is, consequently, more technical and more expensive than a standard product. Those services most often target specialists and dealers, whose degree of attentiveness is generally high. Some consumers from the general public may occasionally make use of computer design and programming services. However, when they do, their degree of attentiveness is higher than normal, because such services are specialised, are not purchased every day and represent a significant financial investment (17/02/2017, T‑351/14, GATEWIT / Wit software (fig.), EU:T:2017:101, § 54; 27/03/2014, T‑554/12, AAVA MOBILE / JAVA, EU:T:2014:158, § 27).

3. The signs

SYNERGIES
Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

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 verbal element ‘SYNERGIE’ of the contested trade mark is a word that exists in several languages of the relevant territory, such as Czech, Dutch, French and German. The equivalent words are very close in all the languages of the European Union (‘synergy’ in English, ‘sinergia’ in Italian, Portuguese and Spanish, ‘szinergia’ in Hungarian, ‘sinergija’ in Croatian and Slovenian, ‘synergi’ in Danish and Swedish, ‘sinergiya’ in Estonian, ‘synergia’ in Finnish and Polish, ‘sinerģija’ in Latvian, ‘sinergija’ in Lithuanian, ‘sinerġija’ in Maltese, ‘sinergie’ in Romanian and ‘synergia’ in Slovak). The transliterations from Bulgarian and Greek are ‘sinergiya’ and ‘synergía’ respectively.

The earlier mark, ‘SYNERGIES’, is the plural form of the existing English and French words ‘synergy’ and ‘synergie’ respectively. It is also related to the word that means ‘synergy’ in the other languages of the European Union since, as previously mentioned, there is a similar word in all languages.

The word ‘synergy’ refers to ‘[t]he interaction or cooperation of two or more organizations, substances, or other agents to produce a combined effect greater than the sum of their separate effects’ (information extracted from online Lexico dictionary on 17/03/2020 at www.lexico.com/definition/synergy). It evokes positive connotations of efficiency and optimisation. The issue of the distinctiveness of the word ‘synergy’ for services in Class 35 has already been dealt with by the Boards of Appeal (27/10/2011, R 2472/2010‑2, Watt Synergia / SYNERGIE (FIG. MARK), § 53). Even if the word ‘synergy’ were to be considered somewhat allusive, it has no descriptive character per se for business services in Class 35 as it does not directly describe particular characteristics or explain the nature of the services. It merely alludes to a vague, potentially desired effect. These findings apply equally to the relevant services in Classes 38 and 42. Therefore, the verbal elements ‘SYNERGIES’ and ‘SYNERGIE’ of the signs are considered distinctive, albeit to a below average degree.

The figurative element of the contested sign may be perceived as symbolising an effect of synergy but is nevertheless distinctive to a normal degree owing to its fancifulness. The specific depiction of the verbal element is discreet and fulfils a decorative purpose.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Visually, the earlier mark and the contested sign’s verbal element are the same, except for the final letter ‘S’ in the earlier mark. Therefore, the eight-letter verbal element of the contested sign is included in the earlier mark. The differences in the specific depiction of the contested sign’s verbal element and in its figurative element have a reduced impact for the reasons mentioned above. Therefore, the signs are visually similar to a high degree.

Aurally, as the figurative element of the contested sign is not subject to a phonetic assessment, the sign differ only in the final letter ‘S’ of the earlier mark. For most of the public, the signs are similar to a high or very high degree. They are aurally identical for the French-speaking public since the final letter ‘S’ indicating the plural form is silent.

Conceptually, given the explanations above, the signs are identical as they evoke the same concept of synergy. The fact that the concept is evoked in the plural in one mark and in the singular form in the other mark for part of the public does not preclude identity or at the very least very high similarity.

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

4. Distinctiveness of the earlier mark

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

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what was stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The signs are visually, aurally and conceptually at least highly similar. The contested services are partly identical, partly similar to varying degrees, and partly dissimilar to the applicant’s services. The degree of attention of the public is high for at least some of the relevant services.

The scope of protection of the earlier mark is not significantly reduced by its below-average degree of distinctiveness. Even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of the similarity between the signs and between the goods or services covered (27/09/2018, T‑449/17, SEVENFRIDAY / SEVEN et al., EU:T:2018:612, § 84).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In view of the high similarity between the signs, the relevant public is likely to confuse them or at least perceive them as variants of each other, used by the same or economically linked undertakings to identify specific ranges of services. This is true even when this public displays a high degree of attention and/or even in relation to services that are similar to only a low degree.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration ‘SYNERGIES’.

Pursuant to the above, the contested trade mark must be declared invalid for the services found to be identical or similar to those of the earlier trade mark, including those found similar to a low degree.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and on the earlier mark examined cannot be successful insofar as it is directed against these services.

The applicant has also based its cancellation application on European Union trade mark registration No 2 807 857 for the figurative mark on the basis of the following services:

Class 35: Locating goods of designated quality, manufactured in compliance with international standards and work ethics.

Class 39: Shipment and delivery of goods of assured quality.

Class 42: Quality control services; technological services; development of computer software.

The remaining contested services have already been compared with and found dissimilar to the above services, with the exception of the technological services in Class 42. However, advertising, marketing and promotional services, rental of sales stands, and retail/wholesale services in Class 35 are also dissimilar to the applicant’s technological services in Class 42 as they differ in their nature, purpose, usual providers and distribution channels. They are neither in competition nor complementary. Therefore, the application cannot succeed for the remaining contested services in Class 35 on the basis of the other earlier mark invoked.

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(2) 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 part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Richard BIANCHI

Catherine MEDINA

Boyana NAYDENOVA

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.