CANCELLATION No C 46 288 (INVALIDITY) 

Guerra Import Export di Guerra Marco, via Cadore 5, 20831 Seregno, Italy (applicant)

a g a i n s t

Arnas Tarim Uretim Ve Ticaret Anonim Sirkety, Kosuyolu Mah. Cenap Sahabettin Sok. No: 26 Kadikoy, 34718 Istanbul, Turkey  (EUTM proprietor), represented by Lisbet Andersen, c/o Aumento Law Firm, Ny Østergade 3, 1101 Copenhagen K, Denmark (professional representative).

On 12/03/2021, the Cancellation Division takes the following

DECISION

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

 

2.	European Union trade mark No 18 171 309 is declared invalid for some of the contested goods, namely: Class 3: Cleaning preparations; stain removers; perfumery; non-medicated cosmetics; fragrances; deodorants for personal use and animals; soaps.
3.	The European Union trade mark remains registered for all the remaining goods, namely: Class 3: Bleaching preparations; detergents other than for use in manufacturing operations and for medical purposes; laundry bleach; fabric softeners for laundry use; dishwasher detergents; dental care preparations; dentifrices; denture polishes; tooth whitening preparations; non-medicated mouth rinses.
4.		Each party bears its own costs.

REASONS

On 05/09/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 18 171 309 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM. The application is based on Italian trade mark registration No 2018 000 027 608 ‘ROSABELLA’. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a), 8(1)(b) and 8(5) EUTMR.

Preliminary remark

The applicant filed the form for application for a declaration of invalidity, in which it indicated that the application is based on the abovementioned earlier Italian trade mark and based on the abovementioned grounds. It did not file any observations. The only documents accompanying the application form were a document regarding the registration of the invoked earlier right and an excerpt from TMView regarding another trade mark, namely Italian trade mark registration No 2017 000 057 342  . This trade mark is not mentioned in the application form. The only additional submissions the applicant made during the course of the proceedings contained translations of the lists of goods of the two Italian trade marks.

It is not clear whether or not it was the applicant’s intention to base the application also on the Italian registration No 2017 000 057 342. Nevertheless, even if it was considered that the applicant intended to base the application on this earlier right, the application would be inadmissible as regards this mark, for the following reasons.

According to Article 12(1)(b) EUTMDR, an application for a declaration of invalidity pursuant to Article 63 EUTMR must contain the grounds on which the application is based. Pursuant to Article 12(3) EUTMDR, where the application for a declaration of invalidity pursuant to Article 60 EUTMR is based on more than one earlier mark or earlier right, Article 12(1)(b) EUTMDR applies for each of those marks or rights. It follows that the applicant must indicate on which grounds it bases the application as regards each and every earlier right. According to Article 15(2) EUTMDR, where the application does not comply with Article 12(1)(b) EUTMDR, the Office will reject the application as inadmissible.

It follows from the above that since the applicant did not indicate on which grounds the application is based as regards Italian trade mark registration No 2017 000 057 342, the application must be rejected as inadmissible as far as this earlier right is concerned.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

  

The applicant argues that there is a likelihood of confusion between the marks and that the use without due cause of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

 

The EUTM proprietor did not file and observations despite having been duly invited to do so by the Office.

On 08/03/2021, more than three months after the closure of the adversarial part of the proceedings, the applicant filed documents regarding registrations of several domain names (‘rosabella’ followed by several different top level domains) and stated that it ‘wanted to integrate the various internet domain registrations (in the different EU states) as brand protection. Each domain is redirected to the main domain rosabella.it’. This submission will not be taken into account because (i) it was filed after the closure of the adversarial part of the proceedings, which is the time limit for the applicant to substantiate its application (Article 16 EUTMDR), (ii) it is not clear what the applicant means by ‘integrating the domain registrations as brand protection’ and overall it is unclear what the purpose of the submission is, and (iii) it is not likely to influence in any way the outcome of these proceedings.

 

In the event that with the abovementioned submission the applicant intended to include the domain names as new earlier rights as a basis for the application, the following has to be noted. Invoking a new earlier right at a later stage (after the filing of the invalidity application) has to be considered an inadmissible extension of the application. The Cancellation Division is not entitled to allow a broadening of the scope of the cancellation request. Once the cancellation request is filed, the earlier rights and grounds on which it is based and the goods and services against which it is directed cannot be extended. The same considerations apply as in opposition proceedings. Even less can such an extension be allowable in view of the fact that the pendency of cancellation proceedings prevents parallel proceedings before EUTM Courts and they result in decisions with res iudicata effect, Article 128(2) and Article 63(3) EUTMR (see decision of Fourth Board of Appeal R 1517/2007-4 of 21/12/2009, paragraph 20).

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. 

a) 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 3: Perfumery; air fragrancing preparations; perfumes per person; perfuming products; essential oils.

Class 18: Purses; school satchels; cardboard-leather; hat boxes of leather; travel trunks; backpacks; wallets; shopping bags; briefcases for documents; beach bags; handbags; travel bags; leather straps; suitcases; boxes of leather or cardboard-leather; knitted bags; vulcanized fiber boxes; suitcases-covers for travel clothes; leather upholstery for furniture; sports bags; sports bags; bags; business card holders; luggage tags; key cases (leather goods); leather and its imitations; transport bags and bags; collars; leashes and clothing for animals; card holder; handles for suitcases; credit card holder.

Class 24:  Furnishing fabrics; bath linen, except clothing; fabrics; brocades; fabrics [fabrics]; textile materials; fabrics; tea towels for upholstery or embroidery; hat liners; fabric linings for

footwear; footwear fabrics; table runners not of paper; scottish wool [fabrics]; oilcloths [tablecloths]; velvets; felt; cotonina; bed blankets; quilts; mattress covers; rigatino; bed blankets of paper; table rugs not of paper; travel blankets; crepe [fabric]; crespone; damask [cloth]; linen fabrics; bed sheets; sudarii; pennants of fabric or plastics; fabric or plastic material; clothes; duvets [foot covers]; elastic fabrics; cords of textile materials; glass dryer; fabrics covered with patterns designed for embroidery; flannel [fabric]; knitted wool fabric; gummed cloths other than for stationery; sackcloth [cloth]; silk fabrics for typography designs; indian canvas; jersey [fabrics]; jute fabrics; woolen fabrics; linen fabrics; bedding; worked linen; textile table linen; household linen; towels of textile; marabou [cloth]; mattress cloth; napkins of textile; moleskin [fabric]; cloth handkerchiefs of textile; pillow cases; goalkeeper [curtains]; ramie fabrics; rayon fabrics; curtains of textile or plastics; toilet towels of textile; silk fabrics; tulle; esparto fabrics; taffeta [fabric]; knitted fabrics; stained glass windows [awnings]; zephyr [fabric]; calicot; fabric table doilies; non-woven fabrics; sleeping bag sheets; textile labels; textile wall hangings; glass fiber fabrics for textile use; filter materials [textile materials]; printing cloths of textile; chenille fabric; pillow covers; individual fabric placemats; bed blankets; cushion covers; fabrics for textile use; replacement fabrics for babies; pet blankets; valances for beds; cot bumpers [bedding]; baby bumpers [bedding]; muslin fabric; curtains of textile or plastic material; hot adhesive fabrics, fabrics imitating animal skin; truss [hemp canvas] hemp fabrics; liners [cloth]; cotton, gauze [fabric]; protective covers for furniture; plastic materials [substitutes of fabric]; fabric under pad; furniture coverings in textile materials.

Class 25:  Clothing for motorists; footwear; bath sandals; bath shoes; socks; caps; aprons; boa [collar fur]; caps [headphones]; knitwear; boots; booties; braces; ankle boots with laces; neck warmers; neck scarves; choker [scarves]; stem covers; underwear; caps; shirts; underwear; hoods [clothing]; cap visors; belts [clothing]; shawls; dressing gowns; sweaters; pullover; chasubles; socks; men's suspenders; garters; women's suspenders; boot leggings; insoles; shirts; shoot yourself with shirts; short-sleeved shirts; articles of clothing; hats; furs [clothing]; fake collars [detachable collars]; pantyhose; suits [suits]; ready-made clothing; baby panties; earmuffs [clothing]; ties; uppers; leggings; shorts; trousers; survive; gloves [clothing]; readymade linings [parts of clothing]; foulards [handkerchiefs]; scarves; knitted clothing; chests of shirts; esparto-soled shoes; stoles [furs]; top hats; gabardine [clothing]; busts [underwear]; sheaths [petticoats]; calosce [rubber overshoes]; waistcoats; wagons [clothing]; sneakers; coats; waterproof clothing; leggings; leg warmers; jerseys [clothing]; skirts; newborn layettes; liveries; cuffs [clothing]; aprons [clothing]; sleeves [clothing]; mitten gloves; miter [clothing]; slippers; capes; fur coats; beach costumes; beach shoes; clothing pockets; pajamas; clothes; clogs [footwear]; sandals; panties [briefs]; bras; overcoats; togas; welts for footwear; uniforms; jubilation; jackets; paper clothing; veils [clothing]; bath caps; swim shorts; swimwear; bath robes; bibs not of paper; soles; shoes; heels; sports shoes; sports footwear; headbands [clothing]; parka; petticoats; underwear [underwear]; body [underwear]; bandanas [foulards]; gymnastic clothing; imitation leather clothing; leather clothing; mantillas; carnival costumes; sari; turbans; lavallière ties; shower caps; wallet belts [clothing]; pocket handkerchiefs [clothing]; sleep masks; trouser miniskirts; poncho; sarong; leggings [trousers]; pinafore dresses; aprons dresses; visors [headgear]; culottes [underwear]; sports tank tops; valenki [felt boots]; gowns; logs; hairdressing capes; tights; kimono; collars [clothing]; [clothing]; headwear ; tee-shirt; headdress [headwear]; suits.

Class 26: Hair bands; hair barrettes; edgings for clothing; buttons; bracelets; belt clasps; numerals for marking linen; shoe laces; hair barrettes; artificial flowers; lace trimmings; heat adhesive patches for repairing textile articles; zippers for bags; wreaths of artificial flowers; hair accessories; brassards; brooches [clothing accessories]; cords; artificial flowers; charms, other than for jewellery, key rings or key chains.

Class 31: Tree trunks; shrubs; wreaths in natural flowers; dried flowers for decoration; natural lawns; plants; dry plants for decoration; Christmas trees.

 

The contested goods are the following: 

 

Class 3: Bleaching and cleaning preparations; detergents other than for use in manufacturing operations and for medical purposes; laundry bleach; fabric softeners for laundry use; stain removers; dishwasher detergents; perfumery; non-medicated cosmetics; fragrances; deodorants for personal use and animals; soaps; dental care preparations; dentifrices; denture polishes; tooth whitening preparations; non-medicated mouth rinses.

Contested goods in Class 3

The contested perfumery is also included in the earlier mark’s specification. These goods are identical.

The contested fragrances are included in the applicant’s broad category perfumery. Therefore, these goods are identical.

The contested deodorants for personal use and animals are similar to the earlier mark’s perfumery as they have the same general purpose, namely to protect or enhance the odour or fragrance of the body. Additionally, they usually coincide in producer, relevant public and distribution channels. The same applies to the contested non-medicated cosmetics, which also include products aimed at improving the body odour. These goods are, therefore, also similar to the applicant’s perfumery.

The contested soaps include soaps for washing and cleaning the body which improve the body’s appearance and odour (e.g. soap for body care, antiperspirant soap). Some of these products may even contain fragrances to make their scent, and consequently, the scent of the body on which they are used, more pleasant. These goods target the same relevant public, they are sold through the same distribution channels and it is not uncommon that they are produced by the same entities. Consequently, these goods are also similar to perfumery.

Air fragrancing preparations include goods such as room scenting sprays, potpourri and incense sticks. Since household fragrances are pleasant-smelling liquids and other articles used to make homes or other indoor spaces like cars smell nice, they satisfy the needs of the same consumers looking for household cleaning and maintenance goods, such as cleaners and polishes for floors, wooden or leather furniture, windows and other surfaces, scouring solutions and abrasive pastes for the kitchen and bathroom etc. These goods are commonly sold in the same specialised shops and sections of supermarkets or department stores, and the public can expect that they are produced under the control of the same undertaking. Therefore, the applicant’s air fragrancing preparations are similar to the contested cleaning preparations and stain removers.

On the other hand, the contested bleaching preparations; detergents other than for use in manufacturing operations and for medical purposes; laundry bleach; fabric softeners for laundry use and dishwasher detergents are not aimed at improving the scents or enhancing the fragrances of anything but their purpose is to clean and wash specific objects, such as clothing or dishes, or to soften fabric. Therefore, their purpose is different from that of the perfumery goods of the earlier mark, which aim at creating pleasant odours. Although some of the applicant’s goods and these contested ones can be sold in supermarkets, they will not commonly be found next to each other. They also have different nature and method of use and they are not complementary or in competition. Finally, they are not commonly produced by the same undertakings. Therefore, these goods are dissimilar to the applicant’s goods in Class 3. Moreover, these goods are also dissimilar to the rest of the goods of the earlier mark in Classes 18, 24, 25, 26 and 31, as those goods have no relevant factors in common. They have different nature, purpose, method of use, mostly they are distributed through different outlets, they are produced by different undertakings and they are not complementary or in competition.

Finally, the contested dental care preparations; dentifrices; denture polishes; tooth whitening preparations; non-medicated mouth rinses are goods used for the purpose of oral hygiene or for improving of the appearance of teeth. Their nature, purpose and method of use are different from those of the applicant’s perfumery goods in Class 3. Moreover, these goods are normally not produced by the same companies and they are not complementary or in competition. Therefore, these goods are dissimilar. Moreover, these goods are also dissimilar to the rest of the goods of the earlier mark in Classes 18, 24, 25, 26 and 31, as those goods have no relevant factors in common. They have different nature, purpose, method of use, mostly they are distributed through different outlets, they are produced by different undertakings and they are not complementary or in competition.

 

b) Relevant public — degree of attention

 

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

  

In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention will be average.

 

c) The signs

 

ROSABELLA
Earlier trade mark	Contested sign

 

 

The relevant territory is Italy.

 

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

 

The earlier mark is a word mark composed of the word ‘ROSABELLA’. This mark has no dominant elements (elements that would be visually more striking than others).

The contested sign is figurative and contains one verbal element ‘Rosebella’, represented in a stylized typeface and a figurative element in the form of a small crown placed above the initial letter ‘R’. The visually dominant element of this mark is the word, as it overshadows, by its size, the small and inconspicuously placed figurative element. Moreover, the figurative element represents a crown, that is, an image commonly associated with royalty and luxury or exclusivity. The distinctiveness of this element is limited as it will be perceived mostly as a type of promotional or laudatory message the purpose of which is to create an impression that the goods are luxurious, unique, of a good quality fit for a king or queen.

Although neither of the verbal elements as a whole is meaningful in Italian, the relevant Italian public will identify the words ‘ROSA/ROSE’ and ‘BELLA’ in the signs. The relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). The word ‘ROSA’ is an equivalent to the English word ‘rose’ and ‘ROSE’ is the plural of ‘ROSA’ in Italian. The word ‘BELLA’ can be translated into English as ‘beautiful’. The word ‘rose’ or ‘roses’ can be perceived as indicating the scent of the relevant goods and is, thus, of very limited distinctiveness, if any. The word ‘beautiful’ will be perceived as a qualifier of ‘rose’ and as an association to beauty, which may also be perceived as something desirable in relation to the relevant products, at least the perfumery and cosmetic goods. But given that as such, it is not commonly used, in Italian, in relation to perfumery products and cosmetics, let alone cleaning products, the distinctiveness of this element is higher than that of the words ‘rosa’ and ‘rose’. Nevertheless, these musings have little importance on the assessment of similarity between the marks at issue given that both marks contain essentially the same verbal elements (the only difference being that in the contested mark, the noun is in plural), and, therefore, they are on an equal footing regarding the distinctiveness of their verbal components.

  

Visually, the signs coincide in all their letters except for the fourth one. They also differ in the stylization of the letters and the small figurative element of the contested mark. 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). Moreover, as stated above, the figurative element in the contested mark is of limited distinctiveness and the verbal element is visually dominant. Therefore, the difference between the marks consisting in the figurative element is of little importance. So is the difference in stylization of the letters, as this will be perceived more as an embellishment of the word than any statement with trade mark significance. Finally, the difference in the fourth letters of the marks, while all the remaining eight letters are the same and in the same order and the differing letter is not at the beginning or at the end where it would catch more attention, but is concealed in the middle of the word, is a rather insignificant difference. The degree of distinctiveness of the highly similar verbal elements does not play any noteworthy role in this comparison because, as stated above, both marks are in the same situation as far as this issue is concerned, and the additional figurative element in the contested mark is not more distinctive than the verbal one. Considering all the above, it must be concluded that the marks are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ROS*BELLA’, present identically in both signs and it differs in the sound of the letter ‘A’ versus ‘E’. Given that the absolute majority of the sounds of letters of which the marks are composed are identical, as is the overall length, syllable structure and rhythm of the two words, the difference in one vowel in the center of the words is barely perceptible. The marks are aurally very highly similar, nearly identical.

  

Conceptually, reference is made to the findings above. Both marks will be associated with the concept of a beautiful rose (roses), and the contested mark, in addition, contains the meaning of a crown. Although, as stated above the concept of rose is of very low distinctiveness, if any, in relation to the relevant goods, the entire expression ‘beautiful rose’ is not devoid of distinctiveness as ‘beautiful rose’ is not a concrete and specific type of a rose that could be perceived as an indication of a fragrance but it is a more poetic expression. Therefore, the coincidence of the marks in this concept is not irrelevant but leads to a high degree of conceptual similarity. The additional concept of a crown, which is, as explained above, of a limited distinctiveness, can only slightly diminish what would otherwise be an identity. Considering all the above, the marks are conceptually similar to a high degree.

 

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

 

d) Distinctiveness of the earlier 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 claimed that the earlier trade mark enjoys reputation but did not file any evidence to prove this claim.

  

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all the relevant goods of the earlier mark. As stated above, although the expression ‘beautiful rose’ as a whole is not devoid of distinctiveness as it does not describe any concrete characteristic of the goods, it does have connotations that may inspire the consumers to connect the name with an indication of a certain fragrance elevated to a more sublime level. Therefore, the distinctiveness of the earlier mark is below average for perfumery goods.

e) 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).

The marks were found to be similar to a high degree from all three aspects. The verbal elements of the marks are nearly identical and the additional figurative element of the contested mark is lowly distinctive and less visually striking than the verbal element. Under such circumstances, the fact that the verbal elements may be of lower distinctiveness does not affect the finding of high similarity. The same can be concluded as far as the lower distinctiveness of the earlier mark is concerned. Some of the goods are identical and similar and the trade marks are similar to such a high degree that the below average distinctiveness of the earlier mark cannot alter the finding that the relevant and normally attentive public will be prone to confusing the marks.

 

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s Italian trade mark registration No 2018 000 027 608. 

 

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to those of the earlier trade mark. 

 

The rest of the contested goods 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 directed against these goods cannot be successful.

 

The cancellation application was also based on Article 60(1)(a) in conjunction with EUTMR Article 8(1)(a) EUTMR. It must must fail insofar as it is based on these grounds because the signs are obviously not identical.

 

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

 

The applicant claimed that the earlier mark No 2018 000 027 608 has a reputation in Italy in relation to all the goods on which the application is based.

 

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

 

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

 

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

 

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

 

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

 

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

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for declaration of invalidity under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

 

a) Reputation of the earlier trade mark

  

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it. However, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

 

Therefore, the Office cannot take any alleged rights into account for which the applicant does not submit appropriate evidence.

 

The applicant did not file any evidence to support its claim of reputation of the earlier mark(s).

 

As seen above, for the invalidity application to be successful under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, the earlier trade mark must have a reputation. Since it has not been established that, at the time of filing of the contested mark, the earlier trade mark had a reputation, one of the necessary conditions contained in Article 8(5) EUTMR has not been fulfilled, and the application must be rejected insofar as it was based on these grounds.

 

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 part 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

 

Elena NICOLÁS GÓMEZ

Michaela SIMANDLOVA

Martin LENZ

 

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.