CANCELLATION No 29 941 C (INVALIDITY)
Mark Guyett, 24 Stanley Street, Rothwell Northamptonshire, NN146EB, United Kingdom (applicant), represented by Nordia Advokatkontor, Østergade 16, 2. th., Copenhagen K 1100, Denmark (professional representative)
a g a i n s t
Wenz Kunststoff GmbH & Co. KG, Hueckstr. 8, Lüdenscheid 58511, Germany (EUTM proprietor), represented by Patentanwälte Dörner & Kötter Partg mbB, Körnerstr. 27, Hagen 58095, Germany (professional representative).
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
On 21/11/2018, the applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 10 022 317 ‘MOULDPRO’ (word mark). The application is based on UK trade mark registration No 2 467 856 ‘MOULDPRO/MouldPro’ (word mark/series of two). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR.
A. SUMMARY OF THE PARTIES’ ARGUMENTS AND EVIDENCE
The applicant argues that there is a likelihood of confusion on the part of the public on account of the identity of the marks and the high similarity of the goods. He further details the factors which in his opinion prove the similarity of the goods and files evidence in support thereto (listed herein below). In addition, the applicant contends that the earlier mark had acquired a reputation in the UK and it would be ‘evident that the holder’s use of the mark is and will be detrimental to the distinctiveness and repute of the earlier mark’. The EUTM proprietor has applied and used the mark without due cause and its only aim was to try to establish a link between the parties and to try to benefit from the confusion. The applicant also points out that he has not acquiesced for a period of five successive years in the use of the contested mark within the meaning of Article 61 EUTMR since he only became aware of the contested mark in June 2014 when the EUTM proprietor wrote a cease and desist letter (enclosed as Exhibit 20) to the company Mouldpro ApS. He further explains that Mouldpro ApS and Mouldshop Limited (a UK company whose director and majority shareholder is the applicant and which has been granted permission by the applicant to use the UK mark) are consolidated companies.
In support of its observations, the applicant filed on 21/11/2018 a number of 52 exhibits (888 pages), whose content can be summarised as follows:
Exhibits 1 and 2: Printouts from https://euipo.europa.eu/eSearch and respectively from https://trademarks.ipo.gov.uk detailing the particulars of the contested mark and of the earlier UK mark.
Exhibit 3: Extract from the Companies House detailing the particulars of the UK company Mouldshop Limited, incorporated on 03/04/2001. The evidence shows, inter alia, the applicant as director and majority shareholder.
Exhibit 4: Printouts from Wikipedia (with a printout date on 19/11/2018) regarding the injection moulding process (a manufacturing process for producing parts by injecting molten material into a mould).
Exhibits 5 to 7: Printouts from http://mouldshop.co.uk (the website of the UK company Mouldshop Limited) showing mould cooling and flow products available for sale (mould/multi couplings, hoses, hose protection goods such as safety sleeves or safe strips, hose clips, cooling accessories/fittings, ball valves, push in fittings, brass fittings, manifolds, malleable fittings, thread sealant stainless steel fittings, fittings, filtration and consumables – fasteners, heat transfer fluid, inhibitors, spill control, mould sprays, lubricants, wiping, mould polish, nano mould coating, purging compound). The sign ‘MOULDPRO’ is shown mainly as , , .
Exhibits 8 and 9: Printouts from the EUTM proprietor’s website and online shop (www.mouldpro.de and https://we-ku-shop.de) showing the range of products marketed (couplings, hoses, consumables).
Exhibits 10 to 14: Internet printouts from UK, French and Belgium websites (www.invotecextra.co.uk, www.taservicesltd.co.uk, www.pmseurope.com, www.ajsolutions.be, www.bmsfrance.eu, calameo.com) showing hoses, couplings, lubricants, mould cleaners, water fittings, aerosols available for sale.
Exhibit 15: Undated picture of what the applicant explains to be the ‘MOULDPRO’ stand in 2011 at the annual Interplas Fair in the UK.
Exhibit 16: Advertisement for the company Mouldshop Limited mentioning that it is celebrating ‘10 years in plastics 2001-2011’ and selection of six flyers for ‘MOULDPRO’ goods (couplings, mould cleaners, mould degreasers), published according to the applicant in the Mouldshop Limited’s magazine ‘MOULD-SHOP’. One of the flyers shows a time reference in 2009, some include the indication ‘2001-2011’ and some are undated.
Exhibit 17: Selection of MSDS (Material Safety Data Sheets) in several languages (for example English, Spanish, German or French) for ‘MOULDPRO’ products (such as polymer removal/cleaner, anticorrosion products, lubricants). The evidence is dated in 2009 and mentions, inter alia, the company CRC Industries UK Ltd. (with subsidiaries in Belgium, Finland, France, Germany, Sweden and Spain) as manufacturer of the products. The applicant mentions that the documents were sent along with the shipment of the consumables to his customers in the UK, Spain, Sweden, Denmark, Germany, France and the Czech Republic.
Exhibit 18: Advertisement published according to the applicant in the magazine ‘Essentials’ mentioning ‘Mouldshop’ and the website www.mouldshop.cz.
Exhibit 19: Selection of invoices, purchase orders and sales orders mentioning Mouldshop Limited (UK), Mouldpro A/S (Denmark) or Mouldshop Trade s.r.o. (Czech Republic) dated between June 2010 and January 2011 in relation to, among others, couplings, hoses and consumables.
Exhibit 20: A letter of 02/03/2009 from the company Mouldshop (signed by the applicant) and informing several UK customers inter alia about the new range of basic mould maintenance sprays.
Exhibit 21: Letter of 16/06/2014 sent by the EUTM proprietor to Mouldpro ApS (in German only). The applicant states in his observations of 21/11/2018, that a translation into English is relevant only if the proprietor claims limitation in consequence of acquiescence.
Exhibit 22: Printouts from www.ami.international.com (‘a leading provider of information, market intelligence and conferences of the global plastics industry’, as the applicant informs) and mentioning, inter alia, that the UK is the fourth largest market for thermoplastics in Europe and that in 2017 there were a number of 1333 plastic processing sites. According to the applicant, since 2007 his company sold its goods to more than 1000 of these companies.
Exhibit 23: Internal document containing the applicant’s customers list as at January 2011 and showing around 1000 active customers.
Exhibit 24: Internal document detailing the sales turnover of ‘Mouldpro’ products for each of the years 2008 to 2018 (until May).
Exhibit 25: Selection of invoices issued by Mouldshop Limited (UK) between 2008 and May 2018 and addressed to UK customers in relation to the sales of goods such as lubricants, hoses, hose drive clips, mould cleaners, hose connectors, couplings, ball valves etc. The same exhibit includes some purchase orders from Mouldshop Limited (UK) to UK or German based companies as well as invoices from Mouldshop Limited (UK) and addressed to Mouldpro Aps (Denmark).
Exhibits 26 and 27: Labels created for ‘Mouldpro’ aerosols (non-silicone release agent and lubricant, protective coating, solvent cleaner) in 2008 and safety data sheets for ‘Mouldpro’ goods from the same year together with email chain correspondence related thereto.
Exhibits 28 to 32 and Exhibits 35 to 51: Selection of documents and more specifically: (i) ‘Mouldpro’ promotional flyers of 2008 and 2009 and email chain correspondence related thereto, (ii) advert for ‘The Plastic and Rubber Industries Planner 2010’ for ‘Mouldpro’ sprays, email chain correspondence informing the applicant that a number of 10 UK companies responded to the advertisement and invoice of December 2009 addressed to Mouldshop in relation to the design and supply ‘Mouldpro Year planner’ (GBP 35), (iii) label for ‘Mouldpro’ lubricant aerosol of 2010, website banner examples of 2010, email correspondence related thereto and billing for artwork with labels and banners of 2010 (GBP 150), (iv) Mouldshop business cards of 2010, (v) website artwork of 2010, (vi) promotional flyer ‘ESSENTIALS Outer 2010’ mentioning ‘Mouldpro’ and ‘Mouldshop’, invoice of 2010 addressed to the applicant/Mouldshop for the insertion of the flyer in the ‘PRW’ publication, issue 17/09/2010 (GBP 1,762.5) and email message of October 2009 containing an extract from ‘PRW’ stating, inter alia, that ‘PRW is read every issue by over 11,800 decision makers – the most readers of any UK plastics title’, (vi) artwork from 2010 for ‘Mouldshop advert’ and billing for artwork 2010 (three invoices of October 2010 addressed to Mouldhsop in relation to design Mouldshop Essentials Nov 2009 and throughout 2010 – GBP 480, design and supply Mouldpro advert, amend and supply 2 advert – GBP 150 and design Mouldshop website visuals – GBP 150), (vii) artwork for ‘Mould screens’ data sheet of 2010, ‘Mouldpro’ promotional flyer of 2010 and email correspondence related thereto, (viii) ‘Mouldshop’ advert artwork, email correspondence of 2010 related thereto and email chain correspondence related to the EPPM magazine (mentioning inter alia that ‘EPPM’s readership is large and fast growing. At the last count, we had a printed circulation of 15,000 and an online audience of 60,000’; according to the applicant the advert was published in EPPM in October 2010 (no evidence filed to support such claim), (ix) invoice of 2010 addressed to Mouldshop for one Mouldpro logo banner – 76.38; according to the applicant the banner was for ‘Interplas fair 2010’, (x) artwork for Mouldpro spill control flyer and email chain correspondence related thereto dated in 2010 and 2011, artwork for a web banner and email correspondence related thereto from 2011 and (xi) email message to the applicant informing that a number of 16 UK companies responded to the advertisement on the ‘PRI Planner 2011’.
Exhibit 33: Selection of email messages from Mouldshop UK to the applicant containing copies of web order confirmations from 2010 and 2011 for ‘MOULDPRO’ branded products.
Exhibit 34: Reports of sales orders (internal documents) from 2010 for MOULDPRO branded sprays.
Exhibit 52: Affidavit given on 21/11/2018 by the applicant and attesting in the main to the fact that the company Mouldshop has been authorised to use the earlier UK mark and that said company is ‘a key player of the plastic moulding industry in the UK’, having sold goods to 1000 customers in the UK.
The EUTM proprietor requests for the application of invalidity to be rejected in its entirety. It shows that the provisions of Article 8(1)(b) EUTMR are not applicable since the goods of the contested mark are neither similar nor identical to the applicant’s goods. As regards the grounds of Article 8(5) EUTMR, the proprietor proceeds to a detailed analysis of all the exhibits filed by the applicant and concludes that the evidence does not prove the reputation of the earlier mark in the UK.
As mentioned in section A. above, the applicant contends that Article 61 EUTMR is not applicable in this case since he only became aware of the EUTM in June 2014. Given that in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties and since the EUTM proprietor did not raise in its defence the claim of acquiescence, the applicant’s arguments in relation thereto shall not be addressed.
B. 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 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 1: Pattern and mould release agents, being chemical products for use in industry; mould-release preparations; chemicals used in industry; degreasing solvents and preparations for use in manufacturing; cleaning solvents and preparations for use in industry; anti static agents and cleaners; anti-stick compositions and sprays; mould cleaning agents for industrial use; silicones, silicone emulsions, silicone resins; sealing compositions; silicone rubber and elastomers; adhesives belt dressings; weld splatter release agents; leak and flow detector compositions; desoldering agents; preparations for curing to give silicone rubber, adhesives and sealants; catalysts for curing silicone and silicone rubbers and elastomers; silicon fluids; hydraulic fluids; dielectric fluids anti-foaming agents and compositions; electrical coating resins; release agents and compositions; damp proofing preparations; digesting agents and compositions, particularly for silicones.
Class 3: Cleaning, polishing, scouring and abrasive preparations; soaps; glass cleaners, not for industrial use; polishing sprays not for industrial use; barrier creams and compositions; detergents (not for use in industrial or manufacturing processes or for medical purposes); degreasing preparations (not for use in industrial or manufacturing processes); rust and stain removing preparations; preparations included in Class 3 for the removal of tar, of scale and of asphalt.
Class 4: Lubricants, oils and greases; mould release preparations included in this class; mould release agents containing oil; dust absorbing, wetting and binding compositions; de-watering lubricants; silicone greases; polytetrafluoroethylene lubricants; silicone oils; fuser oils for photocopiers; cable removing oil compositions; sewing lubricants; ejector pin lubricants; belt dressings; metal curing lubricants; silicone fluid and silicone emulsion lubricants; protective lubricants; lubricating oils; machine oils; penetrating oils; chain oils; silicone fluid and silicone emulsion lubricants; switch and contact lubricants.
The contested goods are the following:
Class 17: Hose couplings of plastic (included in class 17), hoses, rapid-release couplings for hoses, hose connection couplings.
The applicant went to great lengths to argue that the goods are highly similar. He contends that ‘they circulate in the same industry and trade channels, namely the plastics injection moulding industry, they are sold to the same consumers, namely experts in the plastics injection industry, they are the same category, namely consumables for the plastic industry, they are sold for the same purpose, namely to manufacture plastic products using moulds, they are complementary because they can be used together in the plastics manufacturing process and they are sold side-by-side by the same type of business’. It is further explained that the parties are both manufacturers and suppliers to the plastics injection moulding industry and they produce and supply the same products, that is the ‘hard parts’ such as couplings and hoses and on the other hand, consumables and maintenance products, such as chemicals used in industry, cleaning products and lubricants, oils and greases. In support of his arguments, the applicant relied on the evidence in Exhibits 4 to 20 (see above in section A. Summary of the Parties’ Arguments and Evidence).
It is true that the evidence filed by the applicant shows that the company Mouldshop Limited (UK) markets, inter alia, hoses and couplings. However, it must be recalled from the outset that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the application for a declaration of invalidity is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, §71). In this regard the Cancellation Division notes that the earlier UK mark claimed as the basis of the present application is not registered for hoses or couplings and as such the evidence relied upon by the applicant and showing use of the UK mark for such goods bears no relevance for the purposes of the present assessment.
The contested goods are hoses and couplings (hose couplings of plastic (included in class 17), rapid-release couplings for hoses and hose connection couplings). The mere fact that consumers can come across the contested goods and some of the goods of the earlier mark within the same retail outlets (such as for example DIY, building, kitchen, deco or garden hypermarkets that could sell both the contested hoses and the applicant’s lubricating oils) is clearly not sufficient to lead to a finding of similarity between them. The contested hoses are used to carry fluids through air or fluid environments, whereas hose couplings are connectors on the end of a hose to connect (or couple) it with another hose or with a tap or a hose appliance, such as an irrigation sprinkler. The nature, intended purpose and methods of use of the contested goods are obviously very distinct from those of the applicant’s goods in Classes 1, 3 and 4, which are essentially specific or general chemical products for use in industry, mould cleaning agents, sealants, elastomers, adhesives, fluids, coating resins, preparations for cleaning, polishing, scouring, degreasing, rust and stain removing, abrasive preparations, lubricants, oils and greases, dust absorbing, wetting and binding compositions. Furthermore, the goods under comparison are not in competition with each other or complementary thereto and they do not usually share the same commercial origin. Therefore, they must be considered dissimilar.
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 mark was 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 mark the evidence submitted by the applicant in this respect does not alter the outcome reached above.
C. 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 shall 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, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the European Union and, 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 of Article 8(5) EUTMR are only applicable when the following conditions are met.
The signs must be either identical or similar.
The earlier trade mark must have a reputation. As to relevant moment in time, it has to be pointed out that an invalidity applicant must prove that its earlier right(s) has/have acquired a reputation by the filling date of the contested EUTM (taking into account, where appropriate, any priority claimed) and also that earlier right(s) continue(s) to enjoy reputation at the time the application for invalidity is filed. Moreover, reputation must exist in the territory concerned and for the goods and/or services on which the application is based and for which reputation is claimed.
Risk of injury: the use 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.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for a declaration of invalidity under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (by analogy judgment of 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 for a declaration of invalidity 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 did not claim to have due cause for using the contested mark. Therefore and in the absence of any indications to the contrary, it must be assumed that no due cause exists.
Reputation of the earlier mark
According to the applicant, the earlier mark has a reputation in the United Kingdom.
Reputation implies a knowledge threshold which is reached only when the earlier mark is 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 06/06/2011. Therefore, the applicant was required to prove that the trade mark on which the application for a declaration of invalidity is based had acquired a reputation in the United Kingdom prior to that date and that it continues to enjoy a reputation at the time the application for a declaration of invalidity is filed. Indeed, the requirements of Article 60(1)(a) EUTMR that there is an earlier mark [...] and that the conditions set out in paragraph 5 of Article 8(5) EUTMR are fulfilled (emphasis added) have to be interpreted in the sense that reputation of the earlier mark must also exist by the time of filing the request for invalidity. This is because in invalidity proceedings the time span between the filing date of the contested EUTM and the invalidity application can be considerable and it cannot be normally presumed, in the absence of evidence that reputation subsists.
Moreover, the evidence must also show that the reputation was acquired for the goods for which the applicant has claimed reputation, namely all the registered goods in Classes 1, 3 and 4 (see list in Section B, subsection a) above).
In order to determine the earlier 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.
The evidence filed by the applicant has already been listed above under section A. Summary of the Parties’ Arguments and Evidence.
Assessment of the evidence
Having evaluated all the documents before it, the Cancellation Division agrees with the EUTM proprietor that, albeit voluminous, the evidence is clearly insufficient to demonstrate that the earlier mark has acquired a reputation in the relevant territory, for the goods on which the application is based and for which the applicant claimed reputation.
As already stated above, reputation requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see to that effect, judgment of 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).
Furthermore, it must be recalled that, as follows from Article 95(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the applicant. Exceptions to this rule apply where particular facts are so well-established that they can be considered as universally known and, thus, are also presumed to be known to the Office (e.g. the fact that a particular country has a certain number of consumers, or the fact that food products target the general public). However, whether or not a mark has passed the threshold of reputation established by the Court in General Motors (14/09/1999, C‑375/97, Chevy, EU:C:1999:408) is not in itself a pure question of fact, since it requires the legal evaluation of several factual indications, and, as such, the reputation of the earlier mark may not be simply assumed to be a universally known fact.
The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SALSA (fig.) et al.).
It has to be noted from the outset that part of the evidence (see above Exhibits 1 to 4, Exhibits 8 to 14, Exhibit 21 and Exhibit 22) concerns other matters (such as the proprietor’s goods, the particulars of the contested EUTM or of the company Mouldshop etc.) and as such bears no relevance to the assessment of the alleged reputation of the earlier mark.
The remaining documents consist essentially of invoices, purchase orders, sales orders and web orders confirmations, internal documents detailing lists of customers, reports of sales orders and turnover achieved from the sale of ‘MOULDPRO’ goods, MSDS, examples of labels for ‘MOULDPRO’ goods, artwork for promotional flyers, website banners and datasheets as well as some email correspondence related to some adverts placed by the applicant/the company Mouldshop in 2010 and 2011.
Admittedly the materials show use of the earlier UK mark, mainly for the period before the filing date of the contested EUTM. However, reputation is a knowledge threshold requirement and the evidence on file essentially falls short on providing indications on the extent of recognition of the mark by the relevant public. There is no consumer survey or other direct evidence as regards the knowledge of the mark among the public. Furthermore, the information on the nature and scale of the promotional activities undertaken by the applicant is not only very limited but also dated exclusively prior to the filing date of the contested EUTM and there is not a single piece of evidence covering the seven years before the filing of the application of invalidity. In addition, most of the documents filed by the applicant relate in fact to artwork for promotional flyers, website banners, labels or data sheets rather than to any actual promotional activities that would help to show that the mark has been publicized extensively and constantly. Admittedly, there is some information on the number of companies that responded to an advert placed by Mouldshop in 2010 and 2011 and on the publication of a promotional flyer in the ‘PRW’ publication 2010, however such scarce promotional efforts do not serve to corroborate the applicant’s statements and reflect in a clear and objective manner the degree of recognition of the earlier mark among the relevant public in relation to the goods for which reputation was claimed.
Under these circumstances, it is considered that despite showing some use of the earlier mark, the evidence is essentially flawed in that it does not provide information that clearly shows the actual degree of recognition of the mark in the relevant territory in relation to the goods for which reputation was claimed. In other words, the materials submitted do not support a conclusion that the earlier mark was known by a significant part of the relevant consumers for the goods concerned.
Therefore, in the absence of additional independent and objective evidence (for instance, opinion polls and market surveys) that could enable the Cancellation Division to draw solid conclusions about the degree of recognition of the earlier 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 its use or the extent to which it was promoted, it is concluded that the evidence does not demonstrate the degree of recognition of the trade mark by the relevant public for the goods claimed. Under these circumstances, the Cancellation Division concludes that the applicant failed to prove that his mark has a reputation.
As seen above, it is a requirement for the application for a declaration of invalidity to be successful under Article 60(1)(a) EUTMR in connection 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 a declaration of invalidity must be rejected.
Since the applicant did not succeed on any count, the application for a declaration of invalidity must be rejected in its entirety.
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, he 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
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.