CANCELLATION No 14662 C (INVALIDITY)

Delta Light NV, Muizelstraat 2, 8560 Wevelgem (Moorsele), Belgium (applicant), represented by Crowell & Moring, Joseph Stevensstraat 7, 1000 Brussels, Belgium (professional representative)

a g a i n s t

Reo AG, Brühler Str. 100, 42657 Solingen, Germany (EUTM proprietor), represented by LS-IP Loth & Spuhler Intellectual Property Law Partnerschaft von Rechtsanwälten MBB, Alpha-Haus, Garmischer Strasse 35, 81373 München, Germany (professional representative).

On 26/03/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 11 056 711 is declared invalid for all the contested goods, namely:

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, solar thermal installations, wind power installations, photovoltaic installations.

3. The European Union trade mark remains registered for all the uncontested goods and services included in Classes 1, 4, 6, 7, 9, 16, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42 and 43.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 11 056 711 ‘REO Renewable Energy Objects’ (word mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely against the following goods:

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, solar thermal installations, wind power installations, photovoltaic installations.

The applicant invoked Article 59(1)(a) EUTMR in relation to Article 7(1)(b) EUTMR and Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claims that the trade mark is invalid because it lacks any distinctiveness and because it has been filed in bad faith.

It explains that the terms ‘Renewable Energy Objects’ are clearly a mere description of the products sold by Reo AG. This has already been confirmed by the EUIPO in 2013 when it refused the application for registration of the word mark ‘Renewable Energy Objects” by Reo AG. The addition of the widely used acronym “REO’, which is an obvious reference to the first three letters of the descriptive wording, cannot alter this descriptive character. The applicant adds that such widely used acronym in combination with three descriptive words cannot serve to identify the goods or services for which it has been registered. The relevant public will indeed perceive that the contested mark is a descriptive reference of the goods that are sold by the proprietor and not as a distinction of the origin of these goods.

Moreover, the applicant argues that it is a family business active since 1989 in the design and manufacturing of architectural lighting. Over the years, it has built out a worldwide network and market position as a trendsetter in architectural lighting. On the other hand, the proprietor was founded in 1925 in Berlin and produces power supplies, such as transformers, chokes, power controllers and resistors, both parties being active in very different sectors. Therefore, it appears from the foregoing that the filing in 2012 of the trade mark ‘REO Renewable Energy Objects’ in that many classes was not aimed at a use in good faith of this mark but at enforcing the mark in relation to a wider scope of goods and services for which the proprietor has no intention to use.

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

• Extracts from EUIPO E-search showing the registration details of the European trade marks Nos 4 215 521, 11 056 686, 11 056 711 and 11 056 728.

• Decision of the EUIPO, Cancellation Division of 18/02/2016, No 9689 C.

• Decision of the EUIPO, Examination Division of 18/06/2013.

• Document in German which, according to the applicant, refers to a cease and desist letter of 15/01/2017 by the German lawyer of Reo AG to the applicant.

• Reply letter of 6/02/2017 sent by the Belgian lawyer of Delta Light NV to the proprietor.

• Letter of 13/02/2017 in German sent by the German lawyer of Reo AG to the applicant.

• Reply letter of 7/03/2017 sent by the Belgian lawyer of Delta Light NV to the proprietor.

• Letter of 10/03/2017 sent by the German lawyer of Reo AG to the applicant.

• Reply letter of 17/03/2017 sent by the Belgian lawyer of Delta Light NV to the proprietor.

• Extracts from the 2011 edition of the Delta Light Lighting BibIe showing lighting items.

• Various invoices issued by Delta Light and addressed to Belgian and German clients in 2011. They include, among others, REO products.

• Example of a brochure for the lnterieur design fair of 2011. It includes REO products.

• Extract from Wikipedia about the Arc Lamp.

The EUTM proprietor argued that the contested European Union trade mark is neither devoid of any distinctive character within the meaning of Article 52(1)(a) EUTMR in relation with Article 7(1)(b) EUTMR nor was the trade mark owner acting in bad faith when it filed the application for the trade mark within the meaning of Article 52(1)(b) EUTMR. It states that the applicant has not submitted proof for the alleged absolute grounds for invalidity.

The proprietor explains that there is no direct and specific relationship between the contested European Union trademark ‘REO Renewable Energy Objects’ and the contested goods from the point of view of the relevant public. The consumers will see the element ‘REO’ as the main element indicating origin. The trade circles addressed will not assume that ‘REO’ is an abbreviation of ‘Renewable Energy Objects’ or that ´Renewable Energy Objects´ is a description or the meaning of ‘REO’. But even if they would consider such a connection, this would not lead the public to consider the contested mark as a description of the contested goods.

The EUTM proprietor also points out that the applicant has neither submitted arguments nor proof that it was even positively aware of the sign already used by the applicant in 2012 and that the proprietor acted only to cause harm to the applicant or in any other reproachable way. Therefore, it considers that the application for the contested trade mark to protect its mark is completely legitimate. In support of its observations, the EUTM proprietor filed extracts from the German Patent and Trade Mark Office showing the registration details of marks including ‘REO’.

In reply, the applicant reiterates its previous arguments. Furthermore, the applicant argues that the proprietor has not genuinely used the contested mark in a continuous period of five years after the filing of the contested mark. Pursuant to Article 58(1)(a) EUTMR, the contested mark shall be revoked for Classes 11 and 35.

Finally, the EUTM proprietor reiterates its previous arguments. It adds that the element ‘REO’ is a clear indication of the proprietor of the contested mark. Furthermore, it denies the presumed knowledge of the applicant’s mark since it started its use only few months before the contested mark was applied. The proprietor also points out that it has been using its mark for many years before the filing of the contested mark.

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

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

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

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

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

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

Preliminary remarks

As regards the invoked Article 58(1)(a) EUTMR – Non use of the contested mark

In its observations dated 12/02/2018, the applicant argues that the proprietor has not genuinely used the contested mark in a continuous period of five years after the filing of the contested mark. Pursuant to Article 58(1)(a) EUTMR, the contested mark shall be revoked for Classes 11 and 35.

However, it has to be noted that the grounds on which the application for invalidity or/and for revocation is based must be identified at the date in which such application is filed, either in the application form or in the observations attached to it. Further grounds cannot be invoked during the course of the cancellation proceedings. Therefore, Article 58(1)(a) EUTMR invoked by the applicant at that stage is rejected as inadmissible.

As regards the invoked Article 7(1)(b) EUTMR

In the application for invalidity, the applicant ticked, among others, the box next to Article 59(1)(a) EUTMR in relation to Article 7(1)(b) EUTMR.

However, in its statements of grounds together with the application for invalidity, the applicant stated that the terms ‘Renewable Energy Objects’ are clearly a mere description of the products sold by the proprietor. The addition of the widely used acronym ‘REO’, which is an obvious reference to the first three letters of the descriptive wording, cannot alter this descriptive character.

The purpose of invalidity proceedings is, inter alia, to enable the Office to review the validity of the registration of a trade mark and to adopt, where necessary, a position that it should have adopted of its own motion in the registration process in accordance with Article 42(1) EUTMR (judgment of 30/05/2013, T-396/11, Ultrafilter International, EU:T:2013:284, § 20).

Article 95(1) EUTMR, second sentence, explicitly states that in invalidity proceedings pursuant to Article 59 EUTMR, the Office will limit its examination to the grounds and arguments submitted by the parties. The EUTM enjoys a presumption of validity and it is for the invalidity applicant to invoke before the Office the specific facts that call the validity of a trade mark into question (judgment of 13/09/2013, T-320/10, Castel, EU:T:2013:424, § 27-29). Consequently, the Office will examine the facts in accordance with Article 95(1) EUTMR, second sentence, within the scope of factual submissions made by the applicant for the declaration of invalidity (judgment of 13/09/2013, T-320/10, Castel, EU:T:2013:424, § 28). It will not go beyond the legal arguments presented by the applicant for the declaration of invalidity.

However, in the present case, even if the applicant did not expressly tick the box next to Article 7(1)(c) EUTMR in the application form, its observations attached to it clearly explain the conditions included in that article for a trade mark to be considered descriptive, namely, that the contested mark is a mere description of the goods.

Therefore, the Cancellation Division will consider all the arguments and will start its examination in relation to Article 59(1)(a) EUTMR in relation to Article 7(1)(c) EUTMR.

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered. Thus Article 7(1)(c) EUTMR pursues the aim, which is in the common interest, of ensuring that signs or indications which describe the categories of goods or services in respect of which registration is applied for remain available. Hence, this provision does not permit such signs or indications to be reserved for use by one undertaking as a result of their registration as a trade mark (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 31).

The descriptive character of a trade mark must be assessed in relation to the goods or services in respect of which the trade mark is registered and in relation to the perception of the sign by the relevant public (20/03/2002, T‑356/00, Carcard, EU:T:2002:80, § 25).

Article 7(1)(c) EUTMR does not apply to those terms which are only suggestive or allusive as regards certain characteristics of the goods. Sometimes this is also referred to as vague or indirect references to the goods (31/01/2001, T‑135/99, Cine Action, EU:T:2001:30, § 29).

It should also be taken into account that the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought. In accordance with the same case-law, for a sign to come under the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods/services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods/services in question, or one of their characteristics (see ‘PAPERLAB’, paragraph 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (10/02/2010, T‑344/07, Homezone, EU:T:2010:35, § 21).

In the present case, the contested goods are the following:

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, solar thermal installations, wind power installations, photovoltaic installations.

In the present case, the objectionable goods covered by the mark applied for are mass consumption goods or specialised goods and are aimed at both average consumers and a professional public. In view of the nature of the goods in question, the awareness of the relevant public will be high or that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. Moreover, since the mark is composed of the English words ‘Renewable Energy Objects’, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the European Union.

As follows from Article 7(2) EUTMR, the European Union trade mark shall be declared invalid if it is ineligible for protection with regard to just one Member State or the official language of just one Member State. It has been identified the relevant public as consisting of average English consumers and traders with specialised expertise within the EU. The degree of attention must be considered either high or average.

The dates on which the European trade mark was filed and registered must be taken into account. The General Court has held that whether a trade mark should be registered or should be declared invalid must be assessed on the basis of the situation at the date of its application, not of its registration (judgment of 03/06/2009, T-189/07, Flugbörse, EU:T:2009:172; confirmed by order of 23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225).

Generally speaking, any developments or events after the date of application or priority date will not be taken into consideration. However, such facts subsequent to the date of application can nevertheless be taken into account where and to the extent that they allow conclusions to be drawn regarding the situation at the date of application of the EUTMR.

The contested mark was filed on 19/07/2012 and consists of the acronym ‘REO’ followed by ‘Renewable Energy Objects’. For at least a part of the public in the relevant field, the acronym ‘REO’ will be perceived as referring to ‘Renewable Energy Objects’. This describes precisely that the objects have energy from a source that it is not depleted when used, such as wind or polar power. The use of the acronym ‘REO’ followed by the descriptive wording ‘Renewable Energy Objects’ is enough to conclude that ‘the contested mark will be understood by the relevant public as referring to things with a specific energy and that it identifies the characteristics or the intended purpose of the products in Class 11 apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, solar thermal installations, wind power installations, photovoltaic installations, contrary to the proprietor´s arguments.

Abbreviations of descriptive terms are in themselves descriptive if they are used in that way, and the relevant public, whether general or specialised, recognises them as being identical to the full descriptive meaning. The mere fact that an abbreviation is derived from a descriptive term is not sufficient (judgment of 13/06/2014, T-352/12, Flexi, EU:T:2014:519).

Signs consisting of an independently non-descriptive acronym that precedes or follows a descriptive word combination should be objected to as descriptive if it is perceived by the relevant public as merely a word combined with an abbreviation of that word combination. This is because the acronym and word combination together are intended to clarify each other and to draw attention to the fact that they are linked (judgment of 15/03/2012, joined cases C-90/11 and C-91/11, Strigl & Securvita, EU:C:2012:147, § 32, 34 and 40).

Since, as explained above, this meaning also existed at the time of filing of the contested EUTM, it follows that it directly informed the relevant consumer of actual (or potential) characteristics of the goods or its intended purpose.

It must, therefore, be concluded that the acronym REO followed by the word combination ‘Renewable Energy Objects’ together have a relationship with the goods in question that is sufficiently direct and specific to enable the relevant consumer immediately to perceive, without further thought, a description of the characteristics of these goods (12/06/2007, T‑339/05, Lokthread, EU:T:2007:172, § 29).

As regards the EUTM proprietor’s argument that similar registrations containing the word ‘REO’ have been accepted by the EUIPO, according to settled case law, ‘decisions concerning registration of a sign as a European trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the European judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47 and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

The Office strives to be consistent and always has regard for previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence which reflects them. The examination of absolute grounds for refusal must be full and stringent (06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 59), and may not just consist of the mere repetition of supposedly comparable decisions. Therefore, the EUTM proprietor´s argument is dismissed.

It follows from the above that the applicant has proved that the EUTM was registered contrary to Article 7(1)(c) EUTMR for all contested goods.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

Considering that the EUTM has been found to be registered contrary to Article 7(1)(c) EUTMR, it is not necessary to examine the remaining ground invoked by the applicant, namely, Article 59(1)(b) EUTMR.

COSTS

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

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

José Antonio GARRIDO OTAOLA

Carmen SÁNCHEZ PALOMARES

Ana MUÑIZ RODRIGUEZ

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.