CANCELLATION No 11 036 C (INVALIDITY)

Lakemere Green Limited, 120 Bunns Lane, NW7 2AS London, United Kingdom (applicant), represented by JP Mitchell Solicitors, 1 Barlow Road, TW12 2NF Hampton, Middlesex, United Kingdom (professional representative)

a g a i n s t

Cowshed Products Limited, 72-74 Dean Street, W1D 3SG London, United Kingdom (EUTM proprietor), represented by Bomhard IP, S.L., C/ Bilbao, 1, 5°, 03001 Alicante, Spain (professional representative).

On 03/01/2017, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 11 235 314 is declared invalid for some of the contested goods and services, namely:

Class 3: Cosmetics; essential oils; perfumery; dentifrices; body scrub; body butter; eye-masks filled with lavender or other herbs, flowers or plants; beauty masks; facial packs; potpourri; scented essential oils for application to potpourri; cushions and sachets filled with lavender or other herbs, flowers or plants; perfumes; toilet waters; eau de cologne; perfume oils; aromatherapy oils and preparations; essential oils; incense; incense sticks; incense cones; incense sachets; incense spray; massage oils; non-medicated massage preparations; extracts of flowers; breath freshening preparations; soaps; body washes; non-medicated toilet preparations; non-medicated toilet preparations produced from essential oils; preparations for the care of the hair, skin, scalp, face and nails; lip balms; toners; moisturisers; shampoos; conditioners; creams and lotions for removing make-up; sun-tanning preparations; sun-screening preparations; deodorants and antiperspirants; body sprays; bath and shower products excluding bath salts; foam bath, bath oil; shower gel; depilatory preparations; shaving preparations; aftershave preparations; tissues and wipes impregnated with non-medicated toilet preparations; cotton wool and cotton wool buds;

Class 21: Sponges; cosmetic bags; sponge bags; wash bags; combs; brushes, hairbrushes, eyelash brushes; cosmetic brushes; cosmetic and toilet utensils; applicators for cosmetics; containers for cosmetics; make-up removing appliances; cosmetics utensils; shaving brushes;

Class 44: Health club services, other than fitness training; hairdressing salons and beauty salons; sun tanning salon services; aromatherapy services; massage services; reflexology services; spa services; provision of sauna facilities; provision of solarium facilities; beauty treatment services, make-up services, body and skin care services; manicure services; pedicure services; cosmetic treatment services; electrolysis, waxing, tinting, make-up, grooming, colour diagnosis and body treatment services for cosmetic purposes; complementary health care services; information and advisory services relating to all the aforesaid services; health, diet, and nutrition information; consultancy services regarding nutrition; reservation services for all the aforesaid services.

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

Class 3: Perfuming preparations for the atmosphere; cleaning preparations for household use.

Class 21: Dispensers incorporating pumps; candle sticks, candle holders; soap dishes; soap dispensers; soap holders; soap boxes; containers for toothbrushes; toothbrushes; basins; shaving brush stands; sponge holders; toilet brushes; toilet cases; toilet paper holders; toilet sponges; toilet utensils; towel racks; toothbrush holders; utensils and containers for household, cooking or kitchen use; decorative plates; ornaments, plaques, statues and figurines, all made wholly or principally of glass, crystal, ceramics, porcelain, terracotta or earthenware; oven gloves; lunch boxes, coolers; sauce boats, dishes, soup bowls, egg cups, jugs, goblets, cruets, bottles, bowls, dish covers, moulds, colanders, cups, dinner services, drinking vessels, plates, saucers, servers, sifters, strainers, tea pots, coffee pots, napkin and serviette rings, household containers of wood, chopping boards, wooden serving and cooking utensils, mixing spoons; cake tins, biscuit tins, trays; storage containers; saucepans, pans, pots, dishes, vases, glasses, glassware, porcelain ware, china ware, earthenware, ceramic ware, crockery, tableware (other than cutlery); mugs; tankards; beer mugs; decanters; ice buckets; hip flasks; flasks; water bottles; articles for baking; watering cans; picnic baskets; bread bins; flat iron stands; stands for pots and dishes; pot holders; coffee and tea services; money boxes; coasters; bottle openers; boxes; articles for cleaning purposes; incense holders.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 11 235 314 ‘NEVILLE’ (word mark). The applicant invoked Article 52(1)(b) EUTMR, Article 53(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR and Article 53(1)(c) EUTMR. Under the ground of Article 53(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR the applicant based the request for invalidity on the well-known in the United Kingdom trade mark ‘NEVILLE’ (word mark) for services in Class 44. Under the ground of Article 53(1)(c) EUTMR the applicant invoked as basis of the invalidity request the non-registered trade mark ‘NEVILLE’ (word mark) and the trade name ‘NEVILLE’ for haircare and beauty care services and related products.

I SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that it used the ‘Neville’ trade mark since 1992 in connection with the operation of a haircare and beauty care business which ‘is extremely well known, both in the UK and internationally’. The applicant states further that the trade mark ‘Neville’ has become associated with the very best and highest standards in the haircare and beauty care industries, reflected most notably in its association with a high-profile celebrity clientele, its relationship with world class companies and the provision of these services at prestigious events on haircare, beauty and fashion circuits.

As a result of the significant investments and efforts on the part of the applicant during a long period of time the latter acquired unregistered trade mark rights in the Neville trade mark, including goodwill in the applicant’s business associated with the Neville mark. In support of this claim the applicant provides turnover figures and information regarding the development and establishment of the business associated with the trade mark on the market. As a consequence the applicant claims its right to protect the acquired goodwill and reputation under the tort of passing off. The applicant states that the use of the EUTM by the EUTM proprietor would, and does comprise a misrepresentation that the goods and services provided by the EUTM proprietor are either the same as or associated with those of the applicant, or alternatively that the respective companies are associated or connected in some way. Finally, with regard to the requirements under the tort of passing off the applicant claims that it is likely to suffer damage owing to the dilution of the power of the applicant’s trade mark and loss of sales.

As far as the claim under Article 53(1)(a) EUTMR is concerned, the applicant brings forward that the trade mark ‘Neville’ became well known in the United Kingdom for services in Class 44 and, therefore, it qualifies as an earlier right in the meaning of Article 8(2)(c) EUTMR. There exists likelihood of confusion or double identity, as the case may, be depending on the similarity/identity between the goods and services in conflict.

In relation to the claim under Article 52(1)(b) EUTMR the applicant argues that the EUTM proprietor was either aware or must have been aware of the existence of the ‘Neville’ trade mark and the fame associated with it as of the time of filing of the contested EUTM and that the intention of the EUTM proprietor was (i) to prevent the applicant from trading or developing further its business under the trade mark ‘Neville’; (ii) trading off the reputation and goodwill built up by the applicant in the Neville mark over a 21 year history in order to fast-track the development of a new brand and create confusion and/or association with the business of the applicant for its own benefit and to the detriment of the applicant.

In its observations in reply the EUTM proprietor claims that the invalidity action has to be rejected and the costs awarded to the EUTM proprietor.

The EUTM proprietor argues that there is clearly no bad faith involved in the application. Neville was quite common name and its use by the applicant was, therefore, less than exclusive. The EUTM proprietor claims that the applicant was operating a single salon named ‘Neville’ in London and that it was certainly not in the top league of UK hairdressers. The turnover and investment figures provided by the applicant were not backed up by independent corroborating evidence.

In particular in relation to the claim under Article 52(1)(b) EUTMR the EUTM proprietor states that the applicant did not submit evidence as to prove the bad faith of the EUTM proprietor. Moreover, the EUTM proprietor argues that it couldn’t have had knowledge of the applicant’s trade mark/business since Neville was such a common name, the number of hairdressers in London was huge and there were also other hairdressers using the name Neville. There was also no malicious intent on part of the EUTM proprietor when registering the EUTM and no intention to ride on the coat of tail of the applicant. In support of his arguments the EUTM proprietors files an excerpt of ‘UK’s leading online business directory’ showing that there are more than 3 300 hairdressers in London (Enclosure 1) and a Google search result for the term ‘Neville’ containing reference only to the EUTM proprietor’s website, but not the applicant’s website (Enclosure 2). Furthermore, the EUTM proprietor submits exemplary excerpts from business directories showing hairdressers in the United Kingdom which also use the name ‘Neville’ (Enclosure 3). The EUTM proprietor provides also a possible explanation as to why it chose the name ‘Neville’ to indicate a new pomade product line – namely that this is also the name of a friend of Nick Jones – founder and CEO of the Soho house group of companies to which also the proprietor belongs. An E-mail dated 01/07/2013 from Neville Conrad to Nick Jones is attached as Enclosure 4 in support of this line of reasoning.

The EUTM proprietor argues further that the evidence submitted by the applicant is insufficient to show that the non-registered trade mark ‘Neville’ was well known at the time of filing of the contested EUTM and that the requirements for a sign to be recognised as a well-known mark are not satisfied. The EUTM proprietor compares some of the figures provided by the applicant in relation for example to the visits of social media sites such as Twitter and Facebook of the applicant and other hairdressers. The results are presented in Enclosures 5 and 6. The EUTM proprietor filed also printouts of website top hair stylists rankings which do not show the applicant among the results (Enclosure 7).

As to the claim of the applicant under Article 53(1)(c) EUTMR the EUTM proprietor argues that it is not sufficiently substantiated and analyses in detail the submitted evidence and its relevance for proving the presence of the requirements of Article 8(4) EUTMR. In particular, the EUTM proprietor states that there is no use of the sign of more than mere local significance and that the three requirements under the law on passing off are not met. In support of its arguments the EUTM proprietor repeats some of the statements already made in relation to the other two grounds on which the application is based and analyses in detail particular pieces of evidence as to their credibility and significance. Further details in relation to the EUTM proprietor’s arguments will be provided in the respective context later on in the decision in the section dealing with the analysis of the claim under Article 53(1)(c) EUTMR.

Overall the EUTM proprietor concludes that: (i) there is no bad faith proven for the application of Article 52(1)(b) EUTMR; (ii) that the earlier right does not qualify as a well-known mark in the sense of Article 6bis of the Paris Convention and consequently the claim based on Article 53(1)(a) EUTMR has to be also rejected; and (iii) the requirements for satisfaction of the claim based on the tort on passing off under Article 53(1)(c) in connection with 8(4) EUTMR are not met.

In the next round of observations the applicant addresses the arguments of the EUTM proprietor and submits new set of evidence in support of its contra arguments. The applicant emphasizes on the use of the sign of more than mere local significance and the fulfilment of the requirements under the law on passing off. In relation to the claims under Articles 52(1)(b) EUTMR and Article 53(1)(a) EUTMR the applicant reiterates its arguments submitted in its initial observations and elaborates on the question regarding whether the EUTM proprietor should have had knowledge of the applicant’s sign as of the time of filing the application for registration of the EUTM.

In its final observations the EUTM proprietor reiterates its observations as to why the requirements of the invoked grounds are not satisfied and why the additionally submitted evidence is not capable of proving any new facts beyond those eventually supposed to be proven by the first set of documents submitted by the applicant.

II ARTICLE 53(1)(c) EUTMR IN CONNECTION WITH ARTICLE 8(4) EUTMR - NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE

The applicant invoked two different rights under the ground of Article 53(1)(c) EUTMR in connection with Article 8(4) EUTMR, namely – the trade name ‘NEVILLE’ and the non-registered trade mark for the same sign. The Cancellation Division finds it appropriate to first examine the case based on the non-registered trade mark ‘NEVILLE’.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed. The same applies for invalidity proceedings under Article 53(1)(c).

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 156).

In the present case, the contested trade mark was filed on 03/10/2012. Therefore, the applicant was required to prove that the sign on which the cancellation is based was used in the course of trade of more than local significance in the United Kingdom, prior to that date. The evidence must also show that the applicant’s sign has been used in the course of trade for haircare and beauty care services and related products.

On 19/06/2015 the applicant filed the following evidence:

Appendix 1 Witness statement of Neville John Tucker, managing director of Lakemere Green Limited, dated 11/06/2015. The witness statement provides details about the history of the business run under the names ‘Neville Daniel’ and since 1992 under the name ‘Neville’. Turnover figures are presented which show an increase from GBP 283,078 (1993) to GBP 2,810,357 (2013). According to the statement 95% of the turnover is generated by the provision of haircare services and sales of haircare products, while the remainder relates to the provision of beauty care services, treatments and products. The business operates in a five storey premise and employs 70 staff in the provision of haircare services and beauty care services and treatments to high-class clientele. The witness statement contains also advertising and promotion figures for the period 1993 – 2013 varying from approximately GBP 3,000 to GBP 84,000 for public relations and from GBP 2,000 to GBP 12,000 for print advertising. Circulation numbers for the magazines and newspapers in which the ‘Neville’ advertisements appear originating from The Press Gazette and Wikipedia are provided. Information is also provided about online and social media presence.

In December 2011, the company opened a salon at a hotel in St Barthelemy – an overseas territory of France in the Caribbean.

In August 2013 the company opened a salon under the Neville mark in the Bulgari Spa, London.

Special attention is paid in the witness statement to the relationship with journalists and celebrities. A list of journalists’ names is provided with which the applicant seems to be in cooperation as well as a long list of celebrities to which the enterprise provided its services among which Elle Macpherson, Claudia Schiffer, Madonna, Gwyneth Paltrow, Natalie Portman, Meryl Streep, George Michael, Miranda Kerr a.o.

Mr. Neville John Tucker provides further details regarding cooperation with key providers of haircare products such as L’Oreal.

In support of the above statements the applicant provides the following Exhibits:

Exhibit NT1 A copy of the company’s entry from UK Companies House (the official register for all UK companies) showing the company’s incorporation in 1992 and a copy of a certificate for registration of the business name ‘NEVILLE’, effective in 1996 and made by the company under the UK Business Names Act.

Exhibit NT2 Evidence regarding the opening of the Neville salon in St Barth’s – excerpts from the website www.vogue.com (Vogue magazine), excerpts from Taiwana hotel brochures, screenshots from Facebook and Twitter pages of the applicant. The Taiwana hotel brochure refers to the salon as ‘the famous hair salon Neville’.

Exhibit NT3 Excerpts from the Bulgari Hotels website featuring the Neville Hair & Beauty salon including copies of the brochure/price lists announcements about the opening of the Neville salon at the Bulgari hotel. The prices for the various treatments vary from GBP 50 to GBP 600. Information about the opening of the salon in Bulgari hotel is also available on the website http://luxurialifestyle.com (printout provided).

Exhibit NT4 Representation of the stylised Neville logo on promotional materials such as compliments cards, headed paper, website printouts, discount coupons, gift vouchers, scissors and brushes.

Exhibit NT5 Press and media coverage over the period 2002-2014. The extensive set of documents includes printouts from magazines such as Tatler, Cosmopolitan, Harper’s Bazaar, ES Magazine, Glamour, Star Magazine, InStyle, Grazia and others mentioning the Neville salon and professionals employed by the enterprise serving celebrities like Elle Macpherson and Drew Barimore.

Exhibit NT6 Magazines and newspapers circulation figures originating from www.pressgazette.co.uk. containing data about the magazines and newspapers in which advertisements and information regarding the Neville salon is to be found. The exhibit also contains excerpts from Wikipedia about the respective magazines and newspapers also containing data about their circulation.

Exhibit NT7 Proof of ownership of the domain www.nevillehairandbeauty.net and snapshots of the website’s content as of 2007 and 2015 obtained through the Archive Wayback Machine.

Exhibit NT8 Sample pages from Neville’s Twitter account and details of a Vimeo video featuring the Neville salon and the mark Neville. Screenshots of YouTube videos featuring the Neville sign, including a promotional video created in connection with the London Olympics 2012.

Exhibit NT9 Four testimonials acknowledging the well known nature of the Neville mark and its association with the provision of leading haircare and beauty care services, presented by Sophie Goodwin – Style editor at Tatler, Lino Carbosiero – a representative of the Hairdressing council with the role of political Ambassador, Judy Craymer – global producer and loyal client of the Neville salon and Errol Douglas – a hairdresser and beauty care professional.

Exhibit NT10 A copy of L’Oreal business proposal and a letter from Saloni Chatai of L’Oreal confirming the involvement of the Neville salon in various fashion shows and events since February 2012, including London Fashion Week and Haute Couture Paris. The Neville salon is referred to as an ‘Artistic Hairdresser’.

Appendix 2 Copy of a google search results page showing the applicant’s and the EUTM proprietor’s offerings side by side in the natural search results for the term ‘Neville’, each offering identical or similar products under the same mark.

On 17/05/2016, in response to the EUTM proprietor’s comments, the applicant submits additional evidence. As the applicant refers to some of the documents as confidential the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

Annexes 1-7 Company accounts in relation to the financial years ending 2013, 2012, 2011, 2010, 2009, 2005 and 1999 prepared by independent qualified accountants. Without going into much detail it can be generally said that they support the figures provided in the witness statement of Mr Neville Tucker described in detail above (Appendix 1).

Annexes 8-9 Printouts of google search results for the terms ‘Neville Hair’ or ‘Neville Beauty’ showing that all of the results on pages 1, 2 and 3 relate to the applicant.

Annex 11 Details of one of Cowshed’s outlets.

Annex 12 A copy of an E-mail from Annabel Craig received by Mr Tucker on 11/05/2016 in which a member at Soho Farmhouse was confused at seeing Neville products at the Soho Farmhouse erroneously thinking that they originate from the applicant.

It is to be noted that this set of evidence supports facts for which the applicant already submitted evidence, but which were heavily disputed by the EUTM proprietor. The second set of evidence (Annexes 1-9) does not support any new facts raised by the applicant. Annex 10 contains printouts from Wikipedia which have already been presented with the first set of documents. Annex 11 contains data which is basically irrelevant for the assessment. Annex 12 obviously couldn’t be presented earlier since the E-mail was only received on 11/05/2016. Although they were submitted after the period set by the Office for the applicant to provide facts, evidence and arguments, in exercising its discretion under Article 76(2) EUTMR the Cancellation Division will take them into account for the purposes of the current assessment. The EUTM proprietor had the chance to comment on these documents in its last round of observations.

When determining the significance of the use made of a trade mark within the meaning of Article 8(4) CTMR, first, it is necessary to consider the geographical dimension, that is to say the territory in which the sign is used. Second, the economic dimension of the sign’s significance must be considered, which is assessed in view of the length of time the sign has been used and the degree to which it has been used, of the part of the public among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgment of 24/03/2009, joined cases T‑318/06 to T‑321/06, ‘GENERAL OPTICA’; and judgment of 30/09/2010, T‑534/08, ‘GRANUflex’).

The major part of the evidence is dated before the relevant date. Pieces of evidence dated outside the relevant period such as the one relating to the opening of a Neville salon in the Bulgari Spa hotel in London are not to be completely disregarded as they are related to events which date back to the period before the relevant date and give (an indirect) information as to the geographic and economic dimension of the sign’s significance. The vast majority of the documents show that the place of use is the United Kingdom, in particular London (this can be inferred from the language of the documents, English, the currency mentioned - pounds, and the address of the company’s headquarters where the haircare and beauty services are provided). All the documents provide sufficient and reliable information concerning the commercial volume of use, the length of time of use and the frequency of use. Finally, the Cancellation Division accepts that the applicant’s trade under the sign at issue was of more than mere local significance, as can be inferred from the location where the services are provided, the huge media coverage and the other facts seen in the light of the specifics of the provided services and the information submitted by the applicant regarding the prominent clientele of the enterprise as will be explained below.

The main argument of the EUTM proprietor that the provision of services under the sign in one single salon cannot justify use of more than mere local significance cannot be followed in the particular case at hand. Under certain circumstances, one sole establishment may be of more than local significance because of its geographically widespread clientele and/or because of the reputation it enjoys among the public at a national or even international level. The evidence on file suggests that this is the case for the applicant’s sign. The clientele demonstrated by the applicant includes a certain number of celebrities which speaks even in favour of some kind of exclusivity and certain level of prestige. The argument of the EUTM proprietor that the general public is not aware of the fact that the salon serves also celebrities is to be rejected since it is evident from the submitted documents that the visits of celebrities in the salon are reflected in the media and the salon is presented as a preferred ‘go-to’ place at least for a certain number of celebrities. The huge media coverage and solid presence in professional magazines and newspapers also suggests that the use of the sign is intended and actually goes beyond the idea and the threshold of use of local significance only.

In particular, as far as the media circulation numbers and the reach of the relevant consumers are concerned, it is indeed to be noted that the numbers presented by the applicant are as such already quite impressive. It is also to be acknowledged that most (if not all) of the traditional hard copy media are nowadays also presented online (as evident from the numerous website printouts) which increases the number of intended recipients and consumers targeted by advertisements in these media.

Two specifics of the particular business at hand are also to be pointed out in support of the widespread use of the sign among potential customers and renowned clientele.

First of all, magazines like the ones in which the applicant’s sign appears which provide news and peculiar details about the lifestyle of celebrities are often to be found in waiting rooms not just of beauty care and haircare saloons but also of dental cabinets, insurance companies, banks and other businesses where a client needs sometimes to wait before being served. For some reasons, a significant part of the average consumer is interested in the lifestyle of celebrities, their clothing, hairstyling, etc. which makes those magazines appropriate for utilising the time in a relaxing and non-engaging manner before the client’s turn comes.

Secondly, many consumers are not just curious about celebrities life’s details but are also trying to copy certain aspects of the celebrities’ lifestyle in particular clothing and haircuts in order to demonstrate some social status or just ‘be fashionable’. For this reason many consumers will go to the same haircare and beauty care salons where the celebrities go. The 70 people staff (or even 40 as the EUTM proprietor states) is also a rather high number of employees which are obviously there to satisfy a demand bigger than the demand of hairdressing and beauty care services of a local neighbourhood – a fact also supported by the significant turnover numbers evidenced by the actual financial audit reports.

The opening of a salon under the sign ‘NEVILLE’ on a Caribic island although not giving an indication of the place of use is an indirect indication of the internationally widespread clientele of the enterprise.

The submitted evidence undoubtedly shows also the rather long use of the sign in time during a period of at least twenty years. Many of the articles refer to the Neville salon as ‘exclusive’, ‘prestigious’, ‘artistic’, etc.

All in all, the evidence shows the use of the sign in relation to an enterprise following a rather standard and rather successful model of development in a highly competitive market such as the provision of haircare and beauty care in a fashion capital as London. The evidence clearly indicates that as a result of the use that has been made of the sign, it has an economic impact that goes beyond the local area where the applicant’s business is located.

Consequently, the Cancellation Division concludes that the applicant’s sign was used in the course of trade of more than mere local significance in the United Kingdom for haircare and beauty care services before the filing date of the contested trade mark.

However, the evidence does not succeed in establishing that the sign has been used in the course of trade of more than local significance for all the goods as claimed by the applicant. There is little evidence (few hairbrushes and scissors bearing the sign Neville) that the sign has been used also for products related to the above services. Taking into account how broad the category of ‘related products’ is, few hairbrushes and scissors do not justify the acceptance of use of the sign for such a broad category.

2. The right under the applicable law

The application for declaration of invalidity is based on a non‑registered trade mark used in the United Kingdom. The applicant claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the applicant must prove that it enjoys goodwill or is known for specific goods and/or services under its mark. The evidence must show that the applicant’s mark is recognised by the public as distinctive for the applicant’s goods and services. For the purposes of invalidity proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the applicant must demonstrate that the EUTM proprietor’s mark would be likely to lead the public to believe that the EUTM proprietor’s goods and services originate from the applicant. In other words, the public would be likely to believe that goods and services put on the market under the contested trade mark are actually those of the applicant.

Thirdly, the applicant must show that it is likely to suffer damage as a result of the EUTM proprietor’s use of the contested trade mark.

For the purposes of proving the acquisition of that right, the applicant must prove that it enjoys goodwill for the services claimed under its mark.

(i) The applicant must prove that it enjoys goodwill for the services claimed under its mark

The evidence examined above indicates that by the filing date of the contested trade mark the applicant’s services had been effectively present in the market for quite some time, generating rather significant transactions and sales. The Cancellation Division finds that the evidence is sufficient to prove that the applicant enjoys goodwill in the non-registered trade mark ‘NEVILLE’ for haircare and beauty care services in the mind of the purchasing public.

The EUTM proprietor argues that the non-registered trade mark of the applicant is not reputed and does not enjoy goodwill by trying to prove that the trade mark and the business of the applicant are not as successful as the most reputed representatives in the branch such as Vidal Sassoon, Trevor Sorbie and others and that the fact that the applicant is also providing services to some celebrities is rather occasional.

The Cancellation Division notes that even small businesses can enjoy goodwill. Genuine trading activities, which result in acquiring recognition by the public and gaining customers, are usually sufficient to establish goodwill. Value may be added to a business and goodwill generated without attaining the level of recognition needed to establish enhanced distinctiveness or reputation. That is to say, that the test applied as to whether the owner of a sign has acquired goodwill in it does not measure it’s business success. To this extent the evidence submitted by the EUTM proprietor in support of its attempt to show the insignificance of the applicant’s business (the comparison of the number of visits of social media websites and haircare businesses rankings) is not very helpful.

Having said that, the Cancellation Division points out that the evidence submitted by the applicant reveals some level of exclusivity and reputation attached to the sign, even though it might not necessarily reach the threshold for it to be acknowledged as highly reputed and/or well-known.

(ii) Misrepresentation

The contested sign must be likely to lead to a misrepresentation whereby the public might believe that goods and services to be offered by the EUTM proprietor are the applicant’s goods and services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the EUTM proprietor’s goods and services in the belief that they are the applicant’s.

While the Cancellation Division does not attribute any high probative value to the E-mail submitted by the applicant as Annex 12, supposed to show an actual case of misrepresentation, it is to be noted that it is enough that likelihood of misrepresentation exists.

In the present invalidity proceedings, determining whether a misrepresentation is likely to occur is a matter of fact and, in the context of invalidity proceedings, depends on evaluating: (a) the closeness or otherwise of the respective fields of activity in which the applicant enjoys goodwill and the contested goods and services and the manner in which the particular trade(s) are carried out; (b) the similarity of the marks; and (c) the nature and extent of the goodwill relied upon;

The goods and services

Whilst a ‘common field of activity’ is not a requirement in passing off, clearly the similarity of the trade(s) in question is a factor which must be considered (Annabel’s (Berkeley Square) Ltd. v Schock [1972] RPC 838) when determining whether a misrepresentation might occur.

The applicant enjoys goodwill in the sign NEVILLE in relation to haircare and beauty care services.

The application is directed against all the goods and services of the contested trade mark:

Class 3: Cosmetics; essential oils; perfumery; dentifrices; body scrub; body butter; eye-masks filled with lavender or other herbs, flowers or plants; beauty masks; facial packs; potpourri; scented essential oils for application to potpourri; cushions and sachets filled with lavender or other herbs, flowers or plants; perfumes; toilet waters; eau de cologne; perfume oils; aromatherapy oils and preparations; essential oils; incense; incense sticks; incense cones; incense sachets; incense spray; massage oils; non-medicated massage preparations; extracts of flowers; breath freshening preparations; perfuming preparations for the atmosphere; soaps; body washes; non-medicated toilet preparations; non-medicated toilet preparations produced from essential oils; preparations for the care of the hair, skin, scalp, face and nails; lip balms; toners; moisturisers; shampoos; conditioners; creams and lotions for removing make-up; sun-tanning preparations; sun-screening preparations; deodorants and antiperspirants; body sprays; bath and shower products excluding bath salts; foam bath, bath oil; shower gel; depilatory preparations; shaving preparations; aftershave preparations; tissues and wipes impregnated with non-medicated toilet preparations; cotton wool and cotton wool buds; cleaning preparations for household use.

Class 21: Dispensers incorporating pumps; sponges; cosmetic bags; sponge bags; wash bags; candle sticks, candle holders; combs; brushes, hairbrushes, eyelash brushes; cosmetic brushes; cosmetic and toilet utensils; applicators for cosmetics; containers for cosmetics; make-up removing appliances; cosmetics utensils; soap dishes; soap dispensers; soap holders; soap boxes; containers for toothbrushes; toothbrushes; basins; shaving brush stands; shaving brushes; sponge holders; toilet brushes; toilet cases; toilet paper holders; toilet sponges; toilet utensils; towel racks; toothbrush holders; utensils and containers for household, cooking or kitchen use; decorative plates; ornaments, plaques, statues and figurines, all made wholly or principally of glass, crystal, ceramics, porcelain, terracotta or earthenware; oven gloves; lunch boxes, coolers; sauce boats, dishes, soup bowls, egg cups, jugs, goblets, cruets, bottles, bowls, dish covers, moulds, colanders, cups, dinner services, drinking vessels, plates, saucers, servers, sifters, strainers, tea pots, coffee pots, napkin and serviette rings, household containers of wood, chopping boards, wooden serving and cooking utensils, mixing spoons; cake tins, biscuit tins, trays; storage containers; saucepans, pans, pots, dishes, vases, glasses, glassware, porcelain ware, china ware, earthenware, ceramic ware, crockery, tableware (other than cutlery); mugs; tankards; beer mugs; decanters; ice buckets; hip flasks; flasks; water bottles; articles for baking; watering cans; picnic baskets; bread bins; flat iron stands; stands for pots and dishes; pot holders; coffee and tea services; money boxes; coasters; bottle openers; boxes; articles for cleaning purposes; incense holders.

Class 44: Health club services, other than fitness training; hairdressing salons and beauty salons; sun tanning salon services; aromatherapy services; massage services; reflexology services; spa services; provision of sauna facilities; provision of solarium facilities; beauty treatment services, make-up services, body and skin care services; manicure services; pedicure services; cosmetic treatment services; electrolysis, waxing, tinting, make-up, grooming, colour diagnosis and body treatment services for cosmetic purposes; complementary health care services; information and advisory services relating to all the aforesaid services; health, diet, and nutrition information; consultancy services regarding nutrition; reservation services for all the aforesaid services.

For the reasons set out below, the Cancellation Division considers that all of the services and some of the goods in question belong to a ‘common field of activity’. The services for which the applicant enjoys goodwill are haircare and beauty care services given to human beings to which also certain hygienic and aesthetic characteristics are to be attributed. All of the contested services are either the same or closely related aiming at the well-being of humans in particular as far as their appearance and physical health and hygiene are concerned. These are services widely offered by the same establishments using the same methods and which can be combined or used alternatively in order to achieve a particular effect. Some of the contested goods as specified below are frequently, if not inevitably used for the provision of the services for which the applicant enjoys goodwill. The close proximity is justified also by the fact that in the particular branch it is not unusual that the provider of the service is also selling its own line of haircare, beauty preparations. Having regard to all of the foregoing, the Cancellation Division considers that the goods and services in question not only belong to a common field of activity but are proximate within that field. This holds true for the following contested goods and services:

Class 3: Cosmetics; essential oils; perfumery; dentifrices; body scrub; body butter; eye-masks filled with lavender or other herbs, flowers or plants; beauty masks; facial packs; potpourri; scented essential oils for application to potpourri; cushions and sachets filled with lavender or other herbs, flowers or plants; perfumes; toilet waters; eau de cologne; perfume oils; aromatherapy oils and preparations; essential oils; incense; incense sticks; incense cones; incense sachets; incense spray; massage oils; non-medicated massage preparations; extracts of flowers; breath freshening preparations; perfuming preparations for the atmosphere; soaps; body washes; non-medicated toilet preparations; non-medicated toilet preparations produced from essential oils; preparations for the care of the hair, skin, scalp, face and nails; lip balms; toners; moisturisers; shampoos; conditioners; creams and lotions for removing make-up; sun-tanning preparations; sun-screening preparations; deodorants and antiperspirants; body sprays; bath and shower products excluding bath salts; foam bath, bath oil; shower gel; depilatory preparations; shaving preparations; aftershave preparations; tissues and wipes impregnated with non-medicated toilet preparations; cotton wool and cotton wool buds; cleaning preparations for household use.

Class 21: Dispensers incorporating pumps; sponges; cosmetic bags; sponge bags; wash bags; candle sticks, candle holders; combs; brushes, hairbrushes, eyelash brushes; cosmetic brushes; cosmetic and toilet utensils; applicators for cosmetics; containers for cosmetics; make-up removing appliances; cosmetics utensils; soap dishes; soap dispensers; soap holders; soap boxes; containers for toothbrushes; toothbrushes; basins; shaving brush stands; shaving brushes; sponge holders; toilet brushes; toilet cases; toilet paper holders; toilet sponges; toilet utensils; towel racks; toothbrush holders; utensils and containers for household, cooking or kitchen use; decorative plates; ornaments, plaques, statues and figurines, all made wholly or principally of glass, crystal, ceramics, porcelain, terracotta or earthenware; oven gloves; lunch boxes, coolers; sauce boats, dishes, soup bowls, egg cups, jugs, goblets, cruets, bottles, bowls, dish covers, moulds, colanders, cups, dinner services, drinking vessels, plates, saucers, servers, sifters, strainers, tea pots, coffee pots, napkin and serviette rings, household containers of wood, chopping boards, wooden serving and cooking utensils, mixing spoons; cake tins, biscuit tins, trays; storage containers; saucepans, pans, pots, dishes, vases, glasses, glassware, porcelain ware, china ware, earthenware, ceramic ware, crockery, tableware (other than cutlery); mugs; tankards; beer mugs; decanters; ice buckets; hip flasks; flasks; water bottles; articles for baking; watering cans; picnic baskets; bread bins; flat iron stands; stands for pots and dishes; pot holders; coffee and tea services; money boxes; coasters; bottle openers; boxes; articles for cleaning purposes; incense holders.

Class 44: Health club services, other than fitness training; hairdressing salons and beauty salons; sun tanning salon services; aromatherapy services; massage services; reflexology services; spa services; provision of sauna facilities; provision of solarium facilities; beauty treatment services, make-up services, body and skin care services; manicure services; pedicure services; cosmetic treatment services; electrolysis, waxing, tinting, make-up, grooming, colour diagnosis and body treatment services for cosmetic purposes; complementary health care services; information and advisory services relating to all the aforesaid services; health, diet, and nutrition information; consultancy services regarding nutrition; reservation services for all the aforesaid services.

The signs

NEVILLE	NEVILLE
Earlier non-registered trade mark	Contested sign

The relevant territory is the United Kingdom.

The signs are identical.

The Cancellation Division finds it appropriate at this point to address the EUTM proprietor’s argument about the allegedly common use of the name Neville in general and in particular in relation to haircare and beauty services eventually implying the low inherent distinctiveness of the sign in relation to these services.

The mere fact that it is a common name does not immediately imply that it is inherently weak and cannot serve as indicator of the commercial origin of the provided goods/services. In relation to particular goods and services even a common name may be perfectly distinctive. The specifics of the particular business at hand are also to be taken into account. It is common for the providers of haircare services to provide the services under their own name which is the most direct connection to their crafts/artistic abilities. The clients go to a particular hairdresser because of his/her skills, where a particular name may turn with the time into an indicator of certain standards in the provision of the services even though they might be provided by other employees.

To this extent it is also not surprising that there are one or two more barber shops/hairdresser salons which use the name Neville in the provision of the services. Again, this does not make the name ‘Neville’ incapable of designating the commercial origin. Moreover, there might be reasons for the applicant to tolerate or at least not to oppose such use.

Nature and extent of the goodwill relied upon

It has been already established that applicant proved a certain level of exclusivity and prestige attached to the goodwill.

It follows from the above that the contested services and part of the contested goods as specified above belong to a ‘common field of activity’ with the applicant’s services. The signs are identical and the extent of the goodwill in the applicant’s sign is rather high. Under these circumstances, the Cancellation Division finds it inevitable that the use of the contested sign in relation to the contested services and part of the contested goods could give rise to a misrepresentation whereby the applicant’s customers might incorrectly attribute the commercial origin of the contested services and part of the contested goods to the applicant.

(iii) Damage

The applicant must show that its business is likely to suffer damage as a result of the misrepresentation arising from the EUTM proprietor’s use of the contested trade mark. Contrary to the statements of the EUTM proprietor the applicant is not obliged to prove that it has suffered actual damage.

It has been concluded that, given the identity between the signs in dispute, the relation between the goods and services in question and the extent of the applicant’s goodwill in the non-registered mark explained above, the applicant’s customers are likely to perceive the services and certain goods to be marketed under the contested trade mark as originating from the applicant.

A misrepresentation which leads the relevant public to believe that the EUTM proprietor’s goods and services are the applicant’s (such as in the present case) is intrinsically likely to damage the applicant’s business if the fields of business of the parties are reasonably close. In the present case, it has been concluded that the goods and services in question belong to a ‘common field of activity’ and that a significant number of the applicant’s customers would consider the goods and services offered by the EUTM proprietor under the contested sign as originating from the applicant.

Under those circumstances, it is likely that the applicant would lose sales because its customers – who intend to purchase its services – would either erroneously purchase the same or related services offered by the EUTM proprietor or buy the EUTM proprietor’s goods related to the provision of such services, which would mean a direct loss of sales for the applicant.

The Cancellation Division considers that, in the absence of any indications to the contrary, the applicant is likely to suffer damage.

3. Conclusion

Considering all the above, the Cancellation Division finds that the application for declaration of invalidity is partially well founded on the basis of the applicant’s earlier sign. Therefore, the contested trade mark must be declared invalid for the following goods and services:

Class 3: Cosmetics; essential oils; perfumery; dentifrices; body scrub; body butter; eye-masks filled with lavender or other herbs, flowers or plants; beauty masks; facial packs; potpourri; scented essential oils for application to potpourri; cushions and sachets filled with lavender or other herbs, flowers or plants; perfumes; toilet waters; eau de cologne; perfume oils; aromatherapy oils and preparations; essential oils; incense; incense sticks; incense cones; incense sachets; incense spray; massage oils; non-medicated massage preparations; extracts of flowers; breath freshening preparations; soaps; body washes; non-medicated toilet preparations; non-medicated toilet preparations produced from essential oils; preparations for the care of the hair, skin, scalp, face and nails; lip balms; toners; moisturisers; shampoos; conditioners; creams and lotions for removing make-up; sun-tanning preparations; sun-screening preparations; deodorants and antiperspirants; body sprays; bath and shower products excluding bath salts; foam bath, bath oil; shower gel; depilatory preparations; shaving preparations; aftershave preparations; tissues and wipes impregnated with non-medicated toilet preparations; cotton wool and cotton wool buds;

Class 21: Sponges; cosmetic bags; sponge bags; wash bags; combs; brushes, hairbrushes, eyelash brushes; cosmetic brushes; cosmetic and toilet utensils; applicators for cosmetics; containers for cosmetics; make-up removing appliances; cosmetics utensils; shaving brushes;

Class 44: Health club services, other than fitness training; hairdressing salons and beauty salons; sun tanning salon services; aromatherapy services; massage services; reflexology services; spa services; provision of sauna facilities; provision of solarium facilities; beauty treatment services, make-up services, body and skin care services; manicure services; pedicure services; cosmetic treatment services; electrolysis, waxing, tinting, make-up, grooming, colour diagnosis and body treatment services for cosmetic purposes; complementary health care services; information and advisory services relating to all the aforesaid services; health, diet, and nutrition information; consultancy services regarding nutrition; reservation services for all the aforesaid services.

The application for declaration of invalidity is not successful insofar as the remaining goods are concerned, namely.

Class 3: Perfuming preparations for the atmosphere; cleaning preparations for household use.

Class 21: Dispensers incorporating pumps; candle sticks, candle holders; soap dishes; soap dispensers; soap holders; soap boxes; containers for toothbrushes; toothbrushes; basins; shaving brush stands; sponge holders; toilet brushes; toilet cases; toilet paper holders; toilet sponges; toilet utensils; towel racks; toothbrush holders; utensils and containers for household, cooking or kitchen use; decorative plates; ornaments, plaques, statues and figurines, all made wholly or principally of glass, crystal, ceramics, porcelain, terracotta or earthenware; oven gloves; lunch boxes, coolers; sauce boats, dishes, soup bowls, egg cups, jugs, goblets, cruets, bottles, bowls, dish covers, moulds, colanders, cups, dinner services, drinking vessels, plates, saucers, servers, sifters, strainers, tea pots, coffee pots, napkin and serviette rings, household containers of wood, chopping boards, wooden serving and cooking utensils, mixing spoons; cake tins, biscuit tins, trays; storage containers; saucepans, pans, pots, dishes, vases, glasses, glassware, porcelain ware, china ware, earthenware, ceramic ware, crockery, tableware (other than cutlery); mugs; tankards; beer mugs; decanters; ice buckets; hip flasks; flasks; water bottles; articles for baking; watering cans; picnic baskets; bread bins; flat iron stands; stands for pots and dishes; pot holders; coffee and tea services; money boxes; coasters; bottle openers; boxes; articles for cleaning purposes; incense holders.

It is to be noted that no different result would occur, if the assessment was based on the other earlier sign invoked by the applicant, namely the trade name ‘Neville’. Bearing in mind the identity of the two signs and to a great extent the identical requirements of the law on passing off as to non-registered trade marks, trade and commercial names or other get-ups, the outcome cannot be any different or in any case the applicant would not receive any broader protection.

Since the declaration of invalidity is not entirely successful under the ground of Article 53(1)(c) EUTMR, the Cancellation Division will proceed with the examination of the application under the other two grounds invoked by the applicant, namely Article 52(1)(b) EUTMR and Article 53(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR

III ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(b) EUTMR

General principles

Article 52(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

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

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

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

The facts relevant to the dispute became clear in the analysis of the submitted evidence in relation to the claim of the applicant under Article 53(1)(c) EUTMR in connection with Article 8(4) EUTMR and from the register maintained by EUIPO and may be summarised as follows:

1. The applicant was using the non-registered trade mark ‘Neville’ in the course of trade for more than twenty years in relation to haircare and beauty care services. As a result of the long-term use and widespread media coverage the business run under the said sign acquired certain level of recognition among the relevant public characterised by a certain level of exclusivity and reputation.

2. The EUTM proprietor operates hotel and wellness services business.

3. The EUTM proprietor registered the EUTM on 03/10/2012.

4. On 15/07/2014 the applicant in the current proceedings filed an application for registration of the EUTM ‘Neville’. This registration was opposed by the EUTM proprietor based on its earlier EUTM. The opposition has been subsequently withdrawn and the European Union trade mark of the applicant proceeded to registration.

Assessment of bad faith

It can be inferred from the arguments of the applicant that its claim refers to the situation when the latter has obtained some degree of legal protection by virtue of the use of a sign on the market, which a competitor (the EUTM proprietor) subsequently registers with the intention of competing unfairly with the original user of the sign.

In such instances, the Court of Justice of the European Union (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 48 and 53) has stated that the following factors in particular should be taken into consideration:

1. the fact that the EUTM proprietor knows or must know that a third party is using an identical or similar sign for an identical or similar product capable of being confused with the contested EUTM;

2. the applicant’s intention of preventing that third party from continuing to use such a sign;

3. the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought; and

4. whether the EUTM proprietor in filing the contested EUTM was in pursuit of a legitimate objective.

The abovementioned are only examples drawn from a number of factors which can be taken into account in order to determine whether or not the applicant was acting in bad faith when filing the application; account may also be taken of other factors (14/02/2012, T‑33/11, Bigab, EU:T:2012:77, § 20-21 and 21/03/2012, T‑227/09, FS, EU:T:2012:138, § 36).

The invalidity applicant has shown that it has used an identical mark for identical and similar services to those covered by the contested EUTM in the United Kingdom for a long period of time with a rather high turnover.

There is no evidence that the EUTM proprietor knew about the existence of the earlier sign. Actual knowledge is, however, not necessary for the application of Article 52(1)(b) EUTMR. It suffices if the EUTM proprietor must have known about the use of the earlier sign. The more long-standing the use of an earlier mark, the more likely it is that at the time of filing the contested EUTM an EUTM proprietor would be aware of it.

It is true, of course, as the EUTM proprietor states that trade mark data bases searches do not and cannot ‘catch’ earlier unregistered signs. But then it is up to the party willing to register a particular sign to also perform at least a basic internet research for at least identical signs and identical or closely related goods and services. Based on the submitted Google results on searches for the sign Neville in combination with ‘hair’ and ‘beauty’ showing the sign used by the applicant on the first three pages of results, it has to be concluded that the EUTM proprietor must have known about the existence and use of the earlier sign. This is even more so true taking into account the long-standing and intensive use of the earlier sign. The EUTM proprietor must have known of the invalidity applicant’s use of its mark and that there might be a risk that the relevant consumer to be misled as to the commercial origin of the goods and services offered under the same sign.

However, as stated in case-law, the fact that the EUTM proprietor knows or must know that the invalidity applicant has been using an identical/similar sign for identical/similar goods for which a likelihood of confusion may arise is not sufficient for a finding of bad faith (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 40). In order to determine whether there was bad faith, the EUTM proprietor’s intentions at the time of filing must also be taken into account.

It cannot be inferred from the submitted evidence what was the intention of the EUTM proprietor at the time of filing of the contested sign. It may indeed look like that by choosing an identical sign for the same or similar goods and services the intention of the EUTM proprietor was to prevent the applicant from continuing its economic expansion and/or compete unfairly by taking advantage of the certain level of repute and exclusivity of the earlier sign. The appearance of the two companies’ offerings next to each other on internet search results may be a pure coincidence, but may also speak in favour of applying some keywords/retargeting advertising practices, which are seen as unfair at least by direct competitors.

It cannot be excluded, however, that the registration of the sign by the EUTM proprietor follows certain business expansion logic as well and to this extent its filing intentions may be in pursuit of legitimate objectives. It is also confirmed by the applicant that the EUTM proprietor operates a rather successful business in a related economic sector such as the provision of hotel and wellness services. It is, therefore, not excluded that the EUTM proprietor was seeking to extend its business to a closely related area. The withdrawal of the opposition of the EUTM proprietor against the later registration of the applicant also speaks in favour of the fact that the EUTM proprietor does not try to prevent the applicant to at least register the sign. There is no information or evidence of actual steps undertaken by the EUTM proprietor to prohibit the use of the applicant’s mark based on its registered EUTM.

In the absence of any conclusive evidence as to the intention of the EUTM proprietor at the time of filing of the contested sign, the Cancellation Division cannot base its findings on probabilities, speculations and/or suppositions. There is, moreover, no evidence that the EUTM proprietor has been involved also in another similar allegedly unfair trade mark registration activities of the same or similar sort.

Just as the evidence submitted by the EUTM proprietor (the E-mail dated 01/07/2013 from Neville Conrad to Nick Jones - the founder and CEO of Soho house group – founder and CEO of the Soho house group of companies to which also the proprietor belongs) cannot prove that the EUTM proprietor did not want to actually make an unfair use of the applicant’s earlier sign, the evidence submitted by the applicant is not capable of proving that there was some sort of malicious intent in the act of filing of the contested EUTM. And while in the case of the EUTM proprietor this is basically irrelevant since it cannot be expected from the EUTM proprietor to prove a negative fact, it is crucial for the applicant to submit evidence for the successful application of the claim for bad faith. As already stated above the burden of proof lies with the applicant and not with the EUTM proprietor.

Therefore, in the absence of conclusive evidence proving the malicious intent of the EUTM proprietor as of the time of filing of the contested sign the claim of the applicant under Article 52(1)(b) EUTMR has to be rejected.

IV LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and 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 44: Hairdressing services; healthcare, beauty and hygiene services; haircutting; hairstyling; hairdressing and beauty salon services; hair colouring, hair care services; cosmetic treatment for the hair; health club services; spa services; manicure and pedicure services; chiropody; sun tanning salon services; aromatherapy services; massage services; reflexology services; beauty treatment services; make-up services, body and skin care services; cosmetic treatment services; cosmetic electrolysis; body waxing services; body treatment services for cosmetic purposes; complementary healthcare services; healthcare advice and dietary advice and services; healthcare therapies and treatments; consultancy, information and advice relating to all of the aforesaid.

The contested goods are the following:

Class 3: Perfuming preparations for the atmosphere; cleaning preparations for household use.

Class 21: Dispensers incorporating pumps; candle sticks, candle holders; soap dishes; soap dispensers; soap holders; soap boxes; containers for toothbrushes; toothbrushes; basins; shaving brush stands; sponge holders; toilet brushes; toilet cases; toilet paper holders; toilet sponges; toilet utensils; towel racks; toothbrush holders; utensils and containers for household, cooking or kitchen use; decorative plates; ornaments, plaques, statues and figurines, all made wholly or principally of glass, crystal, ceramics, porcelain, terracotta or earthenware; oven gloves; lunch boxes, coolers; sauce boats, dishes, soup bowls, egg cups, jugs, goblets, cruets, bottles, bowls, dish covers, moulds, colanders, cups, dinner services, drinking vessels, plates, saucers, servers, sifters, strainers, tea pots, coffee pots, napkin and serviette rings, household containers of wood, chopping boards, wooden serving and cooking utensils, mixing spoons; cake tins, biscuit tins, trays; storage containers; saucepans, pans, pots, dishes, vases, glasses, glassware, porcelain ware, china ware, earthenware, ceramic ware, crockery, tableware (other than cutlery); mugs; tankards; beer mugs; decanters; ice buckets; hip flasks; flasks; water bottles; articles for baking; watering cans; picnic baskets; bread bins; flat iron stands; stands for pots and dishes; pot holders; coffee and tea services; money boxes; coasters; bottle openers; boxes; articles for cleaning purposes; incense holders.

By their nature, goods are generally dissimilar to services. This is because goods are articles of trade, wares or merchandise. Their sale usually entails the transfer in title of something physical. Services, on the other hand, consist of the provision of intangible activities. Furthermore, in the particular case at hand there are no other relevant factors which taken separately or in combination can render a level of similarity between the goods and services in question. They are not serving even broadly speaking the same purpose, they are provided by different manufacturers/service providers, have different methods of use and are neither complementary, nor in competition. The mere fact that they may occasionally coincide in end user since most, if not all of the goods and services are intended for the general consumer is not enough to give rise even to a minimum level of similarity. Therefore, the goods and services at hand are dissimilar.

Conclusion

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

This finding would still be valid even if the earlier trade mark were to be considered as well-known in the sense of Article 6bis of the Paris Convention enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the applicant in this respect does not alter the outcome reached above.

V DOUBLE IDENTITY - ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(a) EUTMR

The application must also fail insofar as based on grounds under Article 53(1)(a) in connection with Article 8(1)(a) EUTMR because the goods and services are obviously not identical.

VI COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Denitza STOYANOVA-VALCHANOVA

Plamen IVANOV

Ana MUÑIZ RODRIGUEZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.