CANCELLATION No 14 710 C (INVALIDITY)
Iris Business Solutions Limited, 209 The Heights, Northolt Middlesex UB5 4BX, United Kingdom (applicant), represented by Trade Mark Wizards Limited, Bentinck House 3-8 Bolsover Street, Fitzrovia, London W1W 6AB, United Kingdom (professional representative)
a g a i n s t
Iris Software Group Limited, Riding Court House, Datchet, Berkshire SL3 9JT, United Kingdom (EUTM proprietor), represented by CSY London, 10 Fetter Lane, London GB LND EC4A 1BR, United Kingdom (professional representative).
On 31/07/2018, the Cancellation Division takes the following
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
On 28/03/2017, the applicant filed an application for a declaration of invalidity against European Union trade mark No 11 788 718 (the contested EUTM), filed on 02/05/2013 and registered on 27/11/2016, for the figurative sign hereunder:
The request is directed against some of the goods and services covered by the contested EUTM, namely against some of the services covered by the contested EUTM in Classes 35 and 36.
The applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR in respect of the earlier non-registered mark ‘IRIS’ used in the course of trade of more than local significance for accountancy and financial services in the UK territory.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that it has used its trade mark IRIS for accountancy and financial services since the year 2009. As a consequence of such use the applicant claims to have acquired substantial goodwill which is attached to its services and is associated in the mind of the public with the IRIS brand. According to the applicant, given that the contested figurative mark IRIS is highly similar to the earlier sign and covers services which are identical and similar to those of the applicant, use of the contested EUTM would constitute an actionable misrepresentation, as consumers would believe that the services provided by the proprietor are to be provided by, or otherwise economically connected to/linked, to the applicant. Such a misrepresentation would cause damage to the goodwill of the IRIS earlier sign.
In its response, the EUTM proprietor essentially contests all the claims raised by the applicant and points out that it was provided no evidence to show use of the earlier sign invoked in the present proceedings. The proprietor submits further arguments and documentation. However, for reason of procedural economy, the Cancellation Division does find necessary to list and analyse such material.
On 21/08/2017 the Cancellation Division sent to applicant a communication including the observations and the evidence submitted by the proprietor and invited the applicant to submit its observations, facts and evidence in reply within 26/10/2017. Since the applicant did not file any observation in reply within the deadline set out by the Office, on 18/12/2017 the parties were notified that the adversarial procedure was closed and that a decision would be taken on basis of the evidence present in the file.
Non-registered trade mark or another sign used in the course of trade - Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR
According to Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR (hereafter referred to as Article 8(4) EUTMR), upon cancellation action 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, a European Union trade mark shall be declared invalid where and to the extent that, pursuant to the European Union legislation or the law of the Member State governing that sign:
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;
that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
The grounds of refusal of Article 8(4) EUTMR are therefore subject to the following requirements:
The earlier sign must have been used in the course of trade of more than local significance;
Pursuant to the law governing it, prior to the filing of the contested trade mark, the invalidity applicant acquired rights to the sign on which the application 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. Thus, where a sign does not satisfy one of those conditions, the request as based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed and there is no need to address the rest of the requirements (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 32, 33 & 47; 30/06/2009, T-435/05, Dr. No, EU:T:2009:226, § 35).
Prior use in the course of trade of more than mere local significance
The requirement of actual use of more than mere local significance is a European requirement that stems from Article 8(4) EUTMR and must be interpreted in the light of the uniform standards of the European Union trade mark law. In order to be capable of preventing registration of a younger sign, the sign relied on as earlier right 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 the 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 that sign as a distinctive element vis-à-vis 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 (29/03/2011, C-96/09, Bud, EU:C:2011:189, §§ 157, 159, 160; 07/05/2013, T-579/10, makro, EU:T:2013:232, § 55; 24/03/2009, T-318/06, General Optica, EU:T:2009:77, §§ 35-38).
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. This requirement of Article 8(4) EUTMR is subject to EU law standards and must be assessed accordingly, regardless of the fact that national legislation may not require actual use in the case of some specific earlier rights.
Furthermore, such use must indicate that the sign in question is of more than mere local significance. The rationale of this provision is to restrict the number of conflicts between signs by preventing an earlier sign which is not sufficiently important or significant from challenging either the registration or the validity of a European Union trade mark.
In the present case, the applicant had to demonstrate that the non-registered mark IRIS had been used in the UK territory at the relevant point in time, which is the time of filing of the contested EUTM (02/05/2013) and the filing date of the invalidity request (28/03/2017).
However, the applicant provided no evidence at all within its submissions as regards use of the non-registered mark invoked as a basis of the present proceedings neither at the time of filing of the contested mark nor at the time of filing of the invalidity request.
It follows that the applicant failed to prove that the applicant’s non-registered mark was used in the course of trade with more than mere local significance. Since one of the requirements of Article 8(4) EUTMR is not fulfilled, the application has to be rejected insofar as it is based on Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.
The right under national law - substantiation
For the sake of completeness, it is noted that the applicant submitted no information on the legal protection granted to the type of sign invoked, namely a non-registered mark in the UK.
According to Article 95(1) EUTMR (previously Article 76(1) EUTMR), the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.
Unlike other grounds in Article 8 EUTMR, Article 8(4) EUTMR does not specify the conditions governing the acquisition and scope of protection of the earlier right invoked.
It is a framework provision where the particulars of the applicable law must be provided by the applicant in the case of invalidity proceedings.
Article 7(2)(d) EUTMDR (previously Rule 19(2)(d) EUTMIR) expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent shall provide evidence of its acquisition, continued existence and scope of protection of that right, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.
Therefore, the onus is on the applicant to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case law, it is up to the applicant ‘… to provide EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).
The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the proprietor to exercise the right of defence.
In the present case the applicant has neglected to submit any content, reference and jurisprudence in relation to the relevant legal provisions. It is therefore impossible for the Cancellation Division to assess the conditions governing the acquisition and scope of protection of the earlier right invoked.
Consequently, the applicant failed to fulfil also this requirement for the application of Article 8(4) EUTMR.
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the costs incurred by the [EUTM proprietor][IR holder] in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Ana MUÑIZ RODRIGUEZ
Pierluigi M. VILLANI
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.