CANCELLATION No 23 188 C (INVALIDITY)
FWD-IP LTD, Unit 2 Greenham Park, Common Road, Ely, Cambridgeshire CB6 2HY, United Kingdom (applicant), represented by Stobbs, Building 1000, Cambridge Research Park, Cambridge CB25 9PD, United Kingdom (professional representative)
a g a i n s t
Valdimir Pte. Ltd., 10 Collyer Quay, #10-01 Ocean Financial Centre, Singapore 049315, Singapore (EUTM proprietor), represented by Penningtons Manches Cooper LLP, 9400 Garsington Road, Oxford Business Park, Oxford OX4 2HN, United Kingdom (professional representative).
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
The applicant filed an application for a declaration of invalidity against European Union trade mark No 12 074 605 ( figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; air fragrancing preparations; almond oil; almond soap; almond milk for cosmetic purposes; aloe vera preparations for cosmetic purposes; alum stones [astringents]; amber [perfume]; antiperspirants [toiletries]; aromatics [essential oils]; volcanic ash for cleaning; astringents for cosmetic purposes; badian essence; balms other than for medical purposes; quillaia bark for washing; bath salts, not for medical purposes; cosmetic preparations for baths; beard dyes; bergamot oil; bleaching salts; bleaching preparations [decolorants] for cosmetic purposes; ethereal essences; ethereal oils / essential oils; eyebrow cosmetics; false eyelashes; cosmetic preparations for eyelashes; adhesives for affixing false eyelashes; adhesives for affixing false hair; flavourings for cakes [essential oils] / cake flavourings [essential oils]; bases for flower perfumes; extracts of flowers [perfumes]; soap for foot perspiration; geraniol; hair dyes / hair colorants; hair waving preparations / waving preparations for the hair; hair spray; heliotropine; henna [cosmetic dye]; hydrogen peroxide for cosmetic purposes; incense; ionone [perfumery]; jasmine oil; javelle water / potassium hypochloride; petroleum jelly for cosmetic purposes; joss sticks; cosmetic kits; lacquer-removing preparations; lavender water; lavender oil; essential oils of lemon; sachets for perfuming linen; lip glosses; lipsticks; lotions for cosmetic purposes; tissues impregnated with cosmetic lotions; make-up preparations; make-up removing preparations; make-up; mascara; beauty masks; massage gels other than for medical purposes; medicated soap; cleansing milk for toilet purposes; mint essence [essential oil]; mint for perfumery; mouth washes, not for medical purposes; musk [perfumery]; nail care preparations; nail art stickers; false nails; polishing preparations; polishing creams; polishing paper; polishing stones; pomades for cosmetic purposes; potpourris [fragrances]; make-up powder; pumice stone; pastes for razor strops; rose oil; safrol; scented wood; scented water; shampoos; shaving stones [astringents]; shaving soap; shaving preparations; shining preparations [polish]; shoe cream; shoe wax; shoe polish; shoemakers' wax; silicon carbide [abrasive]; cosmetic preparations for skin care; cosmetic preparations for slimming purposes; smoothing stones; smoothing preparations [starching]; soap; soap for brightening textile; breath freshening sprays; breath freshening strips; sun-tanning preparations [cosmetics]; sunscreen preparations; swabs [toiletries] / cotton sticks for cosmetic purposes; talcum powder, for toilet use; terpenes [essential oils]; toilet water; toiletries; decorative transfers for cosmetic purposes.
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; acoustic [sound] alarms / sound alarms; aerials / antennas; electronic agendas; alarms; fire alarms; altimeters; amplifiers; answering machines; anti-dazzle shades / anti-glare visors; anti-glare glasses; anti-interference devices [electricity]; anti-theft warning apparatus; audiovisual teaching apparatus; bags adapted for laptops; barometers; battery chargers; alarm bells, electric; signal bells; bells [warning devices]; binoculars; bullet-proof vests; bullet-proof waistcoats; calculating disks; calculating machines; camcorders; cinematographic cameras; cameras [photography]; encoded magnetic cards; animated cartoons; eyeglass cases / pince-nez cases; cassette players; cell phone straps; eyeglass chains / pince-nez chains; chargers for electric batteries; chips [integrated circuits]; chronographs [time recording apparatus]; time clocks [time recording devices]; clothing for protection against accidents, irradiation and fire; mechanisms for coin-operated apparatus; coin-operated mechanisms for television sets; electric apparatus for commutation; commutators; compact disc players; comparators; compasses [measuring instruments]; directional compasses; computer memory devices; computer programmes [programs], recorded; computer keyboards; computer operating programs, recorded; computer game software; computers; printers for use with computers; containers for contact lenses; cosmographic instruments; cyclotrons; darkrooms [photography]; data processing apparatus; magnetic data media; optical data media; detectors; smoke detectors; diagnostic apparatus, not for medical purposes; dictating machines; digital photo frames; compact discs [audio-video]; compact discs [read-only memory]; optical discs; disks, magnetic; distance measuring apparatus; distance recording apparatus / apparatus for recording distance; diving suits; dosage dispensers / dosimeters; downloadable ring tones for mobile phones; downloadable music files; downloadable image files; disk drives for computers; electric door bells; electronic pocket translators; electronic tags for goods; magnetic encoders; enlarging apparatus [photography]; eyeglass cords / pince-nez cords; editing appliances for cinematographic films / apparatus for editing cinematographic film; filters for respiratory masks; fire extinguishers / fire extinguishing apparatus; fire beaters; clothing for protection against fire; fire pumps; fire blankets; flashlights [photography]; floppy disks; food analysis apparatus; garments for protection against fire; Global Positioning System [GPS] apparatus; gloves for protection against accident; gloves for divers; headphones; heat regulating apparatus; protective helmets; protective helmets for sports; riding helmets; holograms; encoded identification bracelets, magnetic; identity cards, magnetic; quantity indicators; speed indicators; integrated circuits; integrated circuit cards [smart cards] / smart cards [integrated circuit cards]; intercommunication apparatus; interfaces for computers; juke boxes, musical / coin-operated musical automata [juke boxes]; juke boxes for computers; hands free kits for phones; knee-pads for workers; optical lanterns / optical lamps; magic lanterns; laptop computers; lasers, not for medical purposes; life saving apparatus and equipment; life buoys; life jackets; life belts; life-saving rafts; light dimmers [regulators], electric / light regulators [dimmers], electric; light-emitting diodes [LED]; locks, electric; logs [measuring instruments]; loudspeakers; magnetic tapes; magnetic wires; magnets; decorative magnets; magnifying glasses [optics]; marine compasses; protective masks; divers' masks; material testing instruments and machines; measures; measuring apparatus; measuring devices, electric; measuring instruments; mechanical signs; meteorological instruments; microphones; microprocessors; milage recorders for vehicles / kilometer recorders for vehicles; modems; money counting and sorting machines; monitoring apparatus, electric; monitors [computer hardware]; monitors [computer programs]; mouse [data processing equipment]; nautical apparatus and instruments; naval signalling apparatus; navigational instruments; neon signs; nets for protection against accidents; safety nets / life nets; notebook computers; electronic notice boards; observation instruments; optical fibers [fibres] [light conducting filaments] / light conducting filaments [optical fibers [fibres]]; mouse pads; pedometers; electronic pens [visual display units]; computer peripheral devices; periscopes; phonograph records / sound recording discs; photocopiers [photographic, electrostatic, thermic]; phototelegraphy apparatus; DVD players; pocket calculators; light-emitting electronic pointers; portable media players; precision measuring apparatus; automatic indicators of low pressure in vehicle tires [tyres] / automatic indicators of low pressure in vehicle tires / automatic indicators of low pressure in vehicle tyres; pressure indicator plugs for valves; pressure gauges / manometers; pressure measuring apparatus; pressure indicators; printed circuits; printed circuit boards; probes for scientific purposes; processors [central processing units] / central processing units [processors]; computer programs [downloadable software]; projection screens; projection apparatus; protection devices for personal use against accidents; electronic publications, downloadable; punched card machines for offices; radar apparatus; radio pagers; radiological apparatus for industrial purposes; radios; vehicle radios; radiotelegraphy sets; radiotelephony sets; railway traffic safety appliances; bar code readers; optical character readers; readers [data processing equipment]; telephone receivers; audio- and video-receivers; record players; reflecting discs for wear, for the prevention of traffic accidents; regulating apparatus, electric; relays, electric; electric installations for the remote control of industrial operations; electro-dynamic apparatus for the remote control of signals; remote control apparatus; respirators for filtering air; respiratory masks, other than for artificial respiration / respirators, other than for artificial respiration; rheostats; road signs, luminous or mechanical; rods for water diviners; rulers [measuring instruments]; saccharometers; safety tarpaulins; salinometers; satellite navigational apparatus; satellites for scientific purposes; scales; scanners [data processing equipment]; shoes for protection against accidents, irradiation and fire; signal lanterns; signalling panels, luminous or mechanical; signalling whistles; transmitters of electronic signals; signals, luminous or mechanical; signs, luminous; sirens; apparatus for measuring the thickness of skins; slide projectors / transparency projection apparatus; slope indicators / clinometers / gradient indicators / inclinometers; socks, electrically heated; computer software, recorded; sound recording carriers; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; sound locating instruments; sounding lines; spectacle lenses; spectacle frames; spectacle cases; spectacles [optics]; speed checking apparatus for vehicles; speed measuring apparatus [photography]; speed regulators for record players; spirit levels; goggles for sports; sprinkler system for fire protection; steering apparatus, automatic, for vehicles; personal stereos; stereoscopes; stereoscopic apparatus; sound recording strips; stroboscopes; sunglasses; tape recorders; magnetic tape units for computers; demagnetizing apparatus for magnetic tapes; teaching apparatus; telephone apparatus; telephone transmitters; portable telephones; teleprinters / teletypewriters; teleprompters; television apparatus; automated teller machines [ATM]; temperature indicators; temperature indicator labels, not for medical purposes; terminals [electricity]; theft prevention installations, electric; thermometers, not for medical purposes; thermostats; thermostats for vehicles; ticket dispensers; time switches, automatic; time recording apparatus; totalizators; traffic-light apparatus [signalling devices]; transmitters [telecommunication]; transmitting sets [telecommunication]; transparencies [photography] / slides [photography]; transponders; urinometers; USB flash drives; navigation apparatus for vehicles [on-board computers]; video recorders; video cassettes; video game cartridges; video screens; video telephones; videotapes; viewfinders, photographic; voltmeters; voting machines; wafers for integrated circuits; walkie-talkies; vehicle breakdown warning triangles; weighing machines; weighing apparatus and instruments; wind socks for indicating wind direction; masts for wireless aerials; telephone wires; wrist rests for use with computers; X-ray tubes not for medical purposes; X-ray apparatus not for medical purposes; X-ray photographs, other than for medical purposes; apparatus and installations for the production of X-rays, not for medical purposes; protection devices against X-rays, not for medical purposes; computer hardware, firmware, peripherals and software; software applications for mobile phones, tablet computers, hand held devices and computers; computer software supplied on the Internet; automatic answering apparatus for communications apparatus; code generators; apparatus for coding and decoding signals; audio cassettes, floppy discs, CD ROMS and DVD ROMS; data storage programs; servers; cases for computers; apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images, and/or sound; electronic and computer apparatus and instruments for debiting and/or crediting financial accounts and/or for paying for goods or services; parts and fittings for all the aforesaid goods.
Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; air pillows for medical purposes; air cushions for medical purposes; air mattresses, for medical purposes; anaesthetic masks; bandages for joints, anatomical / supportive bandages; bandages, elastic; suspensory bandages; knee bandages, orthopedic; bed vibrators; beds, specially made for medical purposes; blood testing apparatus; breast pumps; condoms; contraceptives, non-chemical; abdominal corsets; crutches; cushions for medical purposes; diagnostic apparatus for medical purposes; electric acupuncture instruments; electrocardiographs; electrodes for medical use; feeding bottles / babies' bottles; supports for flat feet; arch supports for footwear; furniture especially made for medical purposes; hearing aids for the deaf; hearing protectors; inhalers; injectors for medical purposes; lamps for medical purposes; lasers for medical purposes; spoons for administering medicine; physical exercise apparatus, for medical purposes; physiotherapy apparatus; probes for medical purposes; pulse meters; pumps for medical purposes; radiological apparatus for medical purposes; radiology screens for medical purposes; body rehabilitation apparatus for medical purposes; orthopaedic [orthopedic] soles / orthopaedic soles / orthopedic soles; sphygmotensiometers / arterial blood pressure measuring apparatus / sphygmomanometers; surgical apparatus and instruments; surgical implants [artificial materials]; syringes for injections; syringes for medical purposes; temperature indicator labels for medical purposes; testing apparatus for medical purposes / apparatus for use in medical analysis; thermal packs for first aid purposes; thermometers for medical purposes; vaporizers for medical purposes / sprayers for medical purposes; parts and fittings for all the aforesaid goods.
Class 12: Vehicles; apparatus for locomotion by land, air or water; aeronautical apparatus, machines and appliances; aeroplanes; air vehicles; air bags [safety devices for automobiles]; aircraft; amphibious airplanes; ambulances; anti-theft devices for vehicles; anti-theft alarms for vehicles; automobile hoods; automobile chains; automobile tires [tyres]; automobile bodies; stroller covers [pushchairs]; air balloons; barges; carts; seat covers for vehicles; ejector seats for aircraft; hoods for vehicles; repair outfits for inner tubes; inner tubes for bicycles, cycles; mudguards; non-skid devices for vehicle tires; parachutes; pedals for cycles; rolling stock for railways; rudders; vehicle running boards; saddle covers for bicycles or motorcycles; saddlebags adapted for bicycles; saddles for bicycles, cycles or motorcycles; safety belts for vehicle seats; scooters [vehicles]; screw-propellers for boats; screw-propellers; screws [propellers] for ships; sculls / stern oars; seaplanes; safety seats for children, for vehicles; vehicle seats; brake segments for vehicles; timbers [frames] for ships; ships; snowmobiles; spare wheel covers / spare tire covers / spare tyre covers; sports cars; electric vehicles; space vehicles; refrigerated vehicles; military vehicles for transport; vehicles for locomotion by land, air, water or rail; air cushion vehicles; remote control vehicles, other than toys; yatchs; parts and fittings for all the aforesaid goods.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; alarm clocks; alloys of precious metal; anchors [clock and watch making]; atomic clocks; badges of precious metal; barrels [clock and watch making]; brooches [jewellery]; busts of precious metal; cases for clock- and watchmaking; cases for watches [presentation]; chains [jewellery]; watch chains; charms [jewellery] / trinkets [jewellery]; chronographs [watches]; chronometers; chronometrical instruments; chronoscopes; tie clips; clock cases; clocks; clocks and watches, electric; clockworks; cloisonné [jewellery]; coins; control clocks [master clocks] / master clocks; figurines [statuettes] of precious metal / statuettes of precious metal; gold, unwrought or beaten; gold thread [jewellery]; clock hands [clock and watch making]; ingots of precious metals; iridium; jewellery; jewellery cases [caskets] / jewelry cases [caskets]; key rings [trinkets or fobs]; cuff links; medals; movements for clocks and watches; ornaments [jewellery]; hat ornaments of precious metal; ornamental pins; pins [jewellery]; tie pins; rhodium; rings [jewellery]; statues of precious metal; stopwatches; sundials / sun dials; copper tokens; watch bands / straps for wristwatches / watch straps; watch glasses / watch crystals; watch cases; watches; wristwatches.
Class16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; absorbent sheets of paper or plastic for foodstuff packaging; addressing machines; adhesive tapes for stationery or household purposes; adhesives [glues] for stationery or household purposes; advertisement boards of paper or cardboard; albums / scrapbooks; almanacs; announcement cards [stationery]; aquarelles / watercolors [paintings] / watercolours [paintings]; artists' watercolor [watercolour] saucers / watercolor [watercolour] saucers for artists / artists' watercolor saucers / artists' watercolour saucers; atlases; conical paper bags; bags [envelopes, pouches] of paper or plastics, for packaging; garbage bags of paper or of plastics; balls for ball-point pens; bibs of paper; loose-leaf binders; binding strips [bookbinding]; bookbinding apparatus and machines [office equipment]; bookbindings; bookends; booklets; bookmarkers; books; bottle envelopes of cardboard or paper; bottle wrappers of cardboard or paper; paper bows; boxes of cardboard or paper; calendars; cardboard; cardboard articles; cards / charts; catalogues; holders for checkbooks [cheque books]; cloth for bookbinding; bookbinding cloth; coasters of paper; comic books; paper tapes and cards for the recordal of computer programmes; covers [stationery] / wrappers [stationery]; cream containers of paper; diagrams; document files [stationery]; document holders [stationery]; drawing pads; drawing pins / thumbtacks; drawing boards; drawing materials; drawing instruments; drawing sets; drawing pens; electrocardiograph paper; engravings; envelopes [stationery]; writing board erasers; etchings; face towels of paper; figurines [statuettes] of papier mâché; files [office requisites]; flags of paper; flyers; folders for papers / jackets for papers; folders [stationery]; forms, printed; fountain pens; galley racks [printing]; terrestrial globes; graphic prints; graphic representations; greeting cards; gummed tape [stationery]; gummed cloth for stationery purposes; hectographs; histological sections for teaching purposes; passport holders; humidity control sheets of paper or plastic for foodstuff packaging; index cards [stationery]; indexes; inkstands; inkwells; labels, not of textile; ledgers [books]; lithographic works of art; magazines [periodicals]; manifolds [stationery]; manuals [handbooks] / handbooks [manuals]; geographical maps; marking pens [stationery]; mats for beer glasses; moisteners for gummed surfaces [office requisites]; apparatus for mounting photographs; musical greeting cards; napkins of paper for removing make-up / tissues of paper for removing make-up; table napkins of paper; newsletters; newspapers; nibs; nibs of gold; note books; numbers [type]; office perforators; office requisites, except furniture; oleographs; pads [stationery]; writing pads / writing tablets; paint boxes [articles for use in school]; paint trays; paintings [pictures], framed or unframed; pamphlets; pantographs [drawing instruments]; paper; paper sheets [stationery]; pen cases / boxes for pens; pen wipers; pencil holders; pencil lead holders; pencils; penholders; pens [office requisites]; periodicals; photo-engravings; photographs [printed]; pictures; placards of paper or cardboard; place mats of paper; posters; printed matter; prospectuses; printed publications; punches [office requisites]; paper for radiograms; graphic reproductions; paper ribbons; square rulers; drawing rulers; school supplies [stationery]; scrapers [erasers] for offices; signboards of paper or cardboard; silver paper; slate pencils; song books; spools for inking ribbons; stamp pads; stamp stands; address stamps; stamps [seals]; cases for stamps [seals]; stands for pens and pencils; stapling presses [office requisites]; starch paste [adhesive] for stationery or household purposes; packaging material made of starches; stationery; stickers [stationery]; tablemats of paper; tags for index cards; teaching materials [except apparatus]; tickets; printed timetables; trading cards other than for games; transfers [decalcomanias] / decalcomanias; cardboard tubes; type [numerals and letters] / letters [type]; wrapping paper / packing paper; wristbands for the retention of writing instruments; writing slates; writing or drawing books; writing materials; writing paper; writing cases [stationery]; letters; member guide booklet; member medical card; plastic materials for packaging (not included in other classes); printed matter relating to financial planning, investment analysis, portfolio allocation and recommendations for selecting financial instruments; investor reports and user manuals.
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; attaché cases; bags for climbers; bags for campers; bags [envelopes, pouches] of leather, for packaging / envelopes, of leather, for packaging / pouches, of leather, for packaging; garment bags for travel; net bags for shopping; bags for sports; bags; beach bags; hat boxes of leather; boxes of leather or leather board; boxes of vulcanised fibre; briefcases; canes / walking sticks; card cases [notecases]; cases, of leather or leatherboard; casings, of leather, for springs / casings, of leather, for plate springs; chamois leather, other than for cleaning purposes / skins of chamois, other than for cleaning purposes; furniture coverings of leather; umbrella covers; covers for animals / clothing for pets; walking stick handles / walking cane handles; horse blankets; slings for carrying infants; key cases; leather, unworked or semi-worked; imitation leather; moleskin [imitation of leather]; music cases; purses; rucksacks / backpacks; school bags / school satchels; shopping bags; shoulder belts [straps] of leather / bandoliers / leather shoulder belts / leather shoulder straps; sling bags for carrying infants; mountaineering sticks / alpenstocks; leather straps / leather thongs; suitcases; tool bags of leather, empty; travelling trunks; travelling bags; travelling sets [leatherware]; trimmings of leather for furniture / leather trimmings for furniture; trunks [luggage]; umbrellas; vanity cases, not fitted; pocket wallets; wheeled shopping bags.
Class 25: Clothing, footwear, headgear; aprons [clothing]; bandanas [neckerchiefs]; bath sandals; bathing caps; money belts [clothing]; camisoles; caps [headwear]; clothing; clothing for gymnastics; cyclists' clothing; dresses; ear muffs [clothing]; football shoes / football boots; footwear; gloves [clothing]; dressing gowns; gymnastic shoes; hats; headbands [clothing]; jackets [clothing]; knitwear [clothing]; leggings [leg warmers] / leg warmers; mittens; motorists' clothing; neckties; pants / drawers [clothing]; ponchos; pullovers / jumpers [pullovers]; pyjamas; ready-made clothing; bath robes; sandals; saris; sarongs; scarves / scarfs; shawls; shirts; shoes; short-sleeve shirts; skirts; slippers; socks; sports shoes; stockings; suits; bathing suits / swimsuits; sweaters; tee-shirts; trousers; bathing trunks / bathing drawers; uniforms; fishing vests; visors [headwear]; waterproof clothing; wet suits for water-skiing.
Class 35: Advertising; business management; business administration; office functions; commercial administration of the licensing of the goods and services of others; dissemination of advertising matter; updating of advertising material; advertising / publicity; advertising agencies / publicity agencies; rental of advertising space; advertising by mail order; commercial information and advice for consumers [consumer advice shop]; cost price analysis; telephone answering for unavailable subscribers; business appraisals; business management of performing artists; business management assistance; auctioneering; bill-posting / outdoor advertising; book-keeping / accounting; business auditing; business management and organization consultancy; business management consultancy; business organization consultancy; professional business consultancy; business management of sports people; presentation of goods on communication media, for retail purposes; price comparison services; compilation of information into computer databases; systemization of information into computer databases; data search in computer files for others; demonstration of goods; direct mail advertising; business efficiency expert services; employment agencies; organization of exhibitions for commercial or advertising purposes; organization of fashion shows for promotional purposes; computerized file management; economic forecasting; import-export agencies; commercial or industrial management assistance; commercial information agencies; business information; business inquiries; business investigations; invoicing; layout services for advertising purposes; personnel management consultancy; advisory services for business management; marketing studies; marketing research; marketing; modelling for advertising or sales promotion; news clipping services; on-line advertising on a computer network; organization of trade fairs for commercial or advertising purposes; outsourcing services [business assistance]; payroll preparation; photocopying services; opinion polling; word processing; administrative processing of purchase orders; procurement services for others [purchasing goods and services for other businesses]; production of advertising films; public relations; publicity columns preparation; publication of publicity texts; writing of publicity texts; radio advertising / radio commercials; personnel recruitment; office machines and equipment rental; rental of photocopying machines; rental of advertising time on communication media; document reproduction; business research; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail and wholesale of cosmetics and personal care products, telecommunication goods, computers, computer software, computer software applications, computer hardware, computer peripheral devices, electronic publications, medical devices, vehicles, machineries, watches, clocks, printed matters, paper products, stationeries, items made of leather or imitation leather, bags, luggage bags, clothing, headgear, footwear; sales promotion for others; distribution of samples; secretarial services; sponsorship search; drawing up of statements of accounts; compilation of statistics; tax preparation; telemarketing services; television advertising / television commercials; psychological testing for the selection of personnel; transcription; typing; administration processing of purchase orders; personal management consultancy; computer data processing; computer data management; sales, business, advertising and promotional information services; telephone answering (for others); provision of sales, business, advertising and promotional information through a global computer network; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise internet web site and a wholesale outlet, in the field of bleaching preparations and other substances for laundry use, in the field of cleaning preparations, polishing preparations, scouring preparations, abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, fragrances, air fragrancing preparations, personal care products, cosmetic preparations, dyes, adhesives, bases for flower perfumes, joss sticks, scented wood, shoemakers' wax, shoe cream, shoe wax and shoe polish, in the field of pharmaceutical and veterinary preparations, in the field of sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies, dietary supplements for humans and animals, in the field of plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides and herbicides, in the field of machines and machine tools, motors and engines, machine coupling and transmission components, in the field of agricultural implements, incubators for eggs, automatic vending machines, in the field of scientific, nautical, navigational, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, in the field of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, anti-interference devices (electricity), in the field of apparatus for recording, transmission or reproduction of sound and/or images, in the field of mechanisms for coin-operated apparatus, cash registers, calculating machines, calculating disks, in the field of computers, computer hardware, computer firmware, computer software, computer peripherals, data processing equipment, electronic agendas, computer parts, accessories for computers, in the field of electrical devices, electrical apparatus, electrical equipment in the field of telecommunications apparatus, telecommunications equipment in the field of fire-extinguishing equipment, fire-extinguishing apparatus, alarms, anti-theft warning apparatus, in the field of anti-dazzle shades and anti-glare visors, anti-glare glasses, in the field of bags, cases, covers, containers, cords, bells, in the field of protective clothing, safety equipment, safety apparatus, parts for safety apparatus and equipment, security apparatus, security devices, in the field of diving apparatus, diving equipment, sports apparatus, sports equipment, in the field of battery chargers, animated cartoons, in the field of cell phone straps, in the field of eyeglass chains and pince-nez chains, in the field of mechanisms for coin-operated apparatus, coin-operated mechanisms for television sets, in the field of cyclotrons, darkrooms (photography), detectors, smoke detectors, diagnostic apparatus, not for medical purposes, digital photo frames, electronic pocket translators, editing appliances for cinematographic films and apparatus for editing cinematographic film, filters for respiratory masks, fire blankets, flashlights (photography), food analysis apparatus, Global Positioning System (GPS) apparatus, in the field of heat regulating apparatus, holograms, optical lanterns and optical lamps, magic lanterns, lasers, not for medical purposes, light-emitting diodes (LED), electric locks, in the field of magnets, marine compasses, material testing instruments and machines, in the field of measuring apparatus, electric measuring devices, measuring instruments, mechanical signs, meteorological instruments, money counting and sorting machines, electric monitoring apparatus, neon signs, in the field of electronic notice boards, observation instruments, optical fibers [fibres] [light conducting filaments] and light conducting filaments [optical fibers [fibres]], electronic pens [visual display units], periscopes, photocopiers [photographic, electrostatic, thermic]; phototelegraphy apparatus, light-emitting electronic pointers, portable media players, in the field of projection screens, projection apparatus, protection devices for personal use against accidents, in the field of electronic publications (downloadable), punched card machines for offices, radar apparatus, radiological apparatus for industrial purposes, railway traffic safety appliances, bar code readers, optical character readers, in the field of electric installations for the remote control of industrial operations, electro-dynamic apparatus for the remote control of signals, remote control apparatus, in the field of respirators for filtering air, respiratory masks, other than for artificial respiration and respirators, other than for artificial respiration, in the field of road signs (luminous or mechanical), rods for water diviners, safety tarpaulins, in the field of satellite navigational apparatus, satellites for scientific purposes, in the field of signal lanterns, signalling panels (luminous or mechanical), signalling whistles, signals (luminous or mechanical), signs (luminous), sirens, in the field of slide projectors and transparence projection apparatus, socks (electrically heated), spectacle frames; parts for spectacles, spectacle cases, sunglasses, in the field of steering apparatus (automatic) for vehicles, in the field of teleprinters and teletypewriters, teleprompters, television apparatus, automated teller machines [ATM], temperature indicator labels (not for medical purposes), theft prevention installations (electric), ticket dispensers, time switches (automatic), totalizators, traffic-light apparatus [signalling devices], voting machines, in the field of X-ray tubes not for medical purposes, X-ray apparatus not for medical purposes, apparatus and installations for the production of X-rays, not for medical purposes, (re-positioned), in the field of code generators, apparatus for coding and decoding signals, in the field of instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images, and/or sound, in the field of electronic and computer apparatus and instruments for debiting and/or crediting financial accounts and/or for paying for goods or services as well as parts and fittings for all the aforesaid goods, in the field of surgical, medical, dental and veterinary apparatus, equipment, devices and instruments, in the field of artificial limbs, eyes and teeth, orthopedic articles, suture materials, in the field of air pillows for medical purposes, air cushions for medical purposes, air mattresses for medical purposes, bed vibrators, breast pumps, condoms, contraceptives (non-chemical), abdominal corsets, cushions for medical purposes, in the field of feeding bottles and babies' bottles, furniture especially made for medical purposes, surgical implants [artificial materials], temperature indicator labels for medical purposes, thermal packs for first aid purposes, in the field of parts and fittings for surgical, medical, dental orthopedic and veterinary apparatus, equipment, devices and instruments, in the field of vehicles, in the field of apparatus for locomotion by land, air or water, in the field of vehicles for locomotion by land, air, water or rail, in the field of aeronautical apparatus, machines and appliances, in the field of accessories, parts and fittings for vehicles, in the field of accessories parts and fittings for apparatus for locomotion by land, air or water, in the field of stroller covers [pushchairs], barges, carts, repair outfits for inner tubes, inner tubes for bicycles, cycles, in the field of parachutes, rolling stock for railways, saddle covers for bicycles or motorcycles, saddlebags adapted for bicycles, saddles for bicycles, cycles or motorcycles, in the field of parts and fittings for all the aforesaid goods, in the field of precious metals and their alloys and goods in precious metals or coated therewith, in the field of jewellery, precious stones, in the field of horological and chronometric instruments, in the field of accessories, parts and fittings for horological and chronometric instruments, in the field of cases for clock- and watchmaking, coins, jewellery cases [caskets] and jewelry cases [caskets], key rings [trinkets or fobs], cuff links, medals, ornamental pins, tie pins, copper tokens, in the field of paper, cardboard and goods made from these materials, in the field of printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, in the field of typewriters and office requisites (except furniture), in the field of instructional and teaching material (except apparatus), plastic materials for packaging, printers' type, printing blocks, in the field of addressing machines, albums and scrapbooks, in the field of artists'equipment, parts of stationery, in the field of holders for checkbooks [cheque books], engravings, etchings, figurines [statuettes] of papier mâché, terrestrial globes, hectographs, histological sections for teaching purposes, passport holders, lithographic works of art, mats for beer glasses, musical greeting cards, numbers [type], oleographs, paintings [pictures], photo-engravings, packaging material made of starches, transfers [decalcomanias] and decalcomanias, type [numerals and letters] and letters [type], member medical card, plastic materials for packaging, in the field of leather and imitations of leather, and goods made of these materials, in the field of animal skins, hides, bags, trunks and travelling bags, in the field of umbrellas and parasols, walking sticks, whips, harness and saddlery, in the field of boxes, cases, in the field of umbrella covers, covers for animals and clothing for pets, walking stick handles and walking cane handles, horse blankets, slings for carrying infants, key cases, purses, in the field of rucksacks and backpacks, bandoliers, mountaineering sticks and alpenstocks, vanity cases, not fitted, pocket wallets, wheeled shopping bags, in the field of clothing, footwear, headgear, in the field of wet suits for water-skiing; business services relating to compilation and rental of mailing lists; ordering services [for others]; business administration services for the processing of sales made on the Internet; loyalty program or incentive scheme redemption services in connection with the supply of benefits of value to customers; business management assistance; analysis on business management; compilation and maintenance of a register of domain names; collation, compilation of information relating to healthy living, healthy eating habits, nutrition, diet and fitness; consultancy, advisory services and provision of information relating to all the foregoing.
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; accident insurance underwriting; accommodation bureaux [apartments]; actuarial services; financial analysis; apartment house management; real estate appraisal; antique appraisal; art appraisal; jewellery appraisal; numismatic appraisal; stamp appraisal; banking; home banking; brokerage; brokerage of carbon credits; business liquidation services, financial; capital investments / fund investments / capital investment; clearing, financial / clearing-houses, financial; rent collection; organization of collections; financial consultancy; insurance consultancy; credit bureaux; credit card services; issuance of credit cards; customs brokerage; debit card services; debt collection agencies; debt advisory services; real estate agencies; real estate management; financial evaluation [insurance, banking, real estate]; repair costs evaluation [financial appraisal]; financial evaluation of standing timber / financial valuation of standing timber; factoring; financing services; fire insurance underwriting; fiscal assessments / fiscal valuations; charitable fund raising; electronic funds transfer; health insurance underwriting; hire-purchase financing / lease-purchase financing; housing agents / real estate brokers; financial information; insurance information; instalment loans; insurance brokerage; insurance underwriting; leasing of farms; lending against security; life insurance underwriting; loans [financing]; financial management; marine insurance underwriting; exchanging money; mortgage banking; mutual funds; pawnbrokerage; provident fund services; leasing of real estate; rental of offices [real estate]; renting of flats / renting of apartments; retirement payment services; safe deposit services; savings bank services; securities brokerage / stocks and bonds brokerage; financial sponsorship; stock exchange quotations; stock brokerage services; surety services / bail-bonding / guarantees; issue of tokens of value; issuing of travellers' checks [cheques]; trusteeship / fiduciary; deposits of valuables; check [cheque] verification; capital management services; financial planning; investment analysis, portfolio allocation services; provision of information relating to financial planning, investment analysis, portfolio allocation and recommendations for selecting financial instruments via a global computer network; financial services; financial advisory services; financing of loans; professional consultancy services relating to insurance, financing, pensions, annuities, real estate, and investment; lease purchase financing; real estate broker; car appraisal; tax information supply; financial services associated with loyalty programs or incentive schemes; consultancy, advisory services and provision of information relating to all the foregoing.
Class 38: Telecommunications; rental of access time to global computer networks; radio broadcasting; television broadcasting; cable television broadcasting; cellular telephone communication; providing internet chatrooms; communications by fiber [fibre] optic networks; communications by computer terminals; electronic bulletin board services [telecommunications services]; transmission of greeting cards online; electronic mail; message sending; news agencies / wire service; paging services [radio, telephone or other means of electronic communication]; providing telecommunications connections to a global computer network; providing user access to global computer networks; providing access to databases; providing online forums; rental of facsimile apparatus; rental of modems; rental of telecommunication equipment; rental of telephones; satellite transmission; rental of message sending apparatus; information about telecommunication; providing telecommunication channels for teleshopping services; telecommunications routing and junction services; teleconferencing services; transmission of telegrams; communications by telegrams; telegraph services; telephone services; communications by telephone; telex services; computer aided transmission of messages and images; facsimile transmission; transmission of digital files; videoconferencing services; voice mail services; wireless broadcasting; leasing access time to a computer database; providing access to computer database on the global computer network for searching and retrieving information, data, web sites and resources available on computer networks; providing user access to a computer database containing electronic publications and data via computer networks for processing and/or displaying purposes; providing user access to remote computers containing electronic publications, bulletin boards, database and information accessible via computer; dissemination of information relating to healthy living, healthy eating habits, nutrition, diet and fitness; consultancy, advisory services and provision of information relating to all the foregoing.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; academies [education]; arranging of beauty contests; booking of seats for shows; publication of books; sport camp services; providing casino facilities [gambling]; rental of cine-films / rental of motion pictures; cinema presentations / movie theatre presentations; club services [entertainment or education]; coaching [training]; arranging and conducting of colloquiums; organization of competitions [education or entertainment]; organization of sports competitions; arranging and conducting of concerts; conducting fitness classes; arranging and conducting of conferences; arranging and conducting of congresses; correspondence courses; disc jockey services; discotheque services; dubbing; videotape editing; educational examination; electronic desktop publishing; entertainer services; entertainment / amusements; organization of exhibitions for cultural or educational purposes; organization of fashion shows for entertainment purposes; film production, other than advertising films; game services provided on-line from a computer network; games equipment rental; providing golf facilities; vocational guidance [education or training advice]; gymnastic instruction; health club services [health and fitness training]; education information; entertainment information; recreation information; language interpreter services; layout services, other than for advertising purposes; presentation of live performances; operating lotteries; microfilming; rental of movie projectors and accessories; providing museum facilities [presentation, exhibitions]; music composition services; music-halls; night clubs; orchestra services; organization of balls; organization of shows [impresario services]; amusement parks; personal trainer services [fitness training]; photographic reporting; photography; physical education; party planning [entertainment]; videotape film production; production of music; providing sports facilities; providing karaoke services; providing on-line electronic publications, not downloadable; publication of electronic books and journals on-line; radio entertainment; production of radio and television programmes; recording studio services; providing recreation facilities; rental of audio equipment; rental of video cameras / rental of camcorders; rental of sports grounds; news reporters services; scriptwriting services; arranging and conducting of seminars; services of schools [education]; production of shows; rental of sound recordings; rental of sports equipment, except vehicles; timing of sports events; rental of stadium facilities; movie studios; subtitling; arranging and conducting of symposiums; teaching / educational services / instruction services / tuition; television entertainment; publication of texts, other than publicity texts; writing of texts, other than publicity texts; theatre productions; ticket agency services [entertainment]; practical training [demonstration]; translation; rental of videotapes; videotaping; vocational retraining; arranging and conducting of workshops [training]; publication of diagrams, images and photographs; arranging, conducting, hosting, organizing and provision podcasts and workshops; design of educational courses, examinations and qualifications; consultancy services relating to the designing of training courses; interpretation; consultancy, advisory services and provision of information relating to all the foregoing.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; architectural consultation; architecture; bacteriological research; calibration [measuring]; chemical analysis; chemical research; chemistry research; clinical trials; cloud seeding; computer programming; updating of computer software; consultancy in the design and development of computer hardware; maintenance of computer software; computer system analysis; duplication of computer programs; installation of computer software; computer software consultancy; conversion of data or documents from physical to electronic media; data conversion of computer programs and data [not physical conversion]; design of interior décor; industrial design; graphic arts design; computer system design; digitization of documents [scanning]; energy auditing; consultancy in the field of energy-saving; engineering; research in the field of environmental protection; weather forecasting / meteorological information; handwriting analysis [graphology]; hosting computer sites [Web sites]; information technology [IT] consulting services; scientific laboratory services; land surveying / land surveys; creating and maintaining Web sites for others; mechanical research; monitoring of computer systems by remote access; analysis of oil-field exploitation; packaging design / packaging design services; technical project studies; computer virus protection services; quality control; recovery of computer data; computer rental; research and development of new products for others; biological research; scientific research; providing search engines for the internet; server hosting; rental of Web servers; computer software design; rental of computer software; software as a service [SaaS]; styling [industrial design]; surveying; technical research; material testing; vehicle roadworthiness testing; water analysis; web site design consultancy; computer security; computer services relating to financial analysis system; computer services relating to interconnection of computer hardware and software; application software design; computer service relating to creating indexes of information, sites and resources on computer networks; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; creating and maintaining web sites; computer database development; rental and leasing of computer apparatus, and computer data; creation of a register of domain names; computer and electronic signal coding and decoding; testing and evaluation of occupational health and safety; consultancy, advisory services and provision of information relating to the all foregoing.
Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; alternative medicine services; aromatherapy services; artificial insemination services; public baths for hygiene purposes; Turkish baths; blood bank services; chiropractics; medical clinic services; dentistry; landscape design; hair implantation; health care; health spa services; health centres / health centers; health counselling / health counseling; convalescent homes / rest homes; nursing homes; hospices; hospitals; in vitro fertilization services; massage; medical assistance; medical equipment rental; midwife services; nursing, medical; opticians' services; pharmacists' services to make up prescriptions; pharmacy advice; physiotherapy / physical therapy; services of a psychologist; rehabilitation for substance abuse patients; beauty salons; sanatoriums; sauna services; solarium services; plastic surgery; telemedicine services; therapy services; visagists' services; advisory and consultancy services relating to healthy living, healthy eating habits, nutrition, diet and fitness; health clinic services; mental health services; health care consultation services; provision of information relating to healthy living, healthy eating habits, nutrition, diet and fitness; health assessment surveys; consultancy, advisory services and provision of information relating to all the foregoing.
Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; adoption agency services; personal body guarding; licensing of computer software [legal services]; security consultancy; intellectual property consultancy; crematorium services; detective agencies; registration of domain names [legal services]; rental of fire alarms; funerals; genealogical research; licensing of intellectual property; intellectual property watching services; missing person investigations; personal background investigations; legal research; litigation services; opening of security locks; copyright management; mediation; monitoring of burglar and security alarms; social networking services; licencing of digital data, still images, moving images, audio and text; consultancy, advisory services and provision of information relating to all the foregoing.
The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b)(c) and (d) EUTMR and Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR for the earlier non-registered trade marks used in the course of trade of more than local significance ‘FWD-IP’ (word) and (figurative) in the United Kingdom since 02/11/2009 for IT and communications services; fibre optics, wireless networks and data related services; audio visual services; CCTV and technology led security services.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant, formerly called ‘Ely Telecom’ until 2009, is a technology integration company with expertise in fibre optics, wireless networks, data and more. It has particular expertise in relation to IT and communications services, fibre optics, wireless and fixed data networks, audio visual services, CCTV and technology led security services. It is in the business of design, installation, project management of such systems, and offer consultancy and advisory services in relation to these as part of our overall service. ‘FWD-IP’ was chosen to represent the fact that the applicant provided principally fibre, wireless and data led services. The ‘IP’ element was intended to be a sub-brand to reflect the services under that brand were those that relate to connectivity – ‘IP’ being a nod to the computing acronym for ‘Internet Protocol’.
The applicant argued that the verbal element ‘FWD’ is treated either as an abbreviation of ‘forward’ with the dictionary meaning (an extract from Oxford English Dictionary online in Annex 1), or in certain contexts, it may be understood as an acronym, for example, for cars FWD can mean ‘Front Wheel Drive’ – an extract from various sources in Annex 1. The applicant has selected some examples of where the letters ‘FWD’ are clearly descriptive for terms found in the specifications for the proprietor’s marks, either (1) as a word understood to mean ‘forward’ or (2) as an acronym.
The applicant also submitted that where the grounds under Article 7(1)(b) or (c) EUTMR are not deemed to apply, Article 7(1)(d) EUTMR is deemed to apply taking account of the materials provided at Annex 1 for instance where ‘FWD’ is used as an acronym or where it has become customarily used in relation to any of the goods/services of the proprietor’s mark.
As to the relative ground invoked, the applicant considers that it is clear from the witness statement that the applicant has used the signs ‘FWD-IP’ in the course of trade. To be successful on this ground, the holder of the prior sign must prove that the sign concerned was used before filing of the trade mark application in the EU Trade Marks Bulletin (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 164). In the present case, the proprietor’s mark was applied for on 19/08/2013. This is, according to the applicant, a significant time after the applicant began using the ‘FWD-IP’ sign, and the witness statement supports this position. The witness statement describes a business which was setup some 45 years ago, and which, at the time it began using the sign ‘FWD-IP’ in 2011, was already firmly established. It also confirms use across the UK. It is clear that at the time, the company rebranded to ‘FWD-IP’, and since, its use of the sign ‘FWD-IP’ has been of more than mere local significance.
The applicant informed that in the United Kingdom there is the legal concept of passing off, a common law tort which can be used to enforce unregistered trade mark rights. The tort of passing off protects the goodwill which a person generates from use of a sign which helps them action any misrepresentation which may cause any damage.
Passing Off/ UK Unregistered Right (as applied to the present case by the applicant)
In Reckitt & Colman Products Ltd v Borden Inc  1 All E.R. 873 Lord Oliver stated the three elements to be:
3. Damage to goodwill.
Location of goodwill
A claimant must have goodwill in England to succeed in an action for passing off. Whilst goodwill may exist in relation to a locality, it can exist across the UK. In the present case, the applicant is a UK wide business offering such services as described in the witness statement given by Stuart Grainger. The applicant’s use in the UK of the sign ‘FWD-IP’ means that it has generated the requisite goodwill across the UK.
Misrepresentation as to origin
This is the most common form of misrepresentation in cases of passing off and arises when the mark, name, get-up or other sign of the defendant’s business is the same as or similar to the claimant’s. It does not matter if the purchaser does not know the identity of the claimant, just that they are induced to believe that the defendant’s goods are from a source they recognise and which is in fact the claimant.
This can be by express misrepresentation.
In the present case, there is a danger that the trade mark owners will mistakenly believe that those goods and services, which overlap with ‘FWD-IP’s’ offering, originate from the proprietor, and not from the applicant. This is clearly a misrepresentation through use of the marks that are registered.
Alternatively, in relation to those goods and services which overlap with the applicant’s offering, the proprietor may free ride on the success of the applicant’s offering, trade in a misleading way to deceive the possible customers of ‘FWD-IP’ that their goods/services are in some way connected with, endorsed by or are under licence from the applicant.
The nature of the applicant’s reputation is clearly most solidly based in relation to IT and communications services, fibre optics, wireless and fixed data networks, audio visual services, CCTV and technology led security services, including the design, installation, project management of such systems, and consultancy and advisory services in relation to the same.
The closeness of the applicant’s goodwill to the goods/services at issue is clear – most notably in relation to the goods and services in Classes 9, 38 and 42.
The mark is highly similar – the only difference being the additional ‘IP’ element of the applicant’s mark.
Since use of the mark would clearly amount to a misrepresentation, it must fall foul of this element.
5. Use in relation to the goods/services designated, particularly those in Classes 9, 38 and 42, would clearly be deceptive.
In the present case, all of these heads of damage are at risk of occurring and thus damaging the applicant’s goodwill.
In support of its observations, the applicant filed the following evidence (not indexed):
witness statement of the managing director of ‘FWD-IP’ Limited, dated 25/10/2018, and its exhibits:
Exhibit 1: evidence of registration of domain name http://fwd-ip.com on 04/11/2009.
Exhibit 2: evidence of creation of a new company No 7 250 095 in May 2010, called ‘FWD-IP’ Ltd.
Exhibit 3: a search on the Wayback Machine, showing the website http://fwd-ip.com, existed on 08/02/2011, mentioning ‘Website Coming Soon’.
Exhibit 4: screenshot from September 2013 about the applicant sponsoring a number of businesses in order to get the name ‘FWD-IP’ used.
Exhibit 5: a company name ‘Ely Telecom Limited’ (Company No 5 382 186) used until 24/06/2014.
Exhibit 6: company accounts from year ended 31/03/2011 under the name ‘Ely Telecom Limited’ until 31/03/2013 and as from then, accounts for ‘FWD-IP’ LIMITED up to 31/03/2017.
The EUTM proprietor argued that the contested trade mark enjoys a presumption of validity and the burden of proof lies on the applicant. The applicant’s statement of grounds does not demonstrate that, at the relevant date, the contested sign was devoid of any distinctive character in relation to the goods and services. The applicant has failed to demonstrate how the sign ‘FWD’ would be perceived by the relevant public as being descriptive of the characteristics of the goods and services or only provide information on their nature. It has also failed to demonstrate if the term would be considered common in advertising language or is so frequently used that it has lost its distinctive character. The applicant has also failed to consider the goods and services. The sign ‘FWD’ can trigger a wide range of diverse meanings and interpretations and requires an interpretative effort which illustrates its distinctive character.
In support of its observations, the EUTM proprietor filed the following evidence:
Annex 1: dormant accounts of ‘FWD-IP’ Limited from 31/05/2011 to 31/05/2013 then dormant accounts of ‘ELY TELECOM LTD’ from 31/05/2014 to 31/05/2017.
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 the 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).
The registration of a European Union trade mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings, since the applicable rules expressly allow for that registration to be challenged subsequently in an application for a declaration of invalidity or a counterclaim in infringement proceedings (19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 25).
Otherwise, challenging the registration of an EUTM in the context of invalidity proceedings would, where the subject-matter and the grounds were the same, be deprived of any practical effect, even though such a challenge is permitted under the EUTMR (22/11/2011, T‑275/10, Mpay24, EU:T:2011:683, § 18).
It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532, § 25).
Nevertheless, some criteria are common to all the grounds invoked. The distinctive, non-descriptive and non-customary character of a trade mark must be assessed, first, in relation to the goods or services for which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).
The contested goods and services cover many different fields of business in seventeen Classes of the Nice Classification. The relevant public for these goods and services is the public at large as well as business customers and industries who purchase those goods and benefit from those services. The degree of attentiveness of consumers will vary from average to higher than average depending on several factors such as the price of the goods and services, their impact on health or on finance, the frequency of their use.
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.
By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR
pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.
(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).
‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).
In order to declare a trade mark invalid, it must be demonstrated that it already fell short of the standards of Article 7 EUTMR at the time of its filing. Therefore, the situation must be assessed in relation to the relevant point in time, that is, the date of filing of the contested mark (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41). The contested mark was submitted on 19/08/2013 (claiming the priority of an earlier Hong Kong trade mark filed on 10/05/2013). There is no evidence at all about the descriptive use of the trade mark as an acronym on the date of application of the contested trade mark.
The applicant argued that in order for a trade mark to contravene Article 7(1)(c) EUTMR, that mark does not actually have to be in use in a descriptive manner but it is sufficient that it may be used. This is correct. However, should this be the case, the applicant must demonstrate not only that in a very hypothetical case the word might be used in relation to the relevant goods and services but that reasons exist to assume that such a word may actually be used. This is not the case with the letters ‘FWD’ and the relevant goods and services in the present case, for the following reasons.
The contested mark is a figurative mark composed of the stylised letters ‘FWD’ with an triangle inside letter D and three front silhouettes of walking or running men in different shadows of grey for goods and services in Classes 3, 5, 7, 9, 10, 12, 14, 16, 18, 25, 35, 36, 38, 41, 42, 44 and 45. As mentioned by the applicant (an extract from the Oxford English Dictionary online in Annex 1), these letters can be perceived as an abbreviation of ‘forward’, which is an English word. The trianglecan be perceived as an arrow pointing to the right. It is common knowledge that arrows are universally recognised for indicating directions. In a certain measure, the men silhouettes in action also underline this meaning of movement. As the evidence submitted by the applicant also refers to the English-speaking public, the relevant public is found primarily amongst the English-speaking consumers in the European Union, that is, at least the public in Ireland, Malta and the United Kingdom.
The applicant argued that since one of the meanings of the word ‘forward’ is, for example, ‘in the direction that one is facing or travelling; towards the front’, it describes a characteristic of some of the contested goods and services. The EUTM proprietor argued that since the abbreviation refers to a word with many meanings, it can serve to distinguish the goods and services covered. The applicant correctly pointed out that a mark is descriptive if at least one of its meanings describes the characteristics of the relevant goods and services.
The applicant submitted a table in its observations (reproduced above), mentioning that the word ‘forward’ can have descriptive meanings in relation to goods and services in Classes 9, 14, 16, 36, 38, 41, 42, 44 and 45, but it did not submit evidence (other than definitions) that refer to the word ‘forward’ in relation to these goods and services. The EUTM proprietor correctly noted that the evidence was missing.
It is incumbent on the cancellation applicant to specify exactly, and this with regard to all relevant goods or services or broader categories of them separately, what specific meaning the letters ‘FWD’ would have and in what sense that would inform the target public about specific characteristics (features, quality, kind and purpose) of these goods or services.
The Cancellation Division must take note that such pleadings are entirely absent in the cancellation applicant’s submissions. The statement accompanying the cancellation request merely asserted that the letters ‘FWD’ means ‘forward’, which is a dictionary word. The Cancellation Division wishes to point out that it is up to the cancellation applicant to make a clear case for invalidity, and not the burden of the EUTM proprietor to positively establish that the mark is registrable.
The letters ‘FWD’ even when perceived as an abbreviation of the word ‘forward’ will not be descriptive as such of any of the goods and services covered. Even for goods in Class 9, such as tape recorders; magnetic tape units for apparatus for recording, the letters ‘FWD’ is distinctive as it has not been proven that it describes an essential characteristic of the goods. It is a well-known fact that there is a ‘rewind’ and ‘forward’ button on tape recorders but since the consumer is reasonably attentive and circumspect, it is not likely to think that a recorder sold under the trade mark ‘FWD’ would only offer forward functions or would promote the use of this particular function (while the function is always offered together with reward, play and stop). Therefore, ‘FWD’ cannot be descriptive of an essential function of the product, the essential function being to record and reproduce music. The public, including a more specialised public with detailed knowledge of audio technics, is unable to derive any relevant information from the letters ‘FWD’. The same applies to the remaining goods and services covered by the contested trade mark.
The word ‘forward’ is not a word that could be used to refer to the physical equipment used to create or reproduce music. If an average consumer – or a person with special knowledge and expertise in the field of audio technics and HiFi equipment – entered a shop and encountered such goods as tape recorders, under the designation ‘FWD’, they would not realistically expect that these goods are better adapted than others or otherwise be more suitable for particular types of daily use.
Therefore, there is neither a direct nor specific relationship between the sign and the goods and services in question that would enable the public concerned immediately to perceive, without further thought, a description of these goods and services or one of their characteristics.
In addition, the applicant mentioned the letters ‘FWD’ could be understood in a certain context as an acronym, for example, ‘FWD’ can mean ‘Fixed Wireless Data’ and can be descriptive, for example, of goods in Class 9 or services in Class 38, or as ‘Front Wheel Drive’ and therefore descriptive of characteristics of goods in Class 12 goods but there is no evidence (in addition to the dictionary entries such as the Urban dictionary or the Free Dictionary) that it is used in trade to designate certain characteristics of the goods.
The same applies to the other meanings mentioned as the arguments are not supported by evidence other than dictionary or similar references. In addition, the distinctive character must be assessed as a whole and in the present case, the contested trade mark is figurative and the silhouettes of men in action are distinctive per se.
Consequently, the applicant failed to prove that the mark was, or is, in use in a descriptive manner in relation to the contested goods and services and that it could reasonably be assumed that it may be used to describe any characteristics of those goods and services in the future.
It follows from the above that the applicant failed to demonstrate that the contested mark was granted protection contrary to Article 7(1)(c) EUTMR.
Customary character — Article 7(1)(d) EUTMR
The applicant claimed that the contested EUTM consists exclusively of a sign or indication which has become customary in the current language or in the bona fide and established practices of the trade, within the meaning of Article 7(1)(d) EUTMR.
The assessment of the alleged customary use of a sign must also be carried out in relation to the goods or services for which the trade mark is registered and in relation to the perception of the sign by the relevant public (16/03/2006, T‑322/03, Weisse Seiten, EU:T:2006:87, § 49). In addition, actual customary use, not mere potential use as in the case of descriptive character, must be established (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 29). In other terms, a finding that a sign has become a customary designation should be corroborated by evidence of actual customary use of the sign, unless this fact is likely to be known by anyone or may be learnt from generally accessible sources (22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 50-51). Furthermore, customary use must be proven not to be sporadic but must be associated with the sign by the majority of those who are concerned by such use (16/03/2006, T‑322/03, Weisse Seiten, EU:T:2006:87, § 33).
The customary use of the sign must also be proven at the relevant point in time, that is, the time of filing of the contested mark.
In the present case, the applicant submitted no evidence whatsoever that the term of which the mark consists was used at all at the time of filing of the contested mark in relation to the contested goods and services. Therefore, it cannot be established that the mark, at the time of filing, consisted exclusively of signs or indications which had become customary in the current language or in the bona fide and established practices of the trade.
Consequently, this ground for invalidity must also be rejected.
Non-distinctiveness — Article 7(1)(b) EUTMR
The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).
Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).
The applicant’s arguments regarding the lack of distinctiveness of the EUTM are the same as those mentioned above and they are based on the assumption that the contested sign is descriptive. However, as has been seen above, descriptiveness of the contested sign for the goods and services mentioned above cannot be concluded. Therefore, no lack of distinctiveness of the contested EUTM can be affirmed on account of its alleged descriptiveness as regards those goods and services. Other arguments or evidence as to the lack of distinctiveness of the contested EUTM have not been provided by the applicant.
Consequently, the application must also be rejected insofar as it was based on Article 7(1)(b) EUTMR.
As absolute grounds for refusal fail, the decision continues based on relative grounds.
RELATIVE GROUNDS FOR INVALIDITY — 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:
(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;
• 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.
While national law applies when determining whether a particular right is recognised and protected under the national law, whether its holder is entitled to prohibit the use of a subsequent trade mark and what conditions need to be met under national law for the right to be successfully exercised, the requirement of ‘use in the course of trade of more than mere local significance’ is to be interpreted in the context of EU law (European standard.
These conditions are cumulative. Therefore, 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 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 precluding an earlier right that 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 (or invalidity) of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing/invalidating registration of a sign, the sign relied on in opposition/invalidity proceedings 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.
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, 166).
Moreover, it must be clear from the evidence that the use continues on the date of the filing of the application.
In the present case, the contested trade mark was filed on 19/08/2013 under priority of 10/05/2013. Therefore, the applicant was required to prove that the signs on which the application is based were used in the course of trade of more than local significance in the United Kingdom prior to that date. Furthermore, the applicant must also prove that such use continued at the date of filing of the invalidity, namely 08/06/2018. The evidence must also show that the earlier signs ‘FWD-IP’ or have been used in the course of trade in relation to the following fields of activity:
IT and communications services; fibre optics, wireless networks and data related services; audio visual services; CCTV and technology led security services.
Assessment of the evidence
Article 7(2)(d) EUTMDR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent must provide evidence of its acquisition, continued existence and scope of protection of that right. Failure to prove the existence, validity and scope of protection of the earlier mark or right within that period will lead to the opposition being rejected as unfounded. These provisions applied mutatis mutandis to cancellation proceedings. Since for signs invoked under Article 8(4) EUTMR, use constitutes the factual premise justifying the existence of the right, the same factual premise must still exist, and be proven, on the date of filing of the invalidity request (30/07/2010, 3 728 C; 03/08/2011, R 1822/2010‑2, BABY BAMBOLINA (FIG. MARK); 23/10/2013, T‑581/11, Baby Bambolina, EU:T:2013:553).
The evidence includes an affidavit that must be accompanied by other types of evidence in order to assess genuine use. The evidence submitted by the applicant demonstrates that it has had a domain name including ‘FWD-IP’ since 04/11/2009 (Exhibit 1) and the new company called ‘FWD-IP’ was created in May 2010 (Exhibit 2). Both dates are prior to the application date of the contested registration, namely 2013. Nevertheless, this evidence does not support any prior use of the signs. The Wayback Machine search in Exhibit 3 demonstrates that the website was not used in 2011 as it bears the label ‘Website Coming Soon’. Exhibits 4 and 5 clearly demonstrate that the company did not start its activities under the new name until after the filing of the contested trade mark in June 2013. Similarly, Exhibit 6 demonstrates that the new name of the applicant has been used at the best since the end of 2013 and not before. In addition, there is no evidence of actual use of the name on the market for any services.
Therefore, the evidence submitted does not include any document indicating use of the earlier signs in the United Kingdom prior to the filing of the contested trade mark. Use of more than mere local significance of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22).
The methods and means of proving use of more than mere local significance are unlimited. The finding that use has not been proven in the present case is not due to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).
It follows from the above that the applicant has not proved use in the course of trade of a sign of more than mere local significance before the date of filing of an application for a declaration of invalidity.
As one of the necessary requirements of Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR is not met, the application must be rejected as unfounded.
In the light of the above, the Cancellation Division concludes that the application for invalidity should be rejected.
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 in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.