CANCELLATION No 10 994 C (INVALIDITY)

Moss Copenhagen ApS, Ryesgade 19 A, 1., 2200 Copenhagen N., Denmark (applicant), represented by Kromann Reumert, Sundkrogsgade 5, 2100 København Ø, Denmark (professional representative)

a g a i n s t

Moss Bros Group PLC, 8 St. Johns Hill, London SW11 1SA, United Kingdom (EUTM proprietor), represented by Forresters, Sherborne House, 119-121 Cannon Street, London EC4N 5AT, United Kingdom (professional representative).

On 19/09/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services in Classes 18, 25 and 45 of European Union trade mark No 12 144 408 ‘MOSS LONDON’. The application is based on the non-registered mark, trade name and company name ‘MOSS COPENHAGEN’ and on the domain name ‘mosscopenhagen.dk’, all used in the course of trade in Denmark. The applicant invoked Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that it has marketed and sold clothing under the non‑registered mark ‘MOSS COPENHAGEN’ since at least 2008. It also founded the company ‘MOSS COPENHAGEN’ in 2006 and has used these earlier rights since then. The applicant considers that, according to Danish law, it has acquired prior rights through use which prohibit the use of a subsequent trade mark and that the scope of protection of these rights is the same as for Danish registered trade marks. Therefore, it concludes that the signs and the goods and services are similar and that there exists a likelihood of confusion. In support of its observations, the applicant filed evidence of use (listed below) and some extracts from Danish law together with their translation into English.

The EUTM proprietor argues that the applicant has failed to comply with the onus on it to demonstrate, under European law standards, that it has used the signs in the course of trade of more than local significance and that, as a result, it has generated earlier rights that would entitle it to prohibit the use of the proprietor’s trade mark.

The applicant did not file any observations in reply.

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

According to Article 53(1)(c) EUTMR, an EU trade mark shall be declared invalid on application to the Office where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled.

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

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

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

Therefore, the grounds of refusal of Article 53(1)(c) in conjunction with Article 8(4) EUTMR are subject to the following requirements:

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

• pursuant to the law governing it, prior to the filing or the priority date of the contested trade mark, the applicant acquired rights to the sign on which the cancellation 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.

In addition, in cancellation proceedings the applicant has to prove the use of the earlier sign in the course of trade not only prior to the filing of the contested EUTM but also at the time of the filing of the cancellation request. This condition stems from the wording of Article 53(1)(c) EUTMR, which states that an EU trade mark shall be declared invalid ‘where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled’ (see decision of the Cancellation Division of 05/10/2004, No 606 C, ‘ANKER’, and R 1822/2010-2 of 03/08/2011, § 15, confirmed by 23/10/2013, T‑581/11, Baby Bambolina, EU:T:2013:553, § 26-27).

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the cancellation based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Domain name ‘mosscopenhagen.dk’

A domain name is a combination of typographical characters corresponding to one or several numeric IP addresses that are used to identify a particular web page or set of web pages on the internet. As such, a domain name functions as an ‘address’ for referring to a specific location on the internet or an email address. Some jurisdictions protect domain names as business identifiers.

The right under national law

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

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 the 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 evidence to be submitted must allow the Cancellation Division to safely determine that a particular right is provided for under the law in question as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark as well as the conditions under which the right may prevail and be enforced vis‑à‑vis a subsequent trade mark.

As regards national law, the applicant must provide the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The applicant must provide the reference to the relevant legal provision (article number and the number and title of the law) and the content (text) of the legal provision either in its submission or by highlighting it in another publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the applicant is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the applicant must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the applicant must provide particulars proving fulfilment of the conditions of acquisition and of the scope of protection of the right. Apart from providing appropriate evidence of acquisition of the right invoked, the applicant must submit evidence that the conditions of protection vis-à-vis the contested mark are actually met and, in particular, put forward a cogent line of argument as to why it would succeed in preventing the use of the contested mark under the applicable law.

Where the applicant relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the applicant did not submit any information on the legal protection granted to the type of trade sign invoked by the applicant, namely the domain name ‘mosscopenhagen.dk’. The applicant did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the applicant to be able to prohibit the use of the contested trade mark under the Danish law mentioned by the applicant.

Therefore, as far as the domain name is concerned, the cancellation is not well founded under Article 8(4) EUTMR.

2. Non-registered trade mark, trade name and company name ‘MOSS COPENHAGEN’

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 an EU trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

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

In the present case, the contested trade mark was filed on 16/09/2013. Therefore, the applicant is required to prove that the signs on which the cancellation is based were used in the course of trade of more than local significance in Denmark before 16/09/2013. In addition, the applicant also has to prove that such use continued at the time of the filing of the cancellation request, namely on 09/06/2015.

The evidence must also show that the applicant’s signs have been used in the course of trade for articles of clothing, footwear and headgear and accessories, including bags, sun glasses and jewellery, retail and wholesale thereof, and related services thereto, including tailoring and design.

The evidence filed by the applicant to prove use in the course of trade consists of the following documents:

• Copies from the Danish Business Authority relating to the trade names ‘Moss Copenhagen’ (dated 25/11/2006) and ‘Moss Copenhagen ApS’ (dated 01/12/2012).

• Printouts from the website www.mosscopenhagen.com, dated 20/08/2015, showing some goods offered for sale (mainly clothing, shoes, bags, watches, caps, jewellery). The text of the website is in Danish and the currency shown is DKK.

• Purchase order for jumpsuits, dated 19/03/2008, from MVH Group A/S to a supplier. It is indicated that ‘labels must be Moss Copenhagen’.

• Invoices from a Turkish supplier to ‘Moss Copenhagen’, dated from March 2011 to August 2012, for clothing.

• Receipts from ‘MOSS COPENHAGEN’, dated from September 2011 to February 2012.

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

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, joined cases T‑318/06 to T‑321/06, GENERAL OPTICA, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C‑96/09 P, Bud, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, joined cases T‑318/06 to T‑321/06, ‘GENERAL OPTICA’, § 43).

It follows from the above that the criterion of ‘more than local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to the following elements: the intensity of use (sales made under the sign), the length of use, the spread of the goods and services (location of the customers, scope of the public), the advertising under the sign and the media used for that advertising, including the distribution of advertising.

In the present case, while the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

The documents filed do not provide the Cancellation Division with sufficient information concerning the commercial volume, the duration, and the frequency of use.

The applicant submitted mainly invoices from a provider of clothing, but there is no proof that the goods concerned bear the relevant sign, that is ‘Moss Copenhagen’, or that these goods have been sold to final consumers. Moreover, the applicant did not submit any catalogues, advertisements or pictures of the goods bearing the trade mark ‘Moss Copenhagen’.

Concerning the purchase order, even though the document submitted indicate that ‘the labels must be MOSS Copenhagen’, there are no pictures of the goods that may corroborate this assertion.

Regarding the receipts, some of them are mere vouchers, two of them (the red ones) are from an unknown origin and, in most of them, the goods sold cannot be identified (apart from one scarf and two earrings).

Finally, the extracts from the website dated 20/08/2015, which is outside the relevant period, indicate only that the applicant is a retailer, since goods are offered for sale, and do not prove the extent of the sales (there is no proof that consumers ordered products). Likewise, there is no proof that this website has been visited or, if it has, to what extent.

The Cancellation Division considers that the applicant did not file sufficient indications concerning the intensity of use (sales made under the sign), the length of use, the spread of the goods and services (location of the customers) and the advertising made under the sign. It could have filed, for instance, turnover figures, market share, press articles, list of stores, advertising campaigns, etc.

In addition, the evidence does not provide a convincing picture of use of the applicant’s sign at the time of the filing of the cancellation request.

The evidence is dated between March 2011 and August 2012 (17 months) and does not cover the three years before the date of filing of the invalidity request. The applicant submits no proof of the public’s awareness of the sign, showing that the sign still existed three years after the most recent evidence of use. Moreover, the lack of evidence from the period between August 2012 and June 2015 is not counterbalanced by any previous long duration of use of the sign or of recognition of the sign.

An earlier non-registered sign relied on in an invalidity action must be in use at the time of filing the request. Since for this sign 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 (Cancellation decision No 3 728 C dated 30/07/2010, § 25-28, confirmed by BoA R 1822/2010-2 dated 03/08/201 and 23/10/2013, T‑581/11, Baby Bambolina, EU:T:2013:553).

Considering all the above, the Cancellation Division concludes that the evidence submitted by the applicant is insufficient to prove that the use of the earlier signs in the course of trade was of more than local significance in connection with the goods and services on which the cancellation was based in the relevant territory before the date of the filing of the contested trade mark and at the time of the filing of the cancellation request.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the cancellation must be rejected as unfounded.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(iv) 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

Begoña URIARTE VALIENTE

Frédérique SULPICE

Michele M. BENEDETTI-ALOISI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.