CANCELLATION No 12 073 C (INVALIDITY)

Office Holdings Limited, Classic House, Martha’s Buildings, 180 Old Street, London EC1V 9BP, United Kingdom (applicant), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative)

a g a i n s t

Suzhou Shangka Cosmetics Co., Ltd., No. 25, Yeshan Road, Taihu National Tourism Resort, Suzhou, Jiangsu, The People’s Republic of China (EUTM proprietor), represented by Dr. Meyer-Dulheuer & Partner, Franklinstr. 46-48, 60486 Frankfurt, Germany (professional representative).

On 03/08/2016, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 977 401 is declared invalid for some of the contested goods and services, namely:

Class 3: Hair lotions; make-up; cosmetic pencils; cleaning preparations; shining preparations [polish]; dentifrices; potpourris [fragrances]; shampoo; cakes of toilet soap; perfumes; air fragrancing preparations; lotions for cosmetic purposes; toilet powders; fragrances.

Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

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

Class 3: Essential oils; grinding preparations; cosmetics for animals; washing powder; adhesives for cosmetic purposes; anti-fog spray for household purposes.

Class 21: Cosmetic utensils; powder puffs; eyebrow brushes; shaving brushes; toilet cases; combs; bottles; sprinklers; toilet sponges; deodorising apparatus for personal use; floss for dental purposes; utensils for household purposes; glass flasks [containers]; china ornaments; tea services [tableware]; toothbrushes; make-up removing appliances; vacuum bottles; perfume vaporizers; cleaning instruments, hand-operated.

Class 35: Presentation of goods on communication media, for retail purposes; import-export agencies; sales promotion for others; procurement services for others [purchasing goods and services for other businesses]; marketing; personal management consultancy services; relocation services for businesses; data search in computer files for others; accounting; sponsorship search; publicity; commercial administration of the licensing of the goods and services of others; public relations; secretarial services; rental of vending machines; marketing studies; organization of fashion shows for promotional purposes; outsourcing services [business assistance]; online advertising via a computer communications network.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 12 977 401. The application is based on European Union trade mark registrations No 1 580 927 and No 6 551 147, on United Kingdom trade mark registrations No 2 476 252 and No 2 179 202 and on a non-registered trade mark ‘OFFICE’ used in the course of trade in the United Kingdom. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) and 8(5) EUTMR and Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the earlier marks are identical to the only verbal element of the contested mark and, therefore, the marks are highly similar. The earlier marks have reputation on account of the extensive use in particular in the UK. The retail services covered by the earlier marks are similar to many of the contested goods. The contested services are similar to the services of the earlier mark. The applicant also claims that it is common for footwear producers to expand into the field of cosmetics and personal hygiene products. In view of all this, the applicant contends that there is a likelihood of confusion between the marks. Furthermore, the applicant claims that the earlier marks have a reputation and the use of the contested mark will take unfair advantage or be detrimental to this reputation. Finally, the applicant argues that it owns rights to the non-registered mark ‘OFFICE’ in the United Kingdom, where it has been using this mark since 1981 in relation to footwear and retail for footwear. It explains the principles of the tort of passing off and asserts that it is entitled to prohibit the use of the contested mark under those principles.

The EUTM proprietor, although it had been duly notified of the invalidity application by the Office and invited to file its comments, did not submit any observations in response.

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

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

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s European Union trade mark registrations No 1 580 927 and No 6 551 147 and on the United Kingdom trade mark registration No 2 476 252.

1. The goods and services

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The goods and services on which the application is based are the following:

EUTM No 6 551 147 and UK mark No 2 476 252

Class 35: Retail services connected with the sale of footwear, clothing, bags, belts, headgear, jewellery, perfumery, personal care products, hair accessories, toiletries, optical goods, watches, leather goods and furnishings.

EUTM No 1 580 927

Class 25: Footwear.

The contested goods and services are the following:

Class 3: Hair lotions; essential oils; make-up; cosmetic pencils; cleaning preparations; shining preparations [polish]; grinding preparations; dentifrices; potpourris [fragrances]; cosmetics for animals; shampoo; cakes of toilet soap; washing powder; perfumes; air fragrancing preparations; lotions for cosmetic purposes; toilet powders; adhesives for cosmetic purposes; fragrances; anti-fog spray for household purposes.

Class 21: Cosmetic utensils; powder puffs; eyebrow brushes; shaving brushes; toilet cases; combs; bottles; sprinklers; toilet sponges; deodorising apparatus for personal use; floss for dental purposes; utensils for household purposes; glass flasks [containers]; china ornaments; tea services [tableware]; toothbrushes; make-up removing appliances; vacuum bottles; perfume vaporizers; cleaning instruments, hand-operated.

Class 35: Presentation of goods on communication media, for retail purposes; import-export agencies; sales promotion for others; procurement services for others [purchasing goods and services for other businesses]; marketing; personal management consultancy services; relocation services for businesses; data search in computer files for others; accounting; sponsorship search; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; publicity; commercial administration of the licensing of the goods and services of others; public relations; secretarial services; rental of vending machines; marketing studies; organization of fashion shows for promotional purposes; outsourcing services [business assistance]; online advertising via a computer communications network.

Contested goods in Class 3

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods (05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. The contested hair lotions, make-up; cosmetic pencils; cleaning preparations, dentifrices; shampoo; cakes of toilet soap; lotions for cosmetic purposes and toilet powders fall into the broad category of toiletries and, thus, these goods are identical. Therefore, the applicant’s retail services connected with the sale of toiletries are similar to a low degree to those contested goods. Furthermore, the contested potpourris [fragrances]; perfumes; air fragrancing preparations; fragrances fall within the broader category of perfumery. Consequently, these goods are similar to a low degree to the applicant’s retail services connected with the sale of perfumery.

On the other hand, retail services of particular goods are dissimilar to goods that are not identical to those particular goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled as regards the contested essential oils; grinding preparations; cosmetics for animals; washing powder; adhesives for cosmetic purposes and anti-fog spray for household purposes because these goods are not identical to any of the goods in connection to which the applicant’s retail services are offered. Therefore, these goods are dissimilar to the services of the earlier marks. Moreover, these goods are also dissimilar to the applicant’s footwear as they have no relevant points of contact – the purpose, method of use and nature of these goods differ, as do their distribution channels and usual commercial origins.

Finally, the contested shining preparations [polish] include shoe polish products. These goods are complementary to the applicant’s footwear. Although some types of footwear may be used without shoe polish preparations, for other types these products are essential. And vice versa, the only reason of existence of shoe polish products are shoes. Moreover, these goods are sold through the same distribution channels to the same consumers. On the other hand, the nature, purpose and method of use of these goods differ. Consequently, they are similar to a low degree.

Contested goods in Class 21

None of the contested goods in this Class is identical to any of the goods in relation to which the applicant’s retail services are provided. The same reasoning as above applies. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled as regards the contested goods in this Class because the involved goods are not identical. Therefore, these goods are dissimilar to the services of the earlier marks. Moreover, these goods are also dissimilar to the applicant’s footwear as they have no relevant points of contact – the purpose, method of use and nature of these goods differ, as do their distribution channels and usual commercial origins.

Contested services in Class 35

The contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies are considered similar to the applicant’s retail services connected with the sale of footwear, clothing, bags, belts, headgear, jewellery, perfumery, personal care products, hair accessories, toiletries, optical goods, watches, leather goods and furnishings. The services at issue have the same nature since both are retail (or wholesale) services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

The remaining contested services are all some type of advertisement, business management or administration services or office functions. All these services consist of providing assistance to other entities either by promotion or reinforcement of the client’s position on the market, or by providing consultation as to the effective management or administrative tasks of the clients. These services are provided by specialist companies. These services have no relevant factors in common with the applicant’s retail services which consist of allowing consumers to conveniently organize their shopping. These services have different nature and purpose, their target public is different as are their distribution channels. Moreover, they are no usually provided by the same entities. These services are, therefore, dissimilar. These contested services are also dissimilar to the applicant’s footwear. These goods and services have different nature, purpose, method of use, they target different relevant public, are not produced/ provided by the same undertakings and they are not complementary or in competition. Although footwear may appear in some of the contested advertisement services, this is insufficient for finding similarity as advertisement services differ fundamentally in nature and purpose from the manufacture of goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be similar are directed at the public at large, the services also at business customers. The degree of attention will be average.

3. The signs

OFFICE
Earlier trade marks	Contested trade mark

The relevant territory is the European Union as regards the earlier European Union trade marks and the United Kingdom as far as the earlier United Kingdom trade mark is concerned.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57, by analogy). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid. In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier marks are word marks consisting of a single word element ‘OFFICE’. As single element word marks, these marks have no element that could be considered to be dominant or more distinctive than other elements.

The contested mark is figurative and is formed by a large abstract figurative element and a verbal element ‘Office’ represented in a slightly stylised handwritten style and placed at the bottom right of the figurative element. On account of its size, the figurative element is visually striking and can be considered the dominant element of the mark.

The term ‘Office’ will be associated with a room or set of rooms in which business, professional duties, clerical work, etc. are carried out. Whilst this term is normally distinctive in relation to the relevant retail services (they do not concern any goods that could be specifically designed for ‘office’ use and this word thus has no direct relationship with them) and the relevant goods in Class 3 (the same reasoning applies), it’s distinctiveness is lower in relation to footwear as it could allude to the fact that the products are specifically designed for use in the ‘office’ thus indicating the formal or elegant style of the shoes.

Visually, the signs coincide in their only verbal element ‘OFFICE’. The fact that this term is stylized in the contested mark is of little relevance as the earlier marks are word marks and as such, the word itself is protected regardless of its specific graphic representation. The marks differ in the figurative element of the contested mark.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, despite the visual dominance of this figurative element, the relevance of the verbal element is high. In the present case, the more so that the figurative element is abstract and consumers have no way of using it as a reference. Consequently, despite the visual significance of the differing figurative element, on account of the complete coincidence in their verbal elements, which are, moreover, normally distinctive for the vast majority of the relevant goods and services, the marks are visually similar to an average degree.

Aurally, since the figurative element of the contested mark cannot be pronounced and the verbal elements of the mark will be pronounced in an identical manner, the marks are aurally identical.

Conceptually, the term ‘Office’ present in all marks will be associated with the concept of a room or set of rooms in which business, professional duties, clerical work, etc. are carried out. The abstract figurative element conveys no concept. Therefore, the marks are conceptually identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the applicant, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the relevant services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal in relation to them. On the other hand, in relation to the relevant goods, namely footwear, the term ‘Office’ may allude to the purpose of the products, that the goods are specifically designed for use at office jobs, they may be more elegant and less resistant than outdoor shoes etc. Therefore, the distinctiveness of the mark in relation to those goods is lower than average.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 25).

The marks coincide in their verbal elements which are distinctive for the vast majority of the relevant goods and services. The earlier marks are entirely reproduced in the contested one, where they will be immediately perceived by the consumers as ‘Office’ is the mark’s only verbal element. The marks are identical aurally and conceptually. The fact that the figurative element of the contested mark is visually its dominant element does not significantly influence the overall impression of similarity between the marks as it is an abstract element not conveying any particular meaning and, thus, consumers are likely to refer to the mark by its verbal element, which is also the one that is more likely to stay in their minds. Moreover, the dominant figurative element of the contested mark does not influence the identity of the marks from both aural and conceptual perspective. Therefore, the overall high degree of similarity between the marks is sufficient to offset even the low degree of similarity found between some of the goods and services. The Cancellation Division concludes that there is likelihood of confusion between the marks. The consumers may assume that the contested mark is merely another version of the earlier mark, with an additional figurative element.

The fact that the inherent distinctiveness of the earlier mark may be lower for footwear does not alter the finding of likelihood of confusion even when these goods are involved. The aural and conceptual identity of the marks and absence of any relevant distinguishing elements (any at all in the earlier mark) cannot be diminished by the fact that the coinciding term may not be very distinctive.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the English-speaking public and, therefore, the application is partly well founded on the basis of the applicant’s European Union and United Kingdom trade marks. As regards the earlier European Union marks, as stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar (as explained above, also those similar to a low degree) to those of the earlier trade marks.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these goods and services cannot be successful.

Since the cancellation application is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the earlier marks due to their reputation as claimed by the applicant. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the earlier marks for dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The applicant has also based its cancellation application on the following earlier trade mark:

• United Kingdom trade mark registration No 2 179 202 for the word mark ‘OFFICE SHOES’ registered for footwear.

This mark is less similar to the contested mark than the marks compared above (it contains an additional element not present in the contested mark) and covers identical goods as one of the marks compared above. Therefore, the outcome cannot be different for the goods and services for which the cancellation application has already been rejected; there is no likelihood of confusion for those goods and services even if this earlier mark is considered.

REPUTATION – ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

Pursuant to Article 53(1)(a) EUTMR, a European Union trade mark shall, on request to the Office, be declared invalid where there is an earlier mark as referred to in Article 8(2) EUTMR and the conditions set out in Article 8(1) or (5) EUTMR are fulfilled.

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are applicable only when the following conditions are met.

a) The signs must be either identical or similar.

b) The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

c) Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for declaration of invalidity under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

1. Reputation of the earlier trade marks

The applicant claims that the earlier marks have a reputation in the whole European Union and the United Kingdom for the goods and services for which they are registered.

Reputation implies a knowledge threshold which is only reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

The application for the contested mark was filed on 12/06/2014. Therefore, the applicant was required to prove that the trade marks on which the application is based had acquired a reputation in the European union and the UK, respectively, prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the marks are registered, namely:

EUTM No 6 551 147 and UK mark No 2 476 252

Class 35: Retail services connected with the sale of footwear, clothing, bags, belts, headgear, jewellery, perfumery, personal care products, hair accessories, toiletries, optical goods, watches, leather goods and furnishings.

EUTM No 1 580 927 and UK mark No 2 179 202

Class 25: Footwear.

The applicant submitted the following evidence:

• A witness statement of Emily Tate, Chief Financial Officer of the applicant, stating that the trade mark ‘OFFICE’ was first used in 1981 in London and continued to grow since then, first in the United Kingdom and later in Ireland and the USA and Germany. The mark has built a reputation for footwear and footwear retailing. Ms Tate provides numbers of visitors to the applicant’s website for years 2010 to 2014 and states that over one million of customers subscribed to the mailing list in 2015. Moreover, sales figures of footwear and numbers for ‘total value of sold products’ for years 2010 to 2014 are provided. Ms Tate claims that in 2014, the market share for the brand in the UK in the field of footwear was 4.4 %. The shoes bearing the contested mark are regularly chosen by fashion stylists. Advertising expenditures for years 2010 to 2014 are set out in the statement. The applicant regularly organizes ‘press days’ where representatives of well-known publication houses are invited to exclusive venues. Ms Tate also emphasizes the charity and fundraising activities of the applicant company.

Attached to the witness statements are the following exhibits:

• A list of 91 standalone stores and 36 concessions in third party stores in the UK, 5 standalone stores in Ireland, 3 concessions in the USA and 6 standalone stores in Germany. It includes opening dates which range from 1985 to 2014.

• Excerpts from the applicant’s website demonstrating the activities carried out under the brand ‘OFFICE’ (shoes and marginally bags and shoe accessories offered for sale) including website showing products of other brands (shoes, clothing, bags and shoe accessories) being offered for sale on the ‘OFFICE’ website (date of printing is in 2015); excerpts from ‘Office’ facebook page.

• Several issues of OFFICE magazine (from 2013 and 2014) distributed to the subscribers promoting the footwear of the brand and of other brands available in the ‘OFFICE’ stores and website.

• Copies of lifestyle magazines in which shoes ‘OFFICE’ are advertised and advertisements in magazines and newspapers, dated between 2007 and 2015.

• Details (invitations, information, reactions of the guests on their social media accounts, lists of guests) of ‘press days’ from 2007 to 2014.

• Information about the applicant’s fundraising activities (breast cancer charity information from the applicant’s website) from 2012, 2013 and 2014.

Firstly, the Cancellation Division notes that, to prove the reputation of a mark, it is not sufficient that the mark has been used, since the applicant also has to show that the mark is known by a significant part of the public concerned for the products and services covered by it.

The evidence filed by the applicant shows use of the marks for footwear and possibly retail of footwear, mainly in the United Kingdom. However, as explained above, in order to prove the reputation of a mark, it is not sufficient simply to show its use; rather, it must also be demonstrated that the relevant public recognises the mark. The documents filed by the applicant, as numerous as they are, do not provide any indications of the extent of recognition of the marks by the relevant public. There is no consumer survey or other direct evidence as regards the knowledge of the marks among the public. The recognition by the relevant public can also be shown indirectly by large volumes of sales and extensive promotion. However, such information would have to originate from reliable sources.

In the present case, sales figures and other information were provided in a witness statement drawn up by an employee of the applicant. As far as admissibility of the witness statements and affidavits is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR cites means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. On the other hand, As far as the probative value of this kind of evidence is concerned, the Office makes a distinction between statements coming from the sphere of the party concerned itself or its employees and statements drawn up by an independent source; following the established case-law (09/12/2014, T-278/12, PROFLEX, EU:T:2014:1045, § 51; 06/11/2014, T-463/1, MB, EU:T:2014:935, § 54). Statements coming from the sphere of the owner of the earlier mark (drawn up by the interested parties themselves or their employees) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (decision of 11/01/2011, R 0490/2010-4, BOTODERM, § 34; decisions of 27/10/2009, B 1 086 240 and of 31/08/2010, B 1 568 610). The probative value of a statement depends first and foremost on the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 42).

The final outcome depends on the overall assessment of the evidence in each individual case. In general, further material is necessary for establishing evidence of reputation, since such statements have to be considered as having less probative value than physical evidence or evidence originating from independent sources. Therefore, the probative strength of the further material submitted is very important. An assessment should be made of whether the content of the affidavit is sufficiently supported by the further material (or vice versa).

In the present case, the witness statement contains tables with data showing significantly high sales figures and advertisement expenditures. However, this information is provided in a form of simple tables of unknown origin, presented by an employee of the applicant. The evidence attached to the witness statement does not support the information provided in the statement. Some of it also originates from the applicant itself (the list of shops, website printouts, samples of the magazine distributed among subscribers) and the rest is not convincing as regards the extent of use. The lifestyle magazines containing mentions of the mark cannot serve, by themselves as a proof of reputation as it is clear that such mentions are in fact public relation activity of the applicant. Although it is apparent that there were efforts to advertise the mark and to enhance its presence in this type of press (also supported by the organization of press days), this information alone is not sufficient to draw a conclusion on the level of recognition of the mark among the relevant public. The copies of magazines, even together with the press days information and fundraising attempts, do not represent an advertising campaign so massive that could serve alone as a proof of reputation of the mark.

Without any direct evidence of the level of recognition of the marks, the indirect indications such as sales volumes and advertising would have to be very convincing. In the present case, the high sales and advertising figures are only provided by a document with a limited probative value supported by evidence of some but not very extensive advertisement activity. Such evidence is not sufficient to prove that a substantial part of the relevant public recognizes the mark.

To sum up, despite showing use of the earlier trade marks, the evidence does not provide any information on the degree of recognition of those trade marks by the relevant public. Moreover, the documents that relate to the extent of use are of limited probative value or do not demonstrate such an extent of use that would allow the conclusion to be drawn that a significant part of the public is familiar with the earlier trade marks. Consequently, despite the large volume of evidence, the information it contains does not demonstrate that the earlier marks had acquired a reputation at the time of filing of the contested EUTM.

As seen above, one of the cumulative requirements for the application for a declaration for invalidity to be successful under Article 8(5) EUTMR is that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled and the application must be rejected insofar as it is based on these grounds.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE (Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR)

In relation to Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, the application is based on the non-registered trade mark ‘OFFICE’ used in the course of trade in the United Kingdom for footwear and retail services relating to footwear since 1981.

Pursuant to Article 53(1)(c) EUTMR, a European Union trade mark shall, on request to the Office, be declared invalid where there is an earlier mark 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 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 prior to the filing of the contested trade mark;

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

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

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the application for declaration of invalidity 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.

National law and the rights of the applicant vis-à-vis the contested trade mark

The applicant explains the application of passing off and submits several judgments and publications related to the matter. As is apparent for example from the submitted judgment of the High Court of Justice, No [2013] EWHC 1364 (Ch), before Mr Justice Henderson of 22/05/2013, paragraph 155, one of the conditions of a successful passing off claim is the misrepresentation. Misrepresentation can be defined as a likelihood that the public will believe that the goods or services offered by the defendant (i.e. the owner of the contested mark) are goods or services of the plaintiff (i.e. the applicant).

In the present case, the remaining goods and services, for which the contested mark has not yet been declared invalid, are the following:

Class 3: Essential oils; grinding preparations; cosmetics for animals; washing powder; adhesives for cosmetic purposes; anti-fog spray for household purposes.

Class 21: Cosmetic utensils; powder puffs; eyebrow brushes; shaving brushes; toilet cases; combs; bottles; sprinklers; toilet sponges; deodorising apparatus for personal use; floss for dental purposes; utensils for household purposes; glass flasks [containers]; china ornaments; tea services [tableware]; toothbrushes; make-up removing appliances; vacuum bottles; perfume vaporizers; cleaning instruments, hand-operated.

Class 35: Presentation of goods on communication media, for retail purposes; import-export agencies; sales promotion for others; procurement services for others [purchasing goods and services for other businesses]; marketing; personal management consultancy services; relocation services for businesses; data search in computer files for others; accounting; sponsorship search; publicity; commercial administration of the licensing of the goods and services of others; public relations; secretarial services; rental of vending machines; marketing studies; organization of fashion shows for promotional purposes; outsourcing services [business assistance]; online advertising via a computer communications network.

These goods and services have nothing in common with the goods and services for which the non-registered mark was, according to the applicant, used (footwear and retail of footwear). The contested goods are bathroom and other household utensils, decorative items, containers, products related to cosmetics, washing powder, and the contested services comprise advertising services, business management or administration and office functions. None of these goods and services has any relevant characteristic in common with footwear or retail of footwear. Most importantly, these goods and services are not usually produced / provided by the same undertakings. In the absence of any other relevant factors in common, there is no reason to believe that consumers would assume that these contested goods and services offered under the contested mark, are in fact goods and services originating in the applicant company that sells footwear. Consequently, misrepresentation is not likely to take place and one of the conditions of the passing off action is not fulfilled.

Consequently, the applicant failed to prove that, under the national law, the invoked sign confers on the applicant the right to prohibit the use of the contested mark.

It follows from the above that one of the cumulative requirements for the application for a declaration for invalidity to be successful under Article 8(4) EUTMR is not fulfilled and the application must be rejected insofar as it is based on Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR and in relation to the abovementioned contested goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

María Belén IBARRA DE DIEGO

Michaela SIMANDLOVA

Pedro JURADO MONTEJANO

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.