CANCELLATION No 16 462 C (INVALIDITY)

Avinet Pty Ltd, Level 1, 136 Frome Street, Adelaide SA 5000, Australia (applicant), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative)

a g a i n s t

Hse Media Spółka z ograniczoną odpowiedzialnością, Ul. Sternicza 23/43, 43 300 Bielsko-Biała, Poland (EUTM proprietor), represented by Katarzyna Sas, Kościuszki 58c, 36-020 Tyczyn, Poland (professional representative).

On 19/05/2021, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 13 508 511 is declared invalid for some of the contested services, namely:

Class 35: Retailing and wholesaling of educational manuals, educational publications; Online sale of educational manuals, educational publications; Mail order sale of educational manuals, educational publications.

Class 41: Courses (Training -) relating to research and development; Provision of tuition; Education; Professional consultancy relating to education; Education information; Education information; Adult training; Education and instruction; Development of educational materials; Developing educational manuals; Institutes of education (Services provided by -); Educational institute services; Providing facilities for educational purposes; Provision of facilities for education; Provision of facilities for tuition; Advisory services relating to education; Advisory services relating to education; Provision of training and education; Provision of tuition; Provision of training and education; Teaching services; Services for arranging teaching programmes; Provision of tuition; Providing of education; Arranging of workshops; Conducting workshops [training]; Workshops for training purposes; Workshops for educational purposes; Workshops (Arranging and conducting of -) [training]; Workshops (Arranging and conducting of -) [training]; Conducting courses, seminars and workshops; Workshops (Arranging and conducting of -) [training]; Arranging professional workshop and training courses; Production of educational sound and video recordings; Educational examination; Educational testing; Training (Practical -) [demonstration]; Developing educational manuals; Dissemination of educational material; Development of educational materials; Publication of printed matter relating to education; Publication of educational teaching materials; Publication of printed matter relating to education; Computer training; Provision of education on-line from a computer database or via the internet or extranets.

Class 42: Research and development services; Research and development for others.

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

Class 35: Retailing and wholesaling of goods including computer software relating to the education of children, writing materials and educational supplies, writing materials and educational supplies educational toys; Online sale of goods including computer software relating to the education of children, writing materials and educational supplies, writing materials and educational supplies educational toys; Mail order sale of goods including computer software relating to the education of children, writing materials and educational supplies, writing materials and educational supplies, educational toys; handling of purchase orders; Marketing services; Advertising; Radio commercials; Television advertising; Advertising via the press; Advertising in websites on the Internet; Dissemination of advertisements; Sales promotion of the aforesaid goods and services; Presentation of goods via communications media (retailing); Arranging and participating in trade fairs, exhibitions and shows relating to the promotion of the aforesaid goods; Personnel management consultancy; Consumer advice shops; Presentation of goods on communication media, for retail and wholesale purposes; Rental of advertising space.

Class 41: Pre-school education; Nursery schools; Nursery schools; Teaching assessments for counteracting learning difficulties; Remedial tuition in speech; Remedial tuition in language; Provision of educational services relating to health; Provision of educational services relating to exercise; Educational services provided for children; Education services relating to the development of children’s intellectual faculties; Education services relating to the development of children’s mental faculties; Teaching services relating to pedagogy techniques; Teaching services for communication skills; Perceptual teaching services; Nursery schools; Nursery schools; Nursery schools; Educational services provided for teachers of children; Play schemes [entertainment/education.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 13 508 511 . The application is based on international trade mark registration No  965 868 which designates, among other territories, the European Union. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that as the goods and services are either identical or similar and the signs are similar, and in particular that, as the word ‘maestro’ is fully incorporated in to the contested mark, there will be confusion among the relevant consumers.

The EUTM proprietor did not submit any observations in response.

LIKELIHOOD OF CONFUSION — ARTICLE 60(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 an international registration with designations in more than one territory. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s international trade mark registration designating the European Union.

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:

Class 9: Computer software, computer programs and related documentation (sold together as a unit) for use in aviation; computer software and user manuals (sold together as a unit) for use in aviation; excluding any such goods for use in relation to financial services.

Class 42: Computer programming services, consulting services in the field of computers, technical support services, including on-line help, data and software hosting services and design services for computer software, all the above being for use in aviation; excluding any such services in relation to financial services.

The contested services are the following:

Class 35: Retailing and wholesaling of goods, including computer software relating to the education of children, writing materials and educational supplies, educational manuals, educational publications, writing materials and educational supplies, educational toys; Online sale of goods, including computer software relating to the education of children, Writing materials and Educational supplies, educational manuals, educational publications, Writing materials and Educational supplies, educational toys; Mail order sale of goods, including computer software relating to the education of children, Writing materials and Educational supplies, educational manuals, educational publications, Writing materials and Educational supplies, educational toys; Handling of purchase orders; Marketing services; Advertising; Radio commercials; Television advertising; Advertising via the press; Advertising in websites on the Internet; Dissemination of advertisements; Sales promotion of the aforesaid goods and services; Presentation of goods via communications media (retailing); Arranging and participating in trade fairs, exhibitions and shows relating to the promotion of the aforesaid goods; Personnel management consultancy; Consumer advice shops; Presentation of goods on communication media, for retail and wholesale purposes; Rental of advertising space.

Class 41: Courses (Training -) relating to research and development; Pre-school education; Nursery schools; Nursery schools; Provision of tuition; Education; Professional consultancy relating to education; Education information; Education information; Adult training; Education and instruction; Teaching assessments for counteracting learning difficulties; Development of educational materials; Developing educational manuals; Remedial tuition in speech; Remedial tuition in language; Institutes of education (Services provided by -); Educational institute services; Provision of educational services relating to health; Provision of educational services relating to exercise; Providing facilities for educational purposes; Provision of facilities for education; Provision of facilities for tuition; Advisory services relating to education; Advisory services relating to education; Provision of training and education; Provision of tuition; Educational services provided for children; Provision of training and education; Teaching services; Education services relating to the development of children’s intellectual faculties; Education services relating to the development of children’s mental faculties; Teaching services relating to pedagogy techniques; Teaching services for communication skills; Perceptual teaching services; Nursery schools; Nursery schools; Nursery schools; Educational services provided for teachers of children; Services for arranging teaching programmes; Provision of tuition; Play schemes [entertainment/education]; Providing of education; Arranging of workshops; Conducting workshops [training]; Workshops for training purposes; Workshops for educational purposes; Workshops (Arranging and conducting of -) [training]; Workshops (Arranging and conducting of -) [training]; Conducting courses, seminars and workshops; Workshops (Arranging and conducting of -) [training]; Arranging professional workshop and training courses; Production of educational sound and video recordings; Educational examination; Educational testing; Training (Practical -) [demonstration]; Developing educational manuals; Dissemination of educational material; Development of educational materials; Publication of printed matter relating to education; Publication of educational teaching materials; Publication of printed matter relating to education; Computer training; Provision of education on-line from a computer database or via the internet or extranets.

Class 42: Research and development services; Research and development for others.

Contested services in Class 35

The contested services in this class belong to several categories as follows:

Retailing and wholesaling of goods

Retailing and wholesaling of goods, including computer software relating to the education of children, writing materials and educational supplies, educational manuals, educational publications, writing materials and educational supplies, educational toys;

Online sale of goods

Online sale of goods, including computer software relating to the education of children, Writing materials and Educational supplies, educational manuals, educational publications, Writing materials and Educational supplies, educational toys;

Mail order sale of goods

Mail order sale of goods, including computer software relating to the education of children, Writing materials and Educational supplies, educational manuals, educational publications, Writing materials and Educational supplies, educational toys;

Advertising

Marketing services; Advertising; Radio commercials; Television advertising; Advertising via the press; Advertising in websites on the Internet; Dissemination of advertisements; Sales promotion of the aforesaid goods and services; Presentation of goods via communications media (retailing); Arranging and participating in trade fairs, exhibitions and shows relating to the promotion of the aforesaid goods; Presentation of goods on communication media, for retail and wholesale purposes; Rental of advertising space.

Business administration

Personnel management consultancy; Consumer advice shops, Handling of purchase orders.

In the first place it must be clarified that the term ‘including’, used in the proprietor’s list of services in Class 35, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them, that is to say, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107). In this particular case it means that the earlier mark is protected in Class 35 for the general categories of retailing and wholesaling of goods, online sale of goods, mail order sale of goods, being the specific items that appear after the word ‘including’ only examples of the object of the services.

Furthermore, in relation to retailing and wholesaling of goods, online and mail order sale of goods, the following issues must be taken into account:

1. Retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). 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 goods, 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 necessarily complementary.

2. Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

3. 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.

The earlier international registration is protected for goods in Class 9 such as user manuals (sold together as a unit) for use in aviation; excluding any such goods for use in relation to financial services. The contested mark is registered for retailing, wholesaling, online sale of and mail order sale of educational manuals, educational publications, goods that are identical to the users’ manuals, as the former goods include the latter. Consequently, for the following services there is a low degree of similarity between the goods protected by the earlier registration and the services of the proprietor’s mark (as seen in point (2) above).

The rest of the services of retail, wholesale, online sale and mail order sale of (…) are dissimilar, as the goods are not identical to those contained in Class 9 protected by the earlier mark, or the services are general categories not carried out in relation to any good (see point 3 above, or point 1 above, respectively).

As a clarification, it must be added that these services are also dissimilar to the services in Class 42 for which the earlier mark is registered, as they have nothing in common in relation to their nature or purpose, their end consumers, channels of trade, and commercial origins, and the services are neither in competition with each other, nor complementary.

Regarding the services that are, or fall into, the categories of advertising and business administration (as listed above), the following must be noted:

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

As a clarification, it must be added that these services are also dissimilar to the services in Class 42 for which the earlier mark is registered, as they have nothing in common in relation to their nature or purpose, their end consumers, channels of trade, and commercial origins, and the services are neither in competition with each other, nor are they complementary.

Contested services in Class 41

The contested services in this class fall into the categories of education and publication.

Some of the educational services are very specific while others are not. According to Oxford Dictionaries, education is, among other things: information about or training in a particular field or subject (retrieved on 11/10/2018 at https://en.oxforddictionaries.com/definition/us/education). Consequently, the services of the contested mark which are not limited specifically to a given field which is far away from ‘aviation’ can be similar to computer software and user manuals (sold together as a unit) for use in aviation), as the goods are essential and thus complementary to educational services in Class 41. Generally the materials are issued by the same undertaking, and share the same public and distribution channels. These goods are similar to the services in question (23/10/2002, T-388/00, ELS, EU:T:2002:260).

The services of publication are also similar to computer software and user manuals (sold together as a unit) for use in aviation since they basically satisfy the same needs; therefore, they share the same purpose, and can coincide in their end users, distribution channels and origin, for instance publishing houses specialised in electronic forms of publishing.

It follows that the following services are similar to the computer software and user manuals (sold together as a unit) for use in aviation protected by the earlier mark:

Courses (Training -) relating to research and development; Provision of tuition; Education; Professional consultancy relating to education; Education information; Education information; Adult training; Education and instruction; Development of educational materials; Developing educational manuals; Institutes of education (Services provided by -); Educational institute services; Providing facilities for educational purposes; Provision of facilities for education; Provision of facilities for tuition; Advisory services relating to education; Advisory services relating to education; Provision of training and education; Provision of tuition; Provision of training and education; Teaching services; Services for arranging teaching programmes; Provision of tuition; Providing of education; Arranging of workshops; Conducting workshops [training]; Workshops for training purposes; Workshops for educational purposes; Workshops (Arranging and conducting of -) [training]; Workshops (Arranging and conducting of -) [training]; Conducting courses, seminars and workshops; Workshops (Arranging and conducting of -) [training]; Arranging professional workshop and training courses; Production of educational sound and video recordings; Educational examination; Educational testing; Training (Practical -) [demonstration]; Developing educational manuals; Dissemination of educational material; Development of educational materials; Publication of printed matter relating to education; Publication of educational teaching materials; Publication of printed matter relating to education; Computer training; Provision of education on-line from a computer database or via the internet or extranets.

Following the explanations given above, the services that relate to fields which are far removed from ‘aviation’ cannot be similar to the goods and the following services are, therefore, dissimilar:

Pre-school education; Nursery schools; Nursery schools; Teaching assessments for counteracting learning difficulties; Remedial tuition in speech; Remedial tuition in language; Provision of educational services relating to health; Provision of educational services relating to exercise; Educational services provided for children; Education services relating to the development of childrens' intellectual faculties; Education services relating to the development of childrens' mental faculties; Teaching services relating to pedagogy techniques; Teaching services for communication skills; Perceptual teaching services; Nursery schools; Nursery schools; Nursery schools; Educational services provided for teachers of children; Play schemes [entertainment/education.

These services are also dissimilar to the services of the earlier registration in Class 42, as, not only is the nature of the services different, but the fact that the education services of the contested mark are so specific makes these services different in their commercial origin and channels of distribution, and they are neither in competition nor are they complementary.

Contested services in Class 42

These services are similar to the programming services protected by the earlier registration given that the services of the contested mark are not limited to any specific field and, therefore, the services can have the same nature, and they usually coincide in producer and relevant public.

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 (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary depending on the specific goods and services and therefore on their nature, price, etc.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

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 term ‘maestro’, common to both marks, means a number of different things depending on the specific language; for the majority of the consumers it will denote either ‘a distinguished musician, especially a conductor of classical music’ or ‘a great or distinguished figure in any sphere’ (retrieved at https://en.oxforddictionaries.com/definition/us/maestro on 11/10/2018), for others, such as the Spanish and Italian public (‘maestro’ in that language) and Romanian (‘maestru’), it will also denote a ‘teacher’’. As for ‘air’ (‘the invisible gaseous substance surrounding the earth, a mixture mainly of oxygen and nitrogen’ retrieved at https://en.oxforddictionaries.com/definition/us/air on 11/10/2018), some consumers might understand it given the proximity with the relevant term in their language (for example ‘aire’ in Spanish) or their knowledge of English, but some others will not.

The contested mark has yet another verbal element, ‘system’, but it is so small that the majority of the consumers will not even see it; therefore it is considered a negligible element and will be disregarded in the comparison of the signs.

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). This applies by analogy to international registrations designating the European Union.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.

The Cancellation Division finds it appropriate to focus the comparison of the signs on the part of the relevant public who understands ‘maestro’ but for whom ‘air’ is meaningless, that is, a very substantial part of the non-English-speaking public.

The marks do not have any elements that can be considered more dominant than others. As for the distinctiveness of its elements, even when ‘MAESTRO’ means ‘a great or distinguished figure in any sphere’, it does not directly describe any exact characteristic of the goods or services in question and is, therefore, distinctive (19/02/2016 – R 3130/2014-5 – MAESTRA TEQUILERA / MAESTRO). ‘Air’ will not be understood and will therefore be distinctive. There is no denying, however, that the common word ‘MAESTRO’ is longer than ‘air’, and that the figurative elements are rather banal. Consequently, the marks are visually similar to an average degree, whereas aurally and conceptually they are similar to a high degree.

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.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case the earlier trade mark as a whole has no meaning for any of the goods and services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen, as a whole, as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, Lloyd Schuhfabrik, § 20; Sabèl, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The distinctiveness of the earlier mark as a whole is average; the public is composed of average consumers and professionals, with a varying degrees of attention depending on the specific services, part of which are similar to various degrees. Taking into account the similarities between the marks, given the presence of the term ‘maestro’, and having regard to the fact that consumers cannot compare the marks when they purchase them, but must rely on their imperfect recollection, even in relation to those services with a low degree of similarity, the relevant consumers might think that these services originated from the same company or from companies with economic ties. This is also true even in relation to services which have a possible enhanced degree of attention, as it must be remembered that likelihood of confusion exists also in relation to the professional public and to the services which demand a higher degree of attention, considering that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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 services found to be similar to those of the earlier trade mark, even in relation to the services which have been found to be only lowly similar. The rest of the contested services are dissimilar. As the 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 against these services cannot be successful.

The earlier international registration designates, also, the territories of France, Italy, Spain, Portugal and the United Kingdom. In relation to France, Italy, Spain and Portugal it must be noted that the international registration covers the same scope of goods and services as the designation evaluated above. Therefore, the outcome cannot be different for goods and services for which the application for cancellation has already been rejected; consequently, there is no likelihood of confusion for those goods and services in these territories.

In relation to the designation in the United Kingdom it must be noted that the international registration covers the following goods and services:

Class 9: Computer software; computer programs and related documentation being downloadable electronic publications (sold together as a unit); computer software and user manuals being downloadable electronic publications (sold together as a unit); all of the aforesaid used in the management of businesses for safety and operational management namely maintaining an aircraft register, document library, personnel management, rostering of crews, purchase orders, reporting, timesheets, training and checking on-line exams and none relating to airline reservations, air travel check-in and boarding, boarding control, electronic ticketing, and electronic communications with airline reservation systems and databases.

Class 42: Computer programming services, consulting services in the field of computers, technical support services, including on-line help, data and software hosting services and design services for computer software; all of the aforesaid used in the management of businesses for safety and operational management namely maintaining an aircraft register, document library, personnel management, rostering of crews, purchase orders, reporting, timesheets, training and checking on-line exams and none relating to airline reservations, air travel check-in and boarding, boarding control, electronic ticketing, and electronic communications with, airline reservation systems and databases.

At this point it is worthwhile to recall that the services that have been found to be dissimilar are:

Class 35: Retailing and wholesaling of goods including computer software relating to the education of children, writing materials and educational supplies, writing materials and educational supplies, educational toys; Online sale of goods including computer software relating to the education of children, writing materials and educational supplies, writing materials and educational supplies, educational toys; Mail order sale of goods including computer software relating to the education of children, writing materials and educational supplies, writing materials and educational supplies, educational toys; handling of purchase orders; Marketing services; Advertising; Radio commercials; Television advertising; Advertising via the press; Advertising in websites on the Internet; Dissemination of advertisements; Sales promotion of the aforesaid goods and services; Presentation of goods via communications media (retailing); Arranging and participating in trade fairs, exhibitions and shows relating to the promotion of the aforesaid goods; Personnel management consultancy; Consumer advice shops; Presentation of goods on communication media, for retail and wholesale purposes; Rental of advertising space.

Class 41: Pre-school education; Nursery schools; Nursery schools; Teaching assessments for counteracting learning difficulties; Remedial tuition in speech; Remedial tuition in language; Provision of educational services relating to health; Provision of educational services relating to exercise; Educational services provided for children; Education services relating to the development of childrens' intellectual faculties; Education services relating to the development of childrens' mental faculties; Teaching services relating to pedagogy techniques; Teaching services for communication skills; Perceptual teaching services; Nursery schools; Nursery schools; Nursery schools; Educational services provided for teachers of children; Play schemes [entertainment/education).

The goods in Class 9 and services in Class 42 of the earlier mark are all carried out in relation to specific activities (maintaining an aircraft register, document library, personnel management, rostering of crews, purchase orders, reporting, timesheets, training and checking on-line exams) in the field of management of businesses for safety and operational management. This field is very specific and quite far away from the object of the remaining services in Class 35 and Class 41 that have been deemed dissimilar (education of children, nurseries, etc.). Consequently, following the thorough arguments given in the comparison made above, these goods and services are dissimilar to the remaining contested services, and given that the similarity of the goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application as based on this article and as directed against these services cannot be successful in relation to the designation to the United Kingdom of the earlier international registration. It follows that the application based on the earlier international registration with a designation to the United Kingdom must also be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Nicole CLARKE

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.