CANCELLATION No 19 723 C (INVALIDITY)

Wojas Marketing, ul. Ludźmierska 29, 34400 Nowy Targ, Poland (applicant), represented by Aleksandra Młoczkowska, ul. Twarda 4, 00-105 Warsaw, Poland (professional representative)

a g a i n s t

Magdalena Gacek, ul. Mickiewicza 26, 32650 Kęty, Poland (EUTM proprietor), represented by Kancelaria Rzecznika Patentowego Andrzej Rygiel, ul. Bohaterów, Warszawy 26. Lok. F, 43-300 Bielsko-Biała, Poland (professional representative).

On 29/03/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 13 658 216 is declared invalid for some of the contested goods, namely:

Class 9: Protective helmets for sports; sports glasses.

Class 18: Briefbags; diplomatic bags; backpacks; hiking rucksacks; vanity cases, not fitted; holdalls; wallets; purses; purses, not of precious metal; purses made of precious metal;; shopping bags; beach bags; bags for campers; handbags; ladies’ handbags.

Class 25: Berets; waistcoats; underwear; lingerie; underwear; brassieres; footwear; athletics shoes; lace boots; caps; wooden shoes; suits; leg warmers; gymnastic shoes; spats; hats; swimming costumes; bath slippers; bathrobes; bath sandals; bathing drawers; neckties; parkas; hats; earmuffs; footwear; clothing for gymnastic; clothing of imitations of leather; leather clothing; outdoor clothing; pelerines; stuff jackets (clothing); beach clothes; vest tops; half-boots; skirts; dresses; jumpers; shawls; scarves; robes; jackets.

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

Class 9: Eyeglass cases.

Class 14: Jewels; cloisonné jewellery [jewelry (Am)]; jewellery made of engraved glass; torq style wristwear (wrist jewellery), necklaces; tie bars; cufflinks; watch springs; watch crystals; jewellery cases, not of stainless steel; jewellery cases of stainless steel; clocks; watch bands; watch cases; watch chains; wristwatches; clocks; clockworks; watch boxes; clock and watch hands; clocks and watches, electric.

Class 18: Luggage boxes; traveling trunks; parasols; umbrellas; leather bands; garment carriers; suitcases; portmanteaus.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 13 658 216 . The application is based on Polish trade mark registration No 237 266 .

The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR, Article 8(2)(c) EUTMR (well-known mark) and 8(5) EUTMR, Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, and Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant’s observations and the evidence filed will be assessed in the following sections of the decision.

The proprietor did not reply to the applicant’s observations, although a deadline was set for her to do so.

REPUTATION – ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

According to Article 60(1)(a) EUTMR, an EU trade mark must be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where there is an earlier trade mark as referred to in Article 8(2) EUTMR and the conditions set out in paragraph 1 or 5 of that Article are fulfilled.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered 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, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or 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 Union or, 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 only applicable in invalidity proceedings when the following conditions are met.

• The signs must be either identical or similar.

• The applicant’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 invalidity request is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or 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 invalidity request under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The invalidity request may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the present case, the EUTM proprietor did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the applicant, the earlier trade mark has a reputation in the European Union for some of the goods for which it is registered, namely footwear in Class 25.

Reputation implies a knowledge threshold which is 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 in the European Union.

In the present case the contested trade mark was filed on 06/03/2015. Therefore, the applicant was required to prove that the trade mark on which the invalidity request is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the applicant has claimed reputation, and that it was still standing at the time of the filing of the invalidity action, namely on 05/02/2018.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The information and evidence filed to prove reputation is as follows:

• The RELAKS brand is one of the most recognizable symbols of the past communist era of the Polish People’s Republic. This brand, together with other popular brands of the socialist era in Poland, became a certain symbol of the past époque and its political and economic system.

• The sign ‘RELAKS’ was inseparably associated with a unique style; for instance, the RELAKS footwear appeared in movies such as the now-iconic comedy ‘Seksmisja’ directed by Juliusz Machulski, which is one of the most popular movies in Poland, even after almost 50 years. According to the applicant, the brand is immediately associated with footwear and recognized as one of the very few icons of the communist era in Poland; it is ‘a very clear manifestation of a still vivid retro-fashion styled communism nostalgia among Poles’.

• Among different kind of publications, the applicant filed an article, dated 02/05/2012, which mentions that the first pair of boots labelled with the trade mark of the company from Nowy Targ, a location in Poland, was manufactured on 01/10/1955. The company rapidly earned a reputation, and in 1972 the one hundred millionth pair was made. The boots were exported to dozens of countries on every continent, and Poles wore them during their climbs in the Himalayas. In 1977 the company was awarded the international quality mark ‘Q’ for its products. The article mentions that after the political changes of the 1990s, the company fell apart. However, it goes on to say that, in 2012, the rights to the iconic brand was acquired by the Wojas company (the applicant in these proceedings).

• The applicant argues that it expanded the sales chain up to 174 shops in Czechia, Germany, Poland, and Slovakia in 2015, and that in 2018 the company was one of the biggest Polish manufacturers of footwear systematically developing the so-called omnichannel sale strategy.

• In order to prove the brand extension the applicant filed a list of stores openings in Poland in the years 2012 to 2015.

• The applicant explains that the promotion of the brand is conducted through the most popular mass media channels, such as the press and indoor advertising. The applicant also filed a list of fashion shows, events and awards (from 2012 onward), part of which concerns several events sponsored by the applicant.

• According to the applicant, as a result of extensive use and marketing, the recognition of the brand RELAKS has increased tremendously in just a few years; thus, the historical recognition of the earlier mark has been reinforced; for instance, according to the Polish daily newspaper Rzeczpospolita, in 2014 the applicant was listed as the 6th most valuable Polish brand on the footwear market in Poland.

Further to the above, the applicant filed press releases, exemplary invoices, a catalogue, posters and leaflets, and advertising and marketing figures originating in the applicant itself.

In account of the evidence submitted it is clear that the trade mark RELAKS was once very well-known in Poland for boots, but most of the documents refer to times well before the filing of the contested trade mark and the filing of the application. Furthermore, the documents refer to the sign , or to the company name ‘wojas’, or to the sign , but there is no evidence that can prove without any doubt that the earlier mark in these proceedings, that is, the combination of the term ‘RELAKS’ with its particular depiction plus the term ‘wojas’ , is now recognized by consumers to the extent that it might be said that it enjoys reputation. For example, most of the articles mention the mark referring to its notoriety before the 90s, its ‘pleasant associations’ or to the good quality of the boots branded with the logo (‘Relaks boots were indestructible. My father still keeps them in a closet (…)’ or, indeed, mention ‘Wojas’ shops, ‘Great comeback of Relaks boots. Available in ten colour range at Wojas stores’. Some others (ranking of brands) refer to ‘Wojas’ having had a significant increase in the most valuable Polish brands, and in relation to the fashion shows, the Cancellation Division can only infer from the catalogues and pictures provided, that it was the mark that was present in them. The word ‘wojas’ is not included in the sign, and this element is distinctive as it does not have any meaning in relation to the goods and therefore, the omission of this distinctive element alters the distinctive character of the sign as registered. Consequently, the use provided does not show use of the registered sign, but another sign, which had been famous in the 90’s.

This being the situation, the applicant has not proved the reputation of its earlier trade mark as such and, as reputation is a requirement for Article 8(5) EUTMR to succeed, the application for invalidity filed under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR must fail.

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.

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 25: Footwear, accessories and footwear accessories, gym shoes, soccer footwear, beach footwear, sports footwear.

Class 35: The grouping of various goods to third parties, allowing the buyer to conveniently view and buy them in the store with footwear, accessories and footwear accessories, advertising, renting advertising space, renting advertising media.

Class 41: Services related to the organization of sports and sporting events, renting of stadiums, renting sports facilities, gymnastics, physical culture.

The contested goods are:

Class 9: Protective helmets for sports; sports glasses; eyeglass cases.

Class 14: Jewels; cloisonné jewellery [jewelry (Am)]; jewellery made of engraved glass; torq style wristwear (wrist jewellery), necklaces; tie bars; cufflinks; watch springs; watch crystals; jewellery cases, not of stainless steel; jewellery cases of stainless steel; clocks; watch bands; watch cases; watch chains; wristwatches; clocks; clockworks; watch boxes; clock and watch hands; clocks and watches, electric.

Class 18: Briefbags; diplomatic bags; luggage boxes; traveling trunks; parasols; umbrellas; leather bands; backpacks; hiking rucksacks; vanity cases, not fitted; holdalls; wallets; purses; purses, not of precious metal; purses made of precious metal; garment carriers; shopping bags; beach bags; bags for campers; handbags; ladies’ handbags; suitcases; portmanteaus.

Class 25: Berets; waistcoats; underwear; lingerie; underwear; brassieres; footwear; athletics shoes; lace boots; caps; wooden shoes; suits; leg warmers; gymnastic shoes; spats; hats; swimming costumes; bath slippers; bathrobes; bath sandals; bathing drawers; neckties; parkas; hats; earmuffs; footwear; clothing for gymnastic; clothing of imitations of leather; leather clothing; outdoor clothing; pelerines; stuff jackets (clothing); beach clothes; vest tops; half-boots; skirts; dresses; jumpers; shawls; scarves; robes; jackets.

Contested goods in Class 9

Protective helmets for sports; sports glasses are similar to a low degree to sports footwear in Class 25 of the earlier mark, as the goods have the same nature, and they usually coincide in relevant public and method of use.

Eyeglass cases are usually provided by opticians free of charge as a complement to the glasses. Therefore, the goods are not similar to any of the goods protected by the earlier mark in Class 25, as they do not have a similar nature, are not distributed through the same channels and are not complementary, nor in competition with each other. For the same reasons, these goods are also dissimilar to the services protected by the earlier mark.

Contested goods in Class 14

The contested goods in this class are dissimilar to all the goods and services protected by the earlier mark, as they do not share any of the criteria for a finding of similarity; in effect, their commercial origins differ, as do their channels of trade, their customers are not the same, and they are neither complementary nor in competition with each other.

Contested goods in Class 18

Briefbags; diplomatic bags; backpacks; hiking rucksacks; vanity cases, not fitted; holdalls; wallets; purses; purses, not of precious metal; purses made of precious metal;; shopping bags; beach bags; bags for campers; handbags; ladies’ handbags are similar to footwear as they usually coincide in producer, relevant public and distribution channels, or similar to a low degree to the general category of footwear or the specific ones of sports footwear or beach footwear, as in the latter case they coincide in producer and relevant public.

The rest of the goods (luggage boxes; traveling trunks; parasols; umbrellas; leather bands; garment carriers; suitcases; portmanteaus) are dissimilar as none of the criteria for a finding of similarity apply.

Contested goods in Class 25

The contested goods in this class are all either identical (as they are included in the general category of footwear protected by the earlier mark) or similar as they are items of clothing or headgear.

Footwear serves the same purpose as clothing and headgear: both are used for covering and protecting parts of the human body and for fashion. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article. The goods are often found in the same retail outlets. Consumers looking for clothes and headgear will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce clothing, footwear and headgear.

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 found to be identical or similar to various degrees are directed at the public at large and the degree of attention is, on the whole, average.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is Poland.

The word ‘relaks’ means ‘relaxation’ in Polish. This term alludes to a characteristic of goods in Classes 9 and 25 that are comfortable or that they will result in relaxation or be worn in times of relaxation, and therefore its level of distinctiveness is low for them; on the other hand, it does not immediately refer to the goods in Class 18, nor to any of their characteristics. This term is, however, the dominant one in the earlier mark. As for ‘wojas’, it means nothing in relation to any of the goods, but it is less dominant than the term the marks have in common.

Notwithstanding the low degree of distinctiveness for some of the goods of the term ‘relaks’, given that it has been reproduced exactly in the same manner in the contested mark and that it is the most dominant element in the earlier mark, from a visual and aural point of view, the marks are similar to at least an average degree.

As mentioned above, the marks are conceptually linked through their common element, and differ in ‘wojas’ in the earlier mark, which part of the Polish consumers will link to the origin of the goods (a company name), or find meaningless. Therefore, for part of the public (those who do not attribute any meaning to ‘wojak’), and notwithstanding the allusiveness of ‘relaks’ for some of the goods, the marks are conceptually similar to an average 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.

As seen above, according to the applicant, the earlier trade mark has a reputation in Poland for boots. This claim, however, was disregarded above for the reasons given. For the sake of completeness, the Cancellation Division notes that the evidence, for analogous reasons as already stated, falls short of the level of proof necessary also to prove enhanced distinctiveness.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what was stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for some of the goods, as identified in the previous section.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

For the purposes of the global assessment, the average consumer of the category of products and services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

The public involved in these proceedings is the general public, and the level of attention towards the goods is average. Part of the goods has been considered to be identical, part of them similar (to a varying degree) and partly dissimilar. The signs have been found visually and aurally similar to an average degree, and for part of the public also conceptually similar. It is true that the term that the earlier mark is allusive for part of the goods, but the earlier mark has been reproduced in exactly the same way in the contested mark, which means that the consumers will be confused as the origin of the goods, even those found similar to a low degree.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s Polish trade mark registration No 237 266.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical and similar either to an average degree or to a low degree.

The rest of the contested goods 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 against these goods cannot be successful.

ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR AND ARTICLE 8(2) EUTMR – EARLIER WELL-KNOWN MARK

The applicant claims that its earlier mark ‘RELAKS’ is well-known in the European Union within the meaning of Article 6bis of the Paris Convention

Article 8(1)(b) EUTMR grants protection, among others, to “trade marks which (...) are well-known in a Member State, in the sense in which the words ‘well-known’ are used in Article 6bis of the Paris Convention” (Article 8(2)(c) EUTMR).

According to Article 8(2)(c) EUTMR, for the purposes of paragraph 1, “earlier trade
marks” means: (c) trade marks which, on the date of application for registration of the
European trade mark, or, where appropriate, of the priority claimed in respect of the
application for registration of the European trade mark, are well-known in a Member
State, in the sense in which the words “well-known” are used in Article 6bis of the
Paris Convention.

Pursuant to the said provision, the countries of the Union undertake, ex officio if their
legislation so permits, or at the request of an interested party, to refuse or to cancel the
registration, and to prohibit the use, of a trade mark which constitutes a reproduction,
an imitation or a translation, liable to create confusion, of a mark considered by the
competent authority to be well known in that country and known to already belong to a
person entitled to the benefits of this Convention and used for identical or similar
goods. These provisions shall also apply when the essential part of the mark
constitutes a reproduction of any such well-known mark or an imitation liable to create
confusion therewith.

As to Article 60(1)(a) EUTMR in conjunction with Article 8(2) and 8(1)(b) EUTMR, they both require evidence that the mark was used in such an extent that it has become well known. Well-known marks, in addition, are not protected against dissimilar goods. Consequently, the cancellation action brought under these provisions cannot succeed against dissimilar goods, and this ground is rejected.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(b) EUTMR- BAD FAITH

General principles

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Arguments and evidence filed by the applicant

The applicant argues as follows:

It should be noted, that the holder by filling the contested sign decided to simply
transfer the historical mark to the application. The contested sign does not bear any kind of modifications or indication of the current commercial origin of the holder's goods. Therefore, the relevant consumer of the goods applied for, confronted with the holder's sign RELAKS, will immediately make a direct reference to its historical origin and owner and the ‘original' model of shoes,

It is common knowledge that the mark RELAKS in Poland exercises a high degree of distinctiveness and reputation, and this is due to both - its specific history and the applicant' investments in sustaining its position on the market. The holder was undoubtedly aware of this fact on the date of the application. Nevertheless, she decided to copy the sign and to monopolize it for her own use. In this way, she would benefit from the recognition of this reputed sign in Poland,
without bearing any costs or taking efforts to promote it. Moreover, as already stressed above, she did not put any effort to modify the mark or indicate the actual commercial origin of the goods applied for.

According to the General Court ruling in case SIMCA Europe Ltd. vs OHIM (judgement of 08/12/2014, T-327/12), in assessment of bad faith, certain circumstances should be taken into account, in particular the intention of the applicant to prevent the use of the sign by a third party.

In the present case the holder tried to monopolize the historical sign, at the same time, however, failed to take any effort to make a genuine use of this sign. The fact, that the holder, since the filing date, has not made any genuine use of the contested sign, is confirmed by a decision of the Polish Patent Office.

Also, by merely copying the Office’s Guidelines, the applicant refers broadly to why bad faith should be found in this case, and specifies the following:

• the signs are identical or confusingly similar;

• the proprietor knew that the earlier mark had been used for a long time;

• the earlier mark is a ‘historical mark’;

• the similarity of the sign cannot be fortuitous;

• there is a dishonest intention on the part of the owner, as it intended to free-ride on the reputation of the earlier mark;

• the proprietor intended to prevent the applicant from entering the market;

• a request for financial compensation made by the owner may lead to a finding of bad faith;

• its concerns as to how the contested mark was created and the commercial logic underlying such creation;

• the weak degree of inherent or acquired distinctiveness of the applicants’ sign.

The evidence filed by the applicant consists of a) Decision of 11/08/2017 of Polish Patent Office (Sp,290,2016), on the revocation of the Polish mark Nr.238 381 owned by the proprietor in the present proceedings, in which the applicant was successful and b) Decision of 25/11/2015 of the Polish Patent Office (Sp.2011.2015), rejecting the request for invalidity filed by Magdalena Gacek against the applicant’s trademark Nr. 237 266.

Assessment of bad faith

The applicant refers to the bad faith of the applicant but to prove it merely files two decisions from the Polish Patent Office.

One of the proceedings refers to the earlier mark claimed under Article 8(1)(b) EUTMR, namely Polish trade mark No 237 266; the decision only mentions the Polish laws involved in those proceedings and also the fact that the applicant in the present Cancellation proceedings was successful in its action, with an award of the costs to its company. But the laws themselves have not been provided, nor due information on the basis of which the action succeeded at the Polish Trade Mark Office. The same is true in relation to the second decision, in which the applicant again was successful against the proprietor, and it seems to refer to the cancellation of a mark owned by the latter. Furthermore, one of these two decisions of the Polish courts is dated after the filing of the contested EUTM and as such, without further evidence, cannot prove that at the time of filing there was bad faith on the part of the proprietor. There is no further information or documents to ground the claim of bad faith. Neither the afore-mentioned decisions, nor any of the other evidence submitted provide sufficient indications that the EUTM proprietor filed the contested EUTM in bad faith.

Consequently, the claim of dishonest intention on the part of the proprietor has not been substantiated, and under the circumstances, the Cancellation Division cannot ascertain that Article 59(1)(b) EUTMR applies.

NON REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE (Article 60(1)(c) EUTMR IN CONNECTION WITH ARTICLE 8(4) EUTMR)

The applicant bases its application on the non-registered mark , used in the course of trade in Poland.

The applicant claims that the mark, which once was reputed, was reintroduced by the applicant on the Polish market in 2011 and, since then, extensively used not only on the Polish market, but also in the Czech Republic, Germany and Slovakia. Seeing that the applicant has only substantiated its claim in relation to Poland, this is the territory that will be evaluated in this section.

Under Article 60(1)(c) EUTMR, an application for a declaration of invalidity of a European Union trade mark must be granted 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 will 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 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 opposition 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 invalidity based on a non-registered trade mark or other sign used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing that a European Union trade mark is declared invalid. A right of invalidation of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of leading to the invalidation of a registered European Union trade mark, the sign relied on in the application 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 application is protected.

In the event of an application for invalidity based on Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, the invalidity applicant must show the earlier sign’s use in the course of trade of more than local significance by the filing date of the contested EUTM (or the priority date if relevant). Moreover, the applicant also has to prove that the sign was used in the course of trade of more than local significance at another point in time, namely at the time of filing of the invalidity request. This condition stems from the wording of Article 60(1)(c) EUTMR, which states that an EUTM will 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’ (decisions of 05/10/2004, 606 C, and 03/08/2011, R 1822/2010-2, Baby Bambolina (fig.), § 15). Once proved, this requirement is considered still to be fulfilled at the time the decision on invalidity is taken unless there is evidence to the contrary (e.g. a company name is invoked but the company has ceased to exist).

In the present case, the contested trade mark was filed on 06/03/2015 and the declaration of invalidity was submitted on 05/02/2018. Therefore, the applicant was required to prove that the sign on which the invalidity application is based was used in the course of trade of more than local significance in Poland by the earlier of the dates afore-mentioned and was still being used when the application was filed.

In order to substantiate its claim, the applicant refers, specifically, to the following evidence (annexes 11 to 13):

• A list of stores openings in Poland in the years 2012-2015;

• Press releases ‘Wojas, one of the biggest Polish manufacturers of footwear’.

• Sample press releases.

The images provided together with the list of stores found in annex 11 show the following logo:

and therefore they cannot prove the use of the claimed non-registered mark. As for the rest of the evidence, it mostly relates the afore-mentioned logo.

The applicant refers to the Polish applicable law as Article 132(1) and (2) of the Law of 30/06/2000 on Industrial Property, and to Articles 3(1) and 10(1) of The Unfair Competition Act of 16/04/1993.

The applicant provided the Polish text, a translation of such, and explains the applicable conditions as follows:

According to the Polish law- article 132(1) and (2) of the Industrial Property Law - unregistered trademarks are protected only if they are well known and used in the course of trade. Article 132(1) and (2) confers on the owner the right to prohibit the use of subsequent trademarks. Additional protection is available to well-known unregistered marks with a reputation (reputed trade mark). The owner of reputed mark may request that the registration of a later identical or similar sign be declared invalid, irrespective of the goods or services for which it is registered, if the use thereof without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

Moreover, a parallel regulation is included in The Unfair Competition Act of 16/04/1993, where use of misleading indications of products is defined as one of the acts of unfair competition. In the present case, as it already has been explained and shown by evidence, the presence of the signs at issue on the same market is likely to lead the consumers to a risk of confusion.

Moreover, The Unfair Competition Act also provides a broader regulation of Article 3(1), according to which an act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer. Taking into account the fact of an unlawful use of the 'RELAKS' brand by the holder, as well as the bad faith intention which accompanied the application of the contested sign (…), the conditions of the unfair competition should be seen as fulfilled.

The applicant adds the following:

The earlier non-registered figurative trade mark RELAKS has been present on the Polish market since 1952, reaching the peak of its popularity in years 1970-1990. This mark falls into a specific category of historical marks, which reputation and recognition by the public remains irrespectively from the actual use of the mark on the market. The earlier mark, despite its creation almost 50 years ago, is still perfectly identified and recognized by the Polish public. Moreover, the applicant has invested substantive funds in refreshment of the brand and its expansion on the foreign markets –i.e. Czech Republic and Slovakia.

However, from all the evidence submitted (included that claimed to prove reputation) it appears that the non-registered mark was well-known or reputed well before the filing of the contested mark and the filing of the application for cancellation. Also, as seen above, no bad faith has been proven.

Consequently, as neither of the two requisites that should have been for the national law to be applicable has been met the cancellation action brought under Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR must be dismissed.

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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Pierluigi M. VILLANI

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.