CANCELLATION No 12 229 C (INVALIDITY)

Chateau Lednice Group, Nejdecká 714, 69144, Lednice, The Czech Republic (applicant), represented by Kamil Kolátor, Dobiášova 1264/29, 46006, Liberec, The Czech Republic (professional representative)

a g a i n s t

Ambra S.A., Puławska 336, 02-819, Warszawa, Poland (EUTM proprietor), represented by JWP Rzecznicy Patentowi Dorota Rzążewska SP. K., ul. Żelazna 28/30, 00-833, Warszawa, Poland (professional representative).

On 26/09/2018, the Cancellation Division takes the following

DECISION

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

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

REASONS

On 16/12/2015, the applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 13 764 824 , namely against the goods and services in Classes 33 and 35. The application is based on the following trade marks:

1. European Union trade mark registration No 4 120 218 registered on 08/02/2006 for:

Class 16 Printed matter, advertising and information material, labels, plastic and paper materials for packaging (not included in other classes), and paper and plastic bags.

Class 33 Alcoholic beverages (except beers).

2. European Union trade mark registration No 5 204 227 registered on 24/09/2008 for:

Class 16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; stationary; plastic materials for packaging (not included in other classes); printers' type; printing blocks, labels.

3. Czech trade mark registration No 287 624 registered on 22/02/2007 for:

Class 16 Printed matter, advertising, promotional and information materials, labels, packaging paper and plastics not elsewhere specified, packaging containers and bags of paper.

Class 32 Beers, mineral waters, sparkling drinks and other non-alcoholic beverages, soft drinks and fruit juices, syrups and other preparations for making beverages.

4. Czech trade mark registration No 291 712 registered on 01/08/2007 for:

Class 16 Printed matter, advertising, promotional and information materials, labels, packaging paper and plastics not elsewhere specified, packaging containers and bags of paper.

Class 32 Beers, mineral waters, sparkling drinks and other non-alcoholic beverages, soft drinks and fruit juices, syrups and other preparations for making beverages.

Class 33 Alcoholic beverages, wines of all kinds, sparkling wines, sparkling wines coming from the area of Moscow.

5. Czech trade mark registration No 301 517 registered on 05/11/2008 for:

Class 16 Printed matter, advertising, promotional and information materials, packaging paper, containers and bags of paper and plastic.

Class 33 Alcoholic beverages (except beers).

6. Czech trade mark registration No 341 015 registered on 08/10/2014 for:

Class 35 Advertising activities, retail activities with alcoholic beverages and soft drinks, organisation of audiovisual performance for commercial and advertising purposes, organization of exhibitions for commercial and advertising purposes, consultancy in human resources management, assistance in management of business activities, provision of business and/or business information, performing services of models for advertising purposes and sales promotion, distribution of advertising messages, distribution of advertising materials to customers, e.g. leaflets, prospectuses, printed matter, and samples, preparation of promotional texts, issuing and updating of advertising materials, video recordings and periodical and non-periodical publications, in class 35, issue and dissemination of advertising texts, publishing of advertising and/or recruitment of the texts.

In its submissions of 07/02/2017 the applicant restricted the scope of its invalidity request only against Class 33 by asking the Office to “delete the contested trade mark in Class 33 for alcoholic beverages”.

The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1) (b) and 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the trade marks and that 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 marks.

In response to the application for declaration of invalidity the EUTM proprietor requested the applicant to provide proof of use of all the earlier trade marks on which the application is based. Further, the EUTM proprietor notes that the applicant did not provide justification of its claims and failed to submit evidence supporting the alleged reputation of the earlier marks. The only common element in the compared trade marks is the word ИГРИCТОЕ (IGRISTOE), but in relation to alcoholic products and/or other goods or services relating to such products it has a purely descriptive character since it means „sparkling” in Russian. Finally the EUTM proprietor denies any likelihood of confusion between the marks.

The applicant submitted documents to prove the use of the earlier trade marks except for the trade mark under No 6 which was not registered for more than five years at the moment of the application for a declaration of invalidity of the contested mark. Furthermore, the applicant provided information regarding lawsuits between the applicant and the company ‘SOARE SEKT’ (owned by the EUTM proprietor) and claims that the EUTM was registered in breach of good manners.

In its final reply the proprietor criticises the evidence of use which it considers to be mostly outdated, that it refers in general to IGRISTOE trade marks and not to the figurative trade marks invoked. Furthermore, according to the EUTM proprietor, the applicant filed no evidence as regards the reputation of the earlier marks and the new grounds regarding the registration of the contested mark “in breach of good manners” and by an “unworthy representative” cannot be taken into consideration. The EUTM proprietor filed four printouts to prove the descriptive character of the common term ИГРИCТОЕ (IGRISTOE) and, further, explained the conflict history between the parties.

Preliminary remark as regards the claims of bad faith of the EUTM proprietor and of the registration of the contested mark by an “unworthy representative”

The applicant stated in its observations dated 07/02/2017 that the contested EUTM was registered “in breach of good manners” and by an “unworthy representative”.

In case this is to be interpreted in the sense that the EUTM proprietor filed and registered the contested EUTM as part of its allegedly bad faith line of actions towards the applicant and without the authorization of the EUTM proprietor as its agent or representative and, therefore, the application should be considered based also on Article 59(1)(b) EUTMR as well as on Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR, the Cancellation Division points out that indeed these are new grounds invoked by the applicant which were not indicated in the application filed on 16/12/2015. As such these would represent an extension of the initial scope of the application at a later stage during the proceedings which is inadmissible.

In case the applicant refers to the “breach of good manners” argument in order to strengthen its reasoning for the application of Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and Article 8(5) EUTMR on which the invalidity request is based, the Cancellation Division notes the following: this article regulates the scope of examination tasks exhaustively (namely whether there is a likelihood of confusion and/or taking unfair advantage of or be detrimental to the repute of the earlier marks) and does not leave any scope to take account of possible bad faith on the part of the EUTM proprietor, with the result that the motives and earlier conduct of the EUTM proprietor do not affect the scope of the tasks. Therefore, the argument of the applicant implying bad faith on behalf of the EUTM proprietor will not be addressed further in the examination.

PROOF OF USE OF THE EARLIER MARKS UNDER Nos 1 to 5

According to Article 64(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade marks have been put to genuine use in the territories in which they are protected in connection with the goods or services for which they are registered and which the applicant cite as justification for its application, or that there are proper reasons for non-use. The earlier marks are subject to the use obligation if, at that date, they have been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier marks have been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade marks listed under Nos1-5 on which the application is based.

The request has been filed in due time and is admissible given that the mentioned earlier trade marks were registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 16/12/2015. The contested trade mark was published on 07/04/2015. The applicant was, therefore, required to prove that the trade marks listed under Nos1-5 above were genuinely used in the European Union and the Czech Republic, respectively, from 16/12/2010 to 15/12/2015 inclusive. Since the earlier marks under Nos 1 to 5 were registered more than five years prior to the EUTM publication date, use of the earlier marks had to be shown also for the period from 07/04/2010 to 06/04/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the application is based, as mentioned above in the section Reasons.

According to Rule 40(6) in conjunction with Rule 22(3) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the request for proof of use), the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 04/11/2016, the Office gave the applicant until 09/02/2017 to submit evidence of use of the earlier trade marks.

On 07 and 08/02/2017, within the time limit, the applicant submitted evidence as proof of use. Although the Office notified the applicant in the information sheet attached to the letter of 04/11/2016 that each item of evidence must be described and its purpose clearly explained the applicant did not comply and filed a bunch of numbered evidence which it globally described as:

Attached you can find the demonstrative examples from various events where the sparkling wines with the trademarks of the applicant were promoted. Furthermore we attach a summary tables with annual sales of sparkling wines marked with the trademarks of applicant, including graphs, we also submit the excerpts from various magazines and newspapers, where these products have been presented.

In fact the evidence, all in Czech, can be summarized as follows:

• Three license agreements all signed in 2009 and a memorandum of future sale of the SOARE Group dated 2012. Subsequently, these documents were partly translated.

• Several tables of an unknown origin showing sales for the period of 2001 to 2012.

• Articles from newspapers dated in 1999 and 2001.

• Supermarket leaflets dated in 1999, 2000, 2001, 2002, 2004, 2008 and 2010 or undated.

• Undated labels.

• Extract about SOARE’s company of unknown origin.

Having examined the material listed above the Cancellation Division finds that the evidence is insufficient to establish genuine use of the earlier trade marks.

The evidence in its vast majority is dated before the relevant periods (even 10 years before them). The only documents dated within the relevant periods are the memorandum of future sale of the SOARE Group dated in 2012 and the leaflet of 2010 (hand dated). Furthermore, the sales tables which refer to part of the relevant periods (2010-2012) are of unknown origin. In the hypothesis they originate from the applicant, there is no independent evidence which can support the figures reflected by the respective tables. Indeed, as far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources which, as explained above is missing. The same is valid as regards the licence agreements; the Cancellation Division lacks information originating from independent sources whether or not these licence agreements were executed or not.

The Court has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The Cancellation Division concludes that the evidence is insufficient to prove that the earlier trade marks were genuinely used in the relevant territories during the relevant periods, especially as regards the criteria relevant period of use and extent of use.

Since the applicant did not succeed to prove use of five of the six earlier marks invoked as basis of the invalidity request (those under Nos 1 to 5), the application based on these particular earlier rights must be rejected pursuant to Article 64(2) EUTMR (the EUTM trade marks) and Article 64(2) and (3) EUTMR (the Czech trade marks) in the version in force at the time of filing of the invalidity application.

The Cancellation Division will proceed with the assessment of likelihood of confusion for the remaining earlier trade mark listed under No 6, which is not subject to the requirement of proof of use, Czech mark No 341 015.

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 signs

Earlier trade mark	Contested trade mark

The relevant territory is the Czech Republic.

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 relevant public will recognise that the verbal elements of the signs are represented in Cyrillic letters. The common verbal element which is the second sequence of Cyrillic letters in both marks appears to be less dominant in the contested mark due to its much smaller size whereas in the earlier mark there is no element which is more dominant than others.

The black colour is a banal feature often used as a background in any type of signs. No distinctiveness at all can be attributed to the black colour background, or to the gold frame of the contested mark.

The earlier sign contains figurative elements which will be associated with a meaning, namely grapes and what looks like a sequence of overlapping medals/coins. A similar sequence of coins or medals appears also in the contested mark. It is not uncommon for such representations to be found on alcoholic beverage labels. Although they might serve the purpose of evidencing the recognition of the product on the market owing to the awards it has received, the fact remains that consumers are used to seeing these representations on alcoholic beverage labels and will not attribute to them any trade mark significance, such as indicating the commercial origin of the particular product. So, the concepts embedded in the figurative elements are weak at least in relation to part of the goods such as those related to alcoholic beverages.

As a general remark, the public will not be able to pronounce the verbal elements of the signs and/or attribute to them a particular meaning or they will do this only with the letters that are identical to the ones in the Latin alphabet. The Cancellation Division does acknowledge that the second elements of the marks in conflict contain the same sequence of characters but this will not be acknowledged by the relevant public because they will not able to read all the letters. Furthermore, perceived as a figurative element, the sequence of the characters composing this second element is too complex for the consumers to recognize and remember that this is the same element, unless they will see the marks directly next to each other and analyse them thoroughly. Therefore, the fact that the second word elements of the marks have some Latin letters in common cannot justify a visual and/or aural similarity between them. Furthermore, the fact that the black colour is used in both signs as a background colour is not a characteristic capable of justifying any level of similarity between the signs. Finally, even though the marks have a similar structure (two words disposed one under the other) still the appearance of both marks is different (different size of the words in the contested mark, different position of the figurative elements in both marks).

As the signs only coincide in irrelevant aspects such as occasional recognisable Latin letters and the black background, it is concluded that the signs are not visually similar.

As mentioned above, the relevant public is not able to pronounce the verbal elements of the signs and, therefore, an aural comparison is not possible. As mentioned, the presence of some Latin letters in the respective words which can be perceived as such by the public and which do appear in both marks does not mean that there is a similarity from an aural perspective between these signs.

Conceptually, the only concept in common between the marks is the sequence of coins or medals. The trade mark significance of this common element was explained above. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking all the above into account it is considered that overall the signs are dissimilar for the relevant Czech public.

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Articles 8(1)(b) EUTMR is not fulfilled, so the application must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness and/or reputation. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark, a possible high degree of distinctiveness does not alter the outcome reached above.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 60(1)(a) EUTMR in conjunction with 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 will 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 when the following conditions are met.

• The signs must be either identical or similar.

• 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.

• 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 opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

In the present case, the signs have already been compared in above section ‘The Signs’. The Cancellation Division found that they are dissimilar.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the application for invalidity must also be rejected as unfounded insofar as Article 60(1)(a) EUTMR in connection with Article 8(5) EUTMR is concerned. The considerations expressed above regarding the enhanced distinctiveness/reputation apply also to the conclusion reached in this section.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Plamen IVANOV

Ioana MOISESCU

Michaela SIMANDLOVA

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.