CANCELLATION No C 30 621 (INVALIDITY)

Renault S.A.S., 13/15, Quai Alphonse le Gallo, 92100 Boulogne-Billancourt, France (applicant), represented by Gide Loyrette Nouel A.A.R.P.I., 15 rue de Laborde, 75008 Paris, France (professional representative)

 

a g a i n s t

 

Borgward Trade Mark Holdings GmbH, Industriestrasse 4 Colorado Turm, 9. Etage, 70565 Stuttgart, Germany  (EUTM proprietor), represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Kranhaus 1, Im Zollhafen 18, 50678 Köln, Germany (professional representative).

On 16/12/2020, the Cancellation Division takes the following

 

 

DECISION

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

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

 

REASONS 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 13 981 618   (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely the following:

Class 4: Lubricants and industrial greases, waxes and fluids; Fuels and illuminants; Electrical energy; Dust controlling compositions.

Class 7: Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Dispensing machines; Engines, powertrains, and generic machine parts; Generators of electricity; Machines and machine tools for treatment of materials and for manufacturing; Moving and handling equipment; Pumps, compressors and fans; Robots; Sweeping, cleaning, washing and laundering machines.

Class 9: Apparatus, instruments and cables for electricity; Devices for treatment using electricity; Diving equipment; Information technology and audiovisual equipment; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors; Recorded content; Safety, security, protection and signalling devices; Scientific research and laboratory apparatus, educational apparatus and simulators.

Class 11: Burners, boilers and heaters; Drying installations; Filters for industrial and household use; Fireplaces; Flues and installations for conveying exhaust gases; Food and beverage cooking, heating, cooling and treatment equipment; Heating, ventilating, and air conditioning and purification equipment (ambient); Igniters; Industrial treatment installations; Lighting and lighting reflectors; Nuclear installations; Personal heating and drying implements; Refrigerating and freezing equipment; Regulating and safety accessories for water and gas installations; Sanitary installations, water supply and sanitation equipment; Sun tanning appliances.

Class 12: Vehicles and conveyances; Land vehicles and conveyances; Mobility conveyances; All-terrain vehicles; Ambulances; Armored vehicles; Automotive vehicles; Cleaning trolleys; Cars; Casting carriages; Forklifts, and structural parts therefor; Electric trucks [vehicles]; Electric tractors [vehicles]; Electric lift trucks; Electric cars; Electrically powered land vehicles; Electrically powered motor vehicles; Electrically powered trolleys; Industrial land vehicles; Industrial trucks; Industrial vehicles; Horse trailers; Motorized golf carts; Motorized luggage carts; Minibuses; Refrigerator cars; Refrigerated vehicles; Sports utility vehicles; Sports cars; Sprinkling trucks; Trucks; Truck tractors; Transport carriages; Trailers [vehicles]; Tractors; Tractor trailers; Tracked vehicles; Vans [vehicles]; Automobiles; Trailers; Engines for land vehicles; Carrier tricycles; Tilt trucks; Dumper trucks; Dump trucks; Lift trucks; Coaches; Motorcycles; Automobile chassis; Fork lift trucks; Mobile fork lifts; Forks for fork lift trucks; Lifting cars [lift cars]; Military vehicles for transport; Omnibuses; Concrete mixing vehicles; Air and space vehicles; Land vehicles and conveyances; Parts and fittings for vehicles; Water vehicles; Aerial conveyors; Air cushion vehicles; Amphibious vehicles; Automatic guided vehicles; Cable transport apparatus and installations; Cable transport installations; Cars for cable transport installations; Chairlifts; Conveying installations (Aerial -) for the transportation of people; Conveying installations [ski lifts]; Drone; Electric vehicles; External load carriers for vehicles; Freight carrying vehicles; Military vehicles for transport; Passenger carrying vehicles; Passenger motor vehicles; Rocket-propelled vehicles; Self-driving transport vehicles; Self-loading vehicles; Self-propelled electric vehicle; Self-propelled loading vehicles; Ski lifts; Unmanned conveying vehicles; Unmanned vehicles; Vehicles; Vehicles adapted for military purposes; Vehicles adapted for the disabled; Vehicles for animal transport; Vehicles for locomotion by land, air, water or rail; Vehicles incorporating apparatus for loading; Vehicles incorporating apparatus for tipping; Vehicles incorporating bucket loaders; Wheeled vehicles; Wind powered vehicles.

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Jewellery boxes and watch boxes; Time instruments; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Boxes of precious metal; Coins; Collectible coins; Commemorative coins; Commemorative shields; Copper tokens; Decorative boxes made of precious metal; Fancy keyrings of precious metals; Gold bullion; Gold bullion coins; Identity plates of precious metal; Key fobs [rings] coated with precious metal; Key charms coated with precious metals; Key fobs of precious metals; Key rings [trinkets or fobs]; Key rings [trinkets or fobs] of precious metal; Monetary coin sets for collecting purposes; Non-monetary coins; Objet d'art made of precious stones; Objet d'art of enamelled gold; Objet d'art of enamelled silver; Prize cups of precious metals; Silver objets d'art; Trinkets coated with precious metal; Trinkets of bronze; Trophies coated with precious metal alloys; Trophies coated with precious metals; Trophies made of precious metal alloys; Trophies made of precious metals; Works of art of precious metal.

Class 16: Adhesives for stationery or household purposes; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Decoration and art materials and media; Disposable paper products; Filtering materials of paper; Money holders; Paper and cardboard; Printed matter; Stationery and educational supplies; Works of art and figurines of paper and cardboard, and architects' models.

Class 18: Luggage, bags, wallets and other carriers; Saddlery, whips and animal apparel; Sausage skins and imitations thereof; Umbrellas and parasols; Walking sticks; Animal skins; Boxes made of leather; Boxes of leather or leather board; Butts [parts of hides]; Casings, of leather, for springs; Cattle skins; Chamois leather, other than for cleaning purposes; Chin straps, of leather; Curried skins; Faux fur; Furniture coverings of leather; Girths of leather; Goldbeaters' skin; Imitation leather; Industrial packaging containers of leather; Kid; Leather and imitation leather; Leather cloth; Leather for furniture; Leather laces; Leather for shoes; Leather straps; Leather thread; Leather, unworked or semi-worked; Leatherboard; Worked or semi-worked hides and other leather; Valves of leather; Trimmings of leather for furniture; Studs of leather; Straps made of imitation leather; Straps for soldiers' equipment; Straps for skates; Shoulder belts [straps] of leather; Shoulder straps; Shoulder belts; Sheets of leather for use in manufacture; Sheets of imitation leather for use in manufacture; Semi-worked fur; Polyurethane leather; Moleskin [imitation of leather].

Class 25: Clothing; Footwear; Headgear.

Class 28: Fairground and playground apparatus; Festive decorations and artificial Christmas trees; Sporting articles and equipment; Toys, games, playthings and novelties; Toy automobiles.

Class 32: Beer and brewery products; Non-alcoholic beverages; Preparations for making beverages.

Class 33: Alcoholic beverages (except beer); Preparations for making alcoholic beverages.

Class 34: Articles for use with tobacco; Matches; Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; Tobacco and tobacco products (including substitutes).

Class 35: Advertising, marketing and promotional services; Business analysis, research and information services; Business assistance, management and administrative services; Commercial trading and consumer information services.

Class 36: Financial and monetary services, and banking; Fundraising and sponsorship; Insurance services; Provision of prepaid cards and tokens; Real estate services; Valuation services; Pawnbrokerage; Business liquidation services, financial; Mortgage banking; Financial management; Stocks and bonds brokerage; Financial information; Loans [financing]; Savings bank services; Stock exchange quotations; Financial consultancy; Financing services.

Class 37: Building, construction and demolition; Extermination, disinfection and pest control; Mining, and oil and gas extraction; Rental of tools, plant and equipment for construction and demolition; Alarm, lock and safe installation, maintenance and repair; Building maintenance and repair; Cleaning and care of fabric, textile, leather, fur and goods made thereof; Computer hardware and telecommunication apparatus installation, maintenance and repair; Furniture maintenance and repair; Glazing, installation, maintenance and repair of glass, windows and blinds; HVAC (Heating, ventilation and air conditioning) installation, maintenance and repair; Lift and elevator installation, maintenance and repair; Plumbing installation, maintenance and repair; Re-inking and refilling of toner cartridges; Rental of cleaning and washing machines and equipment; Tyre maintenance and repair; Vehicle service, repair, maintenance and refuelling; Abrasive cleaning of metallic surfaces; Abrasive cleaning of non-metallic surfaces; Advice relating to preventing blockages in grease traps; Advice relating to preventing blockages in plumbing lines; Advice relating to preventing blockages in septic tanks; Advisory services relating to the installation of engines; Advisory services relating to the installation of power plants; Advisory services relating to the installation of solid fuel heating systems; Advisory services relating to the maintenance of buildings; Advisory services relating to the reinstatement of trenches; Advisory services relating to the renovation of property; Advisory services relating to the repair of plumbing; Advisory services relating to pipe laying; Advisory services relating to surfacing projects; Advisory services relating to the installation of fixings; Advisory services relating to the installation of gearboxes; Advisory services relating to the installation of generators; Advisory services relating to the installation of plumbing; Advisory services relating to the installation of pumps; Advisory services relating to the maintenance of environmental control systems; Advisory services relating to the maintenance of fixings; Advisory services relating to the maintenance of plumbing; Advisory services relating to the maintenance of slip gauges; Advisory services relating to the repair of civil engineering structures; Advisory services relating to the repair of environmental control systems; Airplane de-icing services; Antenna installation and repair; Anti-corrosion treatment; Apartment refurbishment services; Application of bridge expansion joints; Application of coatings for the repair of walls; Application of coatings to swimming pools; Application of coatings to tunnels; Application of protective coatings to cavity surfaces; Application of protective coatings to tank surfaces; Application of protective paint to wood; Application of rendering to swimming pools; Ceiling installation; Carpet-laying; Carpentry services; Care and repair of skis; Car wash; Burner maintenance and repair; Book repair and restoration; Boiler cleaning and repair; Boiler repair services; Assembling [installation] of storage systems; Assembling [installation] of shelving; Assembling [installation] of machine plant; Assembling [installation] of building framework; Asbestos removal; Asbestos extraction; Artificial snow-making services; Application of waterproof linings; Application of waterproof coatings for roofs; Application of underlayments; Application of surface coatings; Application of slip-resistant safety floor sealers; Application of sheathing to optical fibres; Application of sheathing to cables; Application of screeds; Application of rendering to tunnels; Cleaning of mobile sanitary facilities; Cleaning of machines; Cleaning of industrial premises; Cleaning of industrial boilers; Cleaning of floor coverings; Cleaning of furnishings; Cleaning of exterior ships' decks; Cleaning of exterior airport runways; Cleaning of electrical motors; Cleaning of drains by high pressure water jetting; Cleaning of drains; Cleaning of cargo holds; Cleaning of building sites; Cleaning of boilers; Cleaning of blinds; Cleaning of ballast lines; Cleaning by means of scouring (Services for -); Cleaning by water jetting (Services for -); Cleaning by means of sanding (Services for -); Civil engineering maintenance involving the use of water-jet cutting equipment; Civil engineering maintainance involving the use of hydromechanical cutting equipment; Civil engineering maintenance involving the use of pressurised jets of abrasive-containing water; Chimney sweeping; Ceiling texturing; Ceiling lining installation; Cleaning of monuments; Cleaning of property; Cleaning of site roads; Cleaning of stone work; Cleaning of storage containers; Cleaning of storage tanks; Cleaning of wall surfaces; Cleaning of water supply plumbing; Cleaning services; Cleaning of water tanks; Cleansing of baths; Cleansing of mobile structures; Cleansing of public conveniences; Clearing of pipework systems used in the manufacturing industries; Clearing of pipework systems used in the refining industries; Coating [painting] services; Coating of brickwork; Coating of concrete; Coating of conduits; Coating of drains; Coating of sewers; Coating services for the maintenance of industrial engineering plant; Coating services for the maintenance of marine engineering plant; Coating services for the repair of marine engineering plant; Coating services for the repair of industrial engineering plant; Erection of grandstands; Erection of display boards; Erection of curtain walling; Erection of crowd control barriers; Erection of climbing formworks; Engine lubrication; Emptying [cleaning] services; Electrical wiring services; Electrical installation services; Electric appliance installation and repair; Drywall contractor services; Drilling; Drill bit sharpening; Drain cleaning services; Diagnostic maintenance services for photocopiers; Decorative painting services; Damp proofing services; Crime scene clean-up services; Conversion of shop premises; Concrete repairs; Conservation and preservation services for works of art; Concrete renovation; Concrete polishing; Computer and telephone battery recharge services; Cobbler's services [repair]; Industrial cleaning services; Hygienic cleansing [pools]; Hygienic cleansing [baths]; Hygienic cleaning [mobile structures]; Furnace installation and repair; Freezing equipment installation and repair; Freezers (Installation of -); Freezers (Repair of -); Fluid pumping services; Floor sanding; Floor maintenance services; Floor layering; Floor coating services; Fitting of floor coverings; Fire extinguisher recharging services; Film projector repair and maintenance; Excavating services for verifying the location of utility lines; Fence erection services; Erection of temporary seating; Erection of temporary constructions for outdoor events; Erection of signs; Erection of sliding formworks; Erection of signboards; Erection of reinforced concrete structures utilising sliding and climbing formworks; Erection of pre-fabricated buildings; Installation of environmental engineering systems; Installation of electrical and generating machinery; Installation of draught proofing for sash windows; Installation of doors and windows; Installation of doors; Installation of door fittings; Installation of conveyors; Installation of coloured panels in building facias; Installation of catering equipment; Installation of central vacuum cleaning systems; Installation of cable television systems; Installation of building scaffolds, working and building platforms; Installation of bolts; Installation of boilers; Information on the maintenance of measuring and test equipment; Information services relating to installation of security systems; Information services relating to maintenance of security systems; Information services relating to the refurbishment of buildings; Installation and maintenance of irrigation systems; Installation and maintenance of photovoltaic installations; Installation and maintenance of solar thermal installations; Installation closed circuit television systems; Installation lighting systems; Installation of aeronautical engines; Installation of basement waterproofing products; Installation of radio frequency communications systems; Installation of racks; Installation of pneumatic bulk material handling systems; Installation of plant; Installation of oil refineries; Installation of oil exploration instruments; Installation of oil production apparatus; Installation of mezzanine floors; Installation of kitchen cabinets; Installation of internal partitioning; Installation of interior partitions for buildings; Installation of integrated radio networks; Installation of insulating materials; Installation of instrumentation systems; Installation of industrial plant; Installation of grills; Installation of ground anchors; Installation of foundry products; Installation of fixtures and fittings for domestic premises; Installation of fitted furniture; Installation of fittings for buildings; Installation of fire performance coatings; Installation of felt roofs; Installation of false floors; Installation of fabricated construction units; Installation of windscreens; Installation of water softeners; Installation of vehicle simulator units; Installation of tubular linings in passageways; Installation of transmission lines; Installation of traffic management systems; Installation of tents; Installation of temporary structures for trade fairs; Installation of temporary structures for business exhibitions; Installation of temporary fences; Installation of temporary barriers; Installation of street information placards; Installation of sun roofs; Installation of street furniture; Installation of storage facilities; Installation of stands for trade fairs; Installation of stands for exhibitions; Installation of stands for conferences; Installation of solar powered systems; Installation of smelting furnaces; Installation of shelving; Installation of sewer liners; Installation of sanitary apparatus; Installation of roof timbering; Installation of radios; Kitchen equipment installation; Joinery [repair]; Joinery; Irrigation devices installation and repair; Interior sealing and caulking services; Interior renovation of commercial premises; Interior refurbishment of buildings; Interior fitting-out of offices; Interior fitting-out of company premises; Interference suppression services for electrical apparatus; Interference suppression in electrical apparatus; Insulation services; Installing wood flooring; Installing wallboard; Installing sod; Installing siding; Installing septic tanks; Installing septic fields; Installing pet containment systems; Installing fencing; Installing drywall panels; Installation, repair and maintenance radiators for motors and engines; Installation, repair and maintenance of steam condensers; Installation, repair and maintenance of condensing apparatus; Installation, repair and maintenance of boiler tubes; Maintenance and repair services relating to door closers; Maintenance and repair of systems incorporating hoses which convey fluid; Maintenance and repair of storage tanks; Maintenance and repair of sporting equipment; Maintenance and repair of solid fuel boilers; Maintenance and repair of instruments; Maintenance and repair of gas turbines; Maintenance and repair of flooring; Maintenance and repair of engines; Maintenance and repair of cargo holds; Maintenance and repair of ballast lines; Maintenance and repair of aircraft weapons; Maintaining septic systems; Maintaining and repair of roof guttering; Maintaining and repair of rain channels; Mains laying; Machinery maintenance services; Machinery installation, maintenance and repair; Lubrication services; Laying of sea cables; Laying of land cables; Laying floor tile; Lawn mower blade sharpening; Land irrigation; Knife sharpening; Office equipment maintenance; Office equipment installation; Musical instrument tuning services; Mechanical cleaning of waterways; Mechanic services; Marking of roads; Maintenance of typewriters; Maintenance of roads; Maintenance of property; Maintenance of pneumatic hand tools; Maintenance of non-electric cooking heaters; Maintenance of medical equipment; Maintenance of medical apparatus and instruments; Maintenance of internal combustion engines; Maintenance of electronic apparatus; Maintenance of domestic refrigeration; Maintenance of dictation equipment; Maintenance of consumer electric appliances; Maintenance of commercial electrical systems; Maintenance of cleaning machines; Maintenance of catering equipment; Maintenance of beverage processing apparatus; Maintenance of automata; Maintenance and repair services relating to automatic door equipment; Maintenance and repair services relating to automatic barriers; Provision of maintenance services for sports establishments; Provision of computerised information relating to the maintenance of carpets; Pressure washing services; Pressure grouting services; Polishing of jewellery; Polishing (cleaning); Plumbing and glazing services; Plumbing and gas and water installation; Plant refurbishment; Pipeline construction and maintenance; Piano-tuning; Photographic apparatus repair; Pavement striping; Pavement marking services; Parquet floor laying; Parasol repair; Paper hanging; Painting, interior and exterior; Painting or repair of signs; Overhaul of machines; Overhaul of engines; Painting and varnishing; Oil burner regulation and repair; Office machines and equipment installation, maintenance and repair; Office machine repair; Renovation of electrical wiring; Renovating services relating to discharge conduits; Renovating services relating to conduits for water supply; Removal of graffiti; Remounting of jewellery; Remedial services for wall coverings; Remedial services for stair coverings; Remedial services for floor coverings; Regulation of oil burners; Refrigerator repair; Refinishing silver; Reclamation of land; Rebuilding of clutches; Rebuilding machines that have been worn or partially destroyed; Rebuilding engines that have been worn or partially destroyed; Re-tinning; Re-sharpening of skates; Re-sharpening of scissors; Re-blacking of rifles; Re-blacking of guns; Re-barrelling; Radio repair; Pump repair or maintenance; Pump repair; Pumping septic tanks; Repair of industrial furnaces; Repair of hollowware; Repair of gas supply systems; Repair of gas cylinders; Repair of game machines and apparatus; Repair of fishing tackle; Repair of fire damage; Repair of fences; Repair of feeding troughs; Repair of electronic apparatus; Repair of canalization systems; Repair of binoculars; Repair of billiard equipment; Repair of bathtubs; Repair of bags or pouches; Repair of bags; Repair information; Repair and maintenance of feed or booster pumps; Repair and maintenance of building scaffolds, working and building platforms; Rental and maintenance of work platforms; Renovation of property; Renovation of nuclear plant; Renovation of machinery; Renovation of kitchens; Renovation of industrial boilers; Repair of transport containers; Repair of toys or dolls; Repair of tools; Repair of surgical apparatus; Repair of sunglasses; Repair of structures for use in high temperature conditions; Repair of sports equipment; Repair of spectacles; Repair of signboards; Repair of shopfitments; Repair of sails; Repair of radio or television sets; Repair of pressurised containers; Repair of power lines; Repair of photocopiers; Repair of parts of engines; Repair of optical instruments; Repair of office machines and apparatus; Repair of non-electric cooking heaters; Repair of musical instruments; Repair of milk filters; Repair of metalworking machines and apparatus; Repair of medical machines and apparatus; Repair of machines; Repair of ironmongery; Repair or maintenance of water pollution control equipment; Repair or maintenance of waste crushing machines and apparatus; Repair or maintenance of vending machines; Repair or maintenance of printing or bookbinding machines and apparatus; Repair or maintenance of milking machines; Repair or maintenance of medical machines and apparatus; Repair or maintenance of machines and apparatus for processing beverages; Repair or maintenance of machines and apparatus for paper-working; Repair or maintenance of loading-unloading machines and apparatus; Repair or maintenance of integrated circuits manufacturing machines and systems; Repair or maintenance of laboratory apparatus and instruments; Repair or maintenance of industrial furnaces; Repair or maintenance of glassware manufacturing machines and apparatus; Repair or maintenance of harvesting machines and implements; Repair or maintenance of gasoline station equipment; Repair or maintenance of gas water heaters; Repair or maintenance of fodder mixers; Repair or maintenance of fodder mills; Repair or maintenance of electric motors; Repair or maintenance of diving machines and apparatus; Repair or maintenance of construction machines and apparatus; Repair or maintenance of chemical processing machines and apparatus; Repair or maintenance of chemical plants; Repair or maintenance of agricultural machines and implements; Repair of turbines; Repair or maintenance of waste compacting machines and apparatus; Repair or maintenance of video frequency machines and apparatus; Repair or maintenance of tobacco processing machines; Repair or maintenance of testing machines and instruments; Repair or maintenance of sericultural machines and implements; Repair or maintenance of semiconductor manufacturing machines and systems; Repair or maintenance of power generators; Repair or maintenance of plant fiber processing machines and implements; Repair or maintenance of office machines and apparatus; Repair or maintenance of nuclear power plants; Repair or maintenance of mining machines and apparatus; Repair or maintenance of measuring machines and instruments; Repair or maintenance of machines and apparatus for pulp-making; Repair or maintenance of machines and apparatus for processing foods; Repair or maintenance of machines and apparatus for papermaking; Repair or maintenance of industrial washing machines; Repair or maintenance of industrial dish washing machines; Repair or maintenance of fodder presses; Repair or maintenance of electric lighting apparatus; Repair or maintenance of firearms; Repair or maintenance of cultivating machines and implements; Repair or maintenance of cooking pots and pans; Repair or maintenance of cooking apparatus for industrial purposes; Repair or maintenance of conveyors; Repair or maintenance of cinematographic machines and apparatus; Repair services for domestic electrical appliances; Repair or maintenance of water purifying apparatus; Repair or maintenance of vessels; Repair or maintenance of vehicle washing installation; Repair or maintenance of textile machines and apparatus; Repair or maintenance of shoe making machines and instruments; Repair or maintenance of sewing machines; Repair or maintenance of rubber-goods manufacturing machines and apparatus; Repair or maintenance of power-driven floor cleaning machines; Repair or maintenance of power distribution or control machines and apparatus; Repair or maintenance of plastic processing machines and apparatus; Repair or maintenance of photographic machines and apparatus; Repair or maintenance of painting machines and apparatus; Repair or maintenance of packing or wrapping machines and apparatus; Repair or maintenance of overhead projectors; Repair or maintenance of optical machines and instruments; Repair or maintenance of musical instruments; Repair or maintenance of metalworking machines and tools; Repair or maintenance of machines and apparatus for woodworking; Repair or maintenance of machines and apparatus for lumbering; Repair or maintenance of freezing machines and apparatus; Repair or maintenance of fodder cutters; Repair or maintenance of fishing machines and instruments; Repair or maintenance of egg incubators; Repair or maintenance of amusement machines and apparatus; Scaffolding dismantling; Scaffolding; Rustproofing; Rust removing; Roofing installation; Road stripping; Road sealing and stripping; Riveting; Restoration of retail premises; Restoration of works of art; Resurfacing of roofs; Restoration of musical instruments; Restoration of baths; Restoration of bathroom fittings; Restoration of architectural works; Repointing of brickwork; Replacement of lights; Replacement of brakes; Replacement of batteries; Repairing construction works; Repair services relating to engines; Repair services for toys; Repair services for medical apparatus; Repair services for electronic business equipment; Repair services for electric generators and wind turbines; Ski tuning services; Sign repair; Sign posting services; Sign painting services; Sign maintenance; Sharpening services; Sharpening of lawnmowers; Sharpening of kitchen knives; Setting of saw blades; Setting of gems [repair]; Servicing of nuclear plant; Servicing of mains services; Servicing of machine tools; Servicing of industrial boilers; Servicing of cranes; Servicing of conduits; Services for the repair of heat exchangers; Services for the repair of conduits; Services for the repair of canals; Services for the installation of cavity wall ties; Services for the fitting of kitchens; Septic tank pumping and cleaning; Septic tank cleaning; Security fencing (Erection of -); Scaffolding repair; Underwater repair; Underwater abrasive cleaning of non-metallic surfaces; Underwater abrasive cleaning of metallic surfaces; Umbrella repair; Tube maintenance services; Tube cleaning services; Trash collection [refuse clean-up]; Tinkering; Texturing (Ceiling or wall -); Tile laying, bricklaying or block laying; Television repair; Swimming-pool maintenance; Swimming pool cleaning services; Suitcase repair; Street cleaning; Sterilisation of surgeon's instruments; Stereo system repair; Stain removal; Spray painting of metals; Spray painting; Spindle reconditioning; Spindle rebuilding; Soil erosion control services; Spillage clearance; Snow removal services; Welding for repair purposes; Waterproofing of basements; Waste removal [cleaning]; Washing of knitwear; Washing of fish boxes; Wall texturing; Varnishing of card materials; Varnishing of board materials; Valeting services relating to office cleaning; Varnishing; Valeting services relating to industrial cleaning; Valeting services relating to household cleaning; Vacuum cleaner repair; Rental of excavators; Building construction services; Repair information; Rental of construction equipment; Rental of bulldozers; Rental of cranes [construction equipment]; Rental of road sweeping machines; Road paving; Upholstery repair; Machinery installation, maintenance and repair; Rebuilding engines that have been worn or partially destroyed; Rebuilding machines that have been worn or partially destroyed; Electric appliance installation and repair; Motor vehicle maintenance and repair; Vehicle washing services; Lubricating services for vehicles; Vehicle polishing; Anti-rust treatment for vehicles; Spray painting; Retreading of tires.

Class 38: Telecommunication services.

Class 41: Education, entertainment and sports; Publishing and reporting; Translation and interpretation.

Class 42: Design services; IT services; Science and technology services; Testing, authentication and quality control.

The application is based on European Union trade mark registration No 8 535 213 . After a limitation made by the applicant on 05/08/2019, the application of invalidity is based on vehicles, apparatus for locomotion by land, in particular cars in Class 12.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the Renault trade mark upon which the application is based has been extensively and intensively used in a similar form since 1925. This has resulted in an outstanding reputation. It claims that there is a likelihood of confusion between the signs in dispute for the relevant public because the goods and services are identical and similar and the signs are similar. The form of the contested trade mark is nearly identical to the earlier mark, as it is characterised by its diamond-shaped design. Therefore, the signs are visually highly similar and conceptually identical.

Furthermore, it claims that the use of the contested mark weakens the exceptional distinctive character of the earlier mark, which is very distinctive. The diamond/rhomboid design of the Renault trade mark is unique in the automotive sector. Moreover, the distinctive character and repute of the earlier trade mark are being unfairly exploited by the contested mark because the image of this reputed mark, and the characteristics which it projects, are transferred to the goods designated by the contested sign.

In order to support its arguments, the applicant filed the following evidence.

Exhibit 1: Google search results for the query ‘la marque au losange’ and copies of press releases in French, dated between 1995 and 2015.

Exhibit 2: an extract from the website www.renaultclassic.com with information on the Renault logo, identified as ‘the diamond brand’. It mentions that ‘From 1924 onwards, the diamond appeared on the front of the 40 CV-Type NM executive tourer. This geometrical symbol became definitively established in 1925’, and ‘The Renault name was now symbolized by a simple and elegant 3D diamond’. It also includes an extract from Wikipedia with information on the Renault group, where the various Renault logos are identified as ‘Renault diamond’.

Exhibit 3: Renault TV advertisements broadcast in EU countries from 1970 to October 2015.

Exhibit 4: a dossier with very detailed financial information for the Renault group from 2013 to 2018, including the annual financial reports for those years.

Exhibit 5: various tables with information on Renault brand sales and market shares from 2013 to 2017 in, inter alia, EU countries.

Exhibit 6: two tables with information on the market gross media budget in various EU countries from 1998 to July 2018. The data was prepared by the marketing institutes Kantar and Nielsen.

Exhibit 7: survey carried out by the BVA institute in August 2018 in France, Germany, Italy and Spain on ‘Renault sign Awareness Research’.

Exhibit 8: extracts from the websites www.challenges.fr, www.leblogauto.fr and www.automobile-sportive.com, written in French and partially translated into English. They refer to the Borgward sign as ‘the other trade mark with the diamond shape’ and ‘logo in the shape of a diamond’.

Exhibit 9: extracts from the website www.borgward.com.

The EUTM proprietor requests proof of use of the earlier mark. It argues that there is no likelihood of confusion between the marks in dispute because the signs are not similar. The only similarity between the signs is limited to the use of a rhombus, which cannot serve as an indication of origin since it is a simple geometric shape. The overall impression given by the signs is completely different, because the signs have nothing in common other than the basic rhomboid element. Further, the proprietor claims that the documents submitted by the applicant are insufficient to prove the enhanced distinctive character of the earlier mark, which it allegedly acquired through intensive use. The contested mark was applied for on 24/04/2015 and, therefore, only the figures related to 2015 are relevant. The sales figures are not supported by the annual financial statements insofar as they make no differentiation between EU countries, but merely show a list of sales in Europe. It is unclear from what source the alleged expenses for marketing are from or how they are composed. No details were submitted demonstrating the extent to which advertisements were actually broadcast, and what coverage they achieved. Further, the market analysis cannot prove any increased distinctiveness, since it was carried out in 2018. It does not prove that awareness was already present on the application date of the contested mark (in 2015). Moreover, the evidence filed by the applicant shows use of the earlier mark in connection with the word ‘RENAULT’. The additional evidence does not show the extent to which it is related to promoting that earlier mark.

The proprietor considers that a monopoly cannot be granted on a simple basic geometric shape. Furthermore, the dominant verbal element ‘BORGWARD’ rules out the possibility that the relevant consumer will establish any connection between the trade marks. It further argues that, due to its success story, the proprietor is still known to most German consumers, and other parts of the relevant public, in the context of automobiles. The proprietor holds the right to an earlier EUTM with an identical sign, also protected for goods in Class 12 (inter alia, for private automobiles), which is older than the applicant’s earlier right, namely EUTM No 4 311 551.

In support of its observations the proprietor submitted the following evidence.

Exhibit 1: extract from Wikipedia with information on the contested mark.

Exhibit 2: extracts from the proprietor’s website www.borgward.com.

Exhibit 3: documents from an unknown origin with an overview of the development of the contested mark.

Exhibit 4: copies of articles, dated 2014-2018, with references to the contested mark as ‘the brand with the rhombus’ or the ‘Borgward Rhombus’. The articles are written in German and (partially) translated into English.

Exhibit 5: extract from Wikipedia with information on the German television film ‘Die Affäre Borgward’.

Exhibit 6: extract from eSearch with information on EUTM registration No 4 311 551.

Exhibit 7: copy of an article published in the magazine Spiegel, dated 27/02/2013, written in German and translated into English. It refers to German expenditure on cars.

Exhibits 8 and 10: extracts from Wikipedia with information on ‘impossible figures’ and ‘rhombus’.

Exhibits 9 and 11: extracts from the EUIPO Guidelines and examples of refusals of applications for EUTMs composed of a simple rhomboid.

Exhibit 12: EUIPO decisions where the Office considered a diamond shape to be insufficient to establish similarity between the marks (26/04/2010, B 1 357 955; 17/08/2013, B 823 593; 19/01/2006, B 686 966; 17/12/2003, B 414 500).

The applicant submits evidence of use of its earlier mark and limits the basis of its application of invalidity to vehicles, apparatus for locomotion by land, in particular cars. It contests the proprietor’s arguments, arguing that the proprietor has no connection to the German company of Carl Borgward, which was declared bankrupt in 1961. More than 55 years passed between the sale of the last Borgward vehicle in 1962 and the launch of the vehicles marketed by the proprietor in 2018. Therefore, consumers do not know the old logo and models of the traditional Borgward brand, which are only popular among collectors. It further argues that the relevant public pays an average degree of attention to motor vehicles since they are everyday commodities. It reiterates that the earlier mark benefits from a higher degree of distinctiveness since it is highly original and unique. It contests the proprietor’s arguments regarding the proof of reputation submitted, and explains that the documents submitted clearly provide information of the sales and advertising expenses for Renault vehicles, country by country, in the EU. As regards the market survey provided as proof of reputation of its earlier mark, it points out that the high degree of recognition of the Renault trade mark in 2018 clearly indicates that this mark was already well-known in the relevant period. Contrary to the proprietor’s arguments, the earlier mark is used prominently in isolation, in particular on the grille, rear, and steering wheel of each model, as shown in the evidence provided. In any case, its use in combination with the word mark must also be taken into account. The applicant reinforces its previous arguments related to the existence of likelihood of confusion between the marks at issue, arguing that the figurative element dominates the overall impression of the contested sign, or at least co-dominates the mark. It discusses the EUIPO decisions referred to by the proprietor, and refers to several decisions where the General Court affirmed sufficient similarity of the signs. The relevant public is aware that automobile manufacturers offer motor vehicles under several brands and cooperate with each other, which increases the likelihood of confusion by making the public assume that the products come from the same undertaking or economically linked undertakings. Finally, it argues that the history of the Borgward trade mark cannot be invoked as due cause, since a revival of a mark that has not been used for more than 55 years cannot eliminate the unfairness of the use.

In order to support its arguments, the applicant filed the following evidence.

Exhibit 10: financial information on the Renault brand from 2001 to 2018.

Exhibit 11.1: information on Renault brand monitored media investments in the EU from 2000 to 2018.

Exhibit 11.2: listing of thousands of advertisements broadcast by Renault in the EU from 2000 to 2018.

Exhibit 11.3: link to a database gathering the Renault advertisements at https://adintel.portfolio.intl.nielsen.com.

Exhibits 11.4 - 11.25: samples of Renault advertisements broadcast in various EU countries.

Exhibit 12: public relations reports from 2017 and 2018 with information on Renault activities related to events in France and abroad.

Exhibit 13: copy of press releases related to the Renault brand.

Exhibit 14: press release of the Bundesverband CarSharing e.V. dated 20/02/2019, and an extract from the website www.carsharing-news.de dated 01/03/2019.

Exhibit 15: copy of the publication Car sharing in Europe from 2018.

Exhibit 16: case study in the project ‘Evolution2Green - Transformation Paths to a Green Economy’, which states that ‘The purchase of your own car is losing importance. Even as a status symbol, it is becoming less important to some (especially young urban) milieus’.

Exhibit 17: selection of German press articles referring to the Renault diamond/rhombus.

Exhibit 18: overview on the car manufacturers’ cooperation.

Exhibit 19: samples of commercial brochures featuring Renault goods.

On 31/10/2019, the applicant sent a new communication referring to a decision of the General Court (GC) (24/09/2019, T‑356/18, V V-WHEELS (fig.) / VOLVO (fig.) et al., EU:T:2019:690), where the GC found that the signs and were sufficiently similar and annulled the decision of the Boards of Appeal. The applicant submitted a copy of that decision (exhibit 20).

In reply, the EUTM proprietor argues that, even if a mere likeness in the lozenge shape were to be regarded as sufficient for establishing a very remote similarity between the signs, there would be no likelihood of confusion in view of the very high level of attention of the relevant public. Moreover, the low inherent distinctiveness of the earlier mark may at most have increased in the course of use to an average degree. Furthermore, the distinctiveness of the earlier mark is irrelevant due to the lack of enough similarity between the signs. It maintains its arguments as regards the lack of similarity between the signs in conflict. The proprietor denies the applicant’s arguments as regards the level of attention of the public, and the alleged practice in the automotive sector. It reiterates that even if the average consumer is aware of the group structures, the marks belonging to the same group are not similar.

Furthermore, it contests the evidence provided by the applicant as proof of reputation of its earlier mark. The proprietor maintains that because of the different overall impression of the signs, the relevant public will not establish a cognitive association between the signs, in particular because the contested sign includes the dominating word element ‘Borgward’. Finally, it refers to its previous arguments regarding it is not taking unfair advantage of the distinctive character or repute of the Renault trade mark.

In relation to the decision of the GC (24/09/2019, T‑356/18, V V-WHEELS (fig.) / VOLVO (fig.) et al., EU:T:2019:690), the proprietor argues that the facts of that case significantly differ from those of this case. The degree of similarity of the signs in that case is much higher, and the goods are not cars, but vehicle accessories, which are cheaper items. Therefore, the level of attention is not so high.

In support of its observations the proprietor submitted the following evidence.

Exhibit 13: copy of the Judgment of the GC (19/09/2018, T‑623/16, MAIN AUTO WHEELS (fig.) / VW (fig.) et al., EU:T:2018:561).

Exhibit 14: survey dated 26/08/2014, conducted by Forsa in cooperation with the insurer CosmoDirekt. The document is written in German. The proprietor included a partial translation together with its arguments. The results of the survey show that the car is the second most important status symbols for German consumers.

Exhibit 15: extract from the website of the German Federal Motor Transport Authority, written in German.

On 17/05/2020, the applicant responded to the proprietor’s arguments. It referred to the findings of the Munich District Court’s judgment of 28/04/2020 in infringement action No 33 017154/18 brought against the proprietor. A copy of the decision, its translation and the acknowledgment of Borgward Trade Mark Holdings GmbH were submitted as exhibits 22 and 23. In that case, the Court found that (i) the Renault mark originally had an average degree of distinctiveness which has increased to a high degree as a result of its longstanding and intensive use, (ii) the figurative element of the contested sign has a separate function which gives it an independent distinctive role and (iii) there is a low degree of similarity between the signs since both ‘are based on similar basic shapes’. However, the Munich District Court considered that there was no likelihood of confusion ‘because the distinctiveness of the earlier mark of the defendant is to be regarded as average and the conflicting signs have, if anything, only a low degree of similarity’. The applicant claims that, in the present case, since the earlier mark benefits from the highest degree of distinctiveness and the signs also share at least a low degree of similarity (visual similarity and conceptual identity), a likelihood of confusion has to be assumed.

It refers to the GC judgment (09/03/2012, T‑172/10, Base-seal, EU:T:2012:119) (referring to BOA’s decision of 24/04/2013, R 1707/2012‑5, BASE SEAL (FIG.) / COLAS (FIG) et al.), where the GC considered that the signs and were visually similar because of the coincidence in their geometric shapes. A copy of those decisions were submitted as exhibits 20 and 21. For the sake of clarity, despite the fact that the present decision follows the listing prepared by the applicant, the judgment referred to (09/03/2012, T‑172/10, Base-seal, EU:T:2012:119), which is also included in exhibit 20, will hereinafter be referred to as exhibit 20bis.

Moreover, the applicant contests the arguments presented by the proprietor regarding the findings of the GC (24/09/2019, T‑356/18, V V-WHEELS (fig.) / VOLVO (fig.) et al., EU:T:2019:690;19/09/2018, T‑623/16, MAIN AUTO WHEELS (fig.) / VW (fig.) et al., EU:T:2018:561) and the validity of the evidence sent as proof of reputation, and provides, as exhibit 7bis, the whole survey carried out by the BVA institute.

Further, the applicant reiterates its previous arguments regarding the visual similarity and conceptual identity of the signs, the practices in the automobile sector, and the relative importance of the level of attention of the relevant public. It considers that the findings of the Boards of Appeal (24/04/2013, R 1707/2012‑5, BASE SEAL (FIG.) / COLAS (FIG) et al.) should apply mutatis mutandis to the present case.

The EUTM proprietor informs that the decision referred to by the applicant, issued by the Munich District Court on 28/04/2020, is not final since the proprietor filed an appeal against this decision. A copy of this appeal is submitted as exhibit 16.

Following the closure of the proceedings, the EUTM proprietor communicated the information that the decision of the Munich District Court of 28/04/2020 was overturned by the Court of Appeals and filed a copy of this decision as exhibit 17, accompanied by a basic translation into English (exhibit 18).

In reply, the applicant points out that the proprietor’s late observations and evidence are inadmissible and should not be taken into consideration by the Office. It points out that the judgment of the Higher Regional Court of Munich issued on 22/10/2020 does not have a unitary effect in the EU because some countries, in particular France, were not concerned by these proceedings.

Accordingly, the Higher Regional Court of Munich did not assess the likelihood of confusion, or whether the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the Renault trade mark, in other Member States, in particular, in France. Moreover, the decision of the Higher Regional Court of Munich is not final since the applicant has decided to appeal it before the German Supreme Court.

PROOF OF USE

Proof of use of the earlier right was requested by the EUTM proprietor. However, at this point, the Cancellation Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the invalidity request will proceed as if genuine use of the earlier mark had been proven for all the goods concerned, which is the best light in which the applicant’s case can be considered.

 

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.

a) 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 earlier sign is a purely figurative mark consisting of four parallelograms which compose a geometric shape in the form of a hexagon with drawn-in edges, coloured in various shades of silver. The space between the four rectangles form a white rhombus in the centre of the sign. The grey shades and the indented edges produce the impression of a three-dimensional device. This device has no particular meaning.

According to the applicant, the relevant public will associate this sign with a stylised diamond and not with a hexagon, as the Renault trade mark is known as the diamond mark (la marque au losange). In order to support its arguments, the applicant submitted exhibits 1, 2, 8 and 17, listed above. The French word losange is used as a synonym for rhombus. However, the fact that the Renault mark is known as ‘the losange mark’ is due to previous stylisations of the mark. In particular, in 1925 (as shown in the evidence), the Renault trade mark adopted the form of a rhombus . This mark has been through many iterations. When assessing identity or similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered/applied for. The actual or possible use of the registered marks in another form is irrelevant when comparing signs (09/04/2014, T‑623/11, Milanówek cream fudge, EU:T:2014:199, § 38). In this case, the earlier mark on which the application is based, as depicted above, corresponds to a hexagon with a rhomboid empty space in the centre. Therefore, even if Renault’s visual identity is associated with a lozenge, the high stylisation of the figurative element which forms the earlier mark differs from the form of a diamond. Therefore, it cannot be concluded that the relevant public will objectively associate this sign with a diamond. Even if the earlier mark is perceived as depicting a device similar to a rhombus, the relevant public will not associate it with the concept of either a diamond or a rhombus, since having a similar form is not enough to bring into the mind of the relevant consumers the concrete concept of a diamond or a rhombus. The earlier mark reproduces a complex sign which will be perceived by the relevant public as an abstract device with no concrete meaning.

As the applicant claims, the earlier mark is inherently distinctive to a normal degree for the goods in question, as it has no particular relationship with the goods at issue.

The contested mark is a figurative mark composed of a device in form of a rhombus with a grey border, which contains two isosceles triangles joined by one side, coloured in red and white in the upper side, and the same figure, reverted and separated by a horizontal grey band, on the low side.

The contested mark has no elements that could be considered clearly more distinctive than other elements.

Neither sign has elements that could be considered more dominant (eye-catching) than other elements.

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

Visually, the similarities between the signs are limited to the fact that the hexagonal form in the earlier mark, due to its vertical placement, is to some extent similar to the rhomboid contour of the contested mark. The fact that the horizontal sides of the earlier mark are much shorter than the other four sides of the hexagon, produces a form similar to a rhombus. However, the similarities are limited to this aspect, since the signs substantially differ in all remaining elements. In particular, the signs differ in the four triangles found only in the contested sign, the four parallelograms found only in the earlier mark, the number of sides of the geometric figure which form the contour (i.e. six in the earlier mark and four in the contested sign), the colours used (i.e. silver shades in the earlier mark versus red, white and grey in the contested sign) and the form of the edges (i.e. pointed edges in the earlier mark and rounded edges in the contested sign).

All these differences are immediately perceptible and consumers will recall them to differentiate between the earlier mark and the contested sign. The signs only coincide in an irrelevant aspect, namely in the fact that the contour of the contested sign is to some extent similar to the contour of the earlier mark. However, since this form is not perceptible in the earlier sign as a separate element, the signs are not visually similar.

Purely figurative marks are not subject to an aural assessment. Both marks are purely figurative and therefore is not possible to compare them aurally.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs merely coincide in irrelevant aspects, they are dissimilar.

b) Conclusion

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 Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the applicant in this respect does not alter the outcome reached above.

Given that the application is not well founded under Article 8(1) EUTMR in conjunction with Article 60(1)(a) EUTMR, there is no need to examine the evidence of use submitted by the applicant.

c) Other arguments

The applicant claims that the relevant public pays an average degree of attention to motor vehicles since they are everyday commodities. Moreover, it argues that the relevant public is aware that automobile manufacturers offer motor vehicles under several brands, which increases the likelihood of confusion among the relevant public by making the public assume that the products come from the same undertaking or economically linked undertakings.

When purchasing expensive goods, consumers will generally exercise a higher degree of care and will buy the goods only after careful consideration. Non-specialised or non-professional consumers often seek professional assistance or advice when choosing or buying certain types of goods and services. The degree of attention may be enhanced in the case of luxury goods and where the specific product is regarded as reflecting the social status of its owner.

In relation to cars, taking into consideration their price, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 39-42).

Regardless of the degree of attention of the public, the signs were considered dissimilar. Therefore, the applicant’s arguments are set aside.

The applicant refers to previous decisions to support its arguments, in particular to the judgment of the GC (24/09/2019, T‑356/18, V V-WHEELS (fig.) / VOLVO (fig.) et al., EU:T:2019:690), where the GC found that the signs and were considered similar.

While the Office does have a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

However, in that case, as the proprietor argued, the degree of similarity existing between the signs was higher. In fact, the signs not only coincide in the circular form of the contour, but also in the letter ‘V’ present in both signs with an identical typeface and colour, and in their blue backgrounds. Furthermore, the signs coincide in their colour combination and the fact that the verbal elements are placed in the centre of the signs.

The applicant also refers to a decision of the Boards of Appeal (24/04/2013, R 1707/2012‑5, BASE SEAL (FIG.) / COLAS (FIG) et al.) where the signs and were considered visually similar. According to the Boards of Appeal, ‘The earlier French mark and the mark applied for enjoy a ‘certain degree of visual similarity’ due to the diamond shape that they both share. That shape can be memorized by the relevant consumers (…)’ (24/04/2013, R 1707/2012‑5, BASE SEAL (FIG.) / COLAS (FIG) et al., § 41). The GC in their judgment (09/03/2012, T‑172/10, Base-seal, EU:T:2012:119) annulled the BoA decision. However, the GC also considered that the signs were visually similar to a low degree, due to the coincidence in geometric form. According to the applicant, the findings of the BoA in that decision should be applied mutatis mutandis to the present case.

The Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings, since the cases are not comparable. The relevant signs in that case have more similarities, as both are clearly composed of the same geometric device – namely a rhombus with a border – and in both cases the word elements are placed in the centre of the rhomboids.

In any case, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

The applicant refers to other judgments of the GC where the signs were considered visually similar, in particular:

a) 11/12/2014, T‑480/12, MASTER, EU:T:2014:1062, in relation to versus ;

b) 13/09/2017, T‑104/17, apo (fig.) / DEVICE OF AN APPLE WITH A BITE (fig.) et al., EU:T:2018:536, in relation to versus ;

c) 16/01/2018, T‑398/16, COFFEE ROCKS (fig.) / STARBUCKS COFFEE (fig.) et al., EU:T:2018:4, in relation to versus ;

d) 11/04/2019, T‑477/18, DEVICE OF A BOTTLE SILHOUETTE AND AN ARROW (fig.) / DEVICE OF A CAN AND A BOTTLE SILHOUETTES AND AN ARROW (fig.), EU:T:2019:240, in relation to versus ;

e) 08/11/2017, T‑754/16, CC (fig.)/ O (fig.), EU:T:2017:786, in relation to versus .

None of these cases are comparable to the present case. Firstly, the factual background is different. Secondly, the signs shown above have more visual similarities than those existing between the signs in the present proceedings, apart from other aural or conceptual similarities. For example: a) the ‘tail’ flowing from their first letters in a signature flourish and the shared use of a font not commonly used in contemporary business life; b) a stylised representation in both cases of (a part of) an apple; c) the same circular background with a border, the verbal element ‘COFFEE’ and the disposition of the verbal and figurative elements; d) the presence of a bottle and an arrow and e) the presence of a similar ellipse, with similar proportions and form and identical borders.

Finally, the applicant referred to the judgment of 28/04/2020 of the Munich District Court in the infringement action No 33 017154/18 brought against Borgward Trade Mark Holdings GmbH, where the signs were considered similar to a low degree since both ‘are based on similar basic shapes’. In particular, the Munich District Court stated that

[t]he differences between the signs at issue outweigh any similarities in other respects as well. For example, the inner part of the trade mark in suit is empty, whereas the Defendant’s sign has a horizontal bar in the centre and is divided into four black and white sections. It would seem implausible to assume even a merely medium degree of similarity of signs given these clearly perceptible differences in both the basic shape and the design of the sign. As far as the conflicting signs are concerned, there is accordingly, despite the existing identity between the goods, no likelihood of confusion because the distinctiveness of the earlier mark of the defendant is to be regarded as average and the conflicting signs have, if anything, only a low degree of similarity.

Decisions of national courts regarding conflicts between identical or similar trade marks at national level have no binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

The German national court considered that ‘similarity is reduced to the fact that both designs are based on similar basic shapes, in terms of which the Defendant’s sign is, from a geometrical point of view, a classic two-dimensional rhombus, while that of the Plaintiff is a complex, three-dimensional form which merely draws on or suggests the basic shape of a rhombus’. However, as was concluded above, the Cancellation Division considers that the only similarity existing between the signs (as described by the national court) was not enough to consider the signs visually similar because the rhombus in the contested mark is not an independent element in the earlier mark.

Moreover, the decision of 28/04/2020 of the Munich District Court was overturned by the Court of Appeals, which concluded that there was no likelihood of confusion between the marks in dispute, even if the earlier mark is assumed to have a high degree of distinctiveness, because there is no similarity between the opposing signs in the sense of trade mark law.

Therefore, the applicant’s arguments as regards the similarity of the signs are set aside.

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

 

The applicant claimed that the earlier mark has a reputation in the European Union in relation to the following goods:

Class 12: Vehicles, apparatus for locomotion by land, in particular cars.

According to Article 60(1)(a) EUTMR, a European Union trade mark will be declared invalid on application to the Office where there is an earlier mark, as referred to in Article 8(2) EUTMR, and the conditions set out in Article 8(1) or (5) EUTMR are fulfilled.

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier registered 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 registration is sought 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 use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

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

 

(a) The signs must be either identical or similar. 

(b) The earlier trade mark must have a reputation. The reputation must be prior to the filing of the contested trade mark and must still exist at the time of filing of the invalidity request; it must exist in the territory concerned and for the goods and/or services on which the application for a declaration of invalidity is based. 

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for declaration of invalidity under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

a) The signs

The earlier mark on which the application is based and the contested mark have already been compared above under the grounds of Article 8(1)(b) EUTMR and found dissimilar overall. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

b)  Conclusion

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.

This finding would be valid even if the earlier mark was to be considered as enjoying a reputation, since, as already explained hereinabove, the dissimilarity of the signs cannot be overcome by the reputation or higher degree of distinctiveness of the earlier mark. Therefore, the evidence submitted by the applicant in this respect does not alter the outcome reached above.

As the application is not well founded under Article 8(5) EUTMR in conjunction with Article 60(1)(a) EUTMR, there is no need to examine the evidence of use submitted by the applicant.

Therefore, since the applicant did not succeed on any ground, the application for a declaration of invalidity must be rejected in its entirety.

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

Frédérique SULPICE

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

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.