CANCELLATION No 14 349 C (INVALIDITY)

Rapala VMC Oyj, Tehtaantie 2, 17200, Vääksy, Finland (applicant), represented by Properta Asianajotoimisto Oy, Unioninkatu 7 B 17, 00130 Helsinki, Finland (professional representative)

a g a i n s t

Fox International Group Limited, 1 Myrtle Road, Warley, Brentwood Essex CM14 5EG, United Kingdom (EUTM proprietor), represented by Bromhead Johnson, 57-59 High Street, RG10 9AJ Twyford, Berkshire, United Kingdom (professional representative).

On 26/02/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 14 278 501 is declared invalid for all the contested goods, namely:

Class 28: Fishing equipment, namely fishing rods and fishing reels.

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

Class 18: Luggage for retaining fishing equipment.

Class 20: Outdoor furniture for use in angling.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

On 17/01/2017, the applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 14 278 501 filed on 18/06/2015 and registered on 15/01/2017, namely against fishing equipment, in Class 28.

On 23/03/2018 the EUTM proprietor partly surrendered its EUTM and the respective surrender was registered by the Office on 11/07/2018. The Cancellation Division notes that in its letter containing the partial surrender of the contested mark, the EUTM proprietor specified that the goods in Class 28 will be, after this surrender, fishing equipment, namely fishing rods and fishing reels. However, because of a material error, instead of a comma, a semicolon was used when the respective goods were modified in the register (i.e. fishing equipment; namely fishing rods and fishing reels). Consequently, the Cancellation Division will take into account the version originally communicated to the Office by the EUTM proprietor, which is fishing equipment, namely fishing rods and fishing reels in Class 28 as the contested goods in this case.

The application is based on:

1. International registration No 779 000, BLUE FOX (word mark) designating Czech Republic, Estonia, Latvia, Lithuania, Hungary, Poland, Romania, Slovenia, Slovakia for fishing equipment in Class 28. The dates on which the earlier international registration is deemed to have been ‘registered’ in the respective designated member states are: 16/05/2003 for the Czech Republic, Hungary, Latvia Romania and Slovenia and 16/11/2003 for Estonia, Lithuania, Poland and Slovakia. Finland was also invoked as designated member state; however this is not admissible since Finland is in fact the basic registration for the earlier IR and cannot constitute a designated Member State.

2. Finish trade mark registration No 114 906, BLUE FOX (word mark) registered on 20/11/1991 and duly renewed for fishing equipment not included in other classes, in Class 28.

3. Swedish trade mark registration No 238 137 BLUE FOX (word mark) registered on 24/07/1992 and duly renewed, for fishing equipment not included in other classes, in Class 28.

4. French trade mark registration No 1 553 825 BLUE FOX (word mark) registered on 04/10/1989 and duly renewed, for fishing tackle; gymnastic and sporting articles not included in other classes, in Class 28.

5. German trade mark registration No 1 182 838 BLUE FOX (word mark) registered on 09/12/1991 and duly renewed, for fishing equipment included in Class 28.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the marks in conflict as they are visually similar and aurally and conceptually highly similar, that the earlier marks are highly distinctive as they don’t have a meaning in relation to the goods and the goods covered by the marks in conflict are identical.

The EUTM proprietor requested proof of use of the earlier marks and the applicant submitted a bunch of documents which will be listed in the next section of the present decision.

The EUTM proprietor contested the evidence and stated that taken as a whole it “does not prove any use of the earlier trade mark at all within the European Union, and such appearances of the trademark as appear in the evidence are almost exclusively in relation to fishing lures. This could not in any case provide an adequate basis for the goods of the earlier marks relied upon which are referred to by a very general term, namely “fishing equipment””. As regards the likelihood of confusion, the proprietor claims that the marks are different and no likelihood of confusion exists between the marks. It also filed a large amount of documents to show the use of its EUTM in the European Union over the relevant period and argued that “the relevant public has been educated over many years to distinguish the FOX mark of the owner from the BLUE FOX mark of the applicant”.

The applicant did not reply to the last submissions of the EUTM proprietor and the proceedings were closed.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had 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 will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade marks on which the application is based.

The request has been filed in due time and is admissible given that the 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 17/01/2017. The date of filing of the contested trade mark is 18/06/2015. The applicant was, therefore, required to prove that the trade marks on which the application is based were genuinely used in the Czech Republic, Estonia, Latvia, Lithuania, Hungary, Poland, Romania, Slovenia, Slovakia (the IR), Finland, Sweden, France and Germany from 17/01/2012 to 16/01/2017 inclusive. Since the earlier marks were registered more than five years prior to the date of filing of the contested mark, use of the earlier marks had to be shown also for the period from 18/06/2010 to 17/06/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 28: fishing equipment (IR, Finish, Swedish and German earlier marks). The specifications not included in other classes or included in class 28 do not alter the scope of the specified category of goods.

Class 28: fishing tackle; gymnastic and sporting articles not included in other classes (the French earlier mark)

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier marks for the goods and services for which they were registered and on which the application is based.

On 05/07/2017, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 10/10/2017 to submit evidence of use of the earlier trade marks. This deadline was subsequently extended, upon the applicant’s request, until 10/12/2017.

On 04/12/2017, within the time limit, the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

Annex 1 Affidavit signed by Matti Meriläinen, the Sales Director of Rapala VMC Oyj which shows, in the applicant’s view how, where and to what extent the trade mark BLUE FOX has been used in Finland, Sweden, France, Germany, Czech Republic, Estonia, Latvia, Lithuania, Hungary, Poland, Romania, Slovenia and Slovakia during the years 2010-2015 as the trade mark of fishing products. The applicant claims that the affidavit proves the time of use (2010-2015), place, extent (sales figures both as number of articles and as euros) as well as nature (verbal and figurative trade mark used in connection with different fishing equipment articles) of the use. The following table is attached with turnover figures by country.

The Affidavit includes the following Exhibits:

Exhibit 1 Photographs of BLUE FOX lure packages, which show how the trade mark BLUE FOX appears on the product packages;

Exhibit 2 A photograph of a BLUE FOX product stand, which shows how the lure packages are presented to the customers in stores;

Exhibit 3 Photographs allegedly from the Carrefour fairs of 2012 and 2014;

Exhibit 4 Banners used on the website of Normark Suomi Oy in 2012 and 2013;

Exhibit 5 Prints from various websites selling BLUE FOX fishing equipment in Finland, Czech Republic, Germany, Estonia, France, Hungary, Lithuania, Latvia, Poland, Romania, Sweden, Slovenia and Slovakia;

Exhibit 6-11 Extract from the international RAPALA catalogues for 2010, 2011, 2012, 2013, 2014 and 2015; the mark BLUE FOX appears used as:

Exhibit 12 Copies of sample invoices of BLUE FOX products to Estonia, Latvia, Lithuania, Poland and Sweden; the goods are identified by description (containing the mark BLUE FOX) followed by a code.

Exhibit 13 Prints from various websites selling BLUE FOX fishing rods.

Annex 2 Advertisement from year 2011 of Prisma hypermarket – one of the largest retail store chains with 64 hypermarkets in Finland allegedly proving how BLUE FOX fishing products have been marketed and sold in Finland in 2011;

Annex 3 Rapala Guide brochure 2013 distributed in Finland;

Annex 4 Rapala Lure tips brochure 2013 distributed in Finland;

Annex 5 Extracts from Fishing Magazines distributed in Sweden during 2011 to 2015;

Annex 6 Extracts from catalogues distributed in France during 2011 to 2015;

Annex 7 Extracts from catalogues distributed in Germany during 2010 to 2015;

Annex 8 Extract from catalogue distributed in Czech Republic in 2010;

Annex 9 Brochure distributed in Czech Republic in 2010;

Annex 10 Extract from catalogue distributed in Poland in 2012;

Annex 11 Extract from catalogue distributed in Poland in 2014;

Annex 12 Advertisement from Poland in 2014;

Annex 13 Brochure distributed in Slovakia in 2010.

Assessment of genuine use – factors

Time and place of use

The evidence must show genuine use of the earlier marks within the relevant period. The Cancellation Division considers it has sufficient evidence dated within or that refers to the relevant period showing use of the BLUE FOX sign in relation to a range of fishing lures. Therefore, the evidence of use filed by the applicant contains sufficient indications concerning the time of use.

Further, it is clear from the evidence (invoices and promotional material) that the applicant has traded its goods in various countries such as Sweden, Latvia, Lithuania, Estonia and Poland.

For the purpose of the present decision and at this point of the assessment, the Cancellation Division deems appropriate to focus on the Swedish territory for which it considers it has sufficient evidence and information as regards the remaining criteria of genuine use. It should not be inferred, however, that for the other territories claimed by the applicant the criteria of genuine use were not sufficiently proved by the applicant.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the earlier Swedish mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

In the present case the evidence as a whole indicates that the earlier Swedish mark BLUE FOX is used as a house mark to identify a wide range of fishing lures.

Nature of use: use of the mark as registered

‘Nature of use’ further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the contested international registration.

The Cancellation Division notes that the Swedish mark was used in the forms depicted above in the catalogues or on the goods. Nevertheless, the distinctiveness of the word mark was not altered by the respective figurative representations. The words BLUE FOX are clearly readable and the characters in which they are written are not as stylized or decorative as to obscure or camouflage the terms. The additional figurative element (the fox’s head) is neither more dominant nor more distinctive than the expression BLUE FOX and it is merely emphasising the meaning of the word FOX; therefore, its use is in accordance with Article 18 EUTMR.

Furthermore the term VIBRAX appears to identify a subcategory of goods under the BLUE FOX trade mark. The applicant is not required to provide evidence of the use of its mark alone when genuine use is required and two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the registered trade mark (by analogy T-463/12, MB, EU:T:2014:935, §43). Indeed, it is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42). This is precisely the case in the present proceedings, where, the BLUE FOX sign appears on the cover page of the catalogues and on the outer packaging of the product in distinct colours and separated from the term VIBRAX, which seems to identify a category of fishing spinners.

Therefore, it is considered that, in the context of the evidence as a whole, the documents submitted do show that the earlier Swedish mark was used in such a way as to establish a clear link between the goods and the applicant and in a form which does not alter its distinctive character.

Extent of use and use in relation to the registered goods

Concerning the extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T 334/01, Hipoviton, EU:T:2004:223, § 35). Furthermore, the Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C 40/01, Minimax, EU:C:2003:145, § 39). The assessment of genuine use entails therefore a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use. The evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and services and the structure of the relevant market (30/04/2008, T 131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).

It is reminded that the obligation to produce evidence of genuine use of a trade mark is not designed to monitor the commercial success or to review the economic strategy of an undertaking. It may be economically and objectively justified for an undertaking to market a product or a range of products even if their share in the annual turnover of the undertaking in question is minimal (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 49).

As mentioned above the applicant needs to prove genuine use for the goods for which the earlier mark is registered.

The documents filed, especially the invoices along with the advertising materials and the turnover figures provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The EUTM proprietor commented that “little assistance is afforded by the applicant or its attorney to any cross-referencing of products between what is shown in the screenshots and what is referred to in the invoices.” The Cancellation Division concurs with this remark and underlines the importance of such indications especially in cases where one party submits large quantities of invoices, catalogues or brochures where the goods are described by codes. For example, often, where an invoice does not specifically mention the mark in question in the product description, it will contain references to product numbers that the Cancellation Division can cross-reference with a product catalogue and, in this way, determine that the invoice in conjunction with the product catalogue shows how the mark was actually used on the relevant products. In the present case, the Cancellation Division has carried out an in deep and time consuming assessment of the evidence in its totality, looking for pertinent links between the relevant documents, information which could have been provided by the applicant, for ease of reference, from the outset.

The proprietor criticised further that “even worse, none of the invoices appear to show any monetary amounts, which is curious bearing in mind these are purporting to be invoices for payment. It is possible that the invoices have been redacted so that they do not show the prices which perhaps were there originally, but it is difficult to see how these amounts could be in any way confidential bearing in mind prices are shown for example in the aforementioned screenshots.” In this regards, the Cancellation Division considers that even though such monetary amounts were deleted, as the proprietor correctly notes, the prices of the goods can be seen in the printouts or catalogues/brochures and, in any case, the quantities of goods sold are visible so that the Cancellation Division can estimate the monetary amount of the respective invoices.

Moreover, it is not expected from the applicant to show use of its mark for every single item in the respective catalogue (for every type of fishing lure) and it is neither expected from it to prove that for every single item significant quantities were sold. The Cancellation Division is satisfied to establish by corroborating the invoices with the catalogues and brochures that the applicant has seriously tried to acquire a commercial position in the relevant market and to consider, based on them, that the turnover figures disclosed by the applicant are not improbable. Furthermore, taking into account the diversity of fishing lures commercialised under the mark, the applicant has a legitimate interest to expand in the future the range of its goods to other types of related goods complementing those that it already offers.

Furthermore, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (14/07/2005, T 126/03, Aladin, EU:T:2005:288, § 45 and 13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 23).

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner.

The Court has stated that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of 'part of the goods or services' cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories (14/07/2005, T 126/03, Aladin, EU:T:2005:288, § 46 and 51; 13/02/2007, T 256/04, Respicur, EU:T:2007:46, § § 24; 16/06/2010, T 487/08, Kremezin, EU:T:2010:237, § 57).

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him. (14/07/2005, T-126/03, Aladin, EU:T:2005:288)

In the present case the applicant showed use of its trade mark both as regards the criteria extent and nature for fishing lures, which is considered to be a coherent subcategory for the broader category fishing equipment. The Cancellation Division reached this conclusion after a thorough examination of the submitted evidence and after managing to cross-check different codes from the catalogues to those of the invoices referring to Swedish territory (e.g. the codes starting with BFF, BF (found in the invoices and catalogues for 2011, 2012 and 2014), VBF (invoices and the catalogues for 2012 and 2014) BFSD (catalogue for 2011 and 2013 and invoices) and BFFL3 (2013 catalogue and invoices).

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

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

1. The goods

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

The goods for which the applicant proved a genuine use of its mark as regards the Swedish territory are the following:

Class 28: fishing lures

The contested goods are the following:

Class 28: fishing equipment, namely fishing rods and fishing reels

Contested goods in Class 28

The term ‘namely’, used in the contested goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The EUTM proprietor claimed that its goods are high-end products within the category of fishing equipment, forming their own sub-category separate from accessories. Be that as it may, the earlier goods and the contested goods are clearly complementary in the sense that the use of one requires the use of the other products; furthermore, they are found in the same departments of specialised fishing shops and are purchased by the same consumers. These goods are considered by the Cancellation Division to be similar.

2. Relevant public — degree of attention

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

In the present case, the goods found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the fishing sector. The degree of attention is considered to be average.

3. The signs

BLUE FOX
Earlier trade mark	Contested trade mark

The relevant territory is Sweden.

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 Court has already confirmed that there is at least a basic understanding of the English language by the general public in the Scandinavian countries, the Netherlands and Finland (judgment of 26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23). Consequently, the expression BLUE FOX¹ will be understood by the Swedish public as referring to ‘the colour phase of the arctic fox in which the coat remains blue gray in winter’. As it has no relation to the goods at issue the entire expression is distinctive. As a remark, the Cancellation Division considers that the term BLUE, being an adjective, is qualifying the noun fox and, thus, its distinctiveness is lower than the one of the noun.

FOX in the contested mark will be understood as the respective animal and the fox head merely reinforces this meaning. The group of letters FX has no meaning as such but it is possible that the relevant public might relate it to the first and last letters of the term FOX. These are the distinctive elements of the contested mark. Contrary to the EUTM proprietor, the Cancellation Division does not consider the letters FX to be the dominant element (i.e. the eye catching element). They occupy rather the same proportion of the contested mark as the trapezoidal shape containing the term FOX and the fox’s head. The frame containing all the elements of the contested sign as well as the black trapezoidal shape have no trade mark relevance and they bear no weight in the comparison of signs or in the assessment of the likelihood of confusion.

Visually, the signs coincide in the term FOX which is the first element of the contested mark and the second element of the earlier mark. They differ in the representation of the fox head, the white bolded letters of the term FOX and the geometrical black trapezoidal shape which contains these elements and the letters FX as well as the rectangle frame with rounded corners in which all the elements of the contested mark are included and in the term BLUE of the earlier mark. Taking into account the weigh and distinctiveness of the additional elements it is considered that the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the word FOX, present identically in both signs. The pronunciation differs in the sounds of the letters FX (contested mark) and the word BLUE (the earlier sign); taking into account what has been stated above as regards the weight and significance of the term BLUE as well as the interpretation that could be given to the letters FX, the similarity of the signs from an aural point of view is considered to be low.

Conceptually, the public in the relevant territory will perceive the same concept of a fox in both marks. The fact that the earlier mark refers to a special kind of fox (and in particular to its colour) does not diminish the degree of conceptual similarity which is considered to be average.

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

4. Distinctiveness of the earlier mark

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

The applicant claims that the distinctiveness of the earlier mark is high, since “it has no meaning in relation to the relevant goods; however it should be noted that when an earlier mark, as a whole, has no meaning for any of the goods from the perspective of the public in the relevant territory, it is considered as having no more than an average degree of inherent distinctiveness, which is also the case at issue.

5. Global assessment, other arguments and conclusion

The goods in conflict have been found similar and the marks are similar overall. The earlier mark has an average inherent distinctiveness. It is the opinion of the Cancellation Division that a likelihood of confusion between the marks cannot be excluded in the present case. The word elements that differentiate the marks either name an attribute of the common element FOX (BLUE) or have a secondary position in the contested mark despite being part of the co-dominant element to the common element FOX (the letters FX). This last element could be perceived as already mentioned as a reference to FOX or simply as a variant of the earlier mark for special fishing related goods.

Furthermore, the figurative elements contained in the contested sign are either non-distinctive (the geometrical shapes), or merely reinforce the common element (the fox’s head). Besides, 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). Consequently, the fox’s head presence does not help in differentiating the marks.

Therefore, the application is well founded on the basis of the applicant’s Swedish trade mark registration. It follows that the contested trade mark must be declared invalid for all the contested goods.

The EUTM proprietor requested the Cancellation Division for “an indication of which member states that the Cancellation Division finds no such likelihood, to afford the owner the opportunity to apply for conversion of the registration into national registrations in those states.” However, as the earlier Swedish mark leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant nor the proof of use submitted for those trade marks (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). The Cancellation Division draws, therefore, no conclusion on the existence of the likelihood of confusion as regards the remaining earlier rights or as regards their genuine use in their respective territories.

On the coexistence between the conflicting marks

In its submissions, the EUTM proprietor argues that the conflicting marks have co-existed for several years in the market related to fishing equipment. In support of its claim, the EUTM proprietor has submitted a bunch of evidence numbered from 1 to 29 (over 1500 pages) consisting of catalogues, magazines, brochures, pricelists and invoices.

Coexistence must be proven for the countries relevant to the case (see judgment of 13/07/2005, T 40/03, Julián Murúa Entrena, EU:T:2005:285, § 85). The earlier mark at hand is a Swedish registration and the contested sign is an EUTM; therefore the EUTM proprietor must show coexistence in Sweden which is the common territory for both marks. In this regard, the evidence filed by the EUTM proprietor mainly concerns the use of the contested sign mostly in the UK and additionally in Germany, Netherlands, Poland, France, Italy, Luxembourg, Belgium or Hungary. The Cancellation Division notes that for some of the evidence the EUTM proprietor did not indicate in its observations a relationship to a certain territory (items 3, 8, 23, 24, 27, 28, 29) and for others it referred generally to the ‘Eurozone market’ (item 14). Be that as it may, the respective evidence is not in any way associated to the Swedish territory, but in fact refers to Austria, Italy, the Netherlands, Germany, France, UK or Hungary.

Some extracts from the internet show that products bearing the mark can be purchased online and some brochures indicate direct telephone numbers for sales to Italy, Austria, Germany, Holland and France and a special number for export, Belgium, Czech Republic, Slovakia Poland and Hungary but even if we take into account export as referring to any other country no evidence can be related to Sweden.

Consequently, since the claimed coexistence between the marks in conflict has not been proven in Sweden, the country relevant for the present proceedings, this claim of the EUTM proprietor is rejected as unfounded.

Accordingly, the EUTM proprietor’s claim must be rejected.

COSTS

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

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

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

The Cancellation Division

Oana-Alina STURZA

Ioana MOISESCU

Birgit FILTENBORG

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.