CANCELLATION No C 26 181 (INVALIDITY)

 

Posten Norge AS, 0001 Oslo, Norway (applicant), represented by Protector Ip As, Pilestredet 33, 0166 Oslo, Norway (professional representative)

 

a g a i n s t

 

Bringg Delivery Technologies Ltd., 1 Habarzel St., 6971054 Tel Aviv, Israel  (EUTM proprietor), represented by WP Thompson, 138 Fetter Lane, EC4A 1BT London, City of London, United Kingdom (professional representative).

On 16/09/2020, 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 17 252 123 BRINGG (word mark), (the EUTM). The request is directed against all the goods and services covered by the EUTM which, following the partial surrender of the EUTM proprietor, are:

Class 9: Computer software for mobile devices and computers for allowing businesses and corporations to analyse, coordinate, report in real-time, provide resource utilisation and delivery planning, in relation to its order and delivery operations.

Class 42: Providing temporary use of non-downloadable software services provided to businesses and corporations for the analysis, coordination, reporting in real time, resource utilisation and delivery planning, in relation to its order and delivery operations; hosting of electronic databases for others; Application Service Provider (ASP), namely, hosting software as a service; online provision of non-downloadable web-based software for the analysis, coordination, reporting in real time, resource utilisation and delivery planning, in relation to its order and delivery operations.

The application is based on the following three international trade mark registrations designating the EU for which the applicant invoked reputation in Sweden: No 982 395 BRING (word mark), No 993 470 and No 993 471 (both figurative marks) (all three hereinafter the ‘Earlier Marks’).

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

SUMMARY OF THE PARTIES’ ARGUMENTS AND EVIDENCE

The applicant claimed that there is likelihood of confusion between the marks in conflict and that the earlier marks enjoy reputation. It filed the following evidence to support its arguments in relation to the claim of reputation:

1: Print screen of www.bring.se/english/services.

2: Excerpt from www.bring.se/om-bring.

3: Fact sheet about BRING in Sweden (Sverige).

(https://www.postennorge.no/om-oss/lokasjoner-og-tjenester).

4 & 5: Pictures of Swedish handball players wearing a kit with the BRING logo.

6: Wikipedia article ‘Sports in Sweden’ (https://en.wikipedia.org/wiki/Sport_in_Sweden).

7: Press release by Posten Norge entitled ‘BRING sponsors the Swedish Handball Federation’ (https://www.postennorge.no/presse/arkiv/bring-sponsrarsvenska-handbollsforbundet).

8: Print screen of www.bring.se .

The EUTM proprietor stated that since the goods and services in conflict are dissimilar, there cannot be a likelihood of confusion. The proprietor further argued that the Earlier Marks’ word BRING is entirely descriptive (in English at least) or at best highly suggestive and that between the marks there are sufficient differences (such as the double G in the contested sign or figurative elements). Furthermore, the applicant’s evidence does not prove the reputation of the earlier marks in the EU. As regards the earlier marks’ reputation the proprietor states that whilst reputation in a territory of a single Member State or a group of Member States may be sufficient in some circumstances, account must be taken of the size of the geographical area concerned and the proportion of the population living there. The EUTM proprietor considers that the applicant did not establish the reputation of its marks in the EU. Therefore, the EUTM proprietor submits that even if reputation in Sweden is accepted, reputation in Sweden is not widespread enough to cover a substantial part of the relevant territory. Furthermore, the EUTM proprietor considers that there is no link between the marks in conflict. It also requested proof of use of the earlier rights, request which was subsequently refused by the Office as it was not submitted on a separate document according to Article 19(2) EUTMDR.

On 15/05/2019 the applicant filed more evidence to prove the reputation of the earlier IRs:

9 Print screen of the list of evidence.

10 Annual report for Posten Norge for 2014 of which the applicant highlights the following information: Page 12: BRING had 2 671 employees in Sweden in 2014, and they had in total over 40 offices in Sweden. It also shows that the company’s business outside of Norway is under the BRING trade mark reproduced as and, in addition to Sweden, it is present also in Finland and Denmark. Page 15: Emphasis is placed on the importance to “(…) develop Sweden’s position as a natural hub for logistics moving into and out of the Nordic region”. Page 29: the revenue from foreign subsidiaries in 2014 was NOK 8 122 000 000 (approximately EUR 872 161 074). The applicant claims that due to the already described scale of its operations in Sweden in comparison with other countries, it must be assumed that a large part of the revenue comes from BRING operations in Sweden. Page 66: The Logistics division for the Nordic region is described and Sweden is described as an important centre for customers throughout the Nordic region.

11 Annual Report for Posten Norge 2015 of which the applicant highlights the following: ‘BRING is one of the Nordic region’s largest suppliers of mail and logistics services’ (Page 7); BRING has 2 661 employees in Sweden (Page 8); Revenue from foreign subsidiaries (not defined) is NOK 8 845 000 000 (approximately EUR 949 798 658) (Page 52).

12 Financial Report for 2016 of which the applicant highlights the following information: Page 4: Revenue from foreign subsidiaries is NOK 9 962 000 000 (approximately EUR 1 069 000 000); Page 6: ‘Bring’ is one of the Nordic region’s largest suppliers of postal and logistics services’. Posten Norge and Bring were official suppliers of the postal and logistics services to the Youth Olympic Games in Lillehammer, Norway.

13 Financial Report 2017 of which the applicant highlights the following: Page 3: Revenue from foreign subsidiaries is NOK 9 496 000 000 (approximately EUR 1 019 000 000); Page 4: 3417 employees in Sweden; Page 68: Table of revenues for Posten Norge in Norway and other countries. It is explained in a footnote that ‘Other countries mainly constitute other Nordic countries’. On page 4 it states ‘The Bring brand, which serves enterprises throughout the Nordic region: Bring transports consignments, large and small, throughout the Nordic region and the rest of the world’.

14 Press release dated 23/03/2018 and titled Posten Norge selger svenske Bring Citymail – Grafkom.no. (Posten Norge sells Swedish Bring Citymail). It is mentioned that Posten Norge bought Citymail in 2002 and in 2017 turnover was app. 2 billion Norwegian kroner). Last year Bring Citymail had 3600 employees.

15 Presentation based on the survey regarding the awareness of the trade mark Bring realised in 2017 by IPSOS Brand Tracker company market in Norway, Sweden and Denmark.

 Pages 3, 7 – 9 contain a brand tracker survey with information about the perception of BRING in Sweden in 2017. BRING is ranked number four among logistic businesses in Sweden.

 Page 8 shows that the unaided knowledge of BRING is 37% (Which post and logistic business in the Nordics do you know of? With post and logistic business we mean a business which offers services within transport, warehousing, logistics, delivery of mail and dialogue marketing), whereas aided knowledge is 75% (Which of the following post and logistic businesses in the Nordics do you know of?).

 17% of the respondents had used BRING during the last year (Which of the following post and logistic businesses have you or your company used the last year?).

 3 out of 4 (75%) replied that they know BRING as a post and logistic business in the Nordic countries.(Which of the following post and logistic businesses in the Nordic countries do you know?).

 Page 9 shows the development of aided knowledge for BRING from 2013 until 2017, from 67% in 2013 to 75% in 2017. The applicant’s conclusion is that the brand tracker report shows that while 2 out of 3 Swedes knew BRING in 2013, this had increased to 3 out of 4 by 2017.

16 Summer Olympic Games – article from Wikipedia edited for the last time on 08/05/2019.

17 IHF World Men's Handball Championship - article from Wikipedia edited for the last time on 05/04/2019.

18 European Men's Handball Championship - article from Wikipedia edited for the last time on 10/12/2018.

19 IHF World Women's Handball Championship - article from Wikipedia edited for the last time on 24/02/2019.

20 European Women's Handball Championship - article from Wikipedia edited for the last time on 17/12/2018.

21 Print screen from Aftonbladet's page for the Women's World Championship in handball 2017 showing the team members wearing equipment on which the mark appears as .

22 Print screen from www.Aftonbladet.se (posted on 23/12/2014) in Swedish showing the handball players wearing equipment on which the mark appears as . The title of the post is Många såg bronsmatchen’ (‘So many saw the bronze match’) and mentions that on Sunday, the Swedish National Handball Team secured a bronze in the European Championship after victory over Montenegro – the second tournament medal ever for the women’s team. At the most, 599 000 TV viewers were calculated by MMS (Media Measurement in Scandinavia) to have seen the bronze match on TV4, writes the Swedish Handball Federation in a press release. However, even more viewers saw Friday’s semi-final against the coming European Champions Norway. During the second-half as many as 774 000 viewers were measured to have watched the match’.

23 Press release dated 18/12/2017 from the Swedish Handball Federation ‘1,2 million Swedes saw the semifinal’.

24 Excerpt from Aftonbladet dated 29/01/2018 ‘Handbolls-EM blev en tittarsuccé’ (‘Handball Euros was a viewer success’). The last sentence of the first paragraph states: ‘Sunday’s finale was followed by more than 1 million viewers in average’. The last sentence of the third paragraph states: ‘The viewer figures topped at 1.6 million during yesterday’s finale, and the thrilling end to the semi-final against Denmark tempted 1.4 million viewers’. The applicant explains that Sweden has a total population of more than 10 million, so more than 10% of the population watched these matches, and inter alia saw the BRING logo on the shirts of the players.

25 Article from Wikipedia about Austria.

26 Article from Wikipedia about Sweden.

On 23/05/2019 the applicant submitted updated evidence of the status of the three earlier rights from the database of EUIPO, TMview and Madrid Monitor as exhibits 27-35.

On 02/10/2019 the EUTM proprietor requested the partial surrender of the EUTM and limited the list of goods and services as follows:

Class 9 Computer software for mobile devices and computers for allowing businesses and corporations to analyse, coordinate, report in real-time, provide resource utilisation and delivery planning, in relation to its order and delivery operations.

Class 42 Providing temporary use of non-downloadable software services provided to businesses and corporations for the analysis, coordination, reporting in real time, resource utilisation and delivery planning, in relation to its order and delivery operations; hosting of electronic databases for others; Application Service Provider (ASP), namely, hosting software as a service; online provision of non-downloadable web-based software for the analysis, coordination, reporting in real time, resource utilisation and delivery planning, in relation to its order and delivery operations.

The applicant maintained the request for cancellation against the remaining goods and services and all its previous claims. As to the financial materials, it claims that a large part of the applicant’s revenue outside of Norway pertains to Sweden, as can be seen when comparing the size of the BRING business in Sweden with Finland and Denmark. The applicant states that this is logically reflected in the revenue figures, of which the larger part must be assumed to pertain to Sweden. The applicant reiterated that the Office has already held that BRING has a normal degree of distinctiveness throughout the European Union (including the United Kingdom, Ireland and Malta where English is an official language) for transport services (see Opposition Decision No. B 1 827 834).

In its final replies the EUTM proprietor reiterated its previous arguments. In particular the EUTM proprietor highlighted that a large amount of the evidence filed by the applicant merely ‘indicate use within a narrow range of limited geographical significance and relating solely to the provision of pure transport and logistic services’. Moreover, much of the financial material bears no clear relationship to any particular mark as allegedly used and suffers from a high degree of repetition. Furthermore, the EUTM proprietor stresses the lack of distinctiveness of the word ‘Bring’ and states that the assessment of descriptiveness must be made in relation to any of the official languages of the EU and that, in this case, the assessment should be made in relation to the English language and that the use of the marks in Sweden or other Nordic countries, no matter how substantial, would not remove the lack of distinctiveness existing in relation to the English speaking public.

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

 

The applicant claimed that the earlier marks have a reputation in Sweden in relation to Class 39 services: transport; logistics, namely packaging and storage of goods, packaging of goods before sending, distribution of goods; courier services, mail delivery services. 

From the outset it has to be clarified that the Earlier Marks are international registrations designating the EU not only Sweden. Consequently, the reputation claimed by the applicant in relation to all the earlier marks cannot be restricted only to Sweden but it has to be claimed and proved in relation to the whole EU territory. Whether a local reputation of the earlier marks in Sweden as Member State is sufficient to consider that the reputation is proven at EU level is a question that will be answered further in the decision, if necessary.

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) Reputation of the earlier trade mark

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

 

In invalidity proceedings, an invalidity applicant relying on reputation must prove that its earlier right has acquired reputation by the filing date of the contested EUTM, taking account, where appropriate, of any priority claimed (Article 60(1) EUTMR, second subparagraph).

 

In addition, the reputation of the earlier mark must still exist at the time when the decision on the invalidity request is taken, given that the conditions set out in the first subparagraph of Article 60(1) EUTMR are formulated in the present tense. Therefore, the applicant should also prove the reputation of the earlier mark at the time of filing of the invalidity request, in which case, and unless there is proof to the contrary, the Cancellation Division will assume that it continues to exist at the time when the decision on invalidity is taken.

 

The contested trade mark was filed on 26/09/2017. Therefore, the applicant was required to prove that the trade marks on which the application is based have acquired a reputation in the European Union prior to that date and that it continued to exist at the time of filing of the invalidity request, that is, on 03/08/2018. The evidence must also prove that the reputation was acquired for the services for which the applicant has claimed reputation, namely:

 

Class 39: Transport; logistics, namely packaging and storage of goods, packaging of goods before sending, distribution of goods; courier services, mail delivery services. 

 

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

 

On 03/08/2018, 15/05/2019 and 23/05/2019 the applicant submitted the evidence listed above in the section ‘Summary of the parties’ arguments and evidence’.

 

Assessment of the evidence

Having evaluated all the documents listed above, the Cancellation Division concludes that an overall assessment of the evidence does not clearly indicate that the Earlier Marks have acquired a reputation in the relevant territory, for the services on which the application is based and for which the applicant claimed reputation.

As already stated above, reputation requires recognition of the Earlier Marks by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the marks, including whether they do or do not contain an element descriptive of the services for which they have been registered; the market share held by the marks; how intensive, geographically widespread and long-standing use of the marks has been; the amount invested by the undertaking in promoting the marks; the proportion of the relevant section of the public that, because of the marks, identifies the services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see to that effect, judgement of 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

Furthermore, it must be recalled that, as follows from Article 95(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the Earlier Marks enjoy reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the applicant. Exceptions to this rule apply where particular facts are so well-established that they can be considered as universally known and, thus, are also presumed to be known to the Office (e.g. the fact that a particular country has a certain number of consumers, or the fact that food products target the general public). However, whether or not a mark has passed the threshold of reputation established by the Court in General Motors (14/09/1999, C‑375/97, Chevy, EU:C:1999:408) is not in itself a pure question of fact, since it requires the legal evaluation of several factual indications, and, as such, the reputation of the earlier mark may not be simply assumed to be a universally known fact.

The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the marks are known by a significant part of the public (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SALSA (fig.) et al.).

In the present case, except for the documents and some of the screenshots under Exhibits 16-25, the evidence consists primarily of documentation emanating from the applicant and there is insufficient information from independent third parties that could serve to corroborate the applicant’s statements and reflect in a clear and objective manner the degree of recognition of the Earlier Marks among the relevant public in relation to the services for which reputation was claimed.

It has to be noted from the outset that the document in Exhibit 9 contains a list of the evidence submitted on 15/05/2019, whereas the documents under 27-35 filed on 23/05/2019 are extracts from databases regarding the earlier marks. As such they bear no relevance to the assessment of the alleged reputation of the Earlier Marks.

Some of the documents originate from the applicant itself like the annual reports or printouts (Exhibits 1, 2, 3, 7, 8, 9, 10, 11 and 14) but also the presentation regarding the brand awareness of Bring (Exhibit 15).

Regarding the annual reports the turnovers refer to the Nordic region comprising, apart from Norway, also Sweden, Denmark and Finland, the turnovers for the latter three being globally referred to in the annual reports, according to the applicant, as revenue from ‘foreign subsidiaries’.

It is noted that the turnovers from ‘foreign subsidiaries’ are significant. The applicant claims that due to the already described scale of its operations in Sweden in comparison with other countries, it must be assumed that a large part of the revenue comes from BRING operations in Sweden. Be that as it may, it is not clear from the respective evidence exactly for which services from the ones for which the reputation has been claimed, the respective turnovers refer to. For example, Exhibits 10 (in page 10) and 11 (page 8) mention that the activities under the mark Bring in Sweden are the following: Freight transport by road, sea, air or rail, express logistics and courier services, temperature-controlled logistics services, parcel distribution, development and operation of complete supply chains for companies, warehousing solutions, distribution of letters, goods and advertising, customer dialogue and CRM. And in the same Exhibits, pages 9 and 8 respectively, it states: since it was launched in 2008, Bring has established itself as a well-known, strong and preferred brand in the Nordic market, and today is one of the Nordic region’s biggest suppliers of mail and logistics services. Therefore, it is not clear from the breakdown of the revenue in these reports what percentage of such revenue should be attributed to the latter services for which the mark Bring is supposedly a well-known, strong and preferred brand and which proportion of the turnovers are attributed to the rest of the services mentioned above. (emphasis added)

The presentation from Exhibit 15 contains important information regarding the brand awareness for Bring in, amongst other countries, Sweden, based on the survey done by IPSOS Brand Tracker company market in Norway, Sweden and Denmark. However, on its own and in the absence of additional independent and objective evidence (i.e. the actual survey) this information cannot support the applicant’s claims as to the degree of recognition of the Earlier Marks among the relevant consumers.

Opinion polls and market surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitors’ goods. Their probative value is determined by the status and degree of independence of the entity conducting them, by the relevance and accuracy of the information they provide, and by the reliability of the method applied.

More particularly, in evaluating the credibility of an opinion poll or market survey, the Office needs to know the following:

1. Whether or not it has been conducted by an independent and recognised research institute or company, in order to determine the reliability of the source of the evidence (27/03/2014, R 540/2013-2, Shape of a bottle (3D), § 49).

2. The number and profile (sex, age, occupation and background) of the interviewees, in order to evaluate whether the results of the survey are representative of the different kinds of potential consumers of the goods/services in question.

3. The method and circumstances under which the survey was carried out and the complete list of questions included in the questionnaire. It is also important to know how and in what order the questions were formulated, in order to ascertain whether the respondents were confronted with leading questions.

4. Whether the percentage reflected in the survey corresponds to the total amount of persons questioned or only to those who actually replied.

Unless the above indications are present, the results of a market survey or opinion poll should not be considered of high probative value, and will not in principle be sufficient on their own to support a finding of reputation. The presentation provided in Exhibit 15 lacks most of the information enumerated above and, therefore, its probative value is significantly diminished. The submission of the actual survey itself would have been more helpful in establishing whether or not the presented survey’s results are indeed obtained objectively and are therefore reliable.

As illustrated above, the applicant failed to put forward sufficient facts and evidence that would allow for a positive finding of reputation of the Earlier Marks other than resorting to many assumptions and suppositions. The Cancellation Division would have to make assumptions from the annual and financial reports as regards the territories and particular services to which the mark Bring’s awareness relates and would have to assume that the survey regarding the brand awareness was done in an objective manner and it is representative for the targeted consumers.

As regards the Wikipedia articles, the Courts have considered that they must be treated with caution, given that collective online encyclopaedias lack certainty as their content can be amended at any time and, in certain cases, by any visitor, even anonymously (18/06/2013, T-338/12, K9 products, ECLI:EU:T:2013:327, § 32; 10/02/2010, T- 344/07, Homezone, ECLI:EU:T:2010:35, § 46; 16/11/2011, T-500/10, DORMA, ECLI:EU:T:2011:679, § 55). Apart from their generally low probative value, in this particular case they offer very general information about sporting activities (handball) in Sweden or worldwide, the Summer Olympic games or about countries in general (Austria and Sweden).

Admittedly, there is some evidence from independent sources (exhibits 21-24) which proves that the mark Bring was indeed a sponsor of the Swedish national handball teams (masculine and feminine) and that the mark appeared on the players’ equipment when playing in the European Championships of 2014, 2017 or 2018 and World Championship of 2017. However, there is still missing information about the intensity of such collaboration or sponsoring activities with the respective national teams or federations. There is some information about the audience or viewers of particular games played by the teams wearing equipment bearing the Bring sign. The number of viewers provided by these articles showing that between 599 000 and 1.6 million people from supposedly Scandinavian countries or Sweden only is, however, insufficient on its own to conclude that the sign, appearing amongst others on the sporting equipment of the respective players, has acquired a reputation in the EU.

The level of knowledge required for the purposes of Article 8(5) EUTMR cannot be defined in the abstract, but should be evaluated on a case-by-case basis, taking into account not only the degree of awareness of the mark, but also any other fact relevant to the specific case, that is, any factor capable of giving information about the performance of the mark in the market.

Consequently, since the evidence concerning revenue and awareness does not provide a clear picture of the sales volumes and knowledge related to the Earlier Marks and also originates from the applicant itself and since the other evidence submitted, despite showing the use and promotion of the earlier marks, is insufficient to show the commercial dimension and intensity of such use, advertising or sponsoring, the evidence in its entirety does not show that the Earlier Marks are known by a significant part of the relevant public in the European Union (including in Sweden as claimed by the applicant) in relation to any of the services covered in Class 39.

Under these circumstances, the Cancellation Division concludes that the applicant failed to prove that its Earlier Marks have a reputation. As seen above, it is a requirement for the invalidity application to be successful under Article 8(5) EUTMR that the Earlier Marks have a reputation. Since it has not been established that the Earlier Marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the invalidity must be rejected as regards this specific ground.

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 goods and services

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

The services on which the application is based are the following: 

Class 39: Transport; logistics, namely packaging and storage of goods, packaging of goods before sending, distribution of goods; courier services, mail delivery services.

The contested goods and services are the following: 

Class 9: Computer software for mobile devices and computers for allowing businesses and corporations to analyse, coordinate, report in real-time, provide resource utilisation and delivery planning, in relation to its order and delivery operations.

Class 42: Providing temporary use of non-downloadable software services provided to businesses and corporations for the analysis, coordination, reporting in real time, resource utilisation and delivery planning, in relation to its order and delivery operations; hosting of electronic databases for others; Application Service Provider (ASP), namely, hosting software as a service; online provision of non-downloadable web-based software for the analysis, coordination, reporting in real time, resource utilisation and delivery planning, in relation to its order and delivery operations.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. 

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

As a preliminary remark, according to Article 33(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

The Earlier Marks cover services for the transport of people or goods from one place to another by rail, road, water or air and services necessarily connected with such transport, as well as the storing of goods in any kind of storage facility, warehouses or other types of building for their preservation or guarding.

The applicant stated that ‘the limited goods and services of the contested mark are similar to the services of the earlier marks. The intended purpose – facilitating the transport and delivery of goods – is the same. The goods and services are complementary. Transport and logistics providers offer digital solutions for their customers, and this is increasingly an important part of an overall transport and logistics service.(…) As a logical consequence, the goods and services of the contested mark are also provided through the same distribution channels as the transport and logistics services in the earlier marks. Both the goods and services of the contested mark and the services in the earlier marks comprise the same business consumers, and also the usual origin of the goods and services are the same.’

The Cancellation Division does not agree with the applicant.

The contested goods in Class 9 are specialised software for companies that want to analyse, coordinate, report in real-time, provide resource utilisation and delivery planning, in relation to their order and delivery operations. The contested services in Class 42 are IT services. All the contested goods and services are dissimilar to the applicant’s services in Class 39.

In particular, the contested goods in Class 9 and the applicant’s services in Class 39 are different in nature, since services are intangible whereas goods are tangible.

Furthermore, transport and logistics services are directed at the general public (passengers) or businesses that need transportation of goods/freight forwarding from point A to B and that seek an external provider to do that. The contested software goods (Class 9) and IT services (Class 42) are designed to allow businesses and corporations to analyse, coordinate, report in real-time, provide resource utilisation and delivery planning, in relation to its order and delivery operations. It can be inferred that the contested software goods and IT services are to be used either by the transportation/logistics service provider or by a company that does not outsource transportation/logistics services from external providers but does it inhouse (within its corporate structure). It follows that the relevant publics do not coincide. By definition, goods/services intended for different publics cannot be complementary (22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48).

They, consequently, satisfy different needs, are distributed through different commercial channels and are not in competition with each other. Finally, their origin is different especially considering the massive difference in the technical equipment and expertise required for their production or provision. For Class 39 services’ provision the following would be necessary: a fleet of vehicles, a dispatch center, specific technical and IT infrastructure for logistics, warehousing etc., whilst for the production of the goods in Class 9 and the provision of the services in Class 42 what would be essential are the programming skills, servers and other IT equipment for the design and development of software etc.

On a side note, the Cancellation Division considers that although it could be argued that a company can develop, in-house, such IT tools for the analysis, coordination, reporting and other activities related to order and delivery operations, it is highly unlikely that such company would sell these tools to third parties.

Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected also on this ground.

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

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

Nicole CLARKE

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.