CANCELLATION No 25 241 C (INVALIDITY)

Shantou double eagle toys industry co., Ltd, Xingda Industrial Area, Chenghai District, Shantou City, Guangdong Province, People’s Republic of China (applicant), represented by José Izquierdo Faces, Calle General Salazar, Nº 10, 48012 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Aristocrat Technologies Australia Pty Ltd, Building A, Pinnacle Office Park, 85 Epping Road, North Ryde, NSW 2113, Australia (EUTM proprietor), represented by Bringer IP

1 Place du Président Thomas Wilson, 31000 Toulouse, France (professional representative).

On 21/05/2019, 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 an application for a declaration of invalidity against European Union trade mark No 17 652 108 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 28 Games of chance; gaming apparatus and equipment; gaming machines including electronic and electromechanical slot machines, lottery apparatus, fruit machines; and parts and fittings thereof; electronic gaming machines, namely, devices which accept a wager.

The applicant invoked Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant makes reference to the applicable law and the relevant Case-Law dealing with a possible bad faith on account of an applicant when filing an application for registration of a European Union trade mark. In particular, the applicant refers to Article 59(1)(b) EUTMR, Article 4(2) and Article 5(4)(c) EUTMD and judgment of 11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361. In its further observations the applicant follows the structure of analysing a bad faith case outlined in the latter judgment and provides information and evidence in relation to the relevant factors: (i) the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

The applicant claims that it is a manufacturer of toys and offers numerous products, including products with the trade mark ‘DOUBLE E’ (IR designating the EU) registered for goods in Class 28 (various kinds of toys and fishing tackles). In support of its claim the applicant submits catalogues with toys for the years 2013, 2014, 2016 and 2017 (DOC1, DOC2, DOC3 and DOC4).

The applicant argues that it attended as a participant the International Toy Fair in Nuremberg (Germany) in 2013. In support of this observation the applicant files photos of the stands set up by the applicant at the said event (DOC5).

Products of the applicant bearing the mark ‘DOUBLE E’ appeared in an article published in the magazine ‘HOBBY MERCHANDISER’ in October 2014 (DOC6).

The applicant submitted also invoices (DOC7, DOC8 and DOC9) demonstrating sales of toys.

The applicant continues its observations with a detailed analysis of the similarity between the signs ‘DOUBLE E’ and ‘DOUBLE DOUBLE’ and the goods that they cover and finds that they are confusingly similar.

In relation to the knowledge of the EUTM proprietor of the earlier mark the applicant states that ‘Fascinations Inc.’ was knowledgeable of the first and older ‘DOUBLE E’ trade mark since at least 2013, when the applicant attended the International Toy Fair in Nuremberg. Moreover, the applicant was using the trade mark ‘DOUBLE E’ on the internet, which is accessible by anyone, for offering its products.

In relation to the dishonest intention of the EUTM proprietor the applicant does not bring forward any arguments, information and/or evidence whatsoever.

Based on the above the applicant requests the invalidation of the EUTM and the costs of the proceedings to be borne by the EUTM proprietor.

The EUTM proprietor did not file any observations in reply.

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

General principles

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

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

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

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

Assessment of bad faith

As the applicant correctly states in its observations Case-law shows three cumulative factors to be particularly relevant for a finding of bad faith:

1. Knowledge of the use of an identical or confusingly similar sign: the EUTM owner knew or must have known about the use of an identical or confusingly similar sign by a third party for identical or similar products or services.

2. Dishonest intention on the part of the EUTM owner: this is a subjective factor that has to be determined by reference to objective circumstances (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 42).

3. Identity/confusing similarity of the signs.

It suffices to note that the applicant did not submit any arguments, facts, information and/or evidence in relation to the dishonest intention on the part of the EUTM proprietor when filing the contested EUTM, in order to reject the application for a declaration of invalidity under Article 59(1)(b) EUTMR. As stated above, the three factors particularly relevant for a finding of bad faith must be given cumulatively. In the absence of any of them bad faith cannot be found.

The probative value of the documents supposed to demonstrate that the EUTM owner knew or must have known about the use of an identical or confusingly similar sign by a third party for identical or similar products is extremely low, if at all any probative value can be attributed to them. The pictures submitted as DOC5 could have been taken anywhere in the world. Nothing suggests that they were taken at the Nuremberg international toy fair in 2013 and not in a toys store located in a completely different part of the world.

As to the article submitted as DOC6 it does not even mention the applicant (the origin of the toy displayed is attributed to a company called MRC) and does not show the sign ‘DOUBLE E’ or any other sign that resembles even remotely the contested EUTM. How is anyone supposed to get knowledge about the trade mark ‘DOUBLE E’ of the applicant and its possible use because of the article submitted as DOC6 remains absolutely unclear.

It is also not clear how the company ‘Fascinations Inc.’ is related to the EUTM proprietor and how the fact that ‘Fascinations Inc.’ might have allegedly known the earlier mark is relevant for the current proceedings.

Moreover, the arguments of the applicant in relation to this other major factor for a possible finding of bad faith, namely that the EUTM proprietor knew or must have known about the existence and use of the sign ‘DOUBLE E’ because of the participation of the applicant at a specialised toy fair in Nuremberg in 2013 or because the sign ‘DOUBLE E’ was used in relation to toys in the internet are not convincing at all. There is no information and/or evidence that the EUTM proprietor has been present at the same fair in 2013. The EUTM proprietor is an Australian company and filed the EUTM for registration in 2018. The EUTM is registered for generally-speaking gambling games, which are quite different from the applicant’s toys in many aspects. It can be safely concluded that the markets for toys and gambling games are very distinct from each other. That is, the companies cannot be considered competitors and there cannot be any valid and reasonable expectation for the EUTM proprietor to be interested in and to be aware of the economic activity of entities which are not even its competitors. There is absolutely no reason to believe that an Australian company wishing to operate in a distinct product market will be interested at all at what is going on at a toy fair in Europe taking place five years before the filing of the EUTM.

It is true that internet and the content published are in principle accessible for the entire public from everywhere. This does not mean, however, that each and every internet user is supposed to be familiar with any content published on the internet.

Conclusion

All in all, there is no valid evidence, not even a hint that the EUTM proprietor knew or must have known about the use of an identical or confusingly similar sign by a third party for identical or similar products when filing the EUTM. There is also absolutely no evidence related to a dishonest intention on part of the EUTM proprietor, when filing the EUTM.

The Cancellation Division concludes that the application for declaration of invalidity is manifestly unfounded and should 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 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

Martin LENZ

Plamen IVANOV

Liliya YORDANOVA

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.