CANCELLATION No C 44 425 (INVALIDITY) 

 

TikTok Information Technologies UK Limited, Wework, 125 Kingsway, WC2B 6NH London, United Kingdom (applicant), represented by Taylor Wessing LLP, 5 New Street Square, EC4A 3TW London, United Kingdom (professional representative)

 

a g a i n s t

 

Chunhai Wu, C/ Almirante Antonio Gaztañeta, 4 - 6ºA, 48012 Bilbao / Bizkaia, Spain (EUTM proprietor), represented by Onofre Indalecio Sáez Menchón, Gran Via, 69 -4° Of. 412, 28013 Madrid, Spain (professional representative).

On 21/12/2020, the Cancellation Division takes the following

 

 

DECISION

1.	The application for a declaration of invalidity is partially upheld.
2.	European Union trade mark No 18 103 102 is declared invalid for some of the contested goods, namely: Class 9: Diving equipment; Information technology and audio-visual, multimedia and photographic devices; Recorded content; Cell phone covers; Carriers adapted for mobile phones; Chargers for mobile phones.; Class 25: Headgear; Footwear; Clothing.
3.	The European Union trade mark remains registered for all the remaining goods, namely: Class 9: Navigation, guidance, tracking, targeting and map making devices; Scientific research and laboratory apparatus, educational apparatus and simulators; Optical devices, enhancers and correctors; Apparatus, instruments and cables for electricity; Scientific and laboratory devices for treatment using electricity; Safety, security, protection and signalling devices; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers.

 

4.	Each party bears its own costs.

REASONS

 The applicant filed a request for a declaration of invalidity against European Union trade mark No 18 103 102   (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely against all the goods in Classes 9 and 25. The application is based the following earlier marks:

1. European Union trade mark registration No 17 913 677  (figurative mark); 

2. United Kingdom trade mark registration No 3 368 647 'TIK TOK' (word mark);

3. United Kingdom trade mark registration No 3 368 655 (figurative mark);

4. European Union trade mark registration No 17 913 208 'TIK TOK' (word mark);

5. European Union trade mark registration No 17 891 401 'TIK TOK' (word mark).

The applicant invoked  Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and also Article 59(1)(b) EUTMR.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant claims that there exists a likelihood of confusion between the marks at issue, and that the EUTM was filed in bad faith.

The EUTM proprietor did not file any arguments in reply.

 

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. 

 

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s  European Union trade mark registration No 17 913 677.

 

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 goods and services on which the application is based are the following: 

Class 9: Application software; Application software for smart phone; Downloadable computer software applications; Downloadable smart phone application (software); Covers for smartphones and mobile phones; Cases for smartphones and mobile phones; Protective cases for smartphones; selfie sticks used as smartphone accessories; holders adapted for smartphones, mobile phones; straps for smartphones, mobile phones; batteries; battery chargers; USB charges (battery chargers); USB cables; earphones; headphones; headsets; protective films adapted for smartphones, mobile phones; Other accessories designed for smartphones or mobile phones.

Class 25: Clothing; Hats; Socks; Scarfs; Gloves; Footwear [other than special footwear for the sports].

Class 35: Advertising and advertisement services; advertising agencies; on-line advertising on computer networks; pay per click advertising; preparing advertisements for others; dissemination of advertising matter; advertising through all public communication means; sales promotion for others; advice in the field of business management and marketing; search engine optimization for sales promotion; providing and rental of advertising space on the internet; business advice and information; assistance in management of business activities; commercial information agency services; providing business information via a website; personnel management consultancy; updating and maintenance of data in computer databases.

Class 38: Providing access to internet application services for communications; SMS/application message sending services via PC (personal computer); Transmission of application information via internet; Providing access to search services of smart phone applications; Communication via virtual private networks [VPN]; Electronic delivery of images and photographs via a global computer network; Data transmission and telecommunication services; Telecommunications services for providing access to data/sound or images; Transmission of text/photo/video via the smart phone application; Transmission of information via applications for smart phones; Transmission, broadcasting and reception of audio, video, still and moving images, text and data; Transfer of data via on-line services; providing access to Peer-to-peer (P2P) sharing services; Providing access to a video sharing portal.

Class 41: Presentation of music videos via mobile device on online; Providing of on-line electronic publications (not downloadable) via mobile devices; Multimedia publishing of printed matter, books, magazines, journals, newspapers, newsletters, tutorials, maps, graphics, photographs, videos, music and electronic publications; Electronic publication of information on a wide range of topics on-line; Entertainment and amusement information via internet online.

Class 42: Provision of software applications through a website; Hosting on-line web facilities for others for sharing on-line content; Hosting platforms on the Internet; Computer programming; Computer software design; Electronic data storage; Software as a service (SAAS) services; Cloud computing; Hosting a website for the electronic storage of digital photographs and videos; Hosting digital content on the Internet; Hosting multimedia entertainment content; Hosting of multimedia and interactive applications; Web site hosting services.

Class 45: On-line social networking services.

The contested goods are the following: 

 

Class 9: Navigation, guidance, tracking, targeting and map making devices; Scientific research and laboratory apparatus, educational apparatus and simulators; Optical devices, enhancers and correctors; Apparatus, instruments and cables for electricity; Scientific and laboratory devices for treatment using electricity; Safety, security, protection and signalling devices; Diving equipment; Information technology and audio-visual, multimedia and photographic devices; Recorded content; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers; Cell phone covers; Carriers adapted for mobile phones; Chargers for mobile phones.

Class 25: Headgear; Footwear; Clothing.

Contested goods in Class 9

The contested goods chargers for mobile phones overlap with the applicant’s goods battery chargers and are therefore identical.

The contested goods recorded content overlap with the applicant’s goods application software and are therefore identical.

Cell phone covers are identically included in both lists of goods (incl. synonyms).

The contested goods carriers adapted for mobile phones overlap with the applicant’s goods holders adapted for smartphones, mobile phones and are therefore identical.

The contested goods information technology and audio-visual, multimedia and photographic devices are similar to applicant’s goods application software as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested diving equipment which covers clothing articles such as diving suits and diving gloves is lowly similar to Clothing in Class 25 as they have the same nature. They usually coincide in relevant public and method of use.

The remaining contested goods navigation, guidance, tracking, targeting and map making devices; scientific research and laboratory apparatus, educational apparatus and simulators; optical devices, enhancers and correctors; apparatus, instruments and cables for electricity; scientific and laboratory devices for treatment using electricity; safety, security, protection and signalling devices; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers are dissimilar to the applicant’s goods and services. They have different nature, purposes and methods of use, they are neither in competition nor complementary in the sense that one is indispensable for the use of the other. Moreover, they are provided by different undertakings with expertise in completely different areas.

Contested goods in Class 25

The contested goods clothing; are identically included in the applicant’s lists of goods.

The contested headgear includes as a broader category the applicant’s hats and the contested footwear includes as a broader category the applicant’s Footwear [other than special footwear for the sports]. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to those of the applicant.

 

b) 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 identical or similar (to a low degree) are directed at the public at large. The degree of attention may vary from average to high, depending on the nature, characteristics, the frequency of purchase and their price (i.e. higher degree of attention in relation to information technology and audio-visual, multimedia and photographic devices).

c) The signs

 

Earlier trade mark	Contested sign

 

The relevant territory is  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 mark is a purely figurative sign composed of a black rectangle on which a figurative device looking like a stylised musical note is positioned centrally in white colour and outlined by turquoise and pink colour. The contested mark combines a nearly identical figurative element with the addition of the verbal elements ‘Tik Tok’ placed below the figurative device of a musical note.

The representation of a musical note included in both signs may allude to the nature of some of the goods, namely the goods information technology and audio-visual, multimedia and photographic devices and the applicant’s application software as they are sound/music-related. In this sense, it has a lower than average degree of distinctiveness in relation to the mentioned relevant goods. For the remaining goods the representation of a musical note is however distinctive to an average degree. The black rectangle included in both of the marks is a simple geometric shape. It is well established case-law that the relevant public will not attribute any particular importance to simple geometrical shapes and as such this element lacks any distinctive character.

The element ‘Tik Tok’ of the contested sign may be associated with the English onomatopoeia ‘ticktock’ for the sound made by an analogue clock by a part of the public, namely the English speaking part of the public. It also has in a wider sense the concept of time passing for the same public. For the remaining part of the public this element is meaningless. Irrespective of whether understood or not, since this expression has no meaning in relation to the relevant goods, its distinctiveness is normal.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements. 

Visually, the marks show clear coincidences since both are composed of a nearly identical representation of a musical note. The signs differ in the fact that in the rectangle of the earlier mark the corners are sharp while in the contested mark they are somehow rounded. However, these differences will go unnoticed by the relevant public as consumers do not analyse the marks into very specific and hardly perceptible details. The main difference between the marks is the additional verbal element ‘Tik Tok’ of the contested mark. Nevertheless, despite this difference, the marks share an identical logo which, in the earlier mark, represents the entirety of the sign and in the contested sign occupies a position which is clearly noticeable due to its size, its central position in the sign and the depiction above the verbal element ‘TikTok. Although, the device may display an allusive connotation in respect of some of goods at issue, namely Information technology and audio-visual, multimedia and photographic devices and the applicant’s application software as it contains an indirect reference to the nature and characteristics of these goods, the fact remains that the essential characteristics of the earlier mark are reproduced in the contested mark and the marks convey an impression of similarity, due to the fact that they share an identical device.

Furthermore, where a sign consists of both figurative and verbal elements, it does not automatically follow that it is the verbal element which must always be considered to be dominant (24/11/2005, T-3/04, KINJI by SPA, EU:T:2005:418, § 45; 13/12/2007, T- 242/06, El charcutero artesano, EU:T:2007:391 § 55). In the case of a composite mark, the figurative element may, in particular on account of its shape, size, colour or position in the sign, rank equally with the word element (03/05/2017, T-681/15, Représentation d’une tête de loup (fig.) / Wolf Jardin (fig.) et al., EU:T:2017:296, § 46).

Accordingly, the marks are considered to be visually similar to an average degree.

Aurally, purely figurative marks are not subject to a phonetic assessment. As the earlier mark is purely figurative, the aural comparison is deemed not to affect the degree of similarity of the signs at issue (30/09/2015, T-364/13, Kajman / Device of a crocodile et al., EU:T:2015:738, § 45; 26/04/2016, T-21/15, Dino / Device of a dinosaur, EU:T:2016:241, § 75).

Conceptually, there is a link between the signs as they reproduce the concept of the same musical device. As mentioned above, the word ‘Tik Tok’ in the contested mark may be seen by the English speaking part of the public as an onomatopoeia for the sound made by an analogue clock. For the remaining part of the public, this element is however meaningless.

Taking into account the resemblances, namely the concept of a musical note (and the conceptual differences for a part of the public), the degree of conceptual similarity varies from below to average, depending on the weight attributed to this component, as explained above.

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

d) 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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark can evoke the concept of a musical note and, therefore, it can be considered allusive in respect of the goods application software. However, in the Cancellation Division’s view, even if this image might be perceived as allusive to some of the goods in Class 9, it does not imply that this figurative element does not possess a certain degree of distinctive character, which, in the present case, is lower than average.

In relation to the remaining goods, the earlier mark as a whole has no meaning from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion 

The contested goods are partly identical, partly similar and partially dissimilar to the applicant’s goods and services. The relevant goods are directed at the public at large and the degree of attention may vary from average to higher than average. The earlier mark has a normal degree of distinctiveness for some of the goods and lower than average degree of distinctiveness for the remaining goods.

As stated above, the marks are visually similar to an average degree, while they cannot be compared aurally. The degree of conceptual similarity varies from below to average, depending on the weight attributed to this component, as explained above.

The visual similarity, caused by the identical reproduction of the earlier mark’s figurative element in the contested mark, and which is not counteracted by any phonetical difference, is the decisive factor. As also explained above, even if the representation of a musical note might be perceived as allusive to some of the goods at issue, it does not imply that the earlier mark does not possess a certain degree of distinctive character. In addition, while the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one of a number of elements entering into that assessment. Even in a case involving an earlier mark of weak distinctive character, on the one hand, and a contested sign which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services in conflict (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

Two marks are similar when, like in the case at hand, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, aural and conceptual aspects (23/10/2002, T-6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30; 26/01/2006, T 317/03, Variant, EU:T:2006:27, § 46; 12/09/2007, T 363/04, La Española, EU:T:2007:264, § 98).

As the Court has pointed out, where a composite mark is composed by juxtaposing one component and another trade mark, that latter mark, even if it is not the dominant element in the composite mark, may still have an independent distinctive role in the composite mark. In such a case, the composite mark and that other mark may be considered to be similar (see, to that effect and by analogy, 06/10/2005, C 120/04, Thomson Life, EU:C:2005:594, § 30 and 37; 01/07/2009, T 16/08, Center Shock, EU:T:2009:240, § 44).

In the present case, there can be no dispute over the overall similarity of the signs. The contested sign clearly reproduces the applicant’s figurative mark. Taking into account that the marks at issue display important visual and conceptual similarities since they are nearly identical on account of the fact that the earlier mark is entirely included and reproduced in the contested mark, and that the earlier mark still has an independent distinctive role in the contested mark, the Cancellation Division concludes that the difference in the additional verbal element ‘Tik Tok’, even though it will not go unnoticed by the relevant public, is not sufficient to rule out a likelihood of confusion.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, the average consumers (even those with higher than average degree of attention), upon encountering the same figurative element on similar products, may assume that the undertakings responsible for the production of goods are economically linked.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s EUTM trade mark registration No 17 913 677.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to those of the earlier trade mark and even for the ones found to be similar to a low degree.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the application based on this article and directed at these goods cannot be successful.

The applicant has also based its cancellation application on the following earlier trade marks:

 European Union trade mark registration No 17 891 401 'TIK TOK' (word mark), registered for the following goods and services:

Class 9: Covers for smartphones and mobile phones; Cases for smartphones and mobile phones; Protective cases for smartphones; selfie sticks used as smartphone accessories; holders adapted for smartphones, mobile phones; straps for smartphones, mobile phones; batteries; battery chargers; USB charges (battery chargers); USB cables; earphones; headphones; headsets; protective films adapted for smartphones, mobile phones; Other accessories designed for smartphones or mobile phones.

Class 25: Clothing; Hats; Socks; Scarfs; Gloves; Footwear [other than special footwear for the sports].

Class 38: Advertising and advertisement services; advertising agencies; on-line advertising on computer networks; pay per click advertising; preparing advertisements for others; dissemination of advertising matter; advertising through all public communication means; sales promotion for others; advice in the field of business management and marketing; search engine optimization for sales promotion; providing and rental of advertising space on the internet; business advice and information; assistance in management of business activities; commercial information agency services; providing business information via a website; personnel management consultancy; updating and maintenance of data in computer databases.

Class 41: Provision of software applications through a website; Hosting on-line web facilities for others for sharing on-line content; Hosting platforms on the Internet; Computer programming; Computer software design; Electronic data storage; Software as a service (SAAS) services; Cloud computing; Hosting a website for the electronic storage of digital photographs and videos; Hosting digital content on the Internet; Hosting multimedia entertainment content; Hosting of multimedia and interactive applications; Web site hosting services.

Class 45: On-line social networking services.

 European Union trade mark registration No 17 913 208 'TIK TOK' (word mark), registered for the following goods and services:

Class 9: Covers for smartphones and mobile phones; Cases for smartphones and mobile phones; Protective cases for smartphones; selfie sticks used as smartphone accessories; holders adapted for smartphones, mobile phones; straps for smartphones, mobile phones; batteries; battery chargers; USB charges (battery chargers); USB cables; earphones; headphones; headsets; protective films adapted for smartphones, mobile phones; Other accessories designed for smartphones or mobile phones.

Class 25: Clothing; Hats; Socks; Scarfs; Gloves; Footwear [other than special footwear for the sports].

Class 35: Advertising and advertisement services; advertising agencies; on-line advertising on computer networks; pay per click advertising; preparing advertisements for others; dissemination of advertising matter; advertising through all public communication means; sales promotion for others; advice in the field of business management and marketing; search engine optimization for sales promotion; providing and rental of advertising space on the internet; business advice and information; assistance in management of business activities; commercial information agency services; providing business information via a website; personnel management consultancy; updating and maintenance of data in computer databases.

Class 42: Provision of software applications through a website; Hosting on-line web facilities for others for sharing on-line content; Hosting platforms on the Internet; Computer programming; Computer software design; Electronic data storage; Software as a service (SAAS) services; Cloud computing; Hosting a website for the electronic storage of digital photographs and videos; Hosting digital content on the Internet; Hosting multimedia entertainment content; Hosting of multimedia and interactive applications; Web site hosting services.

Class 45: On-line social networking services.

Since these marks cover essentially the same (or even a narrower) scope of goods and services, the outcome cannot be different for goods for which the cancellation application has already been rejected. Therefore, there is no likelihood of confusion for those goods.

 

Finally, the applicant has also based its cancellation application on:

 UK trade mark registration No 3 368 655 (figurative mark) and the UK trade mark registration No 3 368 647 ‘TIKTOK’ (word mark), both registered for the following goods and services:

Class 6: Badges; clasps; buckles; chains; chain links; keys; key rings, metal; hooks; pins; spurs; plaques.

Class 8: Table cutlery made from precious metals.

Class 9: Glasses; spectacle glasses; sunglasses; protective glasses and cases therefor; parts and fittings for all the aforesaid goods.

Class 14: Jewellery; imitation jewellery and precious stones; precious metals; badges; cufflinks; figurines; buckles; key rings; pins made from precious metals; pendants; finger rings; necklaces; bracelets; chains made from precious metals; clocks; watches and horological instruments; pendants; bracelets; key chains; parts and fittings for all the aforesaid goods.

Class 16: Printed matter; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; printed publications; periodical publications; books, brochures; newspapers; magazines; journals; comics, stationery; labels; stickers; decalcomanias; posters; ring binders; calendars; address books; diaries; annuals; notebooks; autograph albums; photo albums; cards; greeting cards; catalogues; programmes; writing paper; folders; envelopes; pads; notepads; stamps and stamp pads; writing implements; letter paper; drawing materials; napkins of paper; rubber erasers; pens; pencils; erasers; rulers; pencil sharpeners; staplers; paper hole punches; highlighter pens; felt-tip pens; glue sticks for stationery purposes; mats [coasters] of card; tablecloths of paper; wrapping paper; napkins; bags of paper or plastic material; pins; parts and fittings for all the aforesaid goods.

Class 18: Trunks and travelling bas; articles of luggage being bags; bags; baggage; travel baggage; travel bags; weekend bags; work bags; toiletry cases sold empty; tool bags [empty]; sports bags; shopping bags; bags for clothes; bags made of leather; bags made of imitation leather; bags made of plastic; money bags; school bags; shoe bags; suitcases; rucksacks; back packs; purses; wallets; cosmetic cases; make up bags; cosmetic bags; handbags; school satchels.

Class 20: Furniture; mirrors; picture frames; bedding (except linen); cushions; bolsters; bins of wood or plastic; magazine racks; beds; bunk beds; wardrobes; desks; chests of drawers; pillows; chairs; chest for toys; coat hangers; figurines and statuettes of wood, wax, plaster or plastic; nameplates; statues of wood, wax, plaster or plastic; parts and fittings for all the aforesaid goods.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; hair brushes; drinking glasses; mugs; drinking cups; brushes; egg cups; food trays; coasters (tableware); drink coasters [other than of paper or table linen]; plastic coasters; dishes; bowls; plates; drinking vessels; lunch boxes; soap dispensers; coasters; toothbrushes; water bottles; plastic water bottles; tableware; moneyboxes; thermos flasks; bottle openers; horse brushes; paper drinking cups and plates; drinking straws; parts and fittings for all the aforesaid goods.

Class 24: Textiles; textile articles; textile piece goods, bed and table covers; bath linen; linen; cloth; bed linen; household linen; table linen; table cloths; pillow cases; sheets; eiderdowns; duvets; covers for eiderdowns and duvets; napery, napkins; serviettes; towels, face towels, flannels; traced cloth for embroidery, tapestry (wall hangings) of textile, curtains of textile or plastic; sleeping bags.

Class 26: Arm bands.

Class 28: Games and playthings; gymnastic and sporting articles; free-standing video games apparatus; decorations for Christmas trees; toys; balls for games; balls for play; balloons; dolls; board games; card games; ordinary playing cards; electronic games not included in other classes; play figures; action figures; automatic amusement apparatus; automatic gaming machines; clothing for toy figures; clothing for dolls; dolls accessories; computer games apparatus; construction games; construction toys; costume masks; pet toys; rocking horses; cuddly toys; surfboards; sail boards; surfboards; skateboards; inline skates; parts and fittings for all the aforesaid goods.

These marks cover goods and services that are clearly dissimilar to the applicant’s remaining goods. Therefore, the outcome cannot be different for goods for which the cancellation application has already been rejected. Therefore, there is no likelihood of confusion for those goods.

BAD FAITH — ARTICLE 59(1)(b) EUTMR

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.

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

In the present case, the applicant did not submit any arguments or evidence in support of its claim of bad faith. In these circumstances, the application must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Oana-Alina STURZA

Janja FELC

Vít MAHELKA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.