CANCELLATION No 11 171 C (INVALIDITY)

 

Target Ventures Group Ltd., Trident Chambers, P.O. Box 146, Road Town, Tortola, British Virgin Islands (applicant), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008 Alicante, Spain (professional representative)

 

a g a i n s t

 

Target Partners GmbH, Kardinal-Faulhaber-Str. 10, 80333 Munich, Germany (EUTM proprietor), represented by Baker & McKenzie, Bethmannstr. 50-54, 60311 Frankfurt/Main, Germany (professional representative).

 

On 25/05/2017, 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 all the services, namely services in Classes 35 and 36, of European Union trade mark No 13 685 565 ‘TARGET VENTURES’, filed on 27/01/2015 and registered on 28/05/2015. The application is based on non-registered trade mark, trade name and company name ‘Target Ventures’ used in the course of trade in the United Kingdom and Germany for financial and monetary services pursuant to Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR and on a right to the name ‘Target Ventures’ under Article 53(2)(a) EUTMR in the United Kingdom and Germany.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that it was incorporated in January 2014 under the law of British Virgin Islands. It is a venture capital fund managing money from investors seeking private equity stakes in start-ups and other businesses. The services provided by the applicant include capital management and funding services. The applicant owns several websites containing in their domain names the words ‘targetventures’. In 2013 and the first half of 2014, the applicant’s activities were focused on the Russian market. The applicant claims that it expanded its business to the EU since December 2013 and invested millions of Euros and US dollars in four companies in Germany and one in the UK, which actions, according to the applicant, got some media coverage. In addition, the applicant’s partners maintained business relationships with a number of companies based in several EU countries, as is evidenced by the submitted affidavits and email correspondence. Moreover, the partners of the applicant company Mikhail Lobanov and Alexander Frolov participated in the NOAH conferences in London in 2013 and 2014. According to the applicant, the sign was used in a more than mere local significance in several EU countries, in particular in Germany. The applicant submits excerpts from German Trademark Act and contends that as a holder of company and trade name rights in Germany, it is in a position to prohibit the use of the contested mark pursuant to Sections 5(1) and (2) and 15(1), (2) and (4) of the German Trademark Act as the right of the applicant is prior to the filing date of the contested mark and there is a likelihood of confusion between the two signs. Finally, the applicant claims that the conditions of Passing Off are also fulfilled and the application should also be upheld on that basis.

 

The EUTM proprietor argues that the applicant did not show any significant use of the mark ‘Target Ventures’ in Europe before the filing of the contested mark, certainly not of more than mere local significance. Moreover, the applicant changed its company name from Target Ventures to Target Global and, thus, any potential right to the name Target Ventures have lapsed. In any case, none of the applicant’s alleged rights predates the right of the EUTM proprietor, who has been using the name Target Ventures since 2002. The EUTM proprietor contends that the use proven by the applicant consists essentially of investment into three companies in Hamburg and Berlin and one in Cheltenham, UK, in a period of six month before filing of the contested mark, which cannot be considered to be use of more than mere local significance. Moreover, the transactions showed by the applicant were done by Mr Frolov and Mr Lobanov. In addition, the applicant did not acquire any right by the presented use, because it does not provide services to third parties but merely makes its own investments. The EUTM proprietor also emphasizes the fact that the applicant did not present any accounting statements or finance contracts but relies largely on affidavits. The EUTM proprietor contends that the affidavits are not admissible evidence under Article 78(1)(f) EUTMR because they are not statements in writing sworn or affirmed as their untruthfulness is not penalized unless presented before a German Court, which the EUIPO is not. Moreover, the EUTM proprietor claims that some of those affidavits cannot be true, for example those affirming that the applicant contacted the people signed in the affidavits in November or December 2013, while the applicant itself states that it only started making business under the name Target Ventures in Europe in July 2014. Therefore, probative value of these statements is low. The EUTM proprietor insists that the first time the applicant became visible in Germany was in July 2015 when the Russian company Target Ventures hosted an event ‘Hello Berlin’ in Berlin. As for the change of name of the applicant, the EUTM proprietor submits the text from the applicant’s websites www.targetventures.vc and www.targetventures.eu when the applicant announces its change of name to Target Global. It claims that the protection of a company name lapses when use ceases. Finally, the EUTM proprietor puts forward arguments to show that it had been using the sign Target Ventures prior to the use of the applicant. It submits printouts from WHOIS internet domain register and copies of invoices of fees regarding the domain names www.targetventures.de and www.targetventures.com. It emphasizes that for a successful application of Article 8(4) EUTMR, the applicant would have to be able to prohibit the use of the contested mark, and since the EUTM proprietor has a better priority for the name Target Ventures in Germany, the applicant would not be able to prohibit the use of this name to the EUTM proprietor.

 

The applicant refers to the evidence previously submitted and insists that it demonstrates use of the applicant’s sign of more than mere local significance. It argues that the affidavits are admissible means of evidence and their probative value is not low because they were drawn up by third parties and they are supported by other evidence. It maintains that it acquired rights pursuant to both German and the UK national law. It refutes the EUTM proprietor’s argument about no use for third parties claiming that financial and investment services consist both of providing the services to investors by collecting their money and investing them on their behalf and of providing the services to the companies in which it invests by providing them with financial means they need. It argues that the EUTM proprietor already acknowledged that the applicant uses the name ‘target ventures’ in trade by sending cease and desist letter and applying for the preliminary injunction demanding the applicant to stop using the sign. As regards the applicant’s right to prohibit use of the contested mark, the applicant argues that the EUTM proprietor did not provide evidence of its prior use of the sign ‘target ventures’ and did not provide the law applicable in Germany to see the applicability of the EUTM proprietor’s alleged earlier rights. It argues that the EUTM proprietor in fact never used the name ‘target ventures’ but only the name ‘target partners’. As for the change of name, the applicant argues that it took place after the filing of the invalidity request and thus has no bearing on the case. Moreover, the applicant is still using the sign ‘Target Ventures’ in parallel with the new name.

 

The EUTM proprietor reiterates its previous arguments, claims that the applicant did not persuasively dissipated them and submits website printouts obtained through WayBack machine to prove that its website targetventures.com was active long before the applicant even existed.

 

 

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE (ARTICLE 8(4) EUTMR)

 

Pursuant to Article 53(1)(c) EUTMR a European Union trade mark shall, on request to the Office, be declared invalid where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled.

 

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the European Union legislation or the law of the Member State governing that sign:

 

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

 

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

 

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 

• the earlier sign must have been used in the course of trade of more than local significance;

 

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

 

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the application for declaration of invalidity based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

 

The applicant based the application on a non-registered trade mark, trade name and company name ‘TARGET VENTURES’ used in the course of trade in Germany and the United Kingdom in relation to financial and monetary services.

 

As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

 

The applicant submitted the following documents to support its arguments:

 

• Certificate from Registrar of Corporate Affairs of the British Virgin Islands, dated 13/01/2014, stating that Target Ventures Group Ltd. was incorporated in the British Virgin Islands.

 

• A screenshot from www.crunchabse.com, showing information of Target Ventures as an investor into 10 companies between 2013 and April 2015. According to the website Target Ventures offices are located in Russia and in the United States.

 

• Several undated screenshots from the applicant’s website (targetventures.ru), describing the company as a venture fund operating in a digital consumer space. According to the portfolio posted on the website, the applicant invested in companies such as Achica, Delivery Hero, TimePad, MixVille and Babadu.

 

• Numerous screenshots from web archive, with results dated between 25/02/2013 and 18/03/2015, showing the content of the applicant’s websites targetventures.ru and targetventures.vc within the mentioned period. The content is either in Russian or contains the slogan ‘Russia has the largest Internet connected audience in Europe’.

 

• Five screenshots from IP-adress.com, concerning the following websites: targetventures.ru; targetventures.net; targetventures.vc; targetventures.co.uk; targetventures.eu, two of them (targetventures.ru. targetventures.net) accompanied by Whois reports. According to the websites’ content, supported by Whois report, the domains were registered as follows: targetventures.ru between 14/11/2014 and 11/11/2015; targetventures.net, targetventures.vc and targetventures.co.uk between 21/10/2014 and 21/10/2024. All of these were registered for the applicant.

 

• Numerous screenshots from Dealroom.co database, showing the investments of Target Ventures Group, supported by the screenshots from crunchabse.com, presenting the companies that Target Ventures invested in; screenshots of other websites, including the websites of the companies Target Ventures invested in, some of them in Russian. According to the screenshots the applicant invested in the companies Delivery Hero, Achica, Fyber, Timepad, Mixville, Babadu, Dreamlines and Book a Tiger. From websites presenting those companies, it can be determined that Babadu and MixVille are Russian companies operating in Russia; Delivery Hero is an international company with headquarters in Berlin; Achica is a store in London; Fyber is a mobile advertising multinational with offices in Berlin and the USA; Dreamlines is an international company with headquarters in Hamburg selling cruises; and Book a Tiger is an online booking platform for booking cleaners with headquarters in Berlin operating in Germany and the DACH region; the investments in the mentioned European companies took place in 2014.

 

• An article from www.ewdn.com from 19/11/2014 announcing that Russian fund Target Ventures leads 20-million-euro round in international cruise booking portal Dreamlines; the article mentions Dreamlines as a start-up that has asserted itself as one of the most important provider of cruises on the German market and it expanded its activities worldwide; several more internet articles informing about the same event.

 

• The affidavit of Mr. Mikhaíl Lobanov, the applicant’s legal representative, signed in Moscow on 13/07/2015. According to the affidavit Target Ventures is a venture capital firm, acting on the markets in Russia, Germany and the UK. Further Mr. Lobanov claims that the company uses the designation ‘Target Ventures’ in business emails with German market participants and a few of such negotiations resulted in a successful investment such as in the companies Delivery Hero, Dreamlines, Book a Tiger and Fyber. The applicant is the owner of five domains: targetventures.ru, targetventures.net, targetventures.vc, targetventures.co.uk and targetventures.eu.

 

• Affidavits from representatives of the abovementioned companies in which the applicant invested stating that the undersigned had business contact with one of the partners of the applicant, either Mr Frolov or Mr Lobanov, some as early as in 2013. The undersigned state that the designation ‘Target Ventures’ was used throughout all communications.

 

• Voluminous email correspondence between the partners of the applicant (Alexander Frolov, Mikhaíl Lobanov and Eugene Levin) and people from about 20 companies mostly seemingly operating in the UK and Germany (about ten of them also submitted affidavits with the same content as the affidavits mentioned above) but also a few from other countries such as Russia, as well as several scans of business cards of those people. The email concern presentations, meeting setups, potential investment possibilities etc. The correspondence is dated between 04/2013 and 01/2015. The designation ‘Target Ventures’ is being used throughout the communications in the signatures, e-mail address and in the text in reference to the company name.

 

• Information concerning Noah Conference 2014 in London such as program, list of participants etc. Target Ventures’ partners Mikhaíl Lobanov and Alexander Frolov are on the list of participants and their tickets are also submitted.

 

• A part of German Act on the Protection of Trade Marks and other Symbols of 25 October 1994, submitted with English translation.

 

• The judgement of 10 July 2002 of OLG Karlsruhe (6 U 9/02), submitted with partial translation to English, concerning the protection in Germany for foreign holders of commercial designations used in Germany.

 

• The headnote of the judgement of 10 June 1980 of OLG Munich, submitted with translation into English, concerning German protection of commercial designations of a foreign business.

 

• Two excerpts from commentary on Section 15 German Trademarks Act, submitted with translations.

 

• A part of Trade Marks Act 1994 of the United Kingdom, concerning relative grounds for refusal of registration along with the entity entitled, accompanied by the United Kingdom House of Lords Decision of 8 February 1990 ([1990] UKHL 12 (08 February 1190)), stating the conditions of the tort of passing off.

 

 

On 29/09/2016 the applicant submitted the following documents (since these documents serve the purpose of substantiation of the application and since the EUTMR nor the EUTMIR give any time limit for the applicant to substantiate its application, also these documents were submitted in due time):

 

• Four screenshots of excerpts and articles, concerning the functioning of capital investments and private equity, two of them undated, and two dated on 10/06/2011 and on 08/01/2016.

 

• A cease and desist letter issued by EUTM proprietor to the applicant on 10/07/2015.

 

• A copy of the EUTM proprietor’s application for preliminary injunction with attachments, submitted to the District Court in Berlin and the applicant’s protective brief with attachments. Both documents are dated on 14/07/2015 and were submitted in German with partial translations.

 

• The order of the Chief Judge at the District Court in Berlin on 16/07/2015, submitted in German with partial translation and the withdrawal of the application for preliminary injunction on 16/07/2015.

 

• Numerous screenshots from the EUTM proprietor’s website and crunchbase.com, all dated on 29/09/2015.

 

• An e-mail from Mr. Rahul Parekh, dated on 13/11/2014, considering potential investment. The e-mail was addressed to Mikhaíl Lobanov and Alexander Frolov from Target Ventures and to Olaf Jacobi from Target Partners.

 

• Numerous screenshots from web archive, with results dated between 23/02/2013 and 23/01/2015, showing the content of the EUTM proprietor’s website targetpartners.de.

 

• Numerous print-outs of press releases, from EUTM proprietor’s website, dated between 04/07/2011 and 30/08/2016, concerning the news on investment market, EUTM proprietor investments and expansions. The designation ‘Target Ventures’ does not appear in the releases.

 

• An undated screenshot from crunchbase.com, showing information about the investor Target Global, including its ‘alias’ Target Ventures. The investments are the same as previously shown for Target Ventures including some additional more recent ones. This information is followed by articles dated between in 2014 and 2015, concerning Target Venture’s activities. Two articles dated in 2016 refer to Target Global (one of them to Target Global Ventures) and an advertisement for NOAH Conference 2016 displays the company Target Ventures.

 

German company name and trade name

 

Acquisition of the right vis-à-vis national law

 

The applicant submitted the German Trade Mark Act. According to the Section 5 of this Act, company symbols, which are signs used in the course of trade as a name, company name or special designation of a business operation or enterprise, enjoy protection as commercial designations. According to the Section 15(1) and (2) of the Act, the acquisition of the protection of a commercial designation shall grant to its proprietor an exclusive right and third parties are prohibited from using the commercial designation or a similar sign in the course of trade without authorisation in a manner liable to cause confusion with the protected designation.

 

The applicant submitted two judgments of the German courts regarding the acquisition of a commercial designation in Germany by a foreign entity. From the judgment of 1980 only the headnote was filed but the judgment by Oberlandesgericht Karlsruhe from 10/07/2002 No 6 U 9/02 was submitted in its entirety together with the translation of the relevant paragraphs. The Cancellation Division finds this judgment particularly important in order to understand the conditions under which a foreign entity may acquire a right to a commercial designation in Germany.

 

According to the Oberlandesgericht, for the acquisition of protection in Germany, it is crucial whether the business conducted under the commercial designation proves to be a long-term activity with publicity effect. The Court explains that the basis for this is the interest of holders of conflicting rights who would not otherwise automatically acquire knowledge of the German business of foreign companies and therefore would be endangered. The Court states that the activities linked to the acquisition efforts in Germany must be adequate, according to the crucial point of view of the publicity effect, to establish national protection. By way of example, the mere insertion of advertisements in German trade periodicals would not be adequate to fulfil the abovementioned requirements.

 

In particular with regard to the explanation given by the Oberlandesgericht, in order for a foreign entity, such as the applicant, to acquire the right to a commercial designation (such as company name or trade name according to Section 5 of the Trade Mark Act), that entity must conduct business under that commercial designation in such a public way that holders of other rights in Germany have a chance to become aware of this designation.

 

In the present case, the applicant contacted several German companies by email requesting a meeting or a Skype conversation, giving feedback for the previous meeting or discussing other such issues. This use of the sign is not even made public in the sense that entities other than those directly contacted could become aware of the applicant’s sign. The number of the entities contacted is not a number significant in the given sector but rather very limited (about 20 companies / persons).  The remaining documents showing some use of the invoked signs in Germany is the applicant’s investment into four companies operating or having their headquarters in Germany. Except for the investment in Dreamlines, the information about which appeared on a few websites, those events went unnoticed. The presence of the applicant’s partners in the conference in London is inconclusive for this issue as the applicant did not show that it made any kind of contact with German businesses at that conference.

 

The applicant argues that the relevant public in relation to investment services is twofold. On the one hand, the consumers are constituted by investors who entrust their money to the provider of such services who invests those funds with the purpose of gaining profit for the original investors. On the other hand, the consumers are companies or other entities that search potential investors to be able to start or extend their businesses. The evidence does not show any use of the sign whatsoever in relation to the investors, let alone German investors. As for the other group, namely the entities seeking funds, the use described above does not, in the Cancellation Division’s view, pass the threshold of the publicity effect. The applicant contacted some selected German business and invested in a few of them. The evidence does not show that the applicant’s sign became sufficiently public in the German market to give the holders of other rights in Germany in the same field the chance to notice it. According to the abovementioned judgment, this is the purpose of the publicity effect condition and this condition is crucial for assessing whether or not the applicant acquired the right to the commercial designation in Germany.

 

On this point, the Cancellation Division concurs with the EUTM proprietor that the evidence does not show that the applicant became visible on the German market until the advertisement of the upcoming event Hello Berlin by Target Ventures planned for 15/07/2015. This seems to be the first occasion clearly related to the German market on which undisclosed entities were able to get familiar with the sign Target Ventures used by the applicant. However, this was only after the contested mark had been filed.

 

Overall, the Cancellation Division concludes, in view of the material submitted by the applicant, that the so called ‘publicity effect’ is an essential condition for acquiring protection, by a foreign entity, for a commercial designation in Germany pursuant to Section 5 and 15 of the German Trade Mark Act and that the evidence submitted by the applicant does not show that the use made of the sign in Germany fulfils this condition.

 

Consequently, the applicant failed to show that the conditions required by the German law for the acquisition of a right to a commercial designation such as company name or trade name were fulfilled and, thus, the application must be rejected insofar as it was based on the company name and trade name used in the course of trade in Germany.

 

German non-registered trade mark

 

Acquisition of the right vis-à-vis national law

 

The applicant submitted the German Trade Mark Act. According to the Section 4(2) of this Act, the use of a sign in the course of trade insofar as the sign has acquired recognition as a trade mark within the affected circles shall give rise to trade mark protection. According to the Section 14(1) and (2) of the Act, the acquisition of the trade mark protection in accordance with section 4 shall grant to its proprietor an exclusive right and third parties are prohibited, without the consent of the proprietor of the trade mark, from using an identical or similar sign in the course of trade for identical or similar goods and services if likelihood of confusion exists.

 

It becomes evident from Section 4 of the German Trade Mark Act that in order to acquire trade mark protection for a non-registered trade mark, not only has the sign to be used in the course of trade but it also needs to have recognition as a trade mark within the affected circles.

 

The evidence submitted by the applicant does not demonstrate that the invoked non-registered trade mark acquired any degree of recognition within the affected circles in Germany. In essence, as already mentioned above, the evidence somehow connected to the German market shows that the applicant invested in four companies that have their place of business or headquarters in Germany, that information about one of these investments appeared on a few investment websites and that it maintained email communication with around 20 companies regarding possible business contacts. However, it does not contain any information about the degree of recognition among the affected business circles in Germany.

 

As mentioned above, the applicant argues that the relevant public in relation to investment services are both investors and entities seeking investors. Therefore, the Cancellation Division considers that at least these two groups are to be included in the ‘affected business circles’ as stipulated by the German Trade Mark Act. The former group of consumers is never mentioned in any of the documents provided by the applicant. In fact, the source of the funds invested by the applicant cannot be ascertained from the documents. As regards the latter group, the evidence shows that the applicant made several contacts with companies in Germany and inquired about possibilities of investment opportunities. These contacts resulted in the applicant investing in four companies with connections to Germany. Information about these investments can be found on a website specializing in information for investors and entities seeking investment ‘crunchbase’ and specifically information about the applicant’s investment into Dreamlines also briefly appeared on other few websites.

 

However, such data do not allow for any conclusion on recognition of the applicant among the relevant circles. The investment websites are filled with information about investments and the information in connection with the applicant is drowned among an enormous amount of similar data, in no way it stands out. Without any other indications to this respect, it is impossible to conclude that the sign of the applicant was recognized by the entities looking for investments. Similar can be said about the applicant’s presence in the London conference. Although this conference took place in London, admittedly, some German entities participated in this event. However, again, whilst this may show an interest of the applicant to enter the EU market, there is no indication that it became visible on this conference to an extent that would allow for a conclusion that at least the German businesses there present would notice the applicant. The market in which the applicant moves is not a specific or narrow market, there are many start-ups and companies with potential of growth that are the target investment options for the applicant. There is no indication of advertising in the German market, no indication of the applicant’s strong presence in that market, no survey among the relevant entities. The affidavits and emails show that the applicant was in contact with several entities in Germany but this number is very limited and in view of the size of the market cannot be considered as sufficient to raise awareness among any significant part of these ‘affected circles’. Finally, there is also no indication that fellow investors in Germany recognized the applicant at the time of filing of the contested mark, should this group be also included in the ‘affected business circles’.

 

Taking into account all the above mentioned, the evidence submitted by the applicant taken as a whole does not demonstrate that the sign invoked by the applicant had recognition as a trade mark within the affected circles in Germany. Consequently, one of the conditions of the German law for the acquisition of the trade mark right for a non-registered trade mark is not fulfilled and, therefore, the applicant failed to demonstrate that it had acquired an earlier German non-registered trade mark. The application must thus be rejected insofar as it was based on the German non-registered trade mark.

 

 

The non-registered signs used in the course of trade in the United Kingdom

 

Prior use in the course of trade of more than mere local significance

 

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. This requirement of Article 8(4) EUTMR is subject to EU law standards and must be assessed accordingly, regardless of the fact that national legislation may not require actual use in the case of some specific earlier rights.

 

Furthermore, such use must indicate that the sign in question is of more than mere local significance. The rationale of this provision is to restrict the number of conflicts between signs by preventing an earlier sign which is not sufficiently important or significant from challenging either the registration or the validity of a European Union trade mark.

 

As regards the United Kingdom, the evidence listed above shows use of the invoked signs in relation to investment in one entity, Achica, which, according to the evidence, operates a retail store in London. Further, the applicant maintained email communication with a few entities in the UK and, finally, two of its partners represented the applicant on an investment fair in London.

 

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 36-37 and 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

 

In the present case, the participation in a fair, contacting a few entities and investing in one, all that taking place during one year before the filing of the contested mark, may show the applicant’s beginning interest in the UK market but it does not constitute use in the course of trade with more than mere local significance. This use was not long term or intensive, it shows rather isolated events than any systematic use of the mark, the one company in which the applicant invested is not a nation-wide operating company with some economic importance but seems to be a single retail store in London. As also mentioned above, the relevant groups of public include also the consumers offering their available financial resources to the applicant so that the applicant invests those resources on their behalf. There is no indication in the evidence that the signs were used in relation to any UK consumer from this group.

 

Assessing the evidence in its entirety, the Cancellation Division concludes that although there are indications of some activity of the applicant within the UK, they are not sufficient for a conclusion that the applicant used the invoked signs in the course of trade in the UK with more than mere local significance.

 

Since one of the conditions of Article 8(4) EUTMR is not fulfilled, the application must be rejected insofar as it was based on the non-registered trade mark, company name and trade name used in the United Kingdom.

 

 

 

 

 

Other earlier rights pursuant to Article 53(2)(a) EUTMR

 

The applicant also invoked right to a name ‘Target Ventures’ in Germany and the United Kingdom pursuant to Article 53(2)(a) EUTMR.

 

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

 

Therefore, the onus is on the applicant to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the applicant ‘to provide EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ ((05/07/2011, C 263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Cancellation Division to safely determine that a particular right is provided for under the law in question as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

 

In the present case, the applicant merely ticked the respective box in the application form but did not submit any arguments or evidence that would relate to this ground. It did not provide the necessary national legislation in force nor did it put forward any arguments whatsoever as to why it would succeed under specific national law in preventing the use of the contested mark based on the invoked right to a name other than those already assessed above. Article 53(2) EUTMR applies to ‘other earlier rights’, that is, rights not mentioned in Article 53(1) EUTMR. This Article does not cover the rights that can be invoked under Article 53(1)(c) in conjunction with Article 8(4) EUTMR. The applicant invoked that Article 53(1)(c) and that part of the invalidity application was assessed above. The same rights cannot be invoked also under Article 53(2) EUTMR. Since the applicant did not submit any arguments or evidence specifically related to this claim, nor did it explain how the name ‘Target Ventures’ was used in a way that would not be company name, trade name or a non-registered trade mark (rights assessed above under Article 53(1)(c) in conjunction with Article 8(4) EUTMR), the application must also be rejected insofar as based on Article 53(2)(a) EUTMR.

 

 

COSTS

 

According to Article 85(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 Rule 94(3) EUTMIR and Rule 94(7)(d)(iv) 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

 

 

 

María Belén IBARRA DE DIEGO

Michaela SIMANDLOVA

Pierluigi M. VILLANI

 

 

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.

 

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.