CANCELLATION DIVISION
CANCELLATION No 8 219 C (INVALIDITY)
Forest Tosara Limited, Unit 146, Baldoyle Industrial Estate, Grange Road, Dublin 13,
Ireland (applicant), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4,
Ireland (professional representative)
a g a i n s t
Lacer, S.A., Sardenya, 350, 08025 Barcelona, Spain (EUTM proprietor), represented
by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010
Madrid, Spain (professional representative).
On 16/11/2017, 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.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) No 2017/1001 (codification)
(‘EUTMR’), Delegated Regulation (EU) No 2017/1430 (‘EUTMIR’) and Implementing
Regulation (EU) No 2017/1431 (‘EUTMDR’), subject to certain transitional provisions.
All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be
understood as references to the Regulations currently in force, except where expressly
indicated otherwise.
REASONS
On 16/07/2013, the applicant filed an application for a declaration of invalidity against
European Union trade mark No 10 814 549 (‘the contested EUTM’), filed on
17/04/2012 and registered on 29/10/2012, for the figurative sign below:
The request is directed against all the goods covered by the contested EUTM, namely:
Class 3: Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery, essential
oils, cosmetics, hair lotions; dentifrices.
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Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for
medical purposes; dietetic substances adapted for medical use, food for
babies; plasters, materials for dressings; material for stopping teeth, dental
wax; disinfectants; preparations for destroying vermin; fungicides,
herbicides.
The application is based on European Union trade mark registration No 10 130 946
‘DERMOCREM’ (‘the earlier EUTM’), filed on 18/07/2011 and registered on 29/11/2011.
The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b)
EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that there exists a likelihood of confusion between the conflicting
marks in light of the fact that the earlier EUTM is entirely included in the contested sign
and the goods at issue are identical and similar. The applicant points out that the
device element of the contested EUTM is a mere package design which is not capable
of differentiating the signs.
After an extension of the time-limit, in its response, the EUTM proprietor firstly points
out that a declaration of invalidity was filed against the earlier EUTM on the basis of
absolute grounds under Article 7(1)(b) and (c) EUTMR. In the proprietor’s view, the
applicant is not entitled to request the invalidity of the contested EUTM since its sign is
not valid. The proprietor further argues on the alleged similarity between the signs at
issue and refutes the applicant’s claim of likelihood of confusion since their only
coinciding element lacks distinctive character in respect with the relevant goods.
On 14/03/2014 the applicant requested suspension of the proceedings in light of an
application for invalidity filed against the earlier EUTM. On 02/04/2014 the Office
suspended the proceedings.
On 26/01/2017, the Office informed the parties that the earlier mark invoked as basis
for the invalidity request was totally cancelled and that the decision invalidating the
applicant’s mark was final. In the same communication, the Office requested the
applicant whether or not to maintain its application for a declaration of invalidity.
Since the applicant did not file any reply within the time-limit, the proceedings were
maintained and on 18/05/2017 the parties were informed that a decision would be
taken rejecting the application as unfounded.
CEASING OF EXISTENCE OF THE EARLIER RIGHT
The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b)
EUTMR. According to Article 8(1) EUTMR, this type of request can be made by the
proprietor of an earlier trade mark. Article 8(2) EUTMR defines earlier trade mark for
the purposes of Article 8(1) EUTMR as:
(a) trade marks of the following kinds with a date of application for registration which is
earlier than the date of application for registration of the EU trade mark, taking account,
where appropriate, of the priorities claimed in respect of those trade marks:
Decision on Cancellation No 8 219 C Page 3 of 4
(i) EU trade marks;
(ii) trade marks registered in a Member State, or, in the case of Belgium,
the Netherlands or Luxembourg, at the Benelux Office for Intellectual
Property;
(iii) trade marks registered under international arrangements which have
effect in a Member State;
(iv) trade marks registered under international arrangements which have
effect in the Community;
(b) applications for the trade marks referred to in subparagraph (a), subject to their
registration;
(c) trade marks which, on the date of application for registration of the EU trade mark,
or, where appropriate, of the priority claimed in respect of the application for
registration of the EU trade mark, are well known in a Member State, in the sense in
which the words ‘well known’ are used in Article 6bis of the Paris Convention.
The application is based on European Union trade mark registration No 10 130 946.
However, the earlier mark invoked as basis for the invalidity request was declared
invalid in its entirety by decision of the Cancellation Division of 20/01/2015 in invalidity
proceedings No 8 793 C. The decision was appealed. By decision No R 571/2015-2 of
17/02/2016, the Second Board of Appeal upheld the Cancellation Division’s decision
declaring the earlier EUTM entirely invalid. This decision is final.
Since the only earlier right invoked by the applicant was entirely invalidated and hence,
it is deemed not to have had, as from the outset, the effects specified in the EUTMR
(see Article 62(2) EUTMR). Therefore, it is not an earlier trade mark within the meaning
of Article 8(2) EUTMR.
The applicant did not base the application on any other earlier rights or grounds.
As the only invoked right is not earlier trade mark within the meaning of the Article on
which the application for declaration of invalidity is based, the application must be
rejected in its entirety.
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.
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The Cancellation Division
Michaela SIMANDLOVA Pierluigi M. VILLANI Ioana MOISESCU
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.
The amount determined in the fixation of the costs may only be reviewed by a decision
of the Cancellation Division on request. According to Article 109(8) EUTMR, such a
request must be filed within one month of 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.