CANCELLATION No 11759 C (INVALIDITY)

Aether Anthana Limited, 12 Platonos Street, 2413 Engomi, Nicosia, Cyprus (applicant), represented by Fotios Stamatopoulos, 11, Mavrokordatou Street, 10678 Athens, Greece (professional representative)

a g a i n s t

Χρήστος Κάσαρης ΑΕ, Άγιος Τρύφωνας 1, 27200 Αμαλιάδα, Greece (EUTM proprietor), represented by Olga Ntova, Akadimias 61, 10679 Athens, Greece (professional representative).

On 25/07/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is partially upheld.

2.        European Union trade mark No 13 427 059 is declared invalid for some of the contested services, namely:

Class 43:        Temporary accommodation; temporary accommodation; temporary accommodation; room reservation services; room reservation services; room reservation services; temporary room hire; club services for the provision of food and drink; restaurant services; Self-service restaurants; hotel restaurant services; restaurant reservation services; fast food restaurant services; restaurant services provided by hotels; fast food restaurant services; restaurant services incorporating licensed bar facilities; carvery restaurant services; take-out restaurant services; fast food restaurant services; fast food restaurant services; accommodation bureau services; cafeterias; self-service restaurants; self-service restaurants; bar services; cocktail lounge services; wine bar services.

3.        The European Union trade mark remains registered for all the remaining services, namely:

Class 42:        Planning [design] of restaurants.

4.        Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 13 427 059. The application is based on, inter alia, Cypriot trade mark registration No 79 494 ‘ANASSA RESIDENCES’ as a figurative mark. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that, due to the similarity between the goods/services and the similarity between the marks, there is a likelihood of confusion on the part of the public. Moreover, the applicant claimed that the earlier trade marks have a reputation and submitted evidence in this regard.

The applicant also argues that the earlier trade marks have a reputation in the whole of Europe (including all member states of the European Union, especially Greece and Cyprus). It explains that, since the marks are similar and the goods/services are similar, the EUTM proprietor, through the contested trade mark without due cause, takes unfair advantage of the reputation of the earlier marks which is obviously detrimental to the applicant’s business. In support of its observations, the applicant submitted evidence related to the reputation of the earlier marks.

The EUTM proprietor argues that the marks are to be compared overall. Given that the overall impressions of the marks are affected by dissimilar elements (additional words and figurative elements), there is no likelihood of confusion between the marks.

Preliminary remark

The applicant refers to the use of the word ‘ANASSA’ as a domain name under the international top-level domain (www.anassa.com) and under the Cypriot national domain (www.anassa.com.cy) without any indication of the ground on which this is based and without submitting any related evidence. Therefore, these rights are not considered as bases of the present application.

SUBSTANTIATION AS REGARDS GREEK TRADE MARK REGISTRATIONS NO 226 700 AND NO 226 701

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

It follows that the Office cannot take into account any alleged rights for which the applicant does not submit appropriate evidence.

According to Rule 37(b)(ii) and (iv) EUTMIR, as regards the grounds on which the application is based, in the case of an application pursuant to Article 52(1) EUTMR, particulars of the right on which the application for a declaration of invalidity is based and if necessary particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity must be given, and the application must contain an indication of the facts, evidence and arguments presented in support of those grounds.

In particular, if the cancellation is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered.

In the present case, the evidence filed by the applicant consists of an extract from the TMview database and a certificate of registration of the trade marks in Greek.

The evidence mentioned above is not sufficient to substantiate the applicant’s earlier trade marks, because the database does not contain all the necessary information in the language of the proceedings (the list of goods and services are only in Greek) and the evidence (namely the certification of registration) does not contain a translation into the language of the proceedings, namely English.

According to Rule 38(2) EUTMIR, where the evidence in support of the application is not filed in the language of the revocation or invalidity proceedings, the applicant shall file a translation of that evidence into that language within a period of two months after the filing of such evidence. In the present case, the applicant did not submit any translations.

The applicant has not proven the existence, validity and scope of protection of its earlier marks; therefore, the application will be rejected as unfounded, as far as it is based on these earlier marks.

LIKELIHOOD OF CONFUSION — ARTICLE 53(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 Cypriot trade mark registration No 79 494.

1. The services

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

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

Class 43:         Services for providing food and drink; temporary accommodation.

The contested services are the following:

Class 42:        Planning [design] of restaurants.

Class 43:        Temporary accommodation; temporary accommodation; temporary accommodation; room reservation services; room reservation services; room reservation services; temporary room hire; club services for the provision of food and drink; restaurant services; Self-service restaurants; hotel restaurant services; restaurant reservation services; fast food restaurant services; restaurant services provided by hotels; fast food restaurant services; restaurant services incorporating licensed bar facilities; carvery restaurant services; take-out restaurant services; fast food restaurant services; fast food restaurant services; accommodation bureau services; cafeterias; self-service restaurants; self-service restaurants; bar services; cocktail lounge services; wine bar services.

Contested services in Class 42

The contested planning [design] of restaurants consists of planning and making detailed drawings of restaurants, by architects. Even if the contested services target professionals in the restaurant field, the contested services and the applicant’s services (consisting of services for providing foods and drink; temporary accommodation) have different purposes, end users (restaurateurs versus the general public) and providers. They are neither complementary nor in competition. Therefore, the contested services are not similar to the applicant’s services.

Contested services in Class 43

The contested temporary accommodation (listed three times) is identically contained in the list of services of the applicant.

The contested temporary room hire is included in the broad category of the applicant’s temporary accommodation. Therefore, they are identical.

The contested room reservation services (listed three times) and accommodation bureau services are auxiliary services that are carried out by the same undertakings as the applicant’s temporary accommodation. The providers, distribution channels and relevant public are the same and the services in question are frequently rendered in combination with each other. Therefore, they are considered highly similar.

The contested club services for the provision of food and drink; restaurant services; self-service restaurants; fast food restaurant services; fast food restaurant services; restaurant services incorporating licensed bar facilities; carvery restaurant services; take-out restaurant services; fast food restaurant services; fast food restaurant services; self-service restaurants; self-service restaurants are included in the broad category of the applicant’s services for providing food and drink. Therefore, they are identical.

The contested hotel restaurant services; restaurant services provided by hotels overlap with the applicant’s services for providing food and drink. Therefore, they are identical.

The contested cafeterias; bar services; cocktail lounge services; wine bar services overlap with the applicant’s services for providing food and drink. Therefore, they are identical.

The contested restaurant reservation services are highly similar to the applicant’s services for providing food and drink. They have the same distribution channels and they target the same end users. The services in question are frequently rendered in combination with each other and by the same undertakings.

2. 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 services found to be identical or similar are directed at the public at large. The degree of attention is considered average.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is Cyprus.

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 figurative mark composed of two verbal elements, ‘ANASSA’ and ‘RESIDENCES’, and a figurative element consisting of a stylised depiction of a sun. The word ‘ANASSA’ is in upper case letters whereas the word ‘RESIDENCES’ is written in much smaller characters in lower case.

The contested mark is a figurative mark composed of the verbal elements ‘ANASSA ILIS’, written in white characters, and, on the second line, ‘WINE SPA RESORT’, written in very small white letters. The figurative element depicts a grape vine leaf placed between the words ‘ANASSA’ and ‘ILIS’. All these elements are on a dark background of various shades of grey.

The element ‘ANASSA’ of the signs will be perceived as the Latin alphabet version of ‘ANAΣΣΑ’, which means ‘queen’ in Ancient Greek and will be understood as such by the relevant public. This element is arbitrary for the relevant services and therefore is distinctive to an average degree.

The English word ‘RESIDENCES’ in the earlier mark, which means places in which one resides, is non-distinctive for the services related to accommodation. However, the public in the relevant territory will not understand this element and it is, therefore, of normal distinctiveness for the relevant public.

The figurative element of the earlier mark, the depiction of a sun, which evokes the concept of holidays, is of weak distinctiveness for the services related to temporary accommodation and, for the remaining services, it is of average distinctiveness.

Although the English word ‘WINE’ may not be understood, the elements ‘SPA’ and ‘RESORT’ in the contested trade mark are English words that are commonly used in Greek. The element ‘SPA’ means a kind of hotel where people go to exercise and have special treatments to improve their health, and the element ‘resort’ is a place where many people spend their holidays. Therefore, for the relevant services, these elements are non-distinctive.

The element ‘ILIS’ has no meaning in Greek or Turkish and therefore it is distinctive.

As regards the figurative element of the contested sign, for the services related to the provision of food and drink, the depiction of a grape vine leaf is of weak distinctiveness and, for the remaining services, it is of average distinctiveness. The contested mark also contains a figurative device of a purely decorative nature, namely the dark background.

The word ‘ANASSA’ and the depiction of a sun in the earlier mark are co-dominant, as they are more visually eye-catching than the smaller element ‘RESIDENCES’.

In the contested sign, the elements ‘ANASSA’ and ‘ILIS’ and the depiction of a grape vine leaf are co-dominant, as they are more visually eye-catching than the smaller/secondary verbal elements ‘WINE SPA RESORT’.

Contrary to what the EUTM proprietor argues, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Visually, the signs coincide in the element ‘ANASSA’, which is a co-dominant element in both signs. However, they differ in the other co-dominant elements of the signs, namely the depiction of a sun in the earlier mark, which will have less impact, and in the contested sign the additional verbal element ‘ILIS’ and the grape vine leaf placed in the second position. They further differ in other elements that will have even less impact. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the string of letters ‛ANASSA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛ILIS’ of the contested mark, which has no counterpart in the earlier mark. The elements in the second lines of the verbal elements of the signs are likely to be omitted when pronouncing the signs due to their size and position. Therefore, the signs are aurally similar to an average degree.

Conceptually, both signs will be associated with the meaning conveyed by the element ‛ANASSA’, as previously explained. However, the signs have additional meanings associated with the figurative elements (a sun in the earlier mark and a grape vine leaf in the contested sign). The other elements, ‘SPA’ and ‛RESORT’, of the contested sign, will have a limited impact when comparing the signs. As the signs will be associated with similar meanings, they are conceptually similar to an average degree.

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

4. 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.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark for at least some of the services as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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 services covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

As stated above, the services are partly identical and highly similar and partly dissimilar. The signs are visually, aurally and conceptually similar to an average degree. The signs coincide in their first verbal element ‘ANASSA’ which is a co-dominant element in both signs. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The differences created by the presence of the co-dominant element ‘ILIS’ in the contested sign cannot outweigh the similarities between the signs, as previously stated. Moreover, most of the differences between the signs are confined to secondary elements, namely ‘RESIDENCES’ in the earlier mark and ‘WINE’ and the non-distinctive elements ‘SPA RESORT’ in the contested sign. As regards the figurative elements, the public will more easily refer to the signs in question by their verbal elements, which will have a stronger impact, than by describing their figurative elements.

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 Cypriot trade mark registration No 79 494.

Pursuant to the above, the contested trade mark must be declared invalid for the services found to be identical or similar to those of the earlier trade mark.

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

Since the cancellation is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its extensive use/reputation as claimed by the applicant and in relation to identical and similar services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

• Cypriot trade mark registration No 47 383 ‘ANASSA’ (word mark) for services in Class 42: bed (temporary), beds (hotel reservation), coffee shop services, supplier services, conference facilities (supply), cooking services, holiday beds (finding), holiday beds (hire), hotel services, pub services, tourist agencies for bed reservations, hairdressing salon;

• Cypriot trade mark registration No 51 860  (‘ANASSA The ultimate Mediterranean retreat’) for services in Class 42: bed (temporary), beds (hotel reservation), coffee shop services, supplier services, conference facilities (supply), cooking services, holiday beds (finding), holiday beds (hire), hotel services, pub services, hairdressing salon;

• Cypriot trade mark registration No 51 859  (‘ANASSA A legend is born’) for services in Class 42: bed (temporary), beds (hotel reservation), coffee shop services, supplier services, conference facilities (supply), cooking services, holiday beds (finding), holiday beds (hire), hotel services, pub services, tourist agencies for bed reservations, hairdressing salon;

• Cypriot trade mark registration No 79 496  (‘ANASSA Residences’) for services in Class 43: services for providing food and drink; temporary accommodation;
• Cypriot trade mark registration No 79 498  (‘ANASSA Villas’) for services in Class 43: services for providing food and drink; temporary accommodation;

• Cypriot trade mark registration No 79 500  (‘ANASSA Villas’) for services in Class 43: services for providing food and drink; temporary accommodation;
• Cypriot trade mark registration No 83 377  (‘ANASSA, the ultimate Mediterranean journey’) for services in Class 43: services for providing food and drink; temporary accommodation;

• the logo ‘ANASSA’, which the applicant refers to as a well-known trade mark in the whole of Europe (including all Member States of the European Union, especially Greece and Cyprus) for ‘hotel and its services’.

Some of these earlier rights invoked by the applicant are less similar to the contested mark. This is because they contain additional words, such as ‘The ultimate Mediterranean retreat’, which are not present in the contested trade mark. Moreover, they do not cover a wider scope of services. Therefore, the outcome cannot be different for services for which the cancellation application has already been rejected; there is no likelihood of confusion for those services.

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

• Cypriot trade mark registration No 35 406  for goods in Class 33: wines, alcoholic beverages and liqueurs;

• Cypriot trade mark registration No 65 819  (‘ANASSA WATERSPORTS’) for goods in Class 12: boats, parachutes, towing vehicles, floating crafts, yachts;

• Cypriot trade mark registration No 65 820  (‘ANASSA WATERSPORTS’) for goods in Class 25: sports clothing and footwear;

• Cypriot trade mark registration No 65 821  (‘ANASSA WATERSPORTS’) for goods in Class 28: equipment for water sports, water skiing;

• Cypriot trade mark registration No 65 822  (‘ANASSA WATERSPORTS’) for services in Class 41: gymnastics classes, organisation of sport competitions, physical education, rental of sport equipment other than vehicles, sport activities, arrangement of sport events;

• Cypriot trade mark registration No 65 824  (‘ANASSA CAR HIRE’) for services in Class 39: care hire services;

• Cypriot trade mark registration No 65 823  (‘ANASSA ESTATES’) for services in Class 36: real estate services;

• Cypriot trade mark registration No 65 816  (‘ANASSA SPA’) for goods in Class 3: cosmetics, essential oils, hair lotions, perfumery;

• Cypriot trade mark registration No 65 817  (‘ANASSA SPA’) for services in Class 41: gym services, physical exercise gym, gymnastics classes;

• Cypriot trade mark registration No 65 818  (‘ANASSA SPA’) for services in Class 44: aromatherapy, beauty salon, hairdressing, massage, manicure, healthcare and beauty, physiotherapy, tattoo, sauna;

• Cypriot trade mark registration No 79 493  (‘ANASSA Residences’) for services in Class 36: real estate and similar services falling within Class 36, including the management of immovable property;

• Cypriot trade mark registration No 79 495  (‘ANASSA Residences’) for services in Class 36: real estate and similar services falling within Class 36, including the management of immovable property;

• Cypriot trade mark registration No 79 497  (‘ANASSA Villas’) for services in Class 36: real estate and similar falling within Class 36, including the management of immovable property;

• Cypriot trade mark registration No 79 499  (‘ANASSA Villas’) for services in Class 36: real estate and similar failing within Class 36, including the management of immovable property;

• Cypriot trade mark registration No 83 376  (‘ANASSA The ultimate Mediterranean journey’) for services in Class 39: transports, packaging and storage of goods, travel arrangement;

• Cypriot trade mark registration No 83 378  (‘ANASSA The ultimate Mediterranean journey’) for services in Class 44: medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

The other earlier rights invoked by the applicant cover additional goods and services, which are clearly different from the remaining services covered by the contested trade mark.

These earlier rights cover goods in Classes 3, 12, 25, 28 and 33 (e.g. perfumery and cosmetics; alcoholic beverages; certain kinds of vehicles and parachutes; sports clothing and footwear; equipment for water sports, water skiing). The applicant’s goods have nothing relevant in common with the remaining contested services, namely planning [design] of restaurants. These goods and services have clearly different natures and purposes. They are not provided by the same undertakings and they do not coincide in their distribution channels. Consequently, the remaining contested services are dissimilar to the applicant’s goods.

These earlier rights also cover services in Classes 36, 39, 41 and 44 (e.g. real estate services; car hire services; services for transport, the packaging and storage of goods, and travel arrangement; sport activities and the arrangement of sports events; hygienic and beauty care services). However, the applicant’s services have nothing relevant in common with the remaining contested services, namely planning [design] of restaurants, since they have clearly different purposes and distribution channels. They are not provided by the same undertakings and they do not target the same end users. Moreover, they are neither complementary nor in competition. Therefore, the contested planning [design] of restaurants are dissimilar to the applicant’s services.

A fortiori, there is no likelihood of confusion for those earlier rights, since the goods and services are dissimilar to the contested planning [design] of restaurants.

The Cancellation Division will now examine Article 53(1)(a) in conjunction with Article 8(5) EUTMR in relation to the contested services found to be dissimilar to the goods and services protected by the earlier trade marks, namely the contested planning [design] of restaurants.

REPUTATION — ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5)

EUTMR

Pursuant to Article 53(1)(a) EUTMR, a European Union trade mark will, on request to the Office, be declared invalid where there is an earlier mark as referred to in Article 8(2) EUTMR and the conditions set out in Article 8(1) or (5) EUTMR are fulfilled.

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to the applicant, the earlier trade marks have a reputation in the European Union, including Cyprus and Greece. According to the clear wording of Article 8(5) EUTMR, this norm protects a registered earlier mark. As the applicant provided the evidence related to the earlier Cypriot trade marks, the Office assumes that the application is based on these registered trade marks and the evidence must show that the reputation was acquired in Cyprus.

Therefore, the grounds for refusal of Article 8(5) EUTMR are applicable only when the following conditions are met.

a) The signs must be either identical or similar.

b) The applicant’s trade mark must have a reputation.

c) Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for a declaration of invalidity under Article 8(5) EUTMR (16/12/2010, T-345/08 and T-357/08, BOTOCYL, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The application may still fail if the proprietor establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade marks

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

In the present case the contested trade mark was filed on 03/11/2014. Therefore, the applicant was required to prove that the trade marks on which the cancellation is based had acquired a reputation in Cyprus prior to that date. The evidence must also show that the reputation was acquired for the services for which the applicant has claimed reputation, namely hotel services and services thereof.

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

On 07/09/2015, the applicant submitted the following evidence:

• Copy of the power of attorney details and a printout of evidence of payment of the fees for the cancellation proceedings.
• Copies of earlier trade marks.
• Greek magazines and newspapers, dated between 1998 and 2000. In some magazines (e.g. Elle, Status, Vogue) the name ‘Anassa’ appears in combination with pictures of facilities. However, these magazines are in Greek and the applicant did not provide any translation into the language of the proceedings.
• German, French, Italian and Spanish magazines without any translation into English (the language of the proceedings).
• Copy of an article from the Greek newspaper Athens News, in English, entitled ‘Anassa: Cyprus’ new luxury hotel combines splendour of Hellenism, traditional village hospitality and word-class facilities’ (dated 01/04/1999).
• STATUS magazine (dated in 2000) in Greek; however, the mentions ‘Best hotels in Greece & Cyprus’ and ‘The Anassa’ are in English.
• Printout from the German magazine SENSES, dated 2000/2001. The hotel ‘Anassa’ is described as a ‘Wellness in Cyprus’ paradise of Nature’. It explains that Anassa, opened in 1998 by the Thanos chain of luxury hotels, has sublime rooms above the beach on Cyprus’s northwest coast.
• Anassa brochure containing details of the Christmas and winter offer for 2004/2005.
• Extract from the English-language magazine Traveller (October 2003) regarding readers’ travel awards. For overseas hotel spas, Anassa (Cyprus) is ranked number 8, and, for overseas leisure hotels, Anassa (Cyprus) is ranked number 15 in Europe.
• Extract from the English magazine Condé Nast Traveller (October 2006) regarding readers’ travel awards. Anassa (Cyprus) took ninth place in a ranking of best hotels in Europe, Asia Minor and the Russian Federation.
• Extract from the English-language magazine Condé Nast Traveller (January 2008). Anassa (Cyprus) is cited in the section ‘Best hotels for Leisure Facilities, in Europe (tariff in Euro)’.
• Extract from the English-language magazine Condé Nast Traveller (October 2008) regarding readers’ travel awards. Anassa (Cyprus) took first place in a ranking of best spas in overseas hotels and 12th place in a ranking of best hotels in Europe.
• Extract from the English magazine Condé Nast Traveller (January 2009) with a description of the Anassa hotel, Cyprus (tariffs are in euros).
• Extract from the English magazine Tatler (travel guide, 2009) with a description of the Anassa hotel, Cyprus, and the services provided (tariffs are in pounds sterling and relate to making reservations from the UK).
• Extract from the English magazine Tatler (travel guide, 2007) with a description of the Anassa hotel and the services provided: 177 rooms, 4 restaurants, sports equipment and a spa (tariffs are in pounds sterling and relate to making reservations from the UK).
• Extract from the English magazine Tatler (spa guide, 2008) with a description of the Anassa hotel and its services (tariffs are in pounds sterling and relate to making reservations from the UK).
• Extract from the English travel magazine The Gallivanter’s Guide (January 2009). Anassa (Cyprus) is number 2 in the ranking of Best European Resort, with 9% of votes; number 1 in the ranking of Best Leisure Resort Worldwide, with 13.5% of votes; and number 3 in the ranking of Best Spa Worldwide, with 9% of votes.
• List of awards won by the Anassa Hotel.
• Details of the hotel’s official websites, http://www.anassa.com and http://www.anassa.com.cy; however, the applicant did not provide any extracts from the websites.
• Greek Government Gazette, dated 16/03/2007, in Greek.
• Pictures of a construction site (undated).
• Copy of Anassa Ilis hotel’s description and details (unknown source).
• Copy of the contested trade mark.

In invalidity proceedings, an invalidity applicant relying on enhanced distinctiveness or reputation must prove that its earlier right has acquired enhanced distinctiveness or reputation by the filing date of the contested EUTM, taking account, where appropriate, of any priority claimed. In addition, the reputation or the enhanced distinctive character of the earlier mark must still exist when the decision on invalidity is taken.

In the present case, the period elapsed between the latest evidence of use (in 2009) and the filing of the EUTM, that is, 03/11/2014, is significant (at least 4 years) and consumer habits and perceptions may have changed during this time.

Although the magazines provide some information about the field of activity in which the applicant uses the trade marks (hotel services), the value of these documents is limited and they are not supported by any further material. In fact, the applicant did not submit any recent documents.

Moreover, this kind of evidence cannot be conclusive of reputation on its own, because it cannot give much information about the actual public awareness of the trade mark(s). While this evidence demonstrates use, it provides no further indications of the alleged reputation, such as could have been provided by market shares or surveys. There is no consumer survey or other direct evidence as regards the knowledge of the marks among the public. Therefore, based on the evidence filed by the applicant, there are insufficient indications demonstrating the actual level of awareness on the part of the target consumers that would allow a positive finding of reputation.

In addition, the evidence related to the relevant public, namely the Cypriot public, has not been translated into the language of the proceedings, namely English, and the evidence in English does not clearly identify the relevant public.

Again, none of the documents refers to the recognition of the earlier trade marks by the relevant consumers, nor was any evidence about the market share of the applicant’s services submitted. Under these circumstances, the Cancellation Division concludes that the applicant failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the cancellation to be successful under Article 53(1)(a) EUTMR in conjunction with Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions is not fulfilled, and the cancellation must be rejected.

The applicant stated that the EUTM proprietor filed the contested trade mark in bad faith. This cannot be a basis on the grounds set forth in Article 8 EUTMR. Since this article does not include bad faith, this point will not be addressed.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Liliya YORDANOVA

Julie GOUTARD

Elisa ZAERA CUADRADO

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.