CANCELLATION DIVISION
CANCELLATION No 12 898 C (INVALIDITY)
Cardip Limited, 32, The Tything, WR1 1JL Worcester, United Kingdom (applicant),
represented by Roome Associates Limited, Basepoint Business Centre, Bromsgrove
Technology Park, Isidore Road, B60 3ET Bromsgrove, United Kingdom (professional
representative).
a g a i n s t
David Zbrodov, Raabeweg 27, 74076 Heilbronn, Germany (EUTM proprietor),
represented by Meyer & Meyer, Weipertstr. 8-10, 74076 Heilbronn, Germany
(professional representative).
On 22/11/2017, 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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431,
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.
Decision on Cancellation No 12 898 C page: 2 of 7
REASONS
The applicant filed an application for a declaration of invalidity against all the goods and
services of European Union trade mark No 12 126 686 , namely
goods and services in Classes 2, 17, 35 and 37. The application is based on domain
names cardipuk.com and cardipuk.co.uk, trade names CARDIP and Cardip, non-
registered trade marks ‘CarDip UK’, , Cardip International and
, all used in the course of trade in the United Kingdom. The
applicant invoked Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant claims that itself and its predecessors in business have used the domain
names, trade names and trade marks including the term ‘Cardip’ in the United Kingdom
at least since September 2012. The business operated in the field of coating and
cleaning preparations for use in the automotive industry. It submits evidence (listed
below) to prove use of the signs. It invokes the law of passing off, explains the
conditions of its application and argues that the applicant’s signs have goodwill, that
there is misrepresentation and that the applicant is likely to suffer damage as a result of
the misrepresentation.
The EUTM proprietor argues that the evidence submitted does not show any significant
use before the date of filing of the contested mark and that it is not clear who in fact
used the signs. He concludes that the term ‘CARDIP’ as such is customarily used in
trade and it is non-distinctive.
The applicant insists that the evidence filed does prove use of more than mere local
significance before the filing date of the contested trade mark. It submits extracts from
the EUTM proprietor’s website to show that the EUTM proprietor uses the sign in a
descriptive manner and expresses surprise at the fact that yet, the EUTM proprietor
attempts to invoke its trade mark against the applicant’s UK trade mark registration. It
maintains its position and requests that the mark be cancelled in its entirety.
The EUTM proprietor reiterates his previously raised arguments and insists that the
application be rejected.
Decision on Cancellation No 12 898 C page: 3 of 7
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE
(ARTICLE 8(4) EUTMR)
Pursuant to Article 60(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 EU 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.
a) 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.
Decision on Cancellation No 12 898 C page: 4 of 7
The applicant based the application on a number of earlier rights, all including the term
‘CARDIP’ and all allegedly used in the course of trade in the United Kingdom for the
following goods and services: automotive paints; coatings in the nature of paints for
use in the automotive industry; automotive cleaning preparations; automotive
refinishing.
The applicant submitted the following documents to prove use of the earlier signs:
An excerpt from ‘Getonline’ showing that the website with domain name
‘cardipuk’ was created on 23/04/2012 and with the domain name
‘cardipuk.co.uk’ on 08/09/2012, last update on 08/09/2014.
Website printout using Wayback Machine showing the website
www.cardipuk.com displaying the sign from
16/09/2012.
Nine invoices for goods and services related to car painting, all dated in the first
quarter of 2013.
Website printouts showing the products with the mark ‘CARDIPUK’, undated.
Financial statements for the periods 01/01/2013 to 18/12/2013 and 05/07/2013
to 31/12/2014.
Rights falling under Article 8(4) EUTMR may only be invoked if their use is of more than
mere local significance. The proprietors of rights the use of which is of mere local
significance retain their exclusive rights under the applicable national law pursuant to
Article 138 EUTMR. The question whether the use of a non-registered sign is of more
than mere local significance will be answered by applying a uniform European standard
(18/04/2013, T-506/11 & T-507/11, Peek & Cloppenburg, EU:T:2013:197, § 19, 47-48).
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).
The signs invoked under Article 8(4) EUTMR must be in use not only at the time of
filing of the contested mark but it must continue to be used at the time of filing of the
invalidity request. In this regard, the Cancellation Division refers to the decision of the
second Board of Appeal in case R-1822/2010-2, where the Board confirmed that ‘the
requirement to show use of the sign, and thus to show its continued existence between
Decision on Cancellation No 12 898 C page: 5 of 7
the filing date of the contested EUTM and the filing of the invalidity request, is a matter
that must be proved. Rule 19(1) and (2)(d) EUTMIR [Regulation (EC) No 2868/95]
state that, where an opposition is based on Article 8(4) [EUTMR], evidence of, inter
alia, its ‘continued existence’ must be adduced within the period given by the Office for
presenting or completing facts, evidence or arguments in support of the opposition.
Failure to prove the existence, validity and scope of protection of the earlier mark or
right within that period will lead to the opposition being rejected as unfounded (Rule
20(1) EUTMIR [Regulation (EC) No 2868/95]). In the Board’s opinion, these Rules
apply mutatis mutandis to cancellation proceedings’.
This was confirmed by the General Court in judgment of 23/10/2013 in case T-581/11.
The Court held that the earlier right relied on in support of an opposition must still exist
at the time that notice of opposition is filed. By analogy, the earlier right relied on in
support of an application for a declaration of invalidity must still exist at the time that
application is made. This presupposes normally that the sign in question must still be in
use at the time of the filing of the notice of opposition or of the application for a
declaration of invalidity. Indeed, it is precisely the use of the sign in the course of trade
which is the basis of the existence of the rights to that sign (23/10/2013, T-581/11,
Baby Bambolina, EU:T:2013:553, § 26 and 27).
In the present case, the evidence does not contain sufficient indications as regards use
of the invoked earlier rights at the time of filing of the invalidity request (04/05/2016).
The most relevant documents showing some commercial activity, the invoices, are
concentrated in the first quarter of 2013, that is, three years before the filing of the
invalidity request. They do not show high intensity of use in terms of volume of sales (a
few hundred to over a thousand British pounds per invoice), frequency, regularity or
long term character of use.
The financial statements originate in the applicant itself or in its predecessor, Mr
Bishop. It is expressly indicated that they were not audited. As far as the probative
value of evidence originating in the parties interested in the proceedings is concerned,
the Office makes a distinction between statements coming from the sphere of the party
concerned itself or its employees and statements drawn up by an independent source,
following the established case-law (09/12/2014, T-278/12, PROFLEX, EU:T:2014:1045,
§ 51; 06/11/2014, T-463/12, MB, EU:T:2014:935, § 54). Statements coming from the
sphere of the owner of the earlier mark (drawn up by the interested parties themselves
or their employees) are generally given less weight than independent evidence. This is
because the perception of the party involved in the dispute may be more or less
affected by personal interests in the matter (11/01/2011, R 0490/2010-4, BOTODERM,
§ 34; 27/10/2009, B 1 086 240, MAISONS DU MONDE; 31/08/2010, B 1 568 610, THE
RACE LEGENDS).
In the present case, not only is the probative value of these financial statements
limited, but also, in the case of the statements concerning the period 05/07/2013 to
31/12/2014, since the data is not divided into shorter periods and it is not in any other
manner specified in more detail to which particular time they refer, it is impossible to
say whether the sales they refer to were concentrated in 2013 or whether they were
spread within the entire period until the end of 2014. In any case, this data are in no
way supported by any other evidence submitted (the invoices relate to the time
previous to this period).
Decision on Cancellation No 12 898 C page: 6 of 7
The mention in the evidence that the last update of one of the websites was made on
08/09/2014 is not proof of any particular business activity especially that it is not
specified what was updated on the website.
Overall, the last mentions of use indicated in the evidence are approximately a year
and a half prior to the filing of the invalidity request. However, the documents
mentioning 2014 are either of limited probative value and not corroborated by other
evidence and they are unclear as to whether they in fact refer to 2014 at all (financial
statements), or do not refer to any commercial activity (website update). The use
demonstrated by the invoices refers to three years before the filing of the invalidity
request and does not show use of a great intensity, geographical extent or long term
use. Under such circumstances, the evidence, even taken as a whole, does not allow
for the conclusion that any of the signs invoked was used in the course of trade of more
than mere local significance at the time of filing of the invalidity request.
It follows that the applicant failed to prove that the earlier rights on which the
application is based were used in the course of trade with more than mere local
significance. Since one of the requirements of Article 8(4) EUTMR is not fulfilled, the
application has to be rejected insofar as it is based on Article 60(1)(c) EUTMR in
conjunction with Article 8(4) EUTMR.
COSTS
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the costs incurred by the EUTM
proprietor in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be
paid to the EUTM proprietor are the representation costs, which are to be fixed on the
basis of the maximum rate set therein.
The Cancellation Division
María Belén
IBARRA DE DIEGO
Michaela SIMANDLOVA Pierluigi M. VILLANI
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.
Decision on Cancellation No 12 898 C page: 7 of 7
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.