CANCELLATION No 13625 C (INVALIDITY)

Strategie, société anonyme, Rue Grand Aaz, 31, 4680 Hermée, Belgium (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Peter Mönius, Spardorfer str. 19, 91054 Erlangen, Germany (EUTM proprietor), represented by AFK-Rechtsanwälte, Bauhofstr. 5, 91052 Erlangen, Germany professional representative).

On 18/07/2017, 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 of European Union trade mark No 9 900 002, DIE GOLDENE STRATEGIE (word mark). The application is based on:

• Benelux trade mark registration No 743 255 for goods and services in Classes 16, 35, 36 and 42.
• Benelux trade mark registration No 793 319  for goods and services in Classes 16, 35 and 42.

The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR for the abovementioned trade marks.

Additionally, the applicant invoked the applicability of Article 53(1)(c) EUTMR in connection with Article 8(4) EUTMR, claiming the use as company name/trade name of the sign STRATEGIE in Belgium, in connection with advertising, communication and marketing services sensu lato, financial sponsorship services.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that as regards Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR there is a likelihood of confusion between its Benelux registrations and the contested mark and, as regards Article 53(1)(c) EUTMR in connection with Article 8(4) EUTMR the use of a similar trade mark with its sign used in the course of trade may lead the public to think that the services in Classes 35, 36 and 41 originate from the applicant, causing a likelihood of confusion.

In support of its observations, the applicant filed the following evidence:

1. Extracts from the official database for the earlier marks and their translations;
2. Extract from the Belgian company register about the company Strategie;
3. Printouts from the STRATEGIE’s website;
4. Quotes from Art.12 of the Uniform Benelux Law on Marks, article 2.20 of the Benelux Convention concerning Intellectual Property (trademarks and designs) of 25/02/2005, (both in English only), extract in French and English from the Code Belge de Droit Économique, partie VI” Practiques du marché et protection du consumateur”.

The EUTM proprietor did not reply.

SUBSTANTIATION of the Benelux trade mark registration No 743 255

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.

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) EUTMIR in order for an invalidity application to be admissible it must contain particulars of the right or rights on which the application is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity.

Even though in invalidity proceedings based on relative grounds there is no time limit for the substantiation of the earlier rights, and the proof of the existence, validity and scope of protection of all the earlier rights and the evidence proving the applicant’s entitlement to them have to be filed together with the application, this does not mean that there is no distinction between admissibility and substantiation requirements. If, for instance, an applicant clearly identifies the earlier mark on which the application is based (Rule 37(b)(ii) EUTMIR) and indicates the evidence in support of those grounds (Rule 37(b)(iv) EUTMIR), the application will be admissible.

The applicant will have to substantiate this claim on its own motion before a decision is taken by submitting more evidence, such as a certificate of registration for the Benelux trade mark invoked. The absence of a time limit for the substantiation of the earlier rights means that at any subsequent stage of the proceedings (before the closure of the adversarial part) the applicant can remedy, on its own motion, any deficiency as regards substantiation.

In its invalidity application of 01/09/2016, the applicant indicated particulars of the earlier rights on which the cancellation application is based and attached a printout from the Benelux official trade mark database of the mark No 743 255.

According to this extract the mark was due to expire on 24/10/2013, therefore almost three years before the date of the invalidity application. The Cancellation Division notes also that the printout bears the date 27/12/2012; thus, when the respective document was printed, the Benelux trade mark was indeed valid. However, the respective document cannot be used as evidence that the Benelux registration was renewed and is, therefore, valid at the moment of the invalidity application (2016) and even less at the moment of the present decision. There is no evidence in the file as regards this trade mark’s renewal although, for the other Benelux trade mark (No 793 319), such evidence exists.  

By not providing the Cancellation Division with all the relevant information regarding the renewal of the earlier mark, the applicant failed to prove the validity of this earlier mark. As stated above, the Cancellation Division cannot take into account any alleged rights for which the applicant does not submit appropriate evidence. By not proving the validity of the earlier mark, the applicant failed to substantiate its earlier right and, therefore, the application is rejected as unfounded insofar as it was based on the Benelux trade mark registration No 743 255.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

(Benelux trade mark registration No 793 319  )

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.

1. The goods and services

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

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

Class 16        Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; bookbinding material; Photographs, stationery; Plastic materials for packaging (not included in other classes).

Class 35        Services rendered by an advertising, marketing and corporate communications agency; Business management; Information and advice on business management, advertising, marketing and corporate communication; public relations; Organization of events for commercial or advertising purposes.

Class 42        Graphic art design; Industrial design services; packaging design services; engineering; Design and development of websites; Design and development of computer software.

The contested services are the following:

Class 35         Advertising.

Class 36         Finance; Insurance; Monetary affairs.

Class 41         Providing of training.

Contested services in Class 35

Both trade marks cover advertising services in this class; therefore, the services are identical.

Contested services in Class 36

The contested services have no connections with the earlier goods and services. They include mainly financial and monetary services (Class 36) which are different from the applicant’s goods in Class 16 and services in the fields of advertising; business management; public relations and commercial and advertising events in Class 35 and those relating to design in Class 42. They differ in nature and purpose. These services have different providers, channels of trade and end users from the applicant’s goods and services. Even if financial entities often provide to businesses advice related to financial services, they do not offer information and advice on business management. Companies handling others’ investments operate in a different field of business than business management consultants. Furthermore, the goods and services are not in competition with or complementary to each other. Therefore, the contested services in this class are dissimilar to the applicant’s goods and services.  

Contested services in Class 41

The contested services providing of training are similar to the applicant’s goods printed matter. This is because in order to give trainings it is helpful and usual to use printed matter. Thus, they are complementary and generally share the same public and distribution channels.

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 to the earlier goods and services are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specific nature of the goods/services, frequency of purchase and their price.  

3. The signs

	DIE GOLDENE STRATEGIE
Earlier trade mark	Contested trade mark

The relevant territory is represented by the Benelux countries.

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 the words ‘strategie’ (in white lettering over a red abstract background) and ‘design’ (in a black script resembling handwriting).

The word ‘design’ is worldwide used and will be understood by the relevant public as meaning ‘the art of making plans or drawings for something’^[1] or ‘the way in which something is planned and made’1 and it is descriptive for the relevant goods and services in Classes 16 and 35 (printed matters and advertising).

The stylisation of the word elements of the earlier mark and the figurative element represented by a red abstract background have a purely decorative role.

As regards the common word ‘strategie’, this will be understood by the relevant public as ‘a detailed plan for achieving success in situations such as war, politics, business, industry, or sport, or the skill of planning for such situations’1. The Cancellation Division considers that taking into account the relevant goods and services, the respective term has a limited ability to indicate the commercial origin (if at all).

The entire slogan composing the contested sign will be understood by the German speaking public as The Golden Strategy. Taking in account the relevant services, the expression has for this part of the public some laudatory connotations and, therefore, has a lower than average degree of distinctiveness. For the rest of the public the expression DIE GOLDENE is meaningless and, therefore, distinctive.

Visually, the marks coincide in ‘Strategie’, a word having a lower than average degree of distinctive character for the relevant goods and services. They differ in the opposite positions occupied by this word in the marks, namely primary position in the earlier mark and ultimate position in the contested one, none of them being dominant. Lastly, the marks have the additional elements mentioned above which, descriptive or not, further differentiate the marks. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the word STRATEGIE, present identically in both signs; however, like visually, also aurally the different position of the coinciding word in the marks has a strong impact and minimalizes the similarity between the marks. Additionally, the pronunciation differs in the words DESIGN, DIE and GOLDENE. The fact that these words are either non distinctive or, as explained above, weak, for part of the public, does not increase the aural similarity of the marks since also the common word does not possess a significantly stronger distinctiveness.  Therefore, the signs are aurally similar to a low degree.

Conceptually, and bearing in mind the above considerations on the concepts with which the marks will be associated, there is a link to the extent where consumers will grasp in both marks the notion of ‘strategy’.  However, given the very limited ability of this term to indicate commercial origin (if at all), there is only a very low degree of overall conceptual similarity, if any.  

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.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what was stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average.

5. Global assessment, other arguments and conclusion

The services of the contested sign in Classes 35 and 41 are identical and similar respectively to some of the goods and services of the earlier mark.

The marks have been found similar to a low degree from a visual and aural perspective while from a conceptual point of view the marks display a very low degree of conceptual similarity, if any.  

The Cancellation Division considers that although the marks share the word STRATEGIE, a likelihood of confusion is excluded in the present case. The key points behind this outcome are the totally different structure of the marks, the poles apart position of the common word in the marks which makes the marks very different in their beginnings, the presence of additional elements (which despite being weak or non-distinctive are clearly perceptible) and last but not least the very low distinctiveness (if any) of the common word for the relevant goods and services and the low distinctiveness of the earlier mark as a whole.

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the invalidity application must be rejected as regards Article 8(1)(b) EUTMR in conjunction with Article 53(1)(a) EUTMR.

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

The applicant invokes Article 8(4) EUTMR for an earlier trade name/company name used in Belgium in the course of trade of more than local significance for the services explained in the Reasons part.

According to Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR (hereafter referred to as Article 8(4) EUTMR), upon cancellation action by the proprietor of a nonregistered 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 Union legislation or the law of the Member State governing that sign:

1. 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;

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

The grounds of refusal of Article 8(4) EUTMR are therefore 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 invalidity applicant acquired rights to the sign on which the application 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. Thus, where a sign does not satisfy one of those conditions, the request as based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

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.

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

The contested trade mark was filed on 15/04/2011. Therefore, the applicant was required to prove that the earlier Belgian trade name/company name on which the invalidity request is based was used in the course of trade of more than local significance in Belgium, before that date.

The evidence submitted by the applicant to show use of the earlier sign in the course of trade was listed above.

The extract from the Belgian Company Register, shows that the “STRATEGY” company was founded on 27/05/1998 and includes information regarding the activities for which the company is registered, for tax purposes, namely activities of an advertising agency. The document is in French, and has only a few handwritten translations of some parts of it. The printouts of the applicant’s website, provide information about the applicant’s company “DNA approach” in terms of project management strategy as well as providing some examples of the applicant managing advertising campaigns for some companies such as Sanofi, Velux, Audi, Volkswagen, Nescafé etc. The signs and as well as the internet address www.strategie.be are visible on the pages. However, no company name or trade name appears as such.

When determining the significance of the use made of a trade sign under Article 8(4) EUTMR, one must consider the territory in which it is used, the length of time and economic dimension of the use, 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).

Under Article 8(4) EUTMR, the fact that the applicant may, in accordance with the law of the Member State governing the sign, have acquired exclusive rights plainly enforceable against subsequent trade marks on the basis of its registration only, does not exempt it from the burden of proving that the sign in question has been used in the course of trade of more than local significance prior to the filing of the contested trade mark. The extract from the Belgian Company Register has no value in terms of proving the use of the earlier sign in accordance with the requirements of Article 8(4) EUTMR.

As regards the website extracts: the different printouts only provide a short, unspecific description of some activities carried out for some customers. No information at all is given regarding the economic significance of these activities or regarding the date on which they took place (the only date mentioned is the printing date 23/04/2010 of these pages, which is not related to the date of actual use of the earlier sign).

From these printouts it is not possible to ascertain whether the place of use is Belgium, let alone whether there has been a use of more than local significance in this country. Belgium is mentioned only as ‘.be’, i.e. the Country Code Top Level Domain of Belgium, in the domain name http://strategie.be/– but the country is mentioned nowhere else on these documents, not even as the address of the applicant’s company. Neither do the documents prove that the company name/trade name invoked was the one that was used in relation to the activities described on those pages or that it was given any type of public exposure.

Considering all the above, the Cancellation Division concludes that the evidence furnished by the applicant is insufficient to prove that the earlier sign was used in the course of trade in the relevant territory. Given that one of the necessary requirements of Article 8(4) CTMR is not met, the invalidity request must be rejected as unfounded as far as it is based on this ground.

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) 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

Oana-Alina STURZA

Ioana MOISESCU

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.

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