CANCELLATION DIVISION
CANCELLATION No 12971 C (INVALIDITY)
Bonnier Publications A/S, Strandboulevarden 130, 2100 København Ø, Denmark
(applicant), represented by PLESNER, Amerika Plads 37, 2100 Copenhagen Ø,
Denmark (professional representative)
a g a i n s t
LYTESS, société anonyme, 23 rue des Hautes Roches, 37230 Fondettes, France
(EUTM proprietor), represented by INSCRIPTA, 10, rue d’Aumale, 75009 Paris, France
(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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The applicant filed an application for a declaration of invalidity against European Union
trade mark No 12 956 611 FIT ACTIVE (word mark) (the EUTM). The request is
directed against some of the goods covered by the EUTM, namely:
Class 25: Clothing; Sportswear; Headgear; Socks; Stockings; Tights; Leg warmers;
Garters; Petticoats; Pants (Am.); Shorts; Nightwear; Underwear; Slips
(undergarments); Pants (Am.); Bras; Knickers; lingerie items; Underwear;
Singlets; Sports singlets; Swimming costumes; all the afore-mentioned with
the exception of babies’ pants and undergarments.
Class 28: Body protection equipment for sport, namely sporting articles for protection
against injury to the limbs and joints of the human body (legs, ankles,
knees, arms, wrists, elbows, shoulders); Paddings (Protective -) [parts of
sports suits]; Leg guards adapted for playing sport; protecting knee pads
for sports; Elbow pads for sports.
Decision on Cancellation No 12971 C page:2 of 7
The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c)
EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
In the request for cancelation, the applicant merely argues that the EUTM is devoid of
any distinctive character in relation to the goods in Classes 25 and 28.
The EUTM proprietor argues that the request lacks any arguments why the EUTM is
non distinctive. It refers to Article 95 EUTMR (old Article 76 EUTMR) and the fact that
the Office must not go beyond the legal arguments presented by the applicant. In
addition, the EUTM proprietor considers that this lack of argumentation is evidence of
the applicant’s bad faith initiating the proceedings in reaction to the opposition filed by
the EUTM proprietor against the applicant’s EUTM application No 14 999 734
. The EUTM proprietor considers that the applicant’s behaviour is
contradictory as it is seeking registration for ACTIVE FIT at the same time that it is
challenging the distinctiveness of FIT ACTIVE. As regards the distinctiveness of the
EUTM, the proprietor considers the term ACTIVE vaguely allusive so the EUTM as a
whole is not descriptive of the relevant goods. It refers to previous registered EUTMs
containing the word ACTIVE and two opposition decisions addressing the
distinctiveness of ACTIVE in connection to goods in Class 25.
In reply, the applicant considers the EUTM descriptive. It provides the following
meanings for FIT (1) to be appropriate or suitable; (2) to be of the correct size or
shape, accompanied by a transcript from Collins English Dictionary. As a result, it
considers that the term FIT will be understood by the relevant public as if the goods in
Class 25 and the goods in Class 28 ‘are designed to fit all sizes of consumers’. It
includes references to the Office’s refusal decisions regarding the registration of the
EUTMs COOLFIT, COMFORT FIT and UNI-FIT in connection to goods in Class 25.
The applicant also provides the following meanings for ACTIVE (1) in a state of action;
moving, working, or doing something; (2) busy or involved = active lifestyle; (3)
physically energetic. I also provides transcripts from the Collins English Dictionary and
therefore considers that this term ‘will be understood by the relevant public as referring
to being active, physically energetic and as such, it may be allusive to the type of
goods at hand, clothing and equipment intended for sporting activity’. It also refers to
EUIPO’s decisions regarding the trade mark ACTIVE. However, it contests the EUTM
proprietor’s references to prior Office registrations of trade marks containing ACTIVE.
Based on case-law, whether or not a mark is registrable is to be decided solely on the
basis of the EUTMR.
Based on its conclusions on descriptiveness, the applicant considers the EUTM non
distinctive. It further argues that the terms ACTIVE FIT/FIT ACTIVE are commonly used
in the relevant market. It provides undated screenshots of various internet pages
(www.activefit.co, www.mountain-equipment.co.uk/active_fit, www.activefit.org,
www.fitactive.pl).
Finally, with regards to its application for registration of the EUTM No 14 999 734
, it considers that it is distinctive because of its figurative elements. It also
refers to its application No 15 604 218 .
Decision on Cancellation No 12971 C page:3 of 7
The EUTM proprietor did not present observations in reply.
ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN
CONJUNCTION WITH ARTICLE 7 EUTMR
According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be
declared invalid on application to the Office, where it has been registered contrary to
the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some
of the goods or services for which the European Union trade mark is registered, the
latter will be declared invalid only for those goods or services.
Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies
notwithstanding that the grounds of non-registrability obtain in only part of the Union.
As regards assessment of the absolute grounds of refusal pursuant to Article 7
EUTMR, which were the subject of the ex officio examination prior to registration of the
EUTM, the Cancellation Division, in principle, will not carry out its own research but will
confine itself to analysing the facts and arguments submitted by the parties to the
invalidity proceedings.
However, restricting the Cancellation Division to an examination of the facts expressly
submitted does not preclude it from also taking into consideration facts that are well
known, that is, that are likely to be known by anyone or can be learned from generally
accessible sources.
Although these facts and arguments must date from the period when the European
Union trade mark application was filed, facts relating to a subsequent period might also
allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010,
C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).
Consideration common to all the grounds invoked in conjunction with
Article 59(1)(a) EUTMR, namely Article 7(1)(b) and (c) EUTMR
The EUTM was applied for on 10/06/2014 and registered on 15/10/2014. It consists of
the word mark ‘FIT ACTIVE’ in connection with the following contested goods:
Class 25: Clothing; Sportswear; Headgear; Socks; Stockings; Tights; Leg warmers;
Garters; Petticoats; Pants (Am.); Shorts; Nightwear; Underwear; Slips
(undergarments); Pants (Am.); Bras; Knickers; lingerie items; Underwear;
Singlets; Sports singlets; Swimming costumes; all the afore-mentioned with
the exception of babies’ pants and undergarments.
Class 28: Body protection equipment for sport, namely sporting articles for protection
against injury to the limbs and joints of the human body (legs, ankles,
knees, arms, wrists, elbows, shoulders); Paddings (Protective -) [parts of
sports suits]; Leg guards adapted for playing sport; protecting knee pads
for sports; Elbow pads for sports.
Relevant public
The applicant does not provide any definition of the relevant public. However,
considering that it provides definitions of the terms FIT and ACTIVE from an English
dictionary (Collins English Dictionary), it is to be understood that the applicant defines
Decision on Cancellation No 12971 C page:4 of 7
the relevant public as the English-speaking part of the public in the EU. The EUTM
proprietor does not contest this point.
The Cancellation Division will therefore focus the assessment of the request for
invalidity on the English-speaking part of the public in the EU. Moreover, taking into
account the relevant goods in Class 25 and 28, the relevant public is the public at
large.
Relevant point in time
The relevant point in time in respect of which the assessment of the claimed descriptive
character or lack of distinctiveness of the sign ‘FIT ACTIVE’ must be made is the date
of application of the trade mark. In other words, it is necessary to establish whether or
not the expression ‘FIT ACTIVE’ was descriptive of the goods at the time of its filing
(i.e. 10/06/2014).
Descriptiveness – Article 7(1)(c) EUTMR
Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or
indications which may serve, in trade, to designate the kind, quality, quantity, intended
purpose, value, geographical origin or the time of production of the goods or of
rendering of the service, or other characteristics of the goods or service’ are not to be
registered.
It is settled case-law that each of the grounds for refusal to register listed in
Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is
appropriate to interpret those grounds for refusal in the light of the general interest
which underlies each of them. The general interest to be taken into consideration must
reflect different considerations according to the ground for refusal in question
(16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532, § 25).
By prohibiting the registration as EU trade marks of the signs and indications to which it
refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely
that descriptive signs or indications relating to the characteristics of goods or services
in respect of which registration is sought may be freely used by all. That provision
accordingly prevents such signs and indications from being reserved to one
undertaking alone because they have been registered as trade marks (23/10/2003,
C-191/01 P, Doublemint, EU:C:2003:579, § 31).
According to settled case-law, the signs and indications referred to in Article 7(1)
(c) EUTMR are those which may serve in normal usage, from a consumer’s point of
view, to designate, either directly or by reference to one of their essential
characteristics, goods such as those in respect of which the contested EUTM is
registered (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 24).
In accordance with the same case-law, for a sign to be caught by the prohibition set out
in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship
between the sign and the goods in question to enable the public concerned
immediately to perceive, without further thought, a description of the goods in question
or one of their characteristics (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25).
Moreover, to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the
possible meanings of the sign designates a characteristic of the goods concerned
(11/04/2008, C-344/07 P, Focus, EU:C:2008:222, § 21).
Decision on Cancellation No 12971 C page:5 of 7
The existence of such a relationship must be assessed, firstly, in relation to the goods
covered by the contested EUTM and, secondly, in relation to the perception of the
relevant public (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30).
The parties’ arguments have been summarised above.
The Cancellation Division considers that the applicant failed to prove that, at the time of
filing (10/06/2014), taken as a whole, the mark ‘FIT ACTIVE’ immediately informed the
relevant consumer in the European Union, without further reflection, of any
characteristics of the goods for which the mark is registered.
First, the Cancellation Division does not contest that the term FIT, in relation to the
relevant goods in Class 25 and Class 28, can be perceived as descriptive of goods
which are designed to fit all sizes. However, as the applicant itself acknowledges, the
term ACTIVE is only “allusive” of the types of goods at hand. The Cancellation Division
considers that the term ACTIVE in connection with clothing, footwear, headgear and
sporting equipment for the protection for parts of the human body does not provide
direct information that these goods are intended for sporting activities and active
lifestyles.
Secondly, the Cancellation Division notes that the applicant has failed to submit any
argument why the trade mark as a whole will be descriptive. The applicant has only
made reference to the case-law in 12/02/2004, C-265/00 BIOMILD according to which
merely brining descriptive elements together without introducing unusual variations, in
particular as to syntax or meaning, cannot result in anything other than a descriptive
sign. However, as previously indicated, the Cancellation Division does not agree with
the finding that ACTIVE is as such descriptive of the relevant goods. Moreover, even if
both FIT and ACTIVE would be perceived as descriptive terms in relation to the
relevant goods, absent any other arguments from the applicant, the Cancellation
Division fails to see the descriptive message that the combination of those two terms
into the expression FIT ACTIVE conveys to the relevant consumer.
Third, with regards to the applicant’s reference to the refusal of the EUTMs COOLFIT,
COMFORT FIT and UNI-FIT as well as the EUTM ACTIVE, it should be noted that
according to settled case-law, ‘decisions concerning registration of a sign as a
European Union trade mark … are adopted in the exercise of circumscribed powers
and are not a matter of discretion’. Accordingly, the registrability of a sign as a
European Union trade mark must be assessed solely on the basis of the EUTMR, as
interpreted by the Union judicature, and not on the basis of previous Office practice
(15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T-36/01, Glass
pattern, EU:T:2002:245, § 35).
In addition, it is clear from the case-law of the Court of Justice that observance of the
principle of equal treatment must be reconciled with observance of the principle of
legality according to which no person may rely, in support of his claim, on unlawful acts
committed in favour of another’ (27/02/2002, T-106/00, Streamserve, EU:T:2002:43,
§ 67).
In any event, the Cancellation Division considers that the refusal of the EUTMs
mentioned by the applicant has no bearing in the present proceedings. They refer to
different trade marks where only one of the elements of the contested EUTM, that is,
either FIT or ACTIVE were assessed in isolation or with other elements. In all the
refusals, the Office concluded that the trade mark as a whole was descriptive.
However, as already indicated, the applicant has failed to show why the expression FIT
ACTIVE as a whole is not distinctive
Decision on Cancellation No 12971 C page:6 of 7
Fourth, the undated internet screen shots do not provide information as to a descriptive
use of the expression FIT ACTIVE. Rather, the internet pages show a trade mark use
of the term in relation to sportswear and trade mark use of the
expressions and in relation to
sport and wellness services.
In the light of the foregoing, the Cancellation Division considers that the trade mark ‘FIT
ACTIVE’ did not convey obvious and direct information at the time of its filing regarding
the kind, quality, quantity, intended purpose, value, geographical origin or the time of
production of the goods or of rendering of the service in question, or other
characteristics such as their subject matter.
It follows that the link between the sign ‘FIT ACTIVE and the goods referred to in the
application for registration is not sufficiently close in the European Union for the sign to
fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and
Article 7(2) EUTMR.
Non-distinctiveness – Article 7(1)(b) EUTMR
Under Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character
are not to be registered.
The distinctive character and descriptiveness of a trade mark must be assessed, first,
in relation to the goods or services in respect of which registration of the sign is sought
and, second, in relation to the perception of the section of the public targeted, which is
composed of the consumers of those goods or services (27/11/2003, T-348/02, Quick,
EU:T:2003:318, § 29).
According to case-law, the signs referred to in Article 7(1)(b) EUTMR are signs which
are regarded as being incapable of performing the essential function of a trade mark,
namely that of identifying the commercial origin of the goods or services, thus enabling
the consumer who acquired them to repeat the experience if it proves to be positive, or
to avoid it if it proves to be negative, on the occasion of a subsequent acquisition
(27/02/2002, T-79/00, Lite, EU:T:2002:42, § 26).
In this regard, the applicant has not provided evidence or convincing arguments that
prove that the contested EUTM is devoid of distinctive character.
The applicant’s arguments that the EUTM lacks distinctiveness are based on the
assumption that the contested sign, ‘FIT ACTIVE’, is descriptive. However, as seen
above, it cannot be concluded that the contested sign was descriptive at the time of its
filing. Therefore, a lack of distinctiveness of the contested EUTM cannot be affirmed on
account of its alleged descriptiveness.
In view of the above, the invalidity application must be rejected also on the ground for
invalidity laid down in Article 52(1)(a) EUTMR in conjunction with Article 7(1)
(b) EUTMR.
Decision on Cancellation No 12971 C page:7 of 7
Conclusion
In the light of the above, the Cancellation Division concludes that the application should
be rejected.
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
José GARRIDO OTAOLA Elisa ZAERA CUADRADO Ana MUÑIZ RODRÍGUEZ
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.