CANCELLATION No 13 243 C (INVALIDITY)

MacGregor Hatlapa GmbH & CO. KG, Tornescher Weg 5-7, 25436 Uetersen, Germany (applicant), represented by Berggren Oy, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional representative)

a g a i n s t

VTE-Filter GmbH, Hans-Böckler-Ring 31, 22851 Norderstedt, Germany (EUTM proprietor), represented by Rainer Jaeschke, Grüner Weg 77, 22851 Norderstedt, Germany (professional representative).

On 21/06/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 14 894 596 is declared invalid for some of the contested and goods and services, namely:

Class 7: Filters and parts therefor for motors, engines and machines; Oil filters; Fuel filters; Water filters, being parts of motors, engines and machines.; Air filters being parts of motors, engines and machines: filter inserts for the aforesaid goods; filter candles; filter housings; joints for engines and machines and filters; separators, solids removal plants, separators for liquids, Gas separators; coalescers being parts of motors, engines or machines; centrifuges; including all of the aforesaid goods for industrial and maritime purposes.

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

Class 35: Retailing in the field of filter technology; Wholesaling in the field of filter technology.

Class 42: Engineering in the field of filter technology, separation technology and process engineering.

        

4.        Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 14 894 596 ‘HATLAPA’. The application is based on international trade mark registration No 637 084 designating the Czech Republic, Poland and Slovakia and on German trade mark registration No 2 023 234 ‘HATLAPA’. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR in relation to both of the earlier trade marks, and in conjunction with Article 8(5) EUTMR, in relation to only the earlier German trade mark only. The applicant also invoked Article 52(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant provides background information regarding its company and the ownership of the trade mark ‘HATLAPA’. It explains that ‘MacGregor Hatlapa GmbH & Co. KG’ is a major player in the offshore and marine industries and provides world leading engineering solutions and services associated with a strong portfolio of brands including the trade mark ‘HATLAPA’. It further indicates that in 2013, it bought the company ‘Hatlapa Uetesener Maschinenfabrik GmbH & Co. KG’ which had been using the trade mark ‘HATLAPA’ since 1938 and that it has become the sole owner of the trade mark since then.

The applicant adds that the company name and the trade mark ‘HATLAPA’ date back to 1919 when they were founded by the German engineer Max Hatlapa and that over the last 100 years, the brand has won a worldwide reputation for quality German-engineered products. According to the applicant, its manufacturing site in Uetesen, Germany, has expanded considerably from its beginnings and is now one of the largest employers in the town with over 18 manufacturing halls and numerous office buildings. The applicant also indicates a high turnover figure.

The applicant refers to ‘HATLAPA’-branded winches, compressors and steering gears being sold worldwide and indicates that the goods also include anchoring, mooring and cargo handling equipment. It adds that the company also delivers services around the globe through its local branches, offering troubleshooting, on-board repairs, replacement and spare parts, those services extending even beyond the company’s own product range to other suppliers’ products. In support of Hatlapa’s reputation for filters, it specifically refers to a subsidiary in Cyprus which produces coalescers and components for oily-water separators as well as lube oil and fuel filtration solutions.

As regards the EUTM proprietor, the applicant describes it as a supplier and manufacturer of filters, coalescers and ultrasonic cleaning units and centrifugal filters for marine and industrial applications in Germany which, like its own company, is also one of the relevant actors in the field of marine industry, hence one of its competitors.

According to the applicant, the contested EUTM was filed by the EUTM proprietor in bad faith namely by departing from the accepted principles of ethical behaviour or honest commercial and business practices.

In support of the above claim, the applicant puts forward that the companies are competitors in the same business field since they both provide products for maritime purposes, including filters and goods and services relating to filters.  In consequence, the applicant and the EUTM proprietor use the same distribution channels. In this respect, the applicant explains that it found out about the existence of the contested EUTM through a common business partner/supplier, ‘ShipServ’. The applicant adds that the signs at issue are identical and that ‘Hatlapa’ is a distinctive trade mark, which is 100 years old and has been registered since 1991, now enjoying worldwide reputation particularly in Germany where both companies are registered. The applicant also emphasises that it owns several ‘Hatlapa’ trade marks, namely one German trade mark applied for in 1991 and trade marks in Poland, the Czech Republic and Slovakia applied for in 1994. Finally, it stresses that the term ‘Hatlapa’ has been part of the company names ‘Hatlapa Uetersener Maschinenfabrik GmbH & Co. KG’ and ‘MacGregor Hatlapa GmbH & Co. KG’ and could not be unknown to the EUTM proprietor.

According to the applicant, it can be inferred from all of the above that the choice of the same trade mark, for similar business purposes, by the EUTM proprietor, cannot be due to coincidence and that the contested trade mark was filed in bad faith because the applicant wanted to take advantage of the reputation of the existing, reputed ‘HATLAPA’ trade marks.

The applicant also indicates that there is double identity or at least a likelihood of confusion between the contested EUTM and its own national trade mark registrations to the extent that the signs are identical and the goods and services are identical or similar since they are related to the marine business. Furthermore, as already mentioned, the applicant contends that the German trade mark ‘HATLAPA’ enjoys a reputation deriving from its long-standing use in the maritime industry for deck machinery, offshore equipment, steering gear for ships. Accordingly, the applicant requests that the EUTM be rejected on the grounds of Article 8(1) and 8(5) EUTMR.

In support of its claims, the applicant submits the following documents:

• A document in German, of which it explains that it is an extract from the German Trade Mark Register (Amstericht Pinneberg/”Ausdruck Handelsregister A”). The applicant clarifies that the item is submitted as evidence of the ownership of the trade mark ‘HATLAPA’ over the years, of the name changes from ‘Hatlapa Uetesener Maschinenfabrik GmbH & Co. KG’ to ‘MacGregor Hatlapa GmbH & Co. KG’ and of the fact that the latter is the owner of German trade mark registration No 2 023 234.

• An internet printout (website not indicated, undated), a leaflet and a catalogue. The internet extract describes ‘HATLAPA’ as a leading marine equipment manufacturer which has been supplying the shipbuilding industry for 90 years, with headquarters near Hamburg and offices worldwide. It is also indicated that it is the preferred partner of many companies in the shipping industry and that it was acquired by the company Cargotec’s Mac Gregor in November 2013. The leaflet is dated April 2013 and concerns filtration technology and the ‘HATLAPA’ subsidiary in Cyprus. The catalogue is dated January 2013 and shows deck machinery (winches, capstans, towing and mooring equipment), offshore equipment, compressors and steering gear. It also refers to support services consisting of the provision of spares, engineers’ services, inspection/maintenance of winches, and steering gears, crane services.

• Printouts from the website www.shipserv.com, as printed on 05/07/2016. The first one corresponds to the profile of the applicant on that website and the content of the article is exactly the same as the one previously mentioned (internet printout not identified). The other one corresponds to the profile of the EUTM proprietor ‘VTE Filter GmbH’  which is described as a specialist in the filtration business for more than 60 years and that it is located in Hamburg, Germany

• Evidence in support of the earlier trade mark registrations:

• Extract from WIPO’s ROMARIN database concerning international registration No 637 084 designating Poland, the Czech Republic and Slovakia, in English except for the list of goods which is in French. The applicant is mentioned as the current owner of the registration whereas the previous owner was ‘Hatlapa Uetersener Maschinenfabrik GmbH Co. & KG’.

• Extract from the German Office’s database dated 04/07/2016 concerning German trade mark registration No 2 023 234 for the word ‘Hatlapa’, in German accompanied by a translation in English, except for the list of goods. The document only mentions ‘Hatlapa Uetersener Maschinenfabrik GmbH Co. & KG’ as the owner, and does not refer to  the applicant

• Results from a search on the website www.shipserv.com, dated 05/07/2016: the search is for companies located in Germany whose profiles include the word ‘’Hatlapa’’. The list of results includes the names of the applicant’s and of the EUTM proprietor’s companies as well as the names of other companies.

Furthermore, in reply to the Office’s request to provide the list of goods and services of the earlier marks in the language of the proceedings (English), the applicant subsequently re-submitted the abovementioned evidence in support of the earlier marks and, separately, a translation of the list of goods in English. As far as the German trade mark is concerned, the extract is the same as the one previously submitted along with the application for invalidity.

The EUTM proprietor did not submit any observations in reply.

RELATIVE GROUNDS FOR INVALIDITY – Article 53(1)(a) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR and with Article 8(5) EUTMR

SUBSTANTIATION – DE No 2 023 234

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 for invalidity does not submit appropriate evidence.

According to Article 53(1) EUTMR a European Union trade mark shall be declared invalid on application to the Office when, inter alia, there is an earlier trade mark as referred to in Article 8(2) EUTMR.

According to Article 56(1)(b) EUTMR, an application for revocation of the rights of the proprietor of a European Union trade mark or for a declaration that the trade mark is invalid may be submitted to the Office, where Article 53(1) applies, by the persons referred to in Article 41(1) EUTMR.

According to Article 41(1)(a) EUTMR, in respect of Articles 8(1) and 8(5) EUTMR, the persons in question are the proprietors of the earlier trade marks referred to in Article 8(2) EUTMR as well as licensees authorised by the proprietors of those trade marks.

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.

According to Rule 98(2)(a) EUTMIR, unless otherwise provided in the Regulations, a document for which a translation has not been provided shall be deemed not to have been received by the Office where the translation is received after expiry of the relevant period (see also 05/03/2012, R 0826/2010-4, MANUFACTURE PRIM 1949, § 25).

In the present case, the applicant invokes the grounds of Article 53(1)(a) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR and Article 8(5) EUTMR on the basis of German trade mark registration No 2 023 234. According to the information on the application for invalidity, the applicant filed the invalidity application on the basis of the earlier German trade mark registration as the owner of the latter.

However, according to the printout from the German database submitted together with the application on 12/07/2016 and again on 21/09/2016, the owner of German trade mark registration No 2 023 234, on 07/04/2016, was ‘Hatlapa Uetesener Mashinenfabrik GmbH & Co. KG’, not the applicant ‘MacGregor Hatlapa GmbH & Co. KG’. The applicant’s name does not even appear on this document.

The applicant has also submitted together with the application for invalidity a document which it describes as an extract from the German Trade Mark Register (Amstericht Pinneberg/”Ausdruck Handelsregister A”). According to the applicant, this document proves that it is the owner of the trade mark ‘HATLAPA’, and the assignment from the previous owner ‘Hatlapa Uetesener Maschinenfabrik GmbH & Co. KG’ to ‘MacGregor Hatlapa GmbH & Co. KG’. However, this document has been submitted only in German  and is therefore deemed not to have been received.

Although 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. Applying by analogy Rule 19(2)(a)(ii) EUTMIR, if the application for invalidity is based on a registered trade mark which is not a European Union trade mark, the applicant must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate or equivalent documents emanating from the administration by which the trade mark was registered.

In the letter of 12/04/2016 by which the Office notified the applicant of the decision on admissibility, the applicant was explicitly informed that the documents and/or translations that it had submitted up to that stage with a view to completing the admissibility of the application might not be sufficient for the substantiation of the application for invalidity (proof of the existence and validity of the earlier right/s) as a whole, and that this would be examined when a decision on the substance on the case were taken.

In view of Article 76(1) EUTMR mentioned above, it was up to the applicant to submit evidence proving the existence, validity and scope of protection of the earlier rights and its entitlement to file an invalidity action on the basis of those rights. Since the documents submitted by the applicant are not sufficient to prove that the applicant is the owner of the earlier German trade mark and is, therefore, entitled to file the application on the basis of that trade mark, the application must be rejected as unfounded as it is based on that mark.

The examination of the application will now proceed on the basis of earlier international registration No 637 084 designating Poland, the Czech Republic and Slovakia, on the basis of which the applicant only invoked Article 8(1)(a) and (b) EUTMR.

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.

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 on which the application is based are the following:

Class 6:        Casks and barrels, silos, barrels of metal.

Class 7:        Compressors included in this class, conveyors for pallets, pallet machines and unpacking of goods, stacking machines and storage, including shelves for pallets and packages included in this class, automatic machines for wrapping pallets and stacking machines and storage casks, belt conveyors and escalators, crushers to reduce garbage into small pieces (trimmings) household, commercial and industrial (crushing and grinding garbage), conveyors, board ships machines, such as winches, hoists and specials winches, automatic machines for bottling barrels.

Class 12:        Rowing machines for boats.

The contested goods and services are the following:

Class 7: Filters and parts therefor for motors, engines and machines; Oil filters; Fuel filters; Water filters, being parts of motors, engines and machines.; Air filters being parts of motors, engines and machines: filter inserts for the aforesaid goods; filter candles; filter housings; joints for engines and machines and filters; separators, solids removal plants, separators for liquids, Gas separators; coalescers being parts of motors, engines or machines; centrifuges; including all of the aforesaid goods for industrial and maritime purposes.

Class 35: Retailing in the field of filter technology; Wholesaling in the field of filter technology.

Class 42: Engineering in the field of filter technology, separation technology and process engineering.

Contested goods in Class 7

The earlier mark is registered for all types of compressors (in Class 7). Compressors are machines used to supply air or other gas at increased pressure, e.g. to power a gas turbine. Compressors are used for a broad range of purposes and compressor parts may include different types of filters, separators, coalescers and centrifuges.

The mere fact that a certain product can be composed of several components does not establish automatic similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61).

Similarity will only be found in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity are fulfilled.

Such an exception is based on the fact that parts and fittings are often produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public, as in the case of spare or replacement parts. Depending on the product concerned, the public may also expect the component to be produced by, or under the control of, the ‘original’ manufacturer, which is a factor that suggests that the goods are similar.

In the present case, the contested filters and parts therefor for motors, engines and machines; oil filters; fuel filters; water filters, being parts of motors, engines and machines; air filters being parts of motors, engines and machines: filter inserts for the aforesaid goods; filter candles; filter housings; joints for engines and machines and filters; separators, solids removal plants, separators for liquids, gas separators; coalescers being parts of motors, engines or machines; centrifuges; including all of the aforesaid goods for industrial and maritime purposes are mechanical parts that may be manufactured by the same companies as the applicant’s compressors and share the same distribution channels. Furthermore, these goods target the same public. Therefore, they are similar to a low degree.

Contested services in Class 35

The contested retailing in the field of filter technology; wholesaling in the field of filter technology are not similar to any of the applicant’s goods in Classes 6, 7 and 12 to the extent that none of the latter are filters. Similarity between retail services or wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case.

Apart from being different in nature, since services are intangible whereas goods are tangible, the goods and services at issue serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Retail is commonly defined as the action of selling goods in relatively small quantities for use or consumption rather than for resale as opposed to wholesale which is the sale of commodities in quantity, usually for resale. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Therefore, the contested services of retailing in the field of filter technology; wholesaling in the field of filter technology are dissimilar.

Contested services in Class 42

The contested services of engineering in the field of filter technology, separation technology and process engineering are related to theoretical or practical aspects in complex fields of activity and are provided by engineers. By their nature goods are dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist of the provision of intangible activities. From this divergent nature, it follows that the method of use of goods and services is inherently dissimilar. Furthermore, there are no connections between those particular services and the earlier goods, to the extent that the opponent’s goods are not filters or separators, in particular no relation of complementarity or competition, or any coincidence in terms of purpose that could produce any level of similarity.

Therefore, the contested services are dissimilar to the applicant’s goods.

2. The signs

	HATLAPA
Earlier trade mark	Contested trade mark

Although the earlier mark is registered as a figurative trade mark, its figurative character results exclusively from the specific portrayal of the word ‘HATLAPA’, which departs from normal upper case font only in that the letters are depicted in bold. The difference between the earlier mark and the contested sign would not be noticed by the public.

Therefore, the signs are considered to be identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods and services, namely the goods in Class 7, are similar to a low degree to the goods covered by the earlier mark.

Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the cancellation application is upheld insofar as it is directed against these goods. Therefore, the contested trade mark must be declared invalid for the goods in Class 7.

The services in Classes 35 and 42 are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1) EUTMR in conjunction with Article 53(1)(a) EUTMR, the cancellation application based on Article 8(1)(a) and (b) EUTMR cannot be successful for these services.

The assessment of the application proceeds in relation to the applicant’s claims under Article 52(1)(b) EUTMR.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(b) EUTMR

General principles

Article 52(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60).).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

The applicant argues that it is obvious that the EUTM proprietor filed the contested EUTM in bad faith.

In supports of its claims, the applicant submits that given, on the one hand, the identity between the signs as well as the inherent distinctive character and the reputation of its earlier trade mark ‘HATLAPA’ particularly in Germany and, on the other hand, the fact that the companies at issue are both located in Germany and operate in the same field of business in which they are in competition with each other, it cannot be a coincidence that the EUTM proprietor has filed an identical trade mark.

The applicant also puts forward that it owns several earlier marks (namely the German registration and the international registrations invoked in those proceedings).

It infers from the above that the EUTM proprietor was bound to know about the existence of the prior ‘HATLAPA’ trade marks and that it filed the contested EUTM with a view to take advantage of their reputation.

Assessment of bad faith

Case-law shows three cumulative factors to be particularly relevant in order to establish bad faith:

• Identity/confusing similarity of the signs: The EUTM allegedly registered in bad faith must be identical or confusingly similar to the sign to which the invalidity applicant refers. Although the fact that marks are identical or confusingly similar is not in itself sufficient to show bad faith (01/02/2012, T-291/09, Pollo Tropical chicken on the grill, EU:T:2012:39, § 90), a dissimilar or not confusingly similar mark will not support a finding of bad faith.

• Knowledge of the use of an identical or confusingly similar sign: The EUTM owner knew or must have known about the use of an identical or confusingly similar sign by a third party for identical or similar products or services. There is knowledge, for example, where the parties have been in a business relationship with each other (could not ignore, and was probably aware that the invalidity applicant had been using the sign for a long time, 11/07/2013, T-321/10, Gruppo Salini, EU:T:2013:372, § 25), or when the reputation of the sign, even as a ‘historical’ trade mark, is a well-known fact (08/05/2014, T-327/12, Simca, EU:T:2014:289, § 50).

Knowledge may be presumed to exist (‘must have known’) on the basis, inter alia, of general knowledge in the economic sector concerned or duration of use. The longer the use of a sign, the more likely it is that the EUTM owner had knowledge of it (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 39).

• Dishonest intention on the part of the EUTM proprietor: This is a subjective factor that has to be determined by reference to objective circumstances (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 42). For example, bad faith is found when it can be inferred that the purpose of the EUTM applicant is to ‘free-ride’ on the reputation of the invalidity applicant’s registered marks and to take advantage of that reputation (08/05/2014, T-327/12, Simca, EU:T:2014:289, § 56

The contested EUTM was filed on 11/12/2015. Therefore, in order for the application to be successful, the applicant had to prove that the EUTM proprietor was acting in bad faith when filing the application, at that date.

The applicant argues that the EUTM proprietor knew about the existing trade marks and one of its main arguments is the latter’s reputation. However, the evidence filed by the applicant, as previously listed, does not convincingly support any reputation or even any degree of enhanced recognition of the applicant’s ‘HATLAPA’ trade marks on the relevant market.

One catalogue and one leaflet, especially when dated from the beginning of the year 2013 whereas the relevant date is the end of the year 2015, and the fact that the applicant’s name appears only on one website (www.shipserv.com), albeit as a leading manufacturer in its field, are not sufficient to prove any degree of reputation of the ‘HATLAPA’ trade marks. The two internet extracts, containing the same article which describes the applicant as a leading marine equipment manufacturer for over 90 years are the only indications of some recognition and commercial success. However, in the absence of other corroborating evidence and supplementary information, for instance concerning the website www.shipserv.com on which the article was published, those indications are clearly insufficient for the Cancellation Division to consider that the applicant’s claims concerning the reputation of its ‘HATLAPA’ trade mark are founded. In the Cancellation Division’s view, the evidence submitted does not prove that the applicant’s trade mark ‘HATLAPA’ was reputed at the time of the filing of the contested application, in 2015 or even at any date before or after. It does not even show any particularly intensive use or advertising of the trade mark ‘HATLAPA’ and the long-standing presence of the trade mark on the market is not corroborated by objective evidence either.

The other reason adduced by the applicant in support of the fact that the EUTM proprietor necessarily knew about the ‘HATLAPA’ trade mark is that the two companies operate in the same field of business. In support of this argument, the applicant has filed an extract of the website www.shipserv.com, on which both companies are mentioned.  According to the Cancellation Division, this is not solid enough proof of any previous awareness of the ‘HATLAPA’ trade mark on the part of the EUTM proprietor. The evidence does not reflect that there may have been any actual contacts between the parties previous to (or even after) the filing of the contested EUTM. There are no copies of exchanges of correspondence, no indication of a contractual relationship or of participation to the same professional events. The applicant limited itself to filing extracts from one website only mentioning the two companies and indicating indeed that both of them operate in the maritime field. This is clearly insufficient for the Cancellation Division to reach the conclusion that the EUTM proprietor was aware that the applicant distributed ‘HATLAPA’ goods on such a website.

In view of the foregoing, it is considered that the applicant’s arguments in support of the previous awareness of the trade mark on the part of the EUTM proprietor are to be dismissed. No such previous knowledge has been established.

For the sake of completeness, the Cancellation Division finds it useful to add that the applicant’s case is also devoid of any compelling arguments/evidence as to the existence of any possible dishonest intentions on the part of the EUTM proprietor. In this respect, the applicant just refers to the EUTM proprietor’s obvious intention to take advantage of HATLAPA’s reputation. However, as previously mentioned, there is no indication of such reputation and the argument as regards the applicant’s dishonest intentions is, therefore, undermined.

Good faith is presumed until proof to the contrary is adduced (13/12/2012, T-136/11, Pelikan, EU:T:2012:689, § 57). The invalidity applicant needs to prove that there was bad faith on the part of the EUTM proprietor at the time of filing the EUTM. In the present case, the applicant’s claim that there has been bad faith on the part of the EUTM proprietor are not supported by any convincing evidence or argument.

Therefore, the EUTM proprietor has failed to prove bad faith.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is to be rejected as far as it is based on Article 52(1)(b) EUTMR.

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

The Cancellation Division

José Antonio GARRIDO OTAOLA

Catherine MEDINA

Lucinda CARNEY

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.