CANCELLATION No 12 152 C (INVALIDITY)

Phoenix Contact GmbH & Co. KG, Flachsmarktstr. 8, 32825 Blomberg (Germany) (applicant), represented by Taylor Wessing, Isartorplatz 8, 80331 Munich (Germany) (professional representative)

a g a i n s t

PSCP Holdings Limited, Quijano Chambers, P.O. Box 3459, Road Town, Tortola, British Virgin Islands (EUTM proprietor), represented by Mapa Trademarks, Alameda San Mamés 43 bis, 3ª planta, dpto 1, 48010 Bilbao, Vizcaya (Spain) (professional representative).

On 28/06/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 13 202 239 is declared invalid for some of the contested goods and services, namely:

Class 9:                Computer software, recorded, for Internet applications; Application software for Internet solutions; Computer interface software in the field of Internet applications; Computer software for network and enterprise data storage management and data storage management control and instruction manuals provided as a unit therewith; Computer operating programs; Computer utility programs; Computer software for use in managing and controlling the replication and movement of information to and from disparate data storage systems; Computer software for data backup and restore, data transport, data storage and replication management, and disk management; Computer software for Disaster Recovery and Business Continuity, namely, for enabling the user to precisely replicate his data to a remote data center; such products not being related to circus events.

Class 41:        Providing publication from a global computer network or the Internet which may be browsed; Electronic game services and competitions provided by means of the Internet; such services not being related to circus events.

Class 42:         Design and maintenance of computer software; Design and maintenance of websites, for others; Computer programming for the Internet; Hosting of digital content on the Internet; Designing and developing web pages on the Internet; Design, creation, hosting and maintenance of internet sites for third parties; Internet web site design services with a protected environment; Scientific and technological services and research relating thereto; Graphic design for the compilation of web pages on the Internet; Creation of internet web sites; Constructing an Internet platform for electronic commerce; Development of software solutions for Internet providers and Internet users; Development of software solutions for scientific and technological services; Design, drawing and drafting instructions, all for the creation of web pages on the Internet; Creating electronically stored web pages for on-line services and the Internet; Design and implementation of websites in networks, for others; Internet web site design services; Graphic design, drawing and commissioned writing for the compilation of web pages on the Internet; Maintenance of Internet access software; Design, drawing and commissioned writing, all for the compilation of web pages on the Internet; such services not being related to circus events.

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

Class 35:        Business consultancy and advisory services; Business consultancy; Business coordinating of and consultancy regarding investment companies; Drawing up and examining business start-up plans; Market analysis; Market research and analysis services; Advisory services relating to market research; Market research and providing market analysis; Conducting business and market research; Business and market research; Conducting of market research; Market study and analysis of market studies; Market research for new companies; Advisory services relating to business management and business operations; Strategic business consultancy; Professional business consultation relating to the setting up of businesses; Business organisation and management consultancy; Business strategy consultancy services; Business management consultancy; Corporate management consultancy; Business organizational consultation; Consultancy relating to business planning; Business inquiries by means of a global computer network or the Internet; Compilation of directories for publication on a global computer network or the Internet; Advertising via electronic media and specifically the internet; Market manipulation, research and analysis, whether or not via the internet; Dissemination of advertising for others via an online communications network on the internet; Information and consultancy with regard to business and business administration, including online or via the Internet; Business inquiries, Also provided via the Internet, The cable network or other forms of data transfer; Providing business information by means of a directory on the Internet; Advertising services over the internet; such services not being related to circus events.

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 13 202 239. The application is based on:

1. international trade mark registration No 1 125 907 designating the European Union;
2. international trade mark registration No 1 125 906 designating the European Union.

The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 8(5) EUTMR. In relation to Article 8(5) EUTMR, the applicant claims that the trade marks have a reputation in Germany for all the goods and services for which they are registered.

SUMMARY OF THE PARTIES’ ARGUMENTS

In relation to the likelihood of confusion, the applicant argues that the signs are similar to a high degree, since they have in common the dominant element ‘Phoenix’, which is distinctive. By contrast, both ‘contact’ and ‘platform’ are descriptive of the goods and services at issue.

The EUTM proprietor contends that neither ‘contact’ nor ‘platform’ is descriptive of the goods and services in question and that this will help consumers to differentiate between the marks, even though they have an element in common. In relation to the word ‘phoenix’, the proprietor puts forward that it is weak, given that some registered marks have the same element. In addition, taking into account the very different fields of activities of the parties, the goods and services are dissimilar. As for the ground of Article 8(5) EUTMR, the EUTM proprietor points out that there is no evidence whatsoever in relation to the reputation of the earlier registrations.

The applicant replies that there is no dilution of the distinctive character of the word ‘phoenix’, since this would require not only marks containing the word ‘phoenix’ to be registered, but also consumers to have become so used to seeing marks with this word that such signs would be ‘no longer attributable to a particular company’. Furthermore, for such a situation to arise, it would be necessary for the trade mark proprietor to not have actively defended its trade mark, which is not the case here. Moreover, the applicant submits documents with a view to substantiating its claim of reputation and explains why the claim under Article 8(5) EUTMR should succeed.

The EUTM proprietor reiterates its arguments in relation to the weak character of ‘phoenix’ and points out that most of the evidence regarding the reputation of the earlier rights is not in the language of proceedings and that the counterparty has not submitted translations of this evidence.

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 registration, the distinctive and dominant elements of the conflicting signs and the relevant public.

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s international trade mark registration No 1 125 907 designating the European Union.

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 3:        Cleaners for printers and pens.

Class 6:        Steel alloys; metal bolts; metal screws; nuts; latches; plates of metal; molds of metal, especially for injection molding of plastic parts.

Class 7:        Automatic machine tools, especially cutting and stripping machines; printing machines; metalworking machines; labeling or marking machines; electric screwdrivers.

Class 8:         Hand tools, tools (included in this class), in particular stripping tools, wire and profile cutters, screwdrivers and pliers; garden tools; nail files, nail cutters and nail clippers.

Class 9:         Mounting devices of metal, especially mounting rails, covers and masts, especially for industrial automation, control and feedback control systems; keys for switchboards or cabinets, electrical and electronic appliances, devices and instruments (included in this class), especially in the field of industrial automation, control and feedback control systems, in particular programmable automation devices, chargers for electric secondary batteries, programmable logic controllers, converters, surge protection devices for power supplies and signal interfaces, suppression devices, in particular power line filters, test equipment for surge protection devices and equipment, modems, transmitters for electronic signals, transmitters (telecommunication), electrical coils, electric display devices, frequency meters, interface devices, current rectifiers, current strength meters or galvanometers, circuit breakers, current transformers, temperature indicators, totalizers (adders), monitoring devices (electric), voltmeters, transformers (electric meters), programmable logic control systems, visualizing systems, display devices, especially text displays, operator control units, especially touchscreen operator control units, bus systems, firmware, computers, especially industrial computers, monitors, electrical equipment for the operation, remote control and monitoring of industrial processes, in particular for HMI (human machine interface) applications; electrical and/or electronic current and/or power supply units (included in this class), including uninterruptible power supplies; electrical signaling, measuring, counting, recording, monitoring, control, regulation and switching devices; electronic components and devices for signal transformation, conversion, and transmission; electrical and electronic components, especially conductors, terminals and contacts, terminal strips, resistors, coils, transformers, converters, circuit breakers, distribution boards, transmitters and receivers, sensors, switches and relays, link and connecting elements of metal and/or plastics for electrical and electronic applications; connectors and fastening brackets for the aforementioned electrical and electronic components, electrical circuit boards; computer programs; data networks (local or global) and networking components, especially in the field of industrial automation, control and feedback control systems; housings for industrial use, especially for the reception and accommodation of electrical equipment and electrical systems and devices, including distribution boxes and junction boxes or sockets; electrical testing and labeling or marking equipment, especially in the field of industrial automation, control and feedback control systems; electronic publications (downloadable); solar collectors and solar panels for power generation; material for electrical lines (wires, cables); computer software (recorded), especially software for programming, planning, parameterization, configuration and visualization of components, equipment sections and equipment data; memories for data processing equipment; thermostats; batteries, especially lead-acid batteries and gel lead-acid batteries; secondary batteries (electric), in particular lithium-ion secondary batteries, chargers for electric secondary batteries; plugs (electric), in particular for solar technology; computer printers, in particular, label printers; solar stations.

Class 16:         Printed matter for advertising and presentation purposes; printed envelopes and packaging material, especially paperboard and cardboard (included in this class); print materials, especially marking material, including printable labels (not of textile); labeling pencils (stationery) for manual labeling; inks; typewriters; color and ink ribbons.

Class 17:         Insulation material, especially for cables, including heat-shrink tubing.

Class 36:         Investment banking, stock and share business, factoring, financial consulting, financial analyses, financing, building management, financial transactions, business liquidations, property management, real estate management, real estate business, financing, rental and leasing of buildings and land (real estate), insurance.

Class 37:         Installation, maintenance and repair of electrical and electronic apparatuses, devices and instruments, including assembly services relating to terminal strips.

Class 38:         Providing access to information provided in a computer network, especially in the form of an online search assistants, providing access to databases.

Class 39:         Delivery of goods, services of a freight forwarder (shipping of goods), storage of goods, packing of goods, airborne transports, maritime transports, road transports, transports by armored vehicles, rental of warehouses, packaging of terminal strips.

Class 41:        Technical training, in the areas of security technology, radio technology, explosion protection, bus systems, programming and application of electro-technical and electronic apparatuses, appliances and goods (included in class 9), especially in the field of industrial automation, control and feedback control systems. Class 42:         Technical project planning and consultancy therefor, especially with regard to plant design, plant programming, plant parametrisation and plant implementing; installation, maintenance and repair of software, especially in the field of industrial automation, control and feedback control systems; design and preparation of programs for data processing, especially for programmable logic controllers; design and development of computer hardware and software, research services, especially in the fields of engineering, communications engineering, control engineering and software engineering; technical analysis relating to equipments for use in security and/or process engineering.

The contested goods and services are the following:

Class 9:        Computer software, recorded, for Internet applications; Application software for Internet solutions; Computer interface software in the field of Internet applications; Computer software for network and enterprise data storage management and data storage management control and instruction manuals provided as a unit therewith; Computer operating programs; Computer utility programs; Computer software for use in managing and controlling the replication and movement of information to and from disparate data storage systems; Computer software for data backup and restore, data transport, data storage and replication management, and disk management; Computer software for Disaster Recovery and Business Continuity, namely, for enabling the user to precisely replicate his data to a remote data center; such products not being related to circus events.

Class 35:        Business consultancy and advisory services; Business consultancy; Business coordinating of and consultancy regarding investment companies; Drawing up and examining business start-up plans; Market analysis; Market research and analysis services; Advisory services relating to market research; Market research and providing market analysis; Conducting business and market research; Business and market research; Conducting of market research; Market study and analysis of market studies; Market research for new companies; Advisory services relating to business management and business operations; Strategic business consultancy; Professional business consultation relating to the setting up of businesses; Business organisation and management consultancy; Business strategy consultancy services; Business management consultancy; Corporate management consultancy; Business organizational consultation; Consultancy relating to business planning; Business inquiries by means of a global computer network or the Internet; Compilation of directories for publication on a global computer network or the Internet; Advertising via electronic media and specifically the internet; Market manipulation, research and analysis, whether or not via the internet; Dissemination of advertising for others via an online communications network on the internet; Information and consultancy with regard to business and business administration, including online or via the Internet; Business inquiries, Also provided via the Internet, The cable network or other forms of data transfer; Providing business information by means of a directory on the Internet; Advertising services over the internet; such services not being related to circus events.

Class 41:        Providing publication from a global computer network or the Internet which may be browsed; Electronic game services and competitions provided by means of the Internet; such services not being related to circus events.

Class 42:         Design and maintenance of computer software; Design and maintenance of websites, for others; Computer programming for the Internet; Hosting of digital content on the Internet; Designing and developing web pages on the Internet; Design, creation, hosting and maintenance of internet sites for third parties; Internet web site design services with a protected environment; Scientific and technological services and research relating thereto; Graphic design for the compilation of web pages on the Internet; Creation of internet web sites; Constructing an Internet platform for electronic commerce; Development of software solutions for Internet providers and Internet users; Development of software solutions for scientific and technological services; Design, drawing and drafting instructions, all for the creation of web pages on the Internet; Creating electronically stored web pages for on-line services and the Internet; Design and implementation of websites in networks, for others; Internet web site design services; Graphic design, drawing and commissioned writing for the compilation of web pages on the Internet; Maintenance of Internet access software; Design, drawing and commissioned writing, all for the compilation of web pages on the Internet; such services not being related to circus events.

In its observations, the EUTM proprietor claims that the goods and services are not similar because the applicant is a Germany-based manufacturer in the field of automation, electrical interface and surge protection technology and the proprietor is focused on business consultancy and market research. In this regard, it must be mentioned that that the comparison of the goods and services must be based on the wording indicated in the lists of goods and services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods and services on which the invalidity action is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

Contested goods in Class 9

The term ‘especially’, used in the applicant’s list of goods in Class 9 (computer software (recorded), especially software for programming, planning, parameterization, configuration and visualization of components, equipment sections and equipment data), indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107). Consequently, the applicant’s goods are software in general and, as these goods include all the contested goods in this class, which are also different types of software, the goods are identical.

Contested services in Class 35

The contested services in this class are all included in the general categories of business management (e.g. drawing up and examining business start-up plans), advertising (e.g. advertising via electronic media and specifically the internet) and office functions (e.g. compilation of directories for publication on a global computer network or the Internet).

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

Office functions consist of the day-to-day operations that are required by a business to achieve its commercial purpose.

All these services are different in nature and purpose from the services for which the earlier mark is registered in Classes 36, 37, 38, 39, 41 and 42, and their commercial origins and channels of trade are also different. Furthermore, they are not complementary or in competition. As for the goods for which the earlier mark is registered in Classes 3, 6, 7, 8, 9, 16 and 17, the contested services in Class 35 are not complementary to them and are not provided by the same companies. Advertising services, for example, are fundamentally different in nature and purpose from the manufacture of goods. The fact that some goods may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised. The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising, such as software in Class 9 and printed matter in Class 16.

Consequently, all the contested services in this class are dissimilar to all the goods and services for which the earlier mark is registered.

Contested services in Class 41

The contested providing publication from a global computer network or the Internet which may be browsed, such services not being related to circus events are similar to the applicant’s computer software (recorded) in Class 9, as these goods and services have the same purpose and they can have the same producers and end users.

The contested electronic game services and competitions provided by means of the Internet, such services not being related to circus events are similar to a low degree to the applicant’s computer programs (in Class 9), as they can have the same producers: for example, the same companies might write the programs and provide the game services. Furthermore, they can have the same distribution channels.

Contested services in Class 42

The earlier mark is registered for the design and development of (…) software. These services are either identical or similar to the following contested services: design and maintenance of computer software; design and maintenance of websites, for others; computer programming for the Internet; hosting of digital content on the Internet; designing and developing web pages on the Internet; design, creation, hosting and maintenance of internet sites for third parties; Internet web site design services with a protected environment; graphic design for the compilation of web pages on the Internet; creation of internet web sites; constructing an Internet platform for electronic commerce; development of software solutions for Internet providers and Internet users; development of software solutions for scientific and technological services; design, drawing and drafting instructions, all for the creation of web pages on the Internet; creating electronically stored web pages for on-line services and the Internet; design and implementation of websites in networks, for others; internet web site design services; graphic design, drawing and commissioned writing for the compilation of web pages on the Internet; maintenance of Internet access software; design, drawing and commissioned writing, all for the compilation of web pages on the Internet such services not being related to circus events.

The contested research relating to scientific and technological services not being related to circus events is identical to the applicant’s research services, especially in the fields of engineering, communications engineering, control engineering and software engineering notwithstanding the use of the word ‘especially’ in the earlier registration because, as seen above, this term merely introduces examples.

The contested scientific and technological services not being related to circus events include, as a broader category, the applicant’s technical project planning and consultancy therefor, especially with regard to plant design, plant programming, plant parametrisation and plant implementing; technical analysis relating to equipments for use in security and/or process engineering. Since the Cancellation Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the applicant’s services.

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 goods and services found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high depending on the exact nature of the goods and services, their cost, etc.

3. The signs

PHOENIX CONTACT
Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid. The Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The EUTM proprietor argues that the marks are not similar because, contrary to the applicant’s assertions, ‘contact’ and ‘platform’ are not weak and they differentiate the marks in relation to the field in which they operate, as ‘platform’ will be perceived as referring to software and ‘contact’ will be perceived as referring to the ‘electrical and electronic devices manufactured and marketed under the applicant’s registrations’. This argument must be rejected by the Cancellation Division, which finds that these words are indeed descriptive, taking into account that ‘contact’ will be perceived as describing a characteristic of the goods, for example data networks (local or global) and networking components, whose purpose is to make contact, to contact, etc. As for ‘platform’, it will indeed be perceived as referring to a ‘software platform’ or to services that, because they are related to websites, ‘serve as a platform’, that is to say, it refers to the nature or purpose of the goods and services.

Therefore, logically, the distinctive elements of the marks are the word ‘phoenix’ in the earlier registration and this word and the depiction of a phoenix in the contested mark.

The earlier registration has no elements that can be viewed as more dominant than others, whereas in the contested mark the word ‘platform’ is overshadowed by the rest of the elements.

Visually, the signs coincide in the word ‘PHOENIX’ and differ in the word ‘contact’ of the earlier registration and the word ‘platform’, the depiction of a bird and the background of the contested sign. However, taking account of the fact that the figurative element merely reinforces the word that the signs have in common, the words ‘platform’ and ‘contact’ are descriptive (and ‘platform’ is less dominant) and the background of the contested sign is not especially striking, the marks are visually similar to an average degree.

Aurally, the signs coincide in the pronunciation of the word ‘phoenix’ and differ in the pronunciation of their other verbal elements, namely ‘contact’ and ‘platform’. However, given the descriptiveness/lower degree of dominance of these differing words the marks are deemed to be aurally similar to a high degree.

Conceptually, consumers will perceive both the word ‘phoenix’ and the figurative element of the contested mark as references to a mythological bird, and ‘platform’ and ‘contact’ have the meanings given above. Taking account of the fact that the elements that are different in the signs are descriptive or merely reinforce the meaning of the coinciding element, the marks are conceptually highly similar.

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 registration

The distinctiveness of the earlier registration is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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

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

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

For the purposes of the global assessment, the average consumer of the category of products and services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

The signs have an average degree of visual similarity and are aurally and conceptually highly similar. Consequently, in the presence of identical or similar goods and services the public concerned may think that they originate from the same undertakings or companies with economic ties, and this even in relation to consumers who pay a high degree of attention, as they also need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the application is partly well-founded on the basis of the applicant’s international registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested mark invalid.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier registration.

As for the services that are similar to a low degree, the Cancellation Division finds that the similarities between the marks arising from the coinciding element ‘PHOENIX’ are sufficient to outweigh the low degree of similarity between the services to the extent that consumers will also be confused about their commercial origin.

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

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

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

The applicant has also based its cancellation application on international trade mark registration No 1 125 906  designating the European Union.

This mark, however, is less similar to the contested mark, as its verbal elements are stylised, and it covers the same scope of goods and services. Therefore, the outcome cannot be different for services for which the cancellation application has already been rejected; there is no likelihood of confusion for those services.

In its observations, the EUTM proprietor argues that the earlier registration has a weak distinctive character, since a number of trade marks include the element ‘phoenix’. In support of its argument, the proprietor refers to several trade mark registrations.

The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Furthermore, whereas the EUTM proprietor has indeed filed some evidence regarding the presence on the market of such marks, it has not proved that consumers are indeed well acquainted with the marks to the extent that there has been some kind of dilution of the distinctiveness of the word ‘phoenix’. Consequently, this claim must be set aside.

REPUTATION – ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(5) EUTMR

The applicant claims the reputation of both international registrations on which the application for invalidity is based, for all the goods and services for which they are registered, in Germany.

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

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

• The signs must be either identical or similar.

• The applicant’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the invalidity request is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

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

In the present case, the EUTM proprietor did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier registrations

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

In the present case the contested trade mark was filed on 26/08/2014. Therefore, the applicant was required to prove that international trade mark registrations No 1 125 907 and No 1 125 906, both designating the European Union, on which the invalidity request is based had acquired a reputation in the European Union prior to that date, for the goods and services in Classes 3, 6, 7, 8, 9, 16, 17, 36, 37, 38, 39, 41 and 42 on which the invalidity application is based.

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

In order to prove the reputation of the earlier registrations, the applicant filed a witness statement and supporting material.

The witness statement is signed by Mr Holger Dirk Meyer (Head of the Product Marketing Department) and merely states that ‘Phoenix Contact manufactures and markets an extensive portfolio of computer hardware and software products for industrial purposes under the trade mark “PHOENIX CONTACT” at least since 1996. Worldwide total sales generated with computer hardware and software products were at least EUR 170m from 2009 to 2014. Based on a proportion of approximately 52% for Germany, minimum sales with computer hardware and software between 2009 and 2014 came to at least EUR 88m.’

First, it must be said that, as far as affidavits and witness statements are concerned, Rule 22(4) EUTMIR (applicable to cancellation proceedings by virtue of Rule 40(6) EUTMIR) expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. Moreover, in the present case, not only does the affidavit contain very few details, but the supporting evidence is in German, whereas the language of these proceedings is English. According to Rule 38(2) EUTMIR, ‘Where the evidence in support of the application is not filed in the language of the revocation or invalidity proceedings, the applicant shall file a translation of that evidence into that language within a period of two months after the filing of such evidence.’

Consequently, having failed to submit a translation of the evidence, the applicant has not proved the reputation of its earlier registrations. Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the invalidity action must be rejected as unfounded insofar as it is based on this provision.

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

Carmen SÁNCHEZ PALOMARES

María Belén IBARRA DE DIEGO

Plamen IVANOV

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.