CANCELLATION No 9323 C (INVALIDITY)
Edison S.p.A., Foro Buonaparte 31, 20121 Milan, Italy (applicant), represented by Notarbartolo & Gervasi S.P.A., Corso di Porta Vittoria 9, 20122 Milan, Italy (professional representative)
a g a i n s t
Sun Edison LLC., 12500 Baltimore Avenue, Beltsville, Maryland 20705, United States of America (EUTM proprietor)
On 27/06/2017, the Cancellation Division takes the following
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 6 739 056 is declared invalid in its entirety.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 6 739 056. The application is based on European Union trade mark No 3 315 991. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) and Article 8(5) EUTMR. Regarding the latter claim, the applicant invokes reputation in the European Union and Italy.
SUMMARY OF THE PARTIES’ ARGUMENTS
In relation to Article 8(1)(b) EUTMR, the applicant argues that the signs are similar and that the services are either identical or similar. In relation to Article 8(5) EUTMR, the applicant puts forward arguments and files evidence that will be discussed below.
The proprietor did not put forward any observations.
REPUTATION – ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(5) EUTMR
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.
- Reputation of the earlier trade mark
According to the applicant, the earlier trade mark has a reputation in the European Union and Italy.
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 11/03/2008. Therefore, the applicant was required to prove that the trade mark on which the invalidity request is based had acquired a reputation in the European Union and Italy prior to that date. The evidence must also show that the reputation was acquired for the services for which the applicant has claimed reputation, namely:
Class 37: Construction, repair and installation of industrial installations for generation and distribution of electrical energy; Industrial plants for the extraction, refining and distribution of fuels.
Class 39: Distribution of energy; Distribution of gas, electricity and fuels; Distribution and supply of water; Transport services; Transport of refuse; Warehouse and storage services; Storage and warehousing of electricity, gas, fuel and water; Warehousing and Storage of waste; Rental of energy installations to others; Rental of energy networks and lines to others; Rental of water distribution installations; Rental of networks and conduits for gas, fuel and water; Rental of networks, lines and conduits for electricity; Rental of storage units.
Class 40: Energy production; Generation and production of electricity; Production and generation of gas, fuel, motor fuel, petroleum and hydrocarbons; Treatment of gas, fuels, petroleum, hydrocarbons, refuse and water; Refinement of gas, fuel, motor fuel, petroleum and hydrocarbons; Environmental reclamation and soil reclamation; Decontamination; Waste treatment services and Water; Treatment of materials for the generation of electricity, natural gas and motor fuel; Rental of equipment for treatment of gas, fuel, petroleum, refuse and water; Rental of power generation installations.
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 mark, the applicant filed a declaration by Mr Pergiuseppe Biandrino, General Counsel of the applicant. The declaration provides information on the turnover derived from the production, distribution and commercialisation of electric energy and hydrocarbons, ‘principally in Italy and the European Union’, from 2003 until 2011. It contains a chart presenting a summary of Edison’s sales revenues (in millions of euros), from EUR 8 000 in 2009 to EUR 11 000 in 2011. Advertising is mainly carried out through television advertisements on major Italian TV stations (figures for advertising expenditure are given in thousands of euros).
In relation to declarations, affidavits, etc., it is true that documents that originate from interested parties in principle have less value than those coming from independent sources. In the case at issue, however, the declaration is very specific with regard to a number of issues and is further supported by extensive and very varied documents from independent sources.
The evidence submitted is the following:
- Edison company profile (September 2010), which indicates that the company started in 1883 and has become a leading player in the Italian energy market (producing 15% of the entire national electric power and meeting 17% of Italy’s total demand for natural gas), with operations in the procurement, production and distribution of electric power and hydrocarbons. The company owns power plants, wind farms and gas infrastructure all over Italy and is focused on providing energy to wholesalers and end consumers, as well as on hydrocarbons, exploration, and natural gas distribution, storage and transmission, while at the same time it is also active in developing a natural gas interconnector system. Its top customers in Italy include well-known companies such as ExxonMobile, Telecom Italia, Michelin and Ferrari. Its sales revenues in 2009 were EUR 8 867 million (EUR 6 463 million for electric power and EUR 4 158 million for hydrocarbon sales), in 2008 they were EUR 10 064 million and in 2007 they were EUR 8 276 million.
- Edison press kit, which summarises Edison’s activities and provides information about sale revenues, which were EUR 10 064 million in 2008 and EUR 8 867 million in 2009. With regard to Edison’s activities, it is indicated that between 2002 and 2007 Edison completed an ambitious generating-capacity expansion, aggregating a capacity of 7 000 MW via power plants fired by natural gas. Edison’s facilities portfolio includes 68 hydroelectric power plants, 28 thermoelectric power plants and 29 wind farms with an aggregate capacity of 12 300 MW. The press kit also indicates that ‘in 2009, Fortune Magazine ranked Edison as the most admired Italian company internationally for the second consecutive year’.
- Edison’s 2010 results, which demonstrate total sales revenues of EUR 8 867 million in 2009 and EUR 7 593 million for the first nine months of 2010. The 2010 results represent an increase of 16.8% on the same period in 2009.
- Some information from Fortune Magazine, according to which Edison is the most admired company in Italy in the energy sector, and the second most admired worldwide (the article is dated 04/03/2010 and includes a ranking of Edison’s position among the world’s most admired energy companies).
- Sample invoices dating from between 2003 and 2008, mainly relating to Italy.
- The history of the company as presented on Wikipedia. The article contains the following information:
- The company was founded in 1884 and is the oldest European company in the energy sector.
- In the electricity sector, Edison is one of the leading manufacturers in Italy (6.7% of the national production); it owns a manufacturing plant that includes a combined cycle gas turbine and produces hydroelectric, wind, solar and biomass power.
- In the hydrocarbon sector, Edison is the second largest Italian operator, covering 22.5% of the country’s gas needs. The company is also engaged in exploration and production of hydrocarbons in the Middle East and Africa and is engaged in the development of European infrastructure for importing natural gas.
- Edison employs 32 000 people, with activities and representative offices in Europe, Africa and the Middle East.
- Information from the Italian regulatory authority for electricity, gas and water (Autorità Energia) in relation to Edison’s capacity for electricity production; enclosed are also printouts from the authority’s website and screenshots showing the search criteria for the aforementioned information can be identified. For example, one of the searches conducted (search A) shows that Edison owns a very significant proportion of Italian CEP, Italy being the fourth largest economy in the EU. Search B shows the electricity production shares of the main operators in the field; the searches show that Edison’s market share (on its own or combined with Edipower) is the second largest in Italy. Search B relates to Edison’s share in the free market for retail of electrical energy.
- There is also further evidence relating to the promotion of the applicant’s trade mark referring, inter alia, to the fact that Edison is the main sponsor of the Italian national Olympic team and the Italian rugby team in the Six Nations tournament.
The evaluation of the evidence points to the applicant being one of the better established producers and distributors of electricity and natural gas in Italy, with a long-standing presence in the Italian market, high revenue figures and a high degree of knowledge among consumers. The evidence, however, does not establish reputation in relation to all the services for which reputation has been claimed, but only for the following:
Class 37: Construction, repair and installation of industrial installations for generation and distribution of electrical energy; Industrial plants for the extraction, refining and distribution of fuels.
Class 39: Distribution of energy; Distribution of gas, electricity and fuels; Storage and warehousing of electricity, gas and fuel; Rental of energy installations to others; Rental of energy networks and lines to others; Rental of networks and conduits for gas and fuel; Rental of networks, lines and conduits for electricity.
Class 40: Energy production; Generation and production of electricity; Production and generation of gas, fuel, motor fuel, petroleum and hydrocarbons; Treatment of gas, fuels, petroleum, hydrocarbons and refuse; Refinement of gas, fuel, motor fuel, petroleum and hydrocarbons; Treatment of materials for the generation of electricity, natural gas and motor fuel; Rental of equipment for treatment of gas, fuel, petroleum and refuse; Rental of power generation installations.
The contested services are:
Class 35: Business operation and business management of solar energy production facilities for others.
Class 37: Installation, maintenance and repair of electricity generating systems for others.
Class 40: Utility services in the nature of generating electricity to others; generating electricity; leasing electricity generating systems.
- The signs
Earlier trade mark
Contested trade mark
As reputation has been proved for Italy, this is the relevant territory for the purposes of this comparison.
The earlier mark is figurative and comprises the verbal element ‘EDISON’ and a graphic element in the form of two semicircles, forming the letter ‘e’, placed at the left-hand side of the mark. The most distinctive element of the sign is the verbal element, as it does not have any meaning in relation to the services or their characteristics, and the graphic element is not particularly striking. The sign does not have any elements that are more dominant than others.
The contested mark is also figurative and comprises the verbal elements ‘SunEdison’ and ‘simplifying solar’, and a depiction of the sun. Within the verbal element ‘SunEdison’, two words can be perceived due to the second, ‘Edison’, starting with an upper case letter ‘E’ and the different colours of the two words. The most dominant elements are the figurative element and the verbal element ‘SunEdison’, given the facts that they are located in the central part of the image and that the other verbal element is of a smaller size. In the context of the contested services and for a knowledgeable public in the relevant field, the English expression ‘simplifying solar’, the word ‘Sun’ and the figurative element depicting the sun will be perceived as weak, taking account of the fact that the services can all relate to ‘solar energy’.
Visually, the signs are similar to an average degree given that they both contain the distinctive word ‘Edison’, to which a number of non-distinctive and non-dominant elements have been added in the contested mark.
Aurally, the signs are highly similar, as they both contain the word ‘Edison’. They differ in the rest of the elements that will be pronounced (‘Sun’ and ‘simplifying solar’) in the contested sign, all of which, however, are weak or less dominant than the coinciding element.
Conceptually, ‘Edison’ has no meaning, whereas the rest of the elements of the contested mark are meaningful; therefore, the marks are not conceptually similar.
Taking into account the abovementioned visual and aural coincidences, the signs under comparison are considered similar for the purposes of Article 8(5) EUTMR.
- The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are visually similar to an average degree and aurally highly similar. The fact that they are conceptually not similar must be considered in the context of this lack of similarity arising from the presence, in the contested mark, of additional elements that are weak.
In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.
Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):
∙ the degree of similarity between the signs;
∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;
∙ the strength of the earlier mark’s reputation;
∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
∙ the existence of likelihood of confusion on the part of the public.
This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.
The differences between the marks are confined to non-dominant and/or weak elements, and the marks have in common the most relevant part of the earlier mark, namely the word ‘EDISON’.
Taking account of the facts that the same parts of the public will demand the services at issue, namely consumers who are highly knowledgeable in the field of energy generation and distribution, and that, as seen above, the services are either identical or similar (Classes 37, 39 and 40) or have the same object (Class 35), and also taking into account the reputation of the earlier mark, the Cancellation Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs in relation to the services in question.
Although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).
- Risk of injury
Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:
∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;
∙ it is detrimental to the repute of the earlier mark;
∙ it is detrimental to the distinctive character of the earlier mark.
Although detriment or unfair advantage may be only potential in invalidity proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).
It follows that the applicant must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the applicant should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.
The applicant argues that the Italian energy market is characterised by a small number of competitors, none of which uses a trade mark that includes the word ‘EDISON’. Furthermore, the applicant has a long-standing presence on the market, has a large share of the energy market and has a strong media presence, and the mark ‘EDISON’ is a powerful tool for communicating the quality of the services provided and the strength of the company. Allowing the EUTM proprietor to continue to use its mark in the market will provide it with a ‘clear competitive unfair advantage’, as this competing company will be seen as a sister company of the applicant and thereby profit from the goodwill built up by the applicant. Furthermore, ‘the same natural oligopolistic character of the Italian energy market, which derives from the extremely high investments necessary to set up an energy company, transform the entering of a further operator with a similar trademark into an immediate dilution of the distinctive character’ of the earlier mark.
Unfair advantage (free-riding)
Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).
Taking into account all the factors relevant to the case, which have been described and evaluated above, the Cancellation Division is of the opinion that it is foreseeable that such injury would ensue from the use that the proprietor might make of its mark. The contested mark would benefit from the power of attraction, the reputation and the prestige of the earlier mark for its own services, which would attract the relevant consumers’ attention thanks to the association with ‘EDISON’, thereby gaining a commercial advantage over its competitors’ services. For these reasons, the application filed under Article 53(1)(a) EUTMR in conjunction with Article 8(5) EUTMR must be upheld for all the services.
Given that for an invalidity request to be well founded in this respect it is sufficient if only one of the types of injury is found to exist, there is no need to examine the further claims of the applicant in relation to detriment to the mark’s distinctiveness (dilution).
Likewise, since the application is fully successful on the ground of Article 8(5) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(1)(b) EUTMR in conjunction with Article 53(1)(a) EUTMR.
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Carmen SÁNCHEZ PALOMARES
María Belén IBARRA
BENEDETTI – ALOISI
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.