Keywords

Summary



Keywords

1. Community trade mark – Surrender, revocation and invalidity – Relative grounds of invalidity

(Council Regulation No 40/94, Art. 8(1)(b))

2. Community trade mark – Surrender, revocation and invalidity – Persons permitted to file an application for a declaration of invalidity

(Council Regulation No 40/94, Art. 42(1), Art. 52(1), Art. 55(1)(b), Art. 58 and Art. 64(4))

3. Procedure – Application for legal aid – Conditions for granting

(Rules of Procedure of the Court of First Instance, Art. 94(2))

4. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Similarity between the goods or services in question

(Council Regulation No 40/94, Art. 8(1)(b))

Summary

1. There is, for the general public, no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, between the word sign easyHotel, for which registration as a Community trade mark was sought in respect of ‘Information services relating to transportation services, including information services provided on-line from a computer database or the internet; travel reservation and travel booking services provided by means of the world wide web’ and ‘Computerised hotel reservation services’ in Classes 39 and 42 respectively of the Nice Agreement and in respect of goods and services in Classes 16, 25, 32, 33, 35, 36 and 41, and the word mark EASYHOTEL, registered previously in Germany for ‘Computer software for the production of platform-independent internet shops and internet authoring systems chiefly for the reservation, booking and payment of accommodation’ and ‘Development and design of computer software, namely for internet shops and internet authoring systems, especially for the reservation, booking and payment of accommodation’ in Classes 9 and 42 respectively of that agreement.

The goods and services concerned differ in respect of their nature, intended purpose and method of use and are neither in competition with each other nor complementary. First of all, the relevant goods and services covered by the earlier trade mark are computer-related whereas the information, booking and reservation services covered by the mark applied for are different and use computer technology only to support the transmission of information or to make it possible to reserve hotel accommodation or travel.

The relevant goods and services covered by the earlier trade mark are especially intended for businesses in the hotel and travel sector and the information, booking and reservation services covered by the trade mark applied for are intended for the public at large.

In addition, the goods and services covered by the earlier mark are used to enable a software system, and, more specifically, an internet shop, to function, whereas the information, booking and reservation services covered by the trade mark applied for are used to reserve hotel accommodation or travel.

The mere fact that the information, booking and reservation services covered by the trade mark applied for are exclusively provided via the internet and therefore require software support such as that provided by the goods and services covered by the earlier trade mark does not suffice to remove the essential differences between the goods and services concerned in terms of their nature, their intended purpose and their method of use.

(see paras 51-54)

2. According to Article 55(1)(b) of Regulation No 40/94 on the Community trade mark in conjunction with Articles 42(1) and 52(1) of that regulation, an application for a declaration of invalidity based on Article 8(1) of the regulation can be brought only by the proprietors of the earlier marks cited in support of that application, or by licensees authorised by those proprietors. A receiver in insolvency proceedings regarding a commercial undertaking which is the proprietor of the earlier marks in question does not fall into either of those two categories. Therefore, an application for a declaration of invalidity brought by that receiver in his own name has to be declared inadmissible.

Where the undertaking concerned made the application for a declaration that a Community trade mark is invalid, relying on earlier marks of which it is the proprietor, it is that company – where appropriate, represented by a receiver – which is entitled to bring proceedings against the decisions of the Cancellation Division and the Board of Appeal. By contrast, an appeal before the Board of Appeal and an action before the Court, brought by the receiver of that undertaking in his own name, must be dismissed, on the ground that, in contrast to what is envisaged by Articles 58 and 63(4) of Regulation No 40/94 respectively, they were brought by a person who is not entitled to bring proceedings against the decisions at issue.

(see paras 20-21, 23)

3. To grant an application for legal aid in an action brought before the Court in the name of a legal person by that person’s representative, in his capacity as receiver in the insolvency proceedings initiated in respect of the assets of that person, would, in actual fact, amount to conferring that benefit on a legal person, in breach of Article 94(2) of the Rules of Procedure of the Court of First Instance pursuant to which any natural person who, because of his economic situation, is wholly or partly unable to meet the costs referred to in paragraph 1 is to be entitled to legal aid. That provision states, expressly, that the benefit of legal aid is to be granted to natural persons only.

(see paras 16, 18-19, 27, 29)

4. Goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking.

That case-law definition implies that complementary goods or services can be used together, which presupposes that they are intended for the same public. It follows that there can be no complementary connection between, on the one hand, the goods and services which are necessary for the running of a commercial undertaking and, on the other, the goods and services produced or supplied by that undertaking. Those two categories of goods or services are not used together since those in the first category are used by the relevant undertaking itself whilst those in the second are used by customers of that undertaking.

(see paras 57-58)