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AE trade mark “partly invalidated”

The Community trade mark, “AE” registered in 2006 by a US firm for a wide range of goods and services in classes 3, 18, 25 and 35 has been found to be partly invalid for some contested goods and services following an application by the Italian company, American Eagle SRL.

The Italian firm asked for a ruling of invalidity against the CTM on relative grounds, namely that the trade mark was registered contrary to Article 53(1) CTMR in conjunction with Article 8(1)(a) and (b), and (5) CTMR and that the trade mark was registered contrary to other earlier rights (Article 53(2) CTMR). Furthermore, the applicant alleged both “bad faith” and claimed that its invoked marks enjoyed protection in accordance with Article 6bis of the Paris Convention.

The earlier trade marks invoked included the figurative Italian trade mark including a stylized version of the letters “AE” (shown below) and a number of other Italian or International trade marks using variations of this figurative mark.

The applicant stressed that the letters AE of the contested mark were the initials of American Eagle, the name of the company owning the trade marks and said that the goods and services comprised by the contested CTM were identical to those of the invoked earlier rights.

The Italian company filed its request for a declaration of invalidity in respect of some of the goods and services covered by the Community trade mark, namely those in classes 18, 25 and 35. The contested areas included athletics bags and other bags, clothing, and retail store services.

The CTM proprietor Retail Royalty Company from Las Vegas, disputed that any of the invoked Articles 52(1)(b), 53(1) and 53(2) CTMR were applicable. With regard to Article 52(1)(b), the CTM proprietor said the application had submitted no arguments or evidence to substantiate a claim of “bad faith”. Similarly, with regard to Article 53(2) CTMR, the CTM proprietor pointed out that no arguments or evidence had been submitted to substantiate the claim that rights other than trade marks existed. The arguments with respect to both “bad faith” and “other rights” were rejected by the Office.

On Article 53(1) CTMR, the CTM proprietor argued that the applicant did not provide any evidence to substantiate that the invoked marks had a reputation, nor that they were well known in accordance with Article 6bis of the Paris Convention.

The applicant also stated that since the invoked marks were not identical to the contested marks, there was no legal basis for applying Article 8(1)(a) CTMR, while on Article 8(1)(b) CTMR the applicant has failed to prove that the invoked marks had been genuinely used.

OHIM's Cancellation Division, considering the case, commented that the applicant had submitted a very substantial amount of evidence – almost 2,700 pages – but pointed to a lack of order and clear references to arguments. Invoices were blended with excerpts of catalogues, copies of advertising etc, some of the arguments were sweeping and general and the references to individual pieces of evidence were vague, and in some cases did not relate to relevant time periods or countries.

The only evidence that was sufficiently clear and acceptably structured was the documentation relating to Italy. Here it was possible for the Office to establish a link between the sold items, namely various types of shoes/footwear and use of the invoked marks. In respect of the remaining territories it was not possible for the Office to establish any sufficiently safely based conclusions and the evidence for other countries was disregarded. Accordingly, the Office concluded that the submitted evidence showed use of the mark in Italy for footwear in class 25.

Following an examination of the degree of similarity to the contested goods and services to footwear (for example, clothing was found to be highly similar) the registered mark was declared invalid for the following goods and services in classes 18, 25 and 35:

Athletic bags, all-purpose athletic bags, all-purpose sports bags, gym bags, barrel bags, beach bags, clutch bags, duffel bags, leather shopping bags, shoulder bags, tote bags, cosmetic cases sold empty, toiletry cases sold empty, vanity cases sold empty, change purses, clutch purses, coin purses, drawstring pouches, handbags, purses in class 18 and

Clothing, clothing accessories, footwear and headgear, including anklets (socks), anoraks, athletic footwear, athletic shoes, head scarves, babushkas, bandannas, bandeaus, headbands, sweat bands, wrist bands, swimwear, swimsuits, swim trunks, bathrobes, beach coverups, beachwear, money belts, clothing belts, berets, Bermuda shorts, cloth bibs, bikinis, blazers, blouses, blousons, boots, bottoms, boxer shorts, bras, brassieres, breeches, briefs (underwear), bustiers, camisoles, capes, caps (clothing), cardigans, chemises, clogs, coats, leather coats, overcoats, raincoats, sport coats, coveralls, coverups, culottes, dresses, dungarees, ear muffs, espadrilles, footwear, gauchos, gloves, gym shorts, halter tops, hats, head wear, hosiery, jackets, leather jackets, wind-resistent jackets, jeans, jerseys (clothing), jogging suits, jumpers, jumpsuits, kerchiefs, knee highs, knickers, knit shirts, leggings, lingerie, loungewear, maillots, miniskirts, mittens, moccasins, mufflers (clothing), night gowns, night shirts, overalls, pajamas, panties, pants, sweat pants, parkas, pedal pushers, capris, polo shirts, ponchos, pullovers, robes, rompers, sandals, sashes, scarves, shawls, shirts, golf shirts, sport shirts, sweatshirts, undershirts, shoes, golf shoes, shortalls, shorts, sweat shorts, skirts, slacks, sleepwear, slippers, slips, sneakers, socks, suit coats, sweat suits, warm-up suits, sweaters, turtleneck shirts, sweatsocks, T-shirts, tank tops, thongs (footwear), halter tops, tops (clothing), tracksuits, trousers, underclothes, undergarments, underpants, underwear, vests, and foul weather gear in class 25.  

Retail store services, electronic retail commerce over the Internet/worldwide web, catalogue retail sales, mail order and phone order retail sales, all for footwear in class 35.

The CTM remains registered for all the uncontested goods in class 3. The mark also remains registered for the following goods and services:

backpacks, book bags, travel bags, billfolds, briefcases, business card cases, calling card cases, credit card cases, attaché cases, document cases, key cases, overnight cases, passport cases, passport wallets, passport holders, credit card holders, waist packs, leather key fobs, knapsacks, luggage, luggage tags, pocketbooks, briefcase-type portfolios, rucksacks, satchels, suitcases, and wallets in class 18 and

retail store services, electronic retail commerce over the Internet/worldwide web, catalogue retail sales, mail order and phone order retail sales, all for a wide range of fragrances, cosmetics and personal care goods, sunglasses, jewelry and wristwatches, a wide range of goods, including wallets, handbags, purses, shoulder bags, and luggage, school bags, backpacks, daypacks, waist packs, duffle bags, general purpose sports bags, laundry bags, and portfolios, and umbrellas, and a wide range of wearing apparel and clothing accessories, including clothing and headwear in class 35 .

The Cancellation Division said that from the documents submitted it was not possible to infer the degree of recognition of the invoked earlier mark by the relevant public. Similar considerations also applied to the other invoked rights, to the extent they were trade marks containing the acronym AE. Since the applicant failed to show an enhanced distinctiveness of the mark in relation to any of the invoked goods, Article 53(1)(a) in conjunction with Article 8(2)(c) CTMR was not fulfilled.

Since the Office concluded that the outcome of an examination of the likelihood of confusion in accordance with Article 8(1)(b) CTMR of the other invoked Italian marks would not lead to a different result, no examination was deemed necessary in relation to the other Italian trade mark registrations.