No easy route to cancellation -- and no money for Ms B

Fresh from Luxembourg today is the decision in a Community trade mark appeal, Case T‑316/07, Commercy AG v Office for Harmonisation in the Internal Market, easyGroup IP Licensing Ltd, in which the Court of First Instance dismisses Commercy's appeal against the refusal of the Cancellation Division and the Second Board of Appeal to cancel easyGroup's easyHotel Community trade mark.

In short, easyGroup applied for and was granted CTM registration for the word mark easyHotel in Classes 9, 16, 25, 32, 33, 35, 36, 38, 39, 41 and 42. Commercy applied for cancellation, citing its earlier EASYHOTEL German registration for goods in Class 9 (‘Computer software for the production of platform-independent internet shops and internet authoring systems chiefly for the reservation, booking and payment of accommodation’) and services in Class 42 (‘Development and design of computer software, namely for internet shops and internet authoring systems, especially for the reservation, booking and payment of accommodation’). Showing an agreeable degree of friendliness towards Commercy, easyGroup surrendered their registration in respect of all the goods and services in Classes 9 and 38, as well as some of the services in Class 42 -- but not for the Class 39 services 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’, or for the Class 42 services of ‘Computerised hotel reservation services’. 

Anyway, to cut a long story short, when the cancellation application was heard, it was dismissed on the ground that the parties' respective goods and services were neither identical nor even similar. The CFI agreed: 

"51 ... 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 at issue are different and use computer technology only to support the transmission of information or to make it possible to reserve hotel accommodation or travel.

52 Further, 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 at issue are intended for the public at large.

53 In addition, the relevant 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 at issue are used to reserve hotel accommodation or travel.

54 The mere fact that the information, booking and reservation services covered by the trade mark at issue 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.

55 Computer goods and computer services are used in nearly all sectors. Often, the same goods or services – for example, a certain type of software or operating system – may be used for very different purposes, and that does not mean that they become different or distinct goods or services. Conversely, travel agency services do not become something else – in terms of their nature, intended purpose or method of use – solely because they are provided via the internet, particularly since, nowadays, use of computer applications for the provision of such services is almost essential, even where those services are not provided by an internet shop.

56 Moreover, the goods and services concerned are not substitutable, since they are intended for different publics. Therefore, the Board of Appeal was right to find that those goods and services are not in competition with each other".

More interestingly, the CFI rejected Commercy's application for legal aid both in its own name, as a company, and through a certain Ms B who was appointed receiver to the now-insolvent party:

"16 Pursuant to the second subparagraph of Article 94(1) of the Rules of Procedure of the Court of First Instance, legal aid is to cover, in whole or in part, the costs involved in legal assistance and representation by a lawyer in proceedings before the Court of First Instance. ... any natural person who, because of his economic situation, is wholly or partly unable to meet the costs ...  is to be entitled to legal aid.

17 It follows from those provisions that a legal person, such as Commercy, cannot be entitled to legal aid.

18 However, at the hearing, the applicant’s representative submitted that it is Ms B., who, having brought the action in her capacity as receiver in the insolvency proceedings initiated in respect of the assets of the Commercy company, was to be considered to be the applicant in these proceedings. Ms B., a natural person, is entitled to receive legal aid.

19 That argument cannot be accepted. It is true that the file relating to the proceedings before OHIM, which was forwarded to the Court in accordance with Article 133(3) of the Rules of Procedure, shows that the relevant application for a declaration of invalidity was brought by Ms B., in her abovementioned capacity. However, OHIM rightly examined that application as having been brought in the name of the Commercy company, the proprietor of the earlier mark".

EasyHotel here
Difficult hotel here

Don't Mention the  .... here