Comarch S.A. v. COMATCH GmbH

During the course of the proceedings the applicant requested a limitation of the services in the EUTM application. The case was also suspended pending the outcome of cancellation proceedings C 31 781 initiated by the applicant for the opponents earlier right on the grounds of non-use. The earlier right was partly revoked as a result of these proceedings and due to the partial revocation, only the goods and services for which the earlier right remains registered were taken into account. Proof of use was provided by the Opponent and the evidence was found to be sufficient as regards the conditions for time, place, extent and nature of use for part of the goods and services. It was concluded that the earlier right enjoyed a substantial degree of reputation for the goods for which genuine use has been demonstrated. The conflicting marks were found to be visually and aurally similar to a high degree and there is a clear link and overlap between the conflicting goods and services. It was also concluded that use and registration of the applicant’s mark would , without due cause, take unfair advantage of the investments made by the opponent by riding on the ‘coat-tails’ of the reputation it has fostered in its earlier mark over the years. The opposition is therefore successful, the appeal dismissed and the limitation in the list of services in Class 35 accepted.