In 21 September 2000, easyGroup IP Licensing Ltd, registered the word sign easyHotel. he goods and services for which the mark was sought belong to Classes 9, 16, 25, 32, 33, 35, 36, 38, 39, 41 and 42 of the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks, as revised and amended.
On 11 February 2005, Commercy AG, filed an application pursuant to Article 55 of Regulation No 40/94 for a declaration that the trade mark easyHotel was invalid. The grounds cited were those provided for in Article 52(1)(a) of that regulation in conjunction with Article 8(1) thereof. The application for a declaration of invalidity was based on the earlier national word mark EASYHOTEL, registered in Germany for various goods and services, particularly in Classes 9 and 42, for each Class described as follows:
– 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.
– 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.
The application for a declaration of invalidity was directed against all the goods and services covered by the mark at issue.
On 12 February 2005, EasyGroup surrendered its services in Classes 39 and 42:
– Class 39- 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.
– Class 42- Computerised hotel reservation services.
On 31 July 2006, the Cancellation Division rejected the application for invalidity on the ground that one of the necessary conditions for the application of Article 8(1)(b) of Regulation No 40/94 was not fulfilled, namely the identical nature or similarity of the goods and services covered by the two marks. An appeal was lodged against the decision of the Cancellation Division in so far as it had rejected the application for a declaration of invalidity of the mark at issue for the services in Classes 39 and 42, on the ground that the goods and services in Classes 9 and 42 covered by the earlier trade mark and set out in paragraph 6 above are similar to the services in Classes 39 and 42 covered by the mark at issue.
On 19 June 2007 the Second Board of Appeal dismissed the appeal and upheld the decision of the Cancellation Division. In essence, the Board of Appeal found that the goods and services concerned were neither identical nor similar and that, consequently, Article 8(1)(b) of Regulation No 40/94 did not apply.
The appeal upheld the previous decisions.
In order to assess the similarity of the goods and services concerned, all the relevant factors which characterised the relationship between those goods and services had to be taken into account, including their nature, their intended purpose and their method of use, and whether they were in competition with each other or were complementary.The relevant goods and services covered by the earlier mark were not similiar, substitutable or complementary. There was no likelihood of confusion, as the commercial origin of the software and the computer services, which enabled the website to function, was not generally of the slightest interest to its customers. What was important was that the website functioned well and not who provided the software and computer services which enabled it to function.