CANCELLATION No 13 157 C (INVALIDITY)

 

Ecolab USA Inc., 370 Wabasha Street North, St. Paul, Minnesota 55102, United States of America (applicant), represented by Norton Rose Fulbright LLP, 3 More London Riverside, London SE1 2AQ, United Kingdom (professional representative)

 

a g a i n s t

 

Louise Boulant, Flat 64 Roundwood Court, 3 Meath Crescent, City of London, London E2 0QL, United Kingdom (EUTM proprietor).

 

 

On 25/05/2017, the Cancellation Division takes the following

 

 

DECISION

 

 

1.        The application for a declaration of invalidity is rejected in its entirety.

 

2.        The applicant bears the costs.

 

 

REASONS

 

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 15 162 175. The application is based on international trade mark registration No 1 180 255 designating the European Union. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that the goods are identical and the marks are very similar, as they have the same beginning and the same letters, ‘la’, in the middle. The applicant argues that some people have a tendency to slur or abbreviate the middle and the end of words and therefore it is possible that the pronunciations of the words of the conflicting signs will be very similar. Moreover, the marks are also visually similar, a fact that is especially relevant in the field of the relevant goods. Having taken all these factors into account, and bearing in mind that the relevant public is the general public, a likelihood of confusion in relation to the origin of the goods cannot be excluded.

The EUTM proprietor did not submit observations.

 

 

LIKELIHOOD OF CONFUSION – ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

 

 

1. The goods

 

The goods on which the application is based are the following:

 

Class 25:        Clothing, footwear, headgear; aprons; boots; caps; caps with visors; shirts; sweat shirts; coats; jackets; hats; cap visors.

 

The contested goods are the following:

 

Class 25:        Clothing.

 

Clothing is identically contained in both lists of goods and, therefore, the goods are identical.

 

 

2. Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

 

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is average.

 

 

3. The signs

 

 

ECOLAB
Earlier international registration	Contested trade mark

 

 

 

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

The earlier registration is a word mark and, therefore, it lacks dominant elements. The contested mark is figurative, as its verbal element is depicted in slightly stylised lower case letters.

 

In its observations, the applicant argues that the marks have in common two letters at the beginning, ‘EC’, and two other letters (‘LA’) in the middle. The Cancellation Division does not dispute this obvious fact. On the other hand, it cannot be forgotten that the public will often regard one-word signs as being composed of different components, in particular where one part has a clear and evident meaning while the rest is meaningless or has a different meaning. In the present case, given its prevalence in the market across the European Union, the majority of consumers will perceive in the earlier mark the element ‘ECO’, which, according to Collins Dictionary, is the short form for ‘ecology’. Some consumers will also perceive the rest of the word, namely ‘LAB’, as the ‘short form for laboratory’, whereas some others will not attribute any meaning to this element (both definitions extracted from Collins Dictionary on 12/05/2017 at www.collinsdictionary.com). The element ‘ECO’ can be perceived as descriptive of some of the characteristics of the goods at issue, such as that they are made with ‘ecological’ materials or cloths, that is, garments that have been made while respecting the environment or garments that are made with natural fabrics. The word ‘LAB’, on the other hand, has no direct meaning in relation to the goods or their characteristics even when consumers understand it.

 

As for the contested mark, it is clear that consumers will perceive just one word made up of at least the letters ‘ecla*’; however, it is difficult to foresee how they will grasp the last letter. For some it might resemble a letter ‘o’, whereas some others will see it as a reversed letter ‘a’. In any case, neither ‘eclao’ nor ‘eclaa’ has a meaning, or at least none that can render the words non-distinctive, weak or allusive.

 

Having regard to what has been said above, and notwithstanding the fact that the marks have some letters in common, there is a low degree of visual similarity.

Aurally, the earlier registration will be pronounced /e-ko-lab/ whereas the contested mark will be pronounced /e-kla-o/, /e-kla-a/ (or /e-klo-a/) or /e-kla:/ (in this last case, with a long vowel ‘a’ at the end). Therefore, the letters ‘EC’ will not be pronounced in the same syllable and the middle sounds will not be blurred as the applicant contends, and the signs will have different intonations and rhythms. Consequently, the degree of aural similarity is deemed to be only low.

As mentioned above, most consumers will recognise the element ‘ECO’, while some others will also recognise ‘LAB’. At any rate, even if consumers do not perceive any meaning in the latter word, the signs are not conceptually similar, as the verbal element in the contested mark, perceived as either ‘eclao’ or ‘eclaa’, does not have any meaning in the territory concerned.

 

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

4. Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

The applicant claims that its mark ‘enjoys a high degree of distinctiveness’ because it is not descriptive of the goods. In this regard, it must, however, be clarified that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness unless enhanced distinctiveness through use has been proved.

 

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a descriptive element in the mark as stated above in section c) of this decision.

 

 

5. Global assessment, other arguments and conclusion

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

 

For the purposes of the global assessment, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

As the applicant rightly observes, the public concerned in these proceedings is the general public, with an average degree of attention.

 

In relation to the signs, the applicant also rightly points out the fact that, for goods in Class 25, the visual aspect of the marks is of special importance. However, a mark perceived as ‘eclao’ or ‘eclaa’ will not be mistaken for or associated with the mark ‘ECOLAB’, in which consumers will immediately perceive two elements, ‘ECO’ and ‘LAB’, which will give rise to significant visual differences. The differences between the marks from the aural and conceptual points of view will not go unnoticed by consumers either. Consequently, even for identical goods, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the cancellation application must be rejected.

 

 

 

COSTS

 

 

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

 

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case the EUTM proprietor did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore it did not incur representation costs.

 

 

 

 

The Cancellation Division

 

 

 

Carmen SÁNCHEZ PALOMARES

María Belén IBARRA DE DIEGO

Michaela SIMANDLOVA

 

 

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.