CANCELLATION No 12 695 C (INVALIDITY)

Optimum Mark Sp. z o.o., ul. Dolna 3, 00-773 Warsaw, Poland (applicant), represented by Kancelaria Prawno-Patentowa Ryszard Skubisz, ul. Piastowska 31, 20-610 Lublin, Poland (professional representative)

a g a i n s t

Europea de Productos de Gran Consumo, S.L., Gran Via de les Corts Catalanes, 648, 1°2ª, 08010 Barcelona, Spain (EUTM proprietor), represented by R. Volart Pons y Cia., S.L., Pau Claris, 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative).

On 07/04/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 10 670 487 is declared invalid for all the contested goods, namely:

Class 3:        Cleaning, polishing, scouring and abrasive preparations; stain removers; soap; bleaching preparations, scouring solutions; all the aforesaid goods being solely for barbecues and chimneys.

3.        The European Union trade mark remains registered for all the uncontested goods, namely all the goods in Classes 4, 11, 31 and 34.

4.        The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 10 670 487 ,  namely against all the goods in Class 3. The application is based on Polish trade mark registration No 169 150 ‘mr magic’. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested goods are identical or similar to the goods of the earlier mark and the marks are highly similar visually and aurally. Consequently, there is a likelihood of confusion.

The EUTM proprietor requested extension of the time limit to submit observations twice but finally did not submit any response to the invalidity application.

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 relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

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

Class 3:         Cleaning, scouring, dust removing preparations.        

The contested goods are the following:

Class 3:        Cleaning, polishing, scouring and abrasive preparations; stain removers; soap; bleaching preparations, scouring solutions; all the aforesaid goods being solely for barbecues and chimneys.

The contested cleaning preparations; soap; stain removers; all the aforesaid goods being solely for barbecues and chimneys are included in the broad category of the earlier mark cleaning preparations. These goods are identical.

The contested scouring preparations and scouring solutions; all the aforesaid goods being solely for barbecues and chimneys are included in the earlier mark’s broad category scouring preparations. These goods are identical.

The remaining contested goods, namely polishing and abrasive preparations; bleaching preparations; all the aforesaid goods being solely for barbecues and chimneys are similar to the earlier mark’s cleaning preparations. These goods coincide in purpose (making the surface of something more appealing), they are sold in the same outlets to the same target consumers and it is common that these goods are manufactured by the same undertakings. Moreover, these goods are often used together.

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 or similar are directed at the public at large. The degree of attention will be average.

3. The signs

mr magic
Earlier trade mark	Contested trade mark

The relevant territory is Poland.

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 mark is a word mark consisting of two elements. The term ‘mr’ will be understood by the Polish consumers in its English meaning, that is, as a way of addressing a specific gentleman, on account of its wide use, also in Poland. The word ‘magic’ will be, in view of the fact that it is preceded by ‘mr’, associated with the Polish term ‘magik’ meaning ‘magician’. The entire mark will thus be perceived as ‘Mr Magician’, neither of its elements being more distinctive than the other.

The contested mark is a figurative mark consisting of the word ‘Magic’ written in white and placed against a rectangular red background. At the right side of the red rectangle there is an abstract yellow formation. The figurative elements are simple and rather banal and can be considered to be merely decorative with very low distinctiveness, if any at all. The word ‘Magic’ can be associated with the Polish term ‘Magik’, or, in the absence of the element ‘mr’, also with its English meaning, given that the Polish equivalents are ‘magia’ (magic, noun) and ‘magiczny’ (magic, adjective). This element, although it could allude to some desirable supernatural (magic) qualities of the products, is at worst allusive and in comparison with the figurative elements it is the most distinctive element of the mark.

Neither of the marks has any dominant element, that is, an element that could be considered considerably more visually striking than others.

Visually, the signs coincide in the word ‘magic’, despite the slight stylization and the capital letter ‘M’ in the contested mark, in view of the fact that the earlier mark is a word mark and its protection extends to representation of the words in capital letters and stylizations such as that in the contested mark. The marks differ in the initial element ‘mr’ of the earlier mark and in the figurative elements of the contested mark. As explained above, the figurative elements of the contested mark are barely distinctive and, thus, have very limited impact on the comparison. The additional element ‘mr’ in the earlier mark does not counterbalance the coincidence in the word ‘magic’. Although it is the mark’s initial element, it is rather short and it does not have more power of attraction than the following element ‘magic’. Therefore, the marks are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the word ‘magic’. This is the only element pronounced in the contested mark and the second one out of two in the earlier mark. The marks differ in the initial word of the earlier mark ‘Mister’. This element becomes longer from the aural perspective and is equally important as the coinciding element ‘magic’. Consequently, the marks are aurally similar to an average degree.

Conceptually, as explained above, the public in the relevant territory will perceive the earlier sign as ‘Mr Magician’, and the contested mark as ‘magician’ or ‘magic’. As both signs will be linked to the same concept of ‘magic’ in general, be it a specific Mr Magician or a magician or magic in general, they are conceptually similar to at least a high degree, if not identical.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. As stated above, ‘magic’ can allude to some wonderful ‘magic’ qualities of the goods at issue. On the other hand, since clearly the products do not have real magic qualities, this is a metaphorical statement and, moreover, the earlier mark specifically points to a person, Mr Magician. Therefore, the connection between any possible metaphorically desirable qualities of the products and the actual mark is not direct and immediate and the earlier mark is at most allusive to a certain extent. Therefore, the mark possesses a degree of distinctiveness that may be average or slightly lower that average.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

The marks were found to be similar to a high degree from visual and conceptual perspective and similar to an average degree in the aural aspect of the comparison. The goods are partly identical and partly similar. The fact that the coinciding element ‘magic’ may be of a slightly lower than average distinctiveness does not challenge the conclusion of the similarity of the signs as in the contested mark it is still the most distinctive element and in the earlier mark it is not less distinctive than the word ‘Mr’ which only specifies that the mark refers to a male magician. Therefore, even considering the potentially lower than average degree of distinctiveness of the word ‘magic’, the differences between the marks are not more distinctive or more visually striking or otherwise important in either of the marks as to outweigh the coincidence in the word ‘magic’ which is an independent element in both marks.

Considering also that consumers only rarely have the chance to directly compare the marks and that the attentiveness of consumers will not be exceptionally high when purchasing the products, it is concluded that it is likely that the consumers assume that the products under the marks come from the same undertaking. In other words, there is a likelihood of confusion on the part of the public.

Therefore, the application is well founded on the basis of the applicant’s Polish trade mark registration No 169 150. It follows that the contested trade mark must be declared invalid for all the contested goods.

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Pierluigi M. VILLANI

Michaela SIMANDLOVA

Elisa ZAERA CUADRADO

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.