bold | Decision 0012955 – Trademarkers Legal Blog

CANCELLATION No 12 955 C (INVALIDITY)

Kohler Co., 444 Highland Drive, 53044 Kohler, Wisconsin, United States of America (applicant), represented by Frkelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

Bold International FZCO, P O Box 261691 JAFZA, Dubai, United Arab Emirates (EUTM proprietor), represented by Withers & Rogers LLP, 4 More London Riverside, SE1 2AU London, United Kingdom (professional representative).

On 09/06/2017, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 10 385 979 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

On 16/05/2016, the applicant filed an application for a declaration of invalidity against European Union trade mark No 10 385 979 (‘the contested EUTM’), filed on 02/11/2011 and registered on 31/03/2016, for the figurative sign below:

The request is directed against all the goods and services covered by the contested EUTM, namely:

Class 6: Common metals and their alloys; ironmongery, small items of metal hardware; pipes and tubes of metal; goods of common metal not included in other classes; articles of metal for use as plumbing fittings; connectors of metal for use in plumbing; parts and fittings for the aforesaid goods; all of the aforementioned goods exclusively used for bathrooms and bathroom accessories.

Class 35: Retail services relating to apparatus for water supply and sanitary purposes, bathroom fittings, sanitary ware, bathroom hardware, faucets, valves, baths, foot washers, foot baths, foot spas, bath plumbing fixtures, plumbing fixtures and fittings, hand basins, water taps, showers, shower heads, water nozzles, and parts and fittings therefore.

The application is based on European Union trade mark registration No 10 361 244 ‘LIVE BOLD’ (word mark) (‘the earlier EUTM’), filed on 21/10/2011 and registered on 22/03/2012, for the following goods, on which the application is based:

Class 11: Apparatus for water supply; baths, bathtubs, whirlpool baths and bath installations; showers and shower installations; shower and bath enclosures; electric showers; electric water heaters; shower and bath cubicles; shower pans; shower heads; shower doors; water diverters; shower spray heads; basins; bidets, lavatories; toilets; toilet bowls; toilet seats; touchless toilets; touchless flushing apparatus; water closets; sinks; sink pedestals; metal sinks and metal sink units; taps; faucets; touchless faucets; water filters; thermostatically, infrared, radar or electronically controlled faucets; electric hand dryers; strainers for use with sinks, baths and shower trays; touchless hand drying apparatus; stoppers for use with sinks, baths and showers trays; bath spouts; water control valves for water cisterns; water control valves; water control valves for faucets; urinals; water cisterns; water softeners; bathroom fittings; drinking fountains; saunas; non-metallic levers for cisterns; water supply apparatus; water pipes for sanitary installations; disinfectant dispensers for toilet use; sanitary hose couplings, toilet tank in Class 11.

The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

On 16/05/2016 the applicant submitted the present invalidity application against the contested EUTM claiming that there exists likelihood of confusion between the conflicting marks.

On 22/08/2016 the EUTM proprietor filed its reply arguing, in essence, that the marks are visually and aurally dissimilar to the extent that the earlier sign contains the word element ‘LIVE’, which constitutes the beginning of the earlier sign and the component on which the public will focus its attention. The EUTM proprietor noted that the overall impression given by the signs is different as the earlier mark will be perceived as a promotional statement suggested by the combination of the words ‘LIVE’ and ‘BOLD’, which will be perceived as indicating the “way of life” the applicant’s company, which is “to live fearlessly”. According to the EUTM proprietor, the element ‘BOLD’ does not play a distinctive role in the earlier mark.

On 24/08/2016 the applicant responded to the EUTM proprietor’s arguments pointing out that the dominant element of the earlier mark is the word ‘BOLD’, as the term ‘LIVE’ is used as an adjective to emphasise its meaning. It added that when comparing the marks, it is clear that the contested EUTM wholly reproduces the distinctive and dominant part of the earlier mark. In addition, the stylisation of the contested mark is minimal and does not obscure the appearance of the word ‘BOLD’. The applicant further noted that the goods and services in conflict are highly similar if not identical and clearly in direct competition with one another. It explained that both the parties provide goods and services in the plumbing/bathroom fittings and fixtures industry and, therefore, their products satisfy identical consumer needs. With particular regard to the contested goods in Class 6, the applicant noted that the contested are limited to be “exclusively used for bathrooms and bathroom accessories”. Taking into account that its earlier registration covers a broad range of bathroom fixtures and fittings, the earlier goods in Class 11 must be considered similar to the contested goods in Class 6 as limited by the proprietor.

The EUTM proprietor did not file any observation in reply.

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.

The goods and services

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:

The contested goods and services are the following:

Contested goods in Class 6

As the applicant correctly pointed out, all the contested goods have been limited to be exclusively used for bathrooms and bathroom accessories.

The earlier goods in Class 11 include, among others, showers, baths, lavatories, toilets, water filters, bathroom fittings, water pipes for sanitary installations, which are all bathroom installations and plumbing fixtures displaying a close link with the contested goods in Class 6. Indeed, these goods may coincide in origin and in distribution channels, and are targeted at the same users (i.e. both professionals from the plumbing industry and end-users). The contested goods can be also used as a part of the applicant’s apparatus for water supply. Therefore, the conflicting goods at issue are considered to be similar.

Contested services in Class 35

According to the case law, retail services concerning the sale of particular goods are similar to a low degree to those particular goods ((05/10/2011, T 421/10, Rosalia de Castro, EU:T:2011:565, § 33).

In the case at hand, the object of the retail services of the contested mark, namely apparatus for water supply and sanitary purposes, bathroom fittings, sanitary ware, bathroom hardware, faucets, valves, baths, foot washers, foot baths, foot spas, bath plumbing fixtures, plumbing fixtures and fittings, hand basins, water taps, showers, shower heads, water nozzles, and parts and fittings therefore, are all identical to the earlier goods in Class 11. Indeed, they are equally protected in the list of goods of the earlier mark (i.e. apparatus for water supply, faucets, basins, valves, baths, water taps, showers, shower heads) or overlap with the applicant’s goods. Although the nature, purpose and method of use of the conflicting goods and services are not the same, the fact that the contested retail services and the earlier goods are offered at the same (retail) outlets is a relevant factor for assessing the similarity between those goods and services (15/02/2011, T 213/09, Yorma’s, EU:T:2011:37, § 31; 11/07/2007, T-443/05, Piranam, EU:T:2007:219, § 37; 22/03/2007, T-364/05, Pam Pluvial, EU:T:2007:96, § 95). Furthermore, the goods and services at hand are complementary to each other and target the same public. Consequently, the contested services are considered to be similar to a low degree to the earlier goods in Class 11.

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 and services found to be identical or similar to a low degree are directed at both end-consumers (including the so called do-it-yourself consumers) and professionals with specific knowledge and expertise in the plumbing industry with particular regard to bathroom equipment. Considering the specialized nature of the goods and services at stake, even when they are directed at the end-consumer, the relevant public will attentively select the choice of the correct materials.

The signs

LIVE BOLD

Earlier trade mark

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).

In its observations, the EUTM proprietor argues, in essence, that the marks are visually and aurally dissimilar to the extent that the earlier sign contains the adding word ‘LIVE’, which constitutes the beginning of the earlier sign and its dominant and distinctive element.

It is generally admitted that consumers pay more attention to the beginning of the mark. However, this consideration does prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).

In addition, as a general rule, when a sign is registered as a word mark, it has no dominant (or visually outstanding) elements because by definition word marks are written in standard typeface. Moreover, in the earlier sign, ‘BOLD’ plays an independent role as it is clearly separated from the term ‘LIVE’.

The EUTM proprietor further states that the word ‘BOLD’ merely qualifies the first element ‘LIVE’, which will be perceived as the most distinctive element of the sign.

Nonetheless, this statement implies that the majority of the relevant public will understand the meaning of the English terms live and bold.

In the present case, however, the earlier mark is a EU trade mark registration and, therefore, the relevant territory consists of the all the EU Member States, including territories with non-English speakers, which, in the view of the Cancellation Division, will see the term ‘BOLD’ as a meaningless expression (and, thus, distinctive).

On the other hand, the word ‘LIVE’ is a common English term that will be understood as referring to the concept of life by both English and non-English speakers. As this term has no connection with the relevant goods and services, it has a normal degree of distinctive character.

For the sake of completeness, the Cancellation Division is of the opinion that the word ‘BOLD’ is also distinctive for English speakers. Indeed, this term bears different meanings – such as fearless before danger (i.e. intrepid), standing out prominently (i.e. bold headlines), being or set in boldface (i.e. bold lettering) (from Merriam-Webster dictionary online) – which convey no descriptive or allusive connotation in relation to the relevant goods and services.

For English speakers, the statement ‘LIVE BOLD’ is a meaningful expression which will be associated to the idea of “live fearlessly”. Since the combination of these two words will be perceived as bearing a clear meaning, contrary to the proprietor’s opinion, English consumers will not perceive the mark as having a word that is more distinctive that the other one, as the sign will be perceived as the sum of its two word elements.

Therefore, it is found that earlier mark are has no element that is more distinctive that the other one with respect of all the EU public.

In light of the above considerations, the signs are considered visually and aurally similar to an average degree to the extent that they coincide in the term ‘BOLD’.

They differ in the additional word ‘LIVE’ of the earlier sign and in the stylization of the contested EUTM. These differences, however, do not cancel out the impression of global visual and aural resemblance, as the fact that the only verbal component of the contested EUTM is entirely contained in the earlier sign constitutes an indication of visual and aural similarity between the signs (see, by analogy, 23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 40; 21/03/2011, T-372/09, Gold Meister, EU:T:2011:97, § 27).

Moreover, although in the contested EUTM the term ‘BOLD’ is displayed in a stylized typeface, this stylization, which will be perceived as rather ornamental, will not detract the public’s attention from the verbal element; indeed, the relevant consumer will more easily refer to the goods and services in question by quoting the word ‘BOLD’ than by describing the font of the trade mark (07/05/2015, T-599/13, Gelenkgold / Form Eines Tigers et al., EU:T:2015:262, § 48).

Conceptually, the EUTM proprietor argues that the signs evoke a different concept as the expression ‘LIVE BOLD’ will be perceived as a promotional statement (i.e. to live courageously), while the use of the word ‘BOLD’ as standalone element in the contested mark will suggest the idea of “printing set in bold face”.

In this respect, as above mentioned, since the word ‘LIVE’ can be considered a common term, it is likely that it will be linked to the concept of life by the majority of the EU public. On the other hand, the word ‘BOLD’ will be hardly understood by relevant public having no knowledge of the English language. Thus, for this part of public, the signs are not conceptually similar as the earlier sign will be perceived as referring to the concept of life, while the contested EUTM is meaningless.

For English speakers, while it is true the word ‘BOLD’ appearing as a stand-alone word in the contested mark can be associated to the idea of “printing set in bold face”, it cannot be excluded that the some consumers will perceive it as referring to some or something intrepid. To such extent, since the contested EUTM can be perceived as a whole as an invitation to live courageously, the signs can be conceptually similar, at least, to a low degree.

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

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, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, as a whole, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

In the present case, the contested goods and services were found to be partly similar and partly similar to a low degree.

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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

The comparison of the signs has shown that the signs are visually and phonetically similar to an average degree. The marks are conceptually not similar in relation to the non-English speaking public, while a conceptual link cannot be excluded in connection with the English consumers.

According to the case-law, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (04/05/2005, T 22/04, Westlife, EU:T:2005:160, § 40). In this regard, in the present case, taking into account that the only word element of the contested mark ‘BOND’ is entirely included in the earlier mark, the presence of the further element ‘LIVE’ in the earlier sign is not sufficient to exclude that consumers will conclude that the goods and services at issue come from the same or from economically-linked undertakings.

As above mentioned, the EUTM proprietor’s claim that the term ‘LIVE’ is the most dominant and distinctive element of the earlier sign cannot be accepted. Indeed, although it is true that consumers generally pay greater attention to the beginning of a mark than to the end, as pointed out by the General Court, this rule does not always apply and cannot mean ignoring the overall visual impression of the trade marks (19/03/2010, T 427/07, Mirtillino, EU:T:2010:104, § 72). In the case at hand, the only verbal component of the contested mark is totally included in the contested sign and the marks are similar overall.

In light of all the foregoing, taking also into account the principles of interdependence, especially the fact that the high degree of similarity between the marks compensates for the low degree of similarity that was found between the goods and services under comparison, there is reason to assume that the relevant EU public, even professional consumers with a high attention level, may be misled into thinking that the identical and similar goods and services bearing the overall similar conflicting signs come from the same undertaking or, as the case may be, from undertakings that are economically linked.

Therefore, the cancellation application is fully successful on the basis of the applicant’s EU trade mark registration. It follows that the contested EUTM must be cancelled for all the contested goods and services.

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

Ioana MOISESCU

Pierluigi M. VILLANI

Jessica LEWIS

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.

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