CANCELLATION No 12214 C (INVALIDITY)

Manufacture des Montres Vulcain S.A., Chemin des Tourelles 4, 2400 Le Locle, Switzerland (applicant), represented by Kurz Pfitzer Wolf & Partner Rechtsanwälte mbB, Königstr. 40, 70173 Stuttgart, Germany (professional representative)

a g a i n s t

Sheva Lanzarote SL, C/ Guincho 11, 35560 Tinajo, Spain (EUTM proprietor), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative).

On 16/06/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 10 861 797 is declared invalid for some of the contested goods and services, namely:

Class 9:                Clocks (time recording devices); Time clocks (time recording devices); Punch clocks.

Class 14:        Horological and chronometric instruments; Watch hands; Casings for clocks and watches; Presentation boxes for horological articles; Watch straps, of metal, leather or plastic; Parts for clockworks; Digital clocks.

Class 35:        Retailing, in shops or via the Internet, and wholesaling, of watches.

3.        The European Union trade mark remains registered for all the remaining goods and services, namely:

Class 9:        Egg timers (sand glasses); Automatic time switches.

Class 35:        Retailing, in shops or via the Internet, and wholesaling, of clocks and parts, fittings and accessories therefor and parts, fittings and accessories for watches, import and export, business representation and sole agencies relating to watches and clocks and parts, fittings and accessories therefor.

4.        Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 10 861 797. The application is based on international trade mark registration No 769 708 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 case for the applicant

The applicant bases its case on the fact that the marks at issue are similar on all levels and the goods and services are either highly similar or identical. The applicant mentions the concept of ‘volcano’ which is conveyed by both marks, adding weight to the likelihood that consumers will confuse the marks. Furthermore, the applicant claims that the earlier mark has a particularly high degree of distinctiveness owing to the fact that ‘VULCAIN’ is a trade mark which has been used for watches since 1858 and is known for its ‘presidents’ watch series’ worn by several US presidents. Evidence is filed to support these assertions.

The applicant also files evidence of use of the earlier mark in response to a request for proof of use made by the EUTM proprietor. This evidence will be listed and analysed below.

The case for the EUTM proprietor

The EUTM proprietor refutes the applicant’s claims that the signs are similar, stating that more emphasis needs to be placed on the figurative elements contained in the marks. Furthermore, the proprietor adds that the earlier mark ‘VULCAIN’ is meaningless, while the contested mark is the word for ‘volcano’ in Spanish. Therefore, the signs are conceptually dissimilar.

The EUTM proprietor requests that the applicant prove use of its earlier mark.

PROOF OF USE

According to Article 57(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 42(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 10/12/2015. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 10/12/2010 to 09/12/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 14:        Watches and watch parts; all other articles used for indicating time, and parts of said articles.

According to Rule 40(6) EUTMIR in conjunction with Rule 22(3) EUTMIR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 01/12/2016, the applicant was given three months to submit proof of use.

On 06/03/2017, the applicant submitted evidence as proof of use, within the time limit.

As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Screenshots of the products offered by the applicant on its website http://www.vulcain-watches.ch/de/collection/all, dated in February 2017. Further screenshots from the website of the applicant with examples of distributors in Europe.

• Invoices: a selection of invoices is filed covering the years 2012-2016 for the sales of watches in Germany, Belgium, France, the Czech Republic, and Italy. Monetary amounts cannot be mentioned for reasons of confidentiality. They are, however, very considerable. The following sign appears in the header of all the invoices:

Products mentioned in the itemisation of the invoices are, inter alia, ‘Aviator Dual Time’, ‘President’s Watch’, ‘Nautical Heritage’.

• Tables of turnover: for the years 2013-2015 for the sale of watches in the Euro zone, corresponding to Germany, Austria, Belgium, Spain, France, Italy, Lithuania, the Czech Republic, Romania and the United Kingdom. Exact quantities cannot be given for reasons of confidentiality. However, although the amount of watches sold is not especially high, in monetary terms the sales are very considerable. This is due to the fact that the unit price of one of the applicant’s watches is high since the watches are luxury items.

• A selection of approximately 14 advertisements appearing in various magazines published between 2012 and 2016. The publications are mainly French and German. Some examples of these advertisements are as follows:

Published in the magazine ‘GQ’ in July 2015.

Published in ‘Les Echos’ on 24 November 2015.

• Screenshots of various jewellery shops selling ‘Vulcain’ watches. All of the screenshots are dated in 2017 and correspond to retail outlets in Germany, the Netherlands, and Sweden.

The applicant also filed some on evidence on 11/03/2016 in order to prove the enhanced distinctiveness of its mark. This evidence consists of:

• Screenshots of the applicant’s website showing ‘VULCAIN’ watches.

• An article published in ‘WorldTempus’ on 5 November 2012 entitled ‘Vulcain: The President’s Watch’. The article lists the US presidents throughout history who have worn ‘Vulcain’ watches.

• A publication which appears to have been produced by the applicant itself entitled ‘The History of the Manufacture of Vulcain. A passion for fine craftsmanship’. The publication describes the history of the applicant’s company since it was founded in the late 19th century.

Most of the evidence of use is dated within the relevant period. The invoices and tables of turnover show that the place of use is Germany, Austria, Belgium, Spain, France, Italy, Lithuania, the Czech Republic, Romania and the United Kingdom. This can be inferred from the language of some of the documents (English, French, German), and some addresses mentioned particularly in the invoices. The invoices provide sufficient information concerning commercial volume, length of period and frequency of use. Even though actual monetary amounts cannot be specified due to confidentiality, the Cancellation Division is satisfied that they are considerable. It is also noteworthy that the invoices cover a continuous period of time between 2012 and 2016, and correspond to various countries in the European Union. Regarding the nature of use of the mark, In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. In the present case, the evidence of use sufficiently indicates the nature of use since the trade mark as registered appears in the headers of all the invoices, sometimes in the itemisation of invoices, and throughout the samples of advertising provided.

Finally, the earlier mark is registered for:

Class 14:        Watches and watch parts; all other articles used for indicating time, and parts of said articles.

However, the evidence does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 57(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 14:        Watches.

There is no evidence that the applicant produces other sorts of time indicating devices or the parts for watches and other articles used for indicating time. Therefore, the Cancellation Division will only consider the abovementioned goods in its further examination of the 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 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:

Class 14:        Watches.

The contested goods and services are the following:

Class 9:        Clocks (time recording devices); Egg timers (sand glasses); Time clocks (time recording devices); Punch clocks; Automatic time switches.

Class 14:        Horological and chronometric instruments; Watch hands; Casings for clocks and watches; Presentation boxes for horological articles; Watch straps, of metal, leather or plastic; Parts for clockworks; Digital clocks.

Class 35:        Retailing, in shops or via the Internet, and wholesaling, of watches and clocks and parts, fittings and accessories therefor, import and export, business representation and sole agencies relating to watches and clocks and parts, fittings and accessories therefor.

Contested good in Class 9

The contested Clocks (time recording devices); Time clocks (time recording devices); Punch clocks are all devices which are designed for recording time. The applicant’s watches are also time-keeping instruments. As such, the Cancellation Division considers that it is plausible that these goods may be produced by the same companies. They also clearly serve a similar purpose, may be aimed at the same consumers via the same distribution channels. Therefore, the contested goods are similar to the applicant’s goods.

The contested Egg timers (sand glasses); Automatic time switches, while related to time-keeping, are very specific goods. Egg timers are devices in the form of hour glasses used to measure the amount of time it takes to boil an egg, while automatic time switches are electronic timers used to switch equipment on and off at specific intervals and are connected to an electric circuit operating from mains power. It is unlikely that a watch manufacturer will produce these goods and they will not be distributed through the same channels. Although they share a similar purpose to the applicant’s goods, they are not complementary or in competition with one another. These goods are therefore dissimilar.

Contested goods in Class 14

The contested horological and chronometric instruments include, as broader categories, the applicant’s watches. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods.

The contested watch hands; casings for clocks and watches; presentation boxes for horological articles; watch straps, of metal, leather or plastic; parts for clockworks; digital clocks are parts and accessories for clocks and watches, as well as digital clocks. It is clear that these goods may be produced by the same companies, distributed through the same channels and there is a certain degree of complementarity between some of them. For this reason, these goods are similar to the earlier goods.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested Retailing, in shops or via the Internet of watches is similar to a low degree to the applicant’s watches. The same reasoning applies by analogy to wholesaling, of watches, which are also deemed similar to a low degree.

Retailing, in shops or via the Internet, and wholesaling, of clocks and parts, fittings and accessories therefor and parts, fittings and accessories for watches are not similar to the applicant´s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Wholesaling consists of the selling of goods in large quantities to be retailed by others. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar.

The remaining contested services, namely import and export, business representation and sole agencies relating to watches and clocks and parts, fittings and accessories therefor, are specific services dedicated to importing and exporting particular goods and agency services connected presumably with selling watches and clocks and parts, fittings and accessories therefor. The contested services are dissimilar to the earlier goods because apart from the former being intangible and the latter tangible, they serve different purposes, different methods of use and are neither in competition nor complementary.

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 and most of the services found to be identical or similar to varying degrees are directed at the public at large. The wholesaling services are directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57, by analogy). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

The word ‘WATCHES’ in the contested mark is meaningful in English-speaking territories. In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the word ‘VULCAIN’ in bold, black capitals which increase and decrease in size. There is an underlining, with a peak pointing down which is of a purely decorative nature. The word ‘VULCAIN’ is distinctive in connection with the goods and the sign has no element which can be considered more dominant (visually eye-catching) than other elements.

The contested mark is a figurative mark consisting of the word ‘VOLKAN’ in slightly stylised, bold, black capitals. Since this word has no meaning in connection with any of the goods and services at issue, it is distinctive. Below this word, ‘WATCHES’ appears in much smaller print. Since the goods at issue include watches, this word is non-distinctive for those goods. It is also deemed weak for the remaining goods and services because they are all connected to watches and similar goods. The contested mark contains a device element above the word ‘VOLKAN’. The triangular device in the contested sign and the word ‘VOLKAN’ are visually more dominant than the word ‘WATCHES’.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Visually, the signs coincide in the letters ‘V –L-A-N’ which appear in almost the same positions in both signs within the distinctive words ‘VULCAIN’ and ‘VOLKAN’. The letters also appear in black bold capitals in both marks. They differ in their remaining letters, device elements, stylisation, and the non-distinctive or weak word ‘WATCHES’ in the contested mark, which is also the smallest element in the sign.

Therefore, taking into consideration the above remarks on distinctiveness and dominance, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘V-L-C/K-A-N’, present identically in both signs. The letters ‘C’ and ‘K’ will be pronounced identically by the relevant public. Furthermore, the initial vowels ‘U/O’ will be pronounced in a very similar manner.  The pronunciation differs slightly in the sound of the vowels ‘AI’ versus ‘A’ at the end of the signs. Although the contested sign contains an extra word, ‘WATCHES’, due to its lack of distinctiveness or weakness, and size, it is unlikely to be pronounced.

Therefore, the signs are aurally highly similar.

Conceptually, even in the event that some members of the public in the relevant territory perceive the less distinctive and less visually dominant word ‘WATCHES’ in the contested sign, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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.

5. Global assessment, other arguments and conclusion

The Cancellation Division is of the opinion that there are sufficient similarities between the signs on a visual and especially aural level for a finding of likelihood of confusion to be reached. The signs begin and end with the same letters and have other coinciding letters throughout. Although they are figurative, the typeface used and device elements are not sufficient to ensure that the consumer will be able to distinguish between them. Furthermore, although the contested sign contains the word ‘WATCHES’, it is depicted in very small letters and is unlikely to be noticed. Even if it were noticed, it lacks distinctiveness or is weak in connection with all the goods and services at issue.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). Therefore, even likelihood of confusion regarding the lowly similar contested services in Class 35 is plausible in the present case due to the many similarities between ‘VULCAIN’ and ‘VOLKAN’ on the visual and aural level.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the application is partly well founded on the basis of the applicant’s international trade mark registration designating the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these goods and services cannot be successful.

Since the cancellation application is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its reputation as claimed by the applicant even for identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the earlier mark for dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Liliya YORDANOVA

Lucinda CARNEY

Frédérique SULPICE

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.