CANCELLATION No 13 419 C (INVALIDITY)

Sioux Holding GmbH, Finkenweg 2-4, 74399 Walheim, Germany (applicant), represented by Kurz Pfitzer Wolf & Partner Rechtsanwälte mbB, Königstr. 40, 70173 Stuttgart, Germany (professional representative)

a g a i n s t

Galleon Holdings plc, 2nd Floor The Hogarth Centre Hogarth Lane, London W4 2QN, United Kingdom (EUTM proprietor).

On 25/09/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 5 365 631 is declared invalid for all the contested goods, namely:

Class 25:        Clothing; footwear and headgear none relating to specialist use with bicycles.        

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

Class 9:        Entertainment computer software none relating to bicycles; computers; computer hardware; computer games software none relating to bicycles; computer games none relating to bicycles; computer software; electronic games apparatus none relating to bicycles; telecommunications apparatus; all electronic apparatus for the purpose of downloading, transmitting, receiving and broadcasting data; apparatus for recording, transmission or reproduction of sound or images; computer software and computer programmes none being computers for bicycles; computer software downloaded via the Internet; computer software publications downloaded via the Internet; computer software applications downloaded or downloadable via the Internet; interactive entertainment software; interactive business software; interactive database software; data recorded electronically from the Internet; data recorded in machine readable form from the Internet; software applications; interactive applications; website applications; communication software; computer software and publications in electronic form supplied on-line from databases or from the Internet; parts and fittings for the above mentioned goods.

Class 16:        Printed pages downloaded from the Internet; printed matter, paper, cardboard and goods made from these materials, not included in other classes; magazines; journals; periodicals; manuals; newspaper; posters; address books; organisers; photographs, stationery; instructional and teaching materials (except apparatus); greeting cards; books; calendars; publications; comics; cartoons; albums; scrap books; gift wrap; plastic bags; stickers and sticker albums; catalogues; plastic materials for packaging (not included in other classes); parts and fittings for the above mentioned goods.

Class 28:        Games, toys and playthings none being childrens' cycles and scooters and ride-on toys; gymnastic and sporting articles not included in other classes; toy action figures and dolls, clothing and accessories for toy action figures and dolls, card games, handheld electronic games apparatus, electronic games apparatus, toy vehicles none being childrens' cycles and scooters and ride-on toys; play sets and play cases, toy molding compounds, toy models; handheld games; electronic games; toy molding compounds; toy models; parts and fittings for all the aforesaid goods.

Class 41:        Entertainment services in the form of electronic, computer and video games provided by means of the Internet and other remote communications device; internet games (non downloadable); organising of games; games (not downloadable) played via a global computer network; providing interactive entertainment software services; education and entertainment services in the form of cinematographic, televisual, digital and motion picture films, radio and television programs and shows and for the provision of information related to the above services by computer networks, television, cable and other electronic means; publishing and distribution of computer games; preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs.

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

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 5 365 631, namely against all the goods in Class 25. The application is based on German trade mark registration No 1 020 954. 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 EUTM shall be declared invalid for the goods in Class 25, because due to the identity/similarity of goods and the similarity of marks there is a likelihood of confusion on the part of the public. Furthermore, the applicant requests an award of costs in its favour.  

The EUTM proprietor did not submit observations 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.

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 25:        Outdoor shoes and boots, après-ski boots for women and men.

        

The contested goods are the following:

Class 25:        Clothing; footwear and headgear none relating to specialist use with bicycles.        

        

The contested footwear, none relating to specialist use with bicycles include as a broader category the applicant’s après-ski boots for women and men. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested clothing; headgear none relating to specialist use with bicycles are similar to the applicant’s outdoor shoes and boots since footwear serves the same purpose as clothing and headgear: they are all used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes and headgear will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all these types of goods.

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 is average.

3. The signs

APOLLO	APOLLO’S PAD
Earlier trade mark	Contested trade mark

The relevant territory is Germany.

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 signs do not have any elements which could be considered dominant or more/less distinctive than other elements.

The signs under comparison are both word marks coinciding visually and aurally in the verbal element ‘APOLLO’. The signs differ visually and aurally in the letter ‘S’ and the verbal element ‘PAD’ of the contested sign and also visually in the apostrophe in the contested sign. The signs are, therefore, visually and aurally similar.

‘Apollo’ in German will be associated either with a character from the Greek mythology – son of Zeus and god of poetry and/or any of a series of manned US spacecraft designed to explore the moon. ‘Pad’ is not a German word, but found its way into contemporary German language due to extensive use in the field of electronic devices. It will either be understood as such (an electronic device) or as short for ‘mouse pad’ to indicate a flat piece of plastic or some other material that one rests the mouse on while using a computer (for the meaning of Apollo and Pad see the Duden online dictionary).

The apostrophe and the letter ‘S’ of the contested sign describe the possessive relationship between the two words in the contested sign. The average German consumer is familiar with this linguistic construction, first of all because of its wide-spread use (in particular on restaurants and grocery shops – ‘At Tiffany’s, ‘Murphy’s pub’, ‘Simona’s kitchen’, etc) and also because of the use of a similar possessive linguistic structure in German. Bearing in mind the above, it is highly likely that the relevant German consumer will perceive the contested sign as a meaningful expression, namely as the pad that belongs to either the Greek god or the spacecraft. Since in both cases this meaningful expression does not really make much sense even when perceived as a whole, the contested sign retains to a great extent the concepts of its individual components in which case the conceptual similarity with the earlier sign on behalf of the word ‘Apollo’ is to be acknowledged. The signs are conceptually similar to at least 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.

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. 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

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods are identical or similar and the marks are similar. The level of attention is average. The earlier mark is of average distinctiveness and is reproduced in its entirety in the contested sign and can clearly be identified as a verbal element in an isolated manner in the structure of the contested mark. In such a case the overall impression produced by the composite sign may lead the public to believe that the goods at issue derive from the same company or at the very least, from companies which are linked economically. The consumer may erroneously think that the goods designated by the contested mark are just a specific line of the same goods of the applicant.

Considering all the above, 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 German trade mark registration No 1 020 954. It follows that the contested trade mark must be declared invalid for all the contested goods. It remains registered for the remaining non-contested goods and services in Classes 9, 16, 28 and 41.

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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

Lena FRANKENBERG GLANTZ

Plamen IVANOV

José Antonio GARRIDO OTAOLA

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.