CANCELLATION No 13527 C (INVALIDITY)

BIBO Limited, Unite 15, The Blenheim Sawmills Swan Lane, OX29 8ET, Combe, Oxfordshire, United Kingdom (applicant), represented by Keltie LLP, No 1 London Bridge, SE1 9BA, London, United Kingdom (professional representative)

a g a i n s t

BIBO BARMAID LLC, 6 Sunrise Circle, 08809 Clinton, New Jersey, United States of America (EUTM proprietor), represented by Merh-IP Matias Erny Reichl Hoffmann Patentanwälte Partg MBB, Paul-Heyse-Str. 29, 80336 München, Germay (professional representative).

On 13/07/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 15 295 298 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 15 295 298. The application is based on European Union trade mark registration No 9 912 114. 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 signs are identical and the goods and services in conflict similar, if not highly similar. It considers that the goods in conflict share the same nature and intended purpose and are in direct competition and that the services in Class 37 protected by the earlier mark are complementary to the contested goods. Finally, it argues that the level of attention of the public is average as the products have become every-day goods. As a result, there is a risk of confusion.

The EUTM proprietor requested an extension for the reply. The Office granted such an extension until 05/02/2017. However, the EUTM proprietor did not submit any observations within the new time limit.

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 and services on which the application is based are the following:

Class 11:        Apparatus for the supply of drinking water; water coolers; water heaters; water filters; parts and fittings for all the aforesaid goods, not relating to fantasy.

Class 37:        Installation, maintenance, servicing, repair and cleaning of water cooling, water filtering and water heating apparatus, water softeners, water fountains, and parts and fittings for all the aforesaid goods; installation, servicing, repair and cleaning of drinks dispensers.

The contested goods are the following:

Class 7:        Aerated beverage making machines; Beverage processing machines; Inserts for power-operated beverage making machines.

The contested goods aerated beverage making machines and beverages processing machines consist of apparatus used to produce carbonated drinks (with carbon dioxide gas dissolved into them) or used to produce drinks such as cocktails, shakes, juices (for instance, by mixing ingredients). The contested goods inserts for power-operated beverage making machines are special pieces used for manufacturing machines.

The contested goods aerated beverage making machines and beverage processing machines can have the same nature and intended purpose as the goods apparatus for the supply of drinking water; water coolers and water heaters in Class 11. All these goods include machines intended for processing drinks. Moreover, the applicant’s goods apparatus for the supply of drinking water may include features which allow converting water into sparkling water whereas water coolers and water heaters can include machines which process beverages. These goods can have the same commercial origin and coincide in distribution channels and end customers. Therefore, the goods are similar.

The contested inserts for power-operated beverage making machines are similar to the applicant’s parts and fittings of the goods in Class 11 as they have the same nature and intended purpose. As mentioned above, inserts are pieces used for manufacturing machines, in other words, parts of machines and apparatus. These goods can have the same commercial origin and coincide in distribution channels and end customers. Therefore, the goods are similar.

2. The signs

BIBO	BIBO
Earlier trade mark	Contested trade mark

The signs are identical.

3. 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).

Moreover, 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.

In the present case, the signs are identical and the contested goods have been found at least similar to the applicant’s goods in Class 11.

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 European Union trade mark registration No 9 912 114. 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

Ioana MOISESCU

Elisa ZAERA CUADRADO

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.