CANCELLATION No 12 853 C (INVALIDITY)

Huber & Schüssler, Truderinger Str. 246, 81825 Munich, Germany (applicant), represented by Stephan Biagosch, Truderinger Str. 246, 81825 Munich, Germany (professional representative)

a g a i n s t

Rowenta France (Société par actions simplifiée), Chemin du Virolet, 27200 Vernon, France (EUTM proprietor), represented by Isabelle Bissey-Pierre, SEB – Service Juridique, 21260 Selongey, France (employee representative).

On 28/06/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 14 332 464 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 14 332 464 ‘COMPACT POWER’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 7:        Vacuum cleaners; Suction nozzles for vacuum cleaners; Vacuum cleaner bags; Brushes for vacuum cleaners; Vacuum cleaner hoses.

The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the mark is exclusively formed by a combination of two commonly used English words, ‘Compact’ and ‘Power’. These words only indicate that the contested goods are small and powerful. It also refers to several marks containing the word ‘Compact’, ‘Power’ or both, that were rejected by the Office in the past. Therefore, according to the applicant, the mark is descriptive and lacks distinctiveness and should be invalidated.

The EUTM proprietor did not file any observations in response.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 52(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as EU trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31).

According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which the contested EUTM is registered (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 24).

In accordance with the same case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (PAPERLAB, loc. cit., paragraph 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (11/04/2008, C-344/07 P, Focus, EU:C:2008:222, § 21).

The existence of such a relationship must be assessed, firstly, in relation to the goods covered by the contested EUTM and, secondly, in relation to the perception of the relevant public (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30).

In the present case, the contested goods are the following:

Class 7:        Vacuum cleaners; Suction nozzles for vacuum cleaners; Vacuum cleaner bags; Brushes for vacuum cleaners; Vacuum cleaner hoses.

These goods target public at large and the attentiveness of these consumers will be average.

As the contested mark consists of English words, the relevant public is to be found amongst English-speaking consumers in the European Union, at least the public in the United Kingdom, Ireland and Malta.

The word ‘compact’ is an English adjective denoting things that are small or take up little space, to be used when the compactness is considered to be a good quality of the given object. The word ‘power’ has, among others, the meaning of ‘the ability to move or affect things’ (both definitions from Collins online dictionary). The meaning of these words has not changed since the filing of the contested mark on 03/07/2015.

In relation to the contested vacuum cleaners, the words ‘compact power’ refer to the machines as being compact yet powerful. Both characteristics are essential and desirable characteristics of vacuum cleaners. Thus, the contested mark directly and specifically describes characteristics of the products, namely that they are compact and powerful. Consumers will immediately, without the need of any further mental steps or interpretative efforts, perceive the mark as an indication of important features of the goods. The combination of the two words adds nothing to the simple sum of its parts. The mark does not contain any elements that would be perceived by the relevant consumers as an identification of the commercial origin of the products rather than as a mere informative message about the qualities of the goods.

The remaining contested goods, namely suction nozzles for vacuum cleaners; vacuum cleaner bags; brushes for vacuum cleaners; vacuum cleaner hoses, are goods complementary to vacuum cleaners. Whilst these goods may also be small, power is normally not one of their characteristics. However, these goods are accessories of vacuum cleaners, cannot be used independently of them and they form integral parts of vacuum cleaners. They normally contribute to qualities of the vacuum cleaners as a whole (in the present case, to the overall compactness and powerfulness of the entire product) and, therefore, consumers will also perceive the mark as information about the qualities of these products instead of as an indication of their commercial origin. Consequently, the contested mark is also descriptive in relation to these goods (see, as regards descriptive character of a sign for complementary products, judgment of 18/10/2016, T-776/15, Meissen Keramik, § 29).

Considering all the above, the Cancellation Division concludes that there is a sufficiently direct and specific relationship between the contested mark and all the contested goods and consumers will immediately perceive the contested mark as a description of essential characteristics of the products. This was also the situation at the time of filing of the contested mark.

Consequently, the contested EUTM, already at the time of its filing, consisted exclusively of an indication that may serve, in trade, to designate a characteristic of the contested goods, and, therefore, the mark has been registered contrary to the provision of Article 7(1)(c) EUTMR.

Since Article 7(1) EUTMR makes it clear that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a European Union trade mark (28/06/2011, T-487/09, ReValue, EU:T:2011:317, § 80; 17/04/2013, T-383/10, Continental, EU:T:2013:193, § 71-72; 12/06/2013, T-598/11, Lean Performance Index, EU:T:2013:311, § 52), it is no longer necessary to consider, in the present case, the applicant’s arguments alleging breach of Article 7(1)(b) EUTMR.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should 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) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

María Belén IBARRA DE DIEGO

Michaela SIMANDLOVA

Pierluigi M. VILLANI

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.