CANCELLATION DIVISION
CANCELLATION No 8729 C (INVALIDITY)
Studio Moderna SRL, Bdul. Iuliu Maniu nr.7, Corp A, Et.4, Sector 6, Bucuresti,
Romania (applicant), represented by Răducu Turtoi, Splaiul Independentei no. 3, Bl.
17, 3rd floor, ap.7, District 5, 040011 Bucharest, Romania (professional representative)
a g a i n s t
Romarose International GmbH, Grönlandstraße 19, 28719 Bremen, Germany (EUTM
proprietor).
On 10/10/2017, the Cancellation Division takes the following
DECISION
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 10 640 662 is declared invalid in its entirety.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431,
subject to certain transitional provisions. All the references in this decision to the
EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations
currently in force, except where expressly indicated otherwise.
REASONS
The applicant filed an application for a declaration of invalidity against all the goods and
services of European Union trade mark No 10 640 662 ‘HOT PAN’ (word mark). The
application is based on the following earlier rights: (1) Romanian trade mark
registration No 126 955 ‘HOT PAN – TIGAIA MAGICA’ (word mark) in relation to which
the applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b)
EUTMR, (2) well-known trade mark ‘HOT PAN’ (word mark) in Romania in relation to
which the applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a)
and (b) and Article 8(2)(c) EUTMR and (3) non-registered trade mark ‘HOT PAN’ (word
mark) used in the course of trade of more than mere local significance in Romania in
relation to which the applicant invoked Article 60(1)(c) EUTMR in connection with
Article 8(4) EUTMR. In addition, the applicant also invoked Article 59(1)(b) EUTMR,
namely that the EUTM proprietor was acting in bad faith when filing the trade mark
application.
SUMMARY OF THE PARTIES’ ARGUMENTS
As regards the invalidity ground based on Article 60(1)(a) EUTMR in connection with
Article 8(1)(b) EUTMR, the applicant puts forward that there is a likelihood of confusion
Decision on Cancellation No 8729 C Page 2 of 8
on the part of the public because the contested goods and services in Classes 11 and
35 are identically reproduced in the specification of the Romanian mark and the signs
are highly similar overall.
In respect of the invalidity ground based on Article 60(1)(a) EUTMR in connection with
Article 8(1)(a) and (b) and Article 8(2)(c) EUTMR, the applicant shows that the
Opposition Division of the Romanian State Office for Inventions and Trademarks has
already established that ‘HOT PAN’ is a well-known mark in Romania in the sense of
Article 6bis of the Paris Convention. It further points out that the contested EUTM is
identical to the earlier well-known mark and they cover identical goods and/or services.
The applicant further claims that it is the owner of a non-registered trade mark ‘HOT
PAN’ used in the course of trade of more than mere local significance in Romania and
that the provisions of Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR
are also applicable to the case at hand.
Finally, as regards the invalidity ground based on Article 59(1)(b) EUTMR, the applicant
essentially argues that before applying for the contested EUTM, the EUTM proprietor
filed a Romanian trade mark application for the sign ‘HOT PAN’ (application number
M 2011 05040). Following an opposition lodged by Studio Moderna SRL (the applicant
in the present proceedings), the application was rejected by the Opposition Division of
the Romanian State Office for Inventions and Trademarks on the grounds that ‘use of
the mark by the applicant could exploit on opponent’s reputation’ (notification of refusal
of 04/09/2013). Therefore, in the applicant’s opinion, the EUTM proprietor acted in bad
faith when it applied for the contested EUTM (13/02/2012). With a view to show the bad
faith of the EUTM proprietor and its dishonest intention, the applicant further cites
several cases involving the same parties as those in the present proceedings and
points out that the ‘constant’ dishonest behaviour of the EUTM proprietor is also
demonstrated by multiple filings of trade marks and designs identical or similar to those
belonging to other companies.
The applicant further mentions that the seniority claimed for the contested EUTM ‘is not
standing any more’, since the national Romanian mark whose seniority was claimed for
the EUTM concerned (‘HOT PAN’, application No M 2011 05040) was already rejected
by the Romanian State Office for Inventions and Trademarks.
The EUTM proprietor submitted observations in reply on 15/04/2014. It disputes the
applicant’s claims mainly on the following grounds:
– On 11/07/2011, the EUTM proprietor filed an application for the registration of
the Romanian trade mark ‘HOT PAN’ for goods and services in Classes 11 and
35, registered by the Romanian State Office for Inventions and Trademarks
under number 116 143. ‘Products from this mark have been sold effectively on
Romanian territory’ by the proprietor’s licensees and the applicant’s claims on
the bad faith of the proprietor are ungrounded;
– On 03/02/2012, the applicant added to the proprietor’s national trade mark the
non-distinctive words ‘TIGAIA MAGICA’ and submitted with the Romanian State
Office for Inventions and Trademarks an application for the registration of the
mark ‘HOT PAN – TIGAIA MAGICA’;
– The contested EUTM has been registered without any opposition from the
applicant and now the applicant ‘speculates the possibility of submitting an
invalidity declaration against a previous mark in order to block the proprietor’s
company from exercising its prerogatives’;
– There is no likelihood of confusion because the applicant refers to a subsequent
registration; furthermore, the contested EUTM is ‘grounded’ on the proprietor’s
Decision on Cancellation No 8729 C Page 3 of 8
previous mark ‘HOT PAN’ registered in Romania and the applicant is only trying
to take advantage of the reputation of that national mark.
The applicant replied on 26/06/2014. It submits counterarguments for each of the
proprietor’s claims and shows, in particular, that the proprietor is trying to mislead the
Cancellation Division by sustaining that it still has protection for the Romanian trade
mark ‘HOT PAN’ (registration no 116 143). On 30/04/2012 the Romanian State Office
for Inventions and Trademarks cancelled the decision for registering said mark,
reopened the examination procedure and rejected the proprietor’s national application
‘HOT PAN’ following the opposition lodged by the invalidity applicant. On 03/04/2014,
the Board of the Appeal of the Romanian State Office for Inventions and Trademarks
took a decision (not yet final) by means of which it confirmed the refusal of the
proprietor’s national mark.
On 22/10/2014, the EUTM proprietor filed observations in reply. It reiterates its previous
arguments in that there is no bad faith on its part and also shows that the applicant’s
national trade mark ‘HOT PAN – TIGAIA MAGICA’ has not yet been registered and
therefore it ‘cannot generate a risk of confusion’.
In support of their observations, both the applicant and the EUTM proprietor filed
evidence, which will be however listed and analysed by the Cancellation Division
further in the decision, only if necessary.
On 03/12/2014, the Office informed both parties that the cancellation proceedings are
being suspended because the applicant’s Romanian trade mark application
No M 2012 00702 is not yet registered.
On 02/05/2017, the applicant informed the Office that the Romanian trade mark has
matured into registration and filed a copy of the registration certificate (document in
Romanian) and its English translation.
The application for a declaration of invalidity is based on more than one earlier right
and ground. The Cancellation Division finds it appropriate to first examine the
application in relation to the applicant’s Romanian trade mark registration No 126 955
‘HOT PAN – TIGAIA MAGICA’ (word mark) and on the grounds of Article 60(1)(a)
EUTMR in connection with Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 60(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.
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a) The goods and services
The goods and services on which the application is based are the following:
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating,
drying, ventilating, water supply and sanitary purposes.
Class 35: Advertising, business management; business administration; office
functions.
The contested goods and services are the following:
Class 11: Apparatus for lighting, steam generating, refrigerating, drying,
ventilating, water supply and sanitary purposes.
Class 35: Advertising; Business management; Business administration; Office
functions.
Contested goods in Class 11
Apparatus for lighting, steam generating, refrigerating, drying, ventilating, water supply
and sanitary purposes are identically contained in both lists of goods.
Contested services in Class 35
Advertising; business management; business administration; office functions are
identically contained in both lists of services.
b) 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 target the general and also the
professional public, while the services found to be identical are directed at the
professional public. The public’s degree of attentiveness may vary from average to
high, depending on the price, sophistication/specialised nature, or terms and conditions
of the goods and services purchased.
c) The signs
HOT PAN – TIGAIA MAGICA HOT PAN
Earlier trade mark Contested trade mark
The relevant territory is Romania.
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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 juxtaposition of words ‘HOT PAN’, featured in both signs, refers in English to a
container with a long handle, used for cooking things in and which has a high
temperature. It will be understood with this meaning by part of the relevant public,
namely those Romanian consumers that have a certain command of the English
language. For the remaining part of the public that is not familiar with this language the
words in question will be perceived as coined, meaningless terms.
‘TIGAIA MAGICA’ that is further included in the earlier mark forms a logical and
conceptual unit from the perspective of the relevant Romanian public, which will
understand it as referring to a magic pan.
As regards the verbal elements of the signs, it is considered that their distinctiveness in
relation to the relevant goods and services is average. With particular reference to the
components ‘(HOT) PAN’ and respectively ‘TIGAIA MAGICA’, albeit some of the
relevant services in Class 35 (i.e. advertising) could be rendered in connection with
pans there is nothing in their description to the effect that they relate to services
specifically linked with pans (see by analogy 26/03/2015, T-581/13, Royal County of
Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192,
§ 49).
Insofar as the hyphen included in the earlier mark is concerned, consumers will not
attach any trade mark significance to it, since it is merely a punctuation mark used to
join words and/or to separate syllables of a single word and therefore not capable of
functioning as a badge of origin.
Finally, neither the earlier mark nor the contested sign has an element that could be
considered more dominant (visually eye-catching) than other elements, since they are
both word marks which by definition are written in standard typeface.
Visually, the signs coincide in ‘HOT PAN’ and differ in the remaining verbal elements of
the earlier mark (‘TIGAIA MAGICA’) and in the hyphen. It is true that the earlier mark
has a different length and structure than the contested sign; however, account must be
taken of the fact that the contested sign consists exclusively of the first two elements of
the earlier mark and that consumers tend to focus on the beginning of a sign when they
encounter a trade mark. To conclude and bearing in mind the above considerations,
there is an average level of visual similarity of the marks.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛h/o/t/
p/a/n’, present identically in both signs and differs in the sound of the letters composing
the expression ‘t/i/g/a/i/a m/a/g/i/c/a’ of the earlier mark, which have no counterparts in
the contested sign. There is, therefore, an average level of aural similarity.
Conceptually, there is a link for those consumers grasping the meaning of the
expression ‘HOT PAN’ in both signs and to that extent the degree of conceptual
similarity is deemed as average. For the remaining part of the public that will only
understand the expression ‘TIGAIA MAGICA’ of the contested sign, the marks 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.
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d) 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 as a whole has no
meaning for any of the goods and services from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
As detailed above in the Summary of the Parties’ Arguments section, the EUTM
proprietor claims that there is no likelihood of confusion because the contested EUTM
is ‘grounded’ on its national registration ‘HOT PAN’ which is reputed and the applicant
is only trying to take advantage of that reputation. The proprietor also argues that it has
used its national mark through its licensees and that the applicant’s Romanian mark
No 126 955 has a later date than its national mark.
Such claims cannot prove successful for the reasons set out below.
Admittedly, the proprietor claimed for the contested EUTM the seniority of the
Romanian national mark ‘HOT PAN’ and such claim has been accepted by the Office.
However, it is recalled that according to Article 39(3) EUTMR seniority shall have the
sole effect [….] that, where the proprietor of the EU trade mark surrenders the earlier
trade mark or allows it to lapse, he shall be deemed to continue to have the same
rights as he would have had if the earlier trade mark had continued to be registered.
Consequently, the fact that the proprietor successfully claimed the seniority of the
national mark does not mean that contested EUTM would enjoy a better priority right
vis-a-vis the applicant’s Romanian mark No 126 955 on which the present invalidity is,
inter alia, based.
In other words, even if the proprietor’s Romanian mark No 116 143 is still validly
registered (which, based on the evidence filed by the applicant, does not appear to be
the case anymore), this cannot call into question the fact that the applicant’s Romanian
trade mark registration No 126 955 is still an earlier mark within the meaning of
Article 8(2)(a) EUTMR, in relation to the contested EUTM.
As for the proprietor’s claims that its national mark has been used in Romania and that
it enjoys a reputation, this bears no relevance to the current proceedings as the
proprietor’s Romanian mark falls outside the scope of the present invalidity application.
Against the foregoing, the proprietor’s claims must be set aside as unfounded.
The contested goods and services are identical to the applicant’s goods and
respectively services.
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As explained in detail in section c) above, there is an average degree of visual and
aural similarity of the marks stemming from the shared components ‘HOT PAN’. The
same is valid as regards the conceptual similarity established for those consumers
understanding these words.
Notwithstanding that the earlier mark contains two additional verbal elements and a
hyphen it is the opinion of the Cancellation Division that such differentiating elements
are not sufficient to significantly influence the overall impression this sign creates to the
extent where a likelihood of confusion on the part of the public could safely be
excluded.
Therefore, it is considered that when encountering the contested sign, the relevant
consumers (including the part showing a higher level of attention) will make an
association with the applicant’s earlier mark, which will lead them to believe that the
identical goods and services in Classes 11 and 35 originate from the applicant or, as
the case may be, from an economically linked undertaking.
Considering all the above and in a global assessment of all the relevant factors, the
Cancellation Division finds that there is a likelihood of confusion on the part of the
Romanian public. Therefore, the application is well founded on the basis of the
applicant’s Romanian trade mark registration No 126 955. It follows that the contested
trade mark must be declared invalid for all the contested goods and services.
As the earlier right Romanian trade mark registration No 126 955 leads to the success
of the application and the cancellation of the contested trade mark for all the goods and
services against which the application was directed, there is no need to examine the
other earlier rights invoked by the applicant (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268).
Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there
is no need to further examine the other grounds of the application, namely Article 8(1)
(a) and (b) and Article 8(4) EUTMR in conjunction with Article 60(1)(a) and (c) EUTMR
and Article 59(1)(b) EUTMR.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) 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.
Decision on Cancellation No 8729 C Page 8 of 8
The Cancellation Division
Ioana MOISESCU Oana-Alina STURZA Michaela SIMANDLOVA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 Article 109(8) EUTMR, such a
request must be filed within one month of 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.