CANCELLATION No 13 318 C (INVALIDITY)

Reisser Ltd, Bramhall Moor Technology Park, Pepper Road, Hazel Grove, Stockport Cheshire, United Kingdom (applicant), represented by Novagraaf UK., Suite 8b Lowry House 17 Marble Street, Manchester M2 3AW, United Kingdom (professional representative)

a g a i n s t

Bax-Shop.nl B.V., Olympiastraat 2, 4462 GG Goes, The Netherlands (EUTM proprietor), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative).

On 25/07/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is rejected in its entirety.

2.        The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 14 528 061, namely against some of the goods in Class 6. The application is based on non-registered trade marks RETINOX used in United Kingdom and Ireland for metal screws. The applicant invoked Article 53(1)(c) EUTMR in connection with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that because of the length and level of use of the earlier marks for the relevant goods, metal screws, it has acquired a substantial reputation and trading goodwill in the earlier marks, before the priority date of the contested registration. In the applicant’s opinion the signs in conflict are visually and aurally similar to a medium degree and both are meaningless. Apart from that, the signs in question cover identical and highly similar goods. Therefore, the applicant considers that ‘use of the contested mark in relation to the contested goods is tantamount to a misrepresentation which will deceive the public into believing that the goods sold under the contested mark are somehow associated with the invalidity applicant’s brand’ and, this use will cause damage to the invalidity applicant.

In support of its observations, the applicant filed evidence which, if necessary, will be listed later on in the decision.

The EUTM proprietor did not file any arguments or evidence in reply.

NON-REGISTERED MARK OR SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The applicant claims ownership of the non-registered trade marks RETINOX used in United Kingdom and Ireland.

According to Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR (hereafter referred to as Article 8(4) EUTMR), upon cancellation action by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall be declared invalid where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

1. rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

2. that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The grounds of refusal of Article 8(4) EUTMR are therefore subject to the following requirements:

• The earlier sign must have been used in the course of trade of more than local significance;

• Pursuant to the law governing it, prior to the filing of the contested trade mark, the invalidity applicant acquired rights to the sign on which the application is based, including the right to prohibit the use of a subsequent trade mark.

• The conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Thus, where a sign does not satisfy one of those conditions, the request as based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

Furthermore, such use must indicate that the sign in question is of more than mere local significance. The rationale of that provision is to restrict the number of conflicts between signs, by preventing an earlier sign, which is not sufficiently important or significant, from making it possible to challenge either the registration or the validity of a European Union trade mark.

When determining the significance of the use made of a trade sign under Article 8(4) EUTMR, one must consider the territory in which it is used, the length of time and economic dimension of such use, the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77).

Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark. In addition, it should be taken into account that, in cancellation proceedings, the applicant also has to prove that the sign was used in the course of trade of more than local significance at another point in time, namely at the time of filing of the invalidity request. Such condition stems from the wording of Article 53(1)(c) EUTMR, which states that an EUTM shall be declared invalid ‘where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled’.

The contested trade mark was filed on 03/09/2015 (with priority date of 02/09/2015) and the invalidity action on 21/07/2016. Therefore, the applicant was required to prove that the earlier United Kingdom and Irish non-registered marks on which the invalidity request is based were used in the course of trade of more than local significance in the United Kingdom and Ireland before these dates in respect of metal screws.

The applicant filed evidence to show use of the earlier signs in the course of trade.

At this point, the Cancellation Division does not consider appropriate to undertake an assessment of the evidence of use submitted. The examination of the invalidity will proceed as if use in the course of trade of more than mere local significance in the United Kingdom and respectively  Ireland has been proven for metal screws (classified in Class 6 according to the Nice Classification), which is exactly what the applicant claimed.

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s United Kingdom non-registered trade mark.

2. The right under national law – passing off in the United Kingdom

Unregistered marks, trade names and company names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity of the signs, identity or similarity of the goods or services, and the presence of likelihood of confusion.

In the United Kingdom, non-registered trade marks are protected by common law and in particular by the ‘passing off action’. Section 5(4)a of the United Kingdom Trade Marks Act 1994 states that a trade mark shall not be registered if its use is liable to be prevented by, inter alia, the law of ‘passing off’.

Passing off is a common-law tort, developed by the case-law in the United Kingdom. In order to successfully rely on it, an applicant must prove that:

(i)         it has acquired goodwill or a reputation in the market under the non-registered mark, trade name or company name and its goods or services are known by some distinguishing feature;

(ii)         there is a misrepresentation by the EUTM proprietor (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the EUTM proprietor are goods or services of the applicant;

(iii)         the applicant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the EUTM proprietor’s misrepresentation.

 

The principle is commonly referred to as the ‘classical trinity’ of goodwill, misrepresentation and damage to goodwill (see Reckitt & Colman Products Ltd v Borden [1990] R.P.C. 341, HL).

The applicant’s rights vis-à-vis the contested trade mark

The contested trade mark must be likely to lead the public to believe that goods to be offered by the EUTM proprietor are the applicant’s goods. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the EUTM proprietor’s goods in the belief that they are the applicant’s.

It follows that, to obtain in this case the invalidation of the contested European Union trade mark in order to protect its non-registered national trade mark, the applicant must establish, in accordance with the legal rules governing actions for passing-off laid down by the laws of the United Kingdom, that three conditions are satisfied: the goodwill acquired; misrepresentation; and damage caused to that goodwill.

As to the condition of misrepresentation, it is necessary to examine whether the goods under the contested European Union trade mark in the United Kingdom are likely to lead the public to attribute the commercial origin of those products to the applicant’s goods.

The goods

The goods on which the application is based are the following:

Class 6:        Metal screws.

The contested goods are the following:

Class 6        Common metals and their alloys; Nuts (metal), Bolts, tubing and Blind rivets; Ironmongery, small items of metal hardware; Parts and fittings for the aforesaid goods, included in this class.

The contested parts and fittings for the aforesaid goods, included in this class (-nuts (metal), bolts, tubing and blind rivets; ironmongery, small items of metal hardware); ironmongery, small items of metal hardware are broad categories that encompass the earlier goods metal screws. 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 nuts (metal), bolts, tubing and blind rivets are different articles made of metal used as fasteners for joining of materials. They are either used together with the applicant’s goods or are in competition with them. Their nature is the same (ironmongery articles), they are produced by the same companies and target the same public. Therefore, these goods and the applicant’s goods are considered as being highly similar.

The contested goods common metals and their alloys are raw materials or semi-finished products directed at industries for further processing. On the other hand, the goods of the earlier mark are finished products designed for direct use. Thus, the relevant public of these goods is different. The goods also have different purpose and method of use, as well as distribution channels. Moreover, they are normally not offered by the same undertakings. Therefore, the contested goods and the applicant’s goods are dissimilar.

The signs

RETINOX
Earlier trade mark	Contested trade mark

The relevant territory is the United Kingdom.

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 words forming the signs in conflict RETINOX and INNOX are meaningless in English, so they are distinctive. The black rectangular frame of the contested sign is a non-distinctive element since it is a basic geometrical form.

Visually and aurally, the signs coincide in the four letters ‘I-N-O-X’, which form the group of letters ending the earlier mark and the first two and the last two letters of the contested sign. In this regard, it is important to mention that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the fact that the signs do not coincide in their beginnings is important in order to assess whether or not there is a misrepresentation causing/likely to cause damage to the goodwill of the applicant.

Therefore, the signs differ visually and aurally in the first three letters of the earlier mark ‘R-E-T’ and only visually in the doubled ‘N’ of the contested sign (as aurally the double N will not impact the pronunciation) and the stylisation of the latest sign in its entirety. The opinion of the Cancellation Division is that in the case at hand the differences surpass the similarities especially because the common letters are placed in the final part of the earlier mark where they do not form an independent and distinctive element and are divided visually by an additional ‘N’ in the contested mark.  The position of the common letters in the marks, the different configuration of the marks and the number of letters of each word sufficiently differentiate the signs.      

The Cancellation Division considers that the marks in conflict are similar only to a low degree.

Conceptually, as mentioned above, the signs are meaningless in English. Since a conceptual comparison is not possible, and the only concept that can be grasped in the contested sign, the rectangle, is non distinctive, the conceptual aspect does not influence the assessment of the similarity of the signs.

Global assessment of the conditions under the applicable law of the United Kingdom

As seen above, the goods are partly identical, partly similar to high degree and partly dissimilar.

In relation to the dissimilar goods, the Cancellation Division finds unlikely that the applicant’s customers would mistake these proprietor’s goods for the goods of the applicant, as they are so far apart and in a different area of commercial activity. Taking into account that the successful claim for passing off must satisfy three cumulative conditions above mentioned and that the failure to satisfy any one of them means that the claim cannot succeed, the application for invalidity is not well founded under Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR and therefore, is rejected insofar as common metals and their alloys are concerned.

As regards the remaining goods, it follows from the above that the contested trade mark is visually and aurally similar to a low degree to the earlier mark which calls into question the possibility of any misrepresentation in the United Kingdom. The common letters 'IN-OX' are placed at the end of the earlier mark whereas they occupy the first two and the last two positions in the contested sign. In the opinion of the Cancellation Division, the marks do not have enough similarities that could lead the applicant’s clientele to believe that the goods to be marketed under the contested trade mark are the applicant’s, irrespective of the identity or similarity between the goods. The Cancellation Division does not consider it plausible that use of the contested sign would amount to a misrepresentation leading or likely to lead the public to believe that the goods offered are the goods of the applicant.

In view of the cumulative nature of this provision it is redundant to further analyse the remaining requirements.

Consequently, in relation to the remaining contested goods, as there will be no misrepresentation, one of the requirements of passing-off is not fulfilled and, as a result, the invalidity application must be rejected as unfounded with regard to passing-off in the United Kingdom and under Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

3. The right under national law – passing off in Ireland

As regards Ireland, Article 8(4) EUTMR applies on the basis that, where unregistered trade mark rights are acquired through use and reputation, Section 10(4)(a) of the Trade Marks Act 1996 recognises the unregistered rights as a ground of opposition.

The three elements of the test are:

(a) The existence of a reputation or goodwill in the claimant’s product including, where appropriate, in a brand name or get-up;

(b) The risk of confusion between what is alleged to be the offending product and the claimant’s product; and

(c) Whether damage to the claimant’s goodwill by virtue of any such confusion has been established.

The same conclusion reached above in the case of the United Kingdom is valid for the passing off action under the Irish law since the protection is again subject to a similarity of signs, a basic condition to which other may apply. The conclusion on the similarity of signs reached above applies mutatis mutandis (including on a conceptual level, since both signs are meaningless in Irish). Thus, as the signs at hands are not sufficiently similar there can be no misrepresentation under passing off and the conclusion is that the invalidity request should be rejected under Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

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 applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Oana-Alina STURZA

Ioana MOISESCU

Maria Belén IBARRA DE DIEGO

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.