KALIMERA | Decision 0014109

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CANCELLATION No 14109 C (INVALIDITY)

Best Foods Productions SRL, Str Moinesti Nr. 55, Sector 6, 061232, Bucuresti, Romania  (applicant), represented by Elena Grecu, 1 Piata Pache Protopopescu, Ap. 6, 2nd floor, Sector 2, 021023, Bucharest, Romania (professional representative)

a g a i n s t

S.C. Fabrica De Lapte Brasov S.A. (joint stock company), Str. Apei, nr. 109, Baraolt, jud. Covasna, Romania (EUTM proprietor), represented by Anna Nicoleta Costache Demes, Str. Constantin Lacea nr. 12-14, biroul 2, 500112, Brasov, Romania (professional representative).

On 30/11/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 15 047 962 is declared invalid in its entirety.

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

PRELIMARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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 of European Union trade mark No 15 047 962 ‘KALIMERA’. The application is based on, inter alia, European Union trade mark registration No 13 195 334http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=112354765&key=fcb2bbfd0a84080539e7e25771f612b8. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion, including the likelihood of association, between the marks due to the identity of the word elements and the identity of the goods in question.

The EUTM proprietor did not submit arguments in reply.

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.

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 European Union trade mark registration No 13 195 334.

  1. The goods

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

Class 29:        Milk and dairy products. 

The contested goods are the following:

Class 29:        Milk products; Milk.

Milk is identically contained in both lists of goods. The contested milk products are a broader category which includes the earlier milk. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

  1. 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.

A lower degree of attention can be associated, in particular, with habitual buying behaviour. Purchase decisions in this area relate to, for example, inexpensive goods purchased on a daily basis (judgment of 15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43).

In the present case, the goods found to be identical are directed at the public at large. The degree of attention will be from low to average. 

  1. The signs

http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=112354765&key=fcb2bbfd0a84080539e7e25771f612b8

KALIMERA

Earlier trade mark

Contested trade mark

The relevant territory is The European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57, by analogy). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

The common element ‘KALIMERA’ is not meaningful in certain territories, for example, in those territories where Spanish and Romanian is understood. Consequently, the Cancellation Division finds it appropriate to focus the comparison of the signs on the Spanish- and Romanian-speaking part of the public.

The earlier mark is a figurative element which consists of the verbal element ‘KALIMERA’ written in stylised white letters framed in black and slightly leaned to the right forming an arc whereas the contested mark is the word mark ‘KALIMERA’. 

The common element ‘KALIMERA’ has no meaning for the relevant public therefore it is distinctive. The stylization of the letters included in the earlier mark is merely decorative.

None of the marks has any element that could be considered more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their only verbal and distinctive element ‘KALIMERA’ However, they differ in the stylization included in the earlier mark. Therefore, the signs are visually highly similar.

Aurally, the signs are identical.  

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

  1. 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.

  1. Global assessment, other arguments and conclusion

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between the goods 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).

The goods are identical and the distinctiveness of the earlier mark is normal.

Taking into account especially the fact that the signs coincide in their only element ‘KALIMERA’, it is considered that the similarities between the signs are enough to counteract the dissimilarities. The stylisation of the letters included in the earlier mark, which are merely decorative, is not sufficient to counteract that the signs are similar and that there is a likelihood of confusion.

In addition, the Cancellation Division notes that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16). In the case at hand, the consumer may easily conclude that the goods labelled and offered under the contested sign come from the same or from an economically-linked undertaking as the earlier mark.  

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and Romanian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Therefore, the application is well-founded on the basis of the applicant’s European Union trade mark registration No 13 195 334. It follows that the contested trade mark must be declared invalid for all the contested goods.

As the earlier right No 13 195 334 leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier right invoked by the applicant (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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.

The Cancellation Division

María Belén IBARRA

DE DIEGO

Carmen SÁNCHEZ PALOMARES

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.

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