CANCELLATION No 12 932 C (INVALIDITY)
Patek Philippe SA Genève, 41, rue du Rhône, 1204, Geneva, Switzerland (applicant), represented by Currell Suñol S.L.P., Vía Augusta 21, 08006 Barcelona (Spain) (professional representative)
a g a i n s t
Andrea Paolini, Via Franca 6, 30026 Summaga di Portogruaro, Italy (EUTM proprietor).
On 17/03/2017, the Cancellation Division takes the following
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 13 224 431 is declared invalid for all the contested goods, namely:
Class 14: Amulets; Jewellery containing gold; Pendants; Earrings.
3. The European Union trade mark remains registered for all the uncontested goods and services, namely:
Class 21: Coasters (tableware); Coasters, not of paper and other than table linen; Trivets [table utensils]; Epergnes.
Class 28: Toys made of plastics; Toys made of rubber; Sporting articles not included in other classes.
Class 41: Congresses; Conferences, exhibitions and seminars; Conducting workshops and seminars in self awareness; Conducting workshops and seminars in self awareness.
4. The EUTM proprietor bears the costs, fixed at EUR 1 080.
The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 13 224 431, namely against all the goods in Class 14. The application is based on international trade mark registration No 499 588 designating the Benelux, Germany, Spain, France, Italy, Austria and Portugal. 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 similar. The distinctive and dominant element of the contested EUTM is the expression ‘Nautilus Xenolid’. The other elements have a secondary role. Consequently, the two signs are visually similar as the earlier mark is wholly included in the contested EUTM where it has an independent and distinctive role. The signs are aurally similar and conceptually identical, as ‘Nautilus’ in both signs evokes the idea of a cephalopod mollusc. The applicant further points out the identity of the signs in their beginnings. It also refers to the case-law of the General Court in cases where the earlier trade mark is fully incorporated in the contested EUTM.
As regards the comparison of the goods, the applicant claims that the contested goods in Class 14 are highly similar to the goods protected by the earlier trade mark. It considers that the goods share the same nature, intended purpose, method of use, consumers, distribution channels and sales outlets. It further refers to two decisions of the Opposition Division which found analogous goods to the one at stake similar to a high degree.
In conclusion, the applicant considers that there is a likelihood of confusion because the earlier trade mark is fully included in the contested EUTM where it is an independent and distinctive element and the goods are highly similar. It considers that the public may erroneously believe that the contested EUTM is a sub-brand of the earlier mark. It further indicates that the likelihood of confusion is further reinforced due to the high degree of distinctive character of the earlier mark which has no meaning in relation to the relevant goods.
The EUTM proprietor did not submit observations in reply.
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.
- The goods
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 on which the application is based are the following:
Class 14: Wristwatches.
The contested goods are the following:
Class 14: Amulets; Jewellery containing gold; Pendants; Earrings.
Contested goods in Class 14
The contested goods amulets; Jewellery containing gold; Pendants; Earrings are all jewellery items. The goods covered by the earlier trade mark are wristwatches. The goods may have the same nature. Furthermore, they can coincide in producer, as watch makers often manufacture jewellery, and target the same end users. Finally, these goods are sold through the same distribution channels. Therefore, the Cancellation Division considers the goods to be similar to a high degree.
- 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 similar are directed at the public at large. Considering that the category of goods jewellery and wristwatches may include average priced items but also luxury goods depending among others on the materials used to manufacture the products, the degree of attention may vary from average to high.
- The signs
Earlier trade mark
Contested trade mark
Article 4(1) of the Madrid Agreement concerning the International Registration of Marks of 14 April 1891, as revised and amended, and Article 4(1)(a) of the Protocol relating to the Madrid Agreement, provide that the protection of the mark in each of the Contracting Parties concerned shall be the same as if the mark had been deposited direct with the Office of that Contracting Party. Consequently, trade marks registered under international arrangements which have effect in a Member State must be equated with ‘national marks’ under Article 8(2)(a) EUTMR (12/07/2012, T-170/11, BASKAYA, ECLI:EU:T:2012:374, § 37-39).
In the present case, in light of the designations made under the earlier international trade mark registration, the earlier right equates to national marks with effect in Austria, the Benelux, Germany, Spain, France, Italy and Portugal. For the sake of the economy of the proceedings and in order to avoid unnecessary comparison of the signs in all the relevant territories, the Cancellation Division finds it appropriate to focus the comparison in the earlier international registration only insofar as it designates Spain.
The relevant territory is therefore, Spain.
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 earlier mark is a word mark consisting of the term ‘NAUTILUS’.
The contested mark is a figurative mark which was described by the EUTM proprietor in the trade mark application as consisting of ‘an oval-shaped logo with a dark blue background and white text. The text is all in white. In the upper part of the logo there is a drawing of a stylised nautilus’. The verbal elements consist of the terms ‘NAUTILUS’ and ‘XENOLID’ written in the central part of the logo, just below the device of the nautilus, in standard typeface and one above the other. In the bottom part of the oval-shape, the expression ‘-The Art of Floating-’ is written in considerably smaller typeface.
Considering the closeness between ‘NAUTILUS’ and its Spanish equivalent ‘nautilo’, the relevant public in Spain will associate this term, present in both signs, with a ‘cephalopod mollusc with a light external spiral shell and numerous short tentacles around the mouth’. The figurative device in the contested mark reinforces this concept. The term ‘XENOLID’ does not have any meaning in Spanish. Finally, the English expression ‘The Art of Floating’ is likely to be ignored due to its size and position. If not, it will in any event not be understood by the relevant public in Spain.
None of the elements for which the public in Spain will attribute a meaning has a connection in relation to the relevant goods. However, , the black square and the oval-shape dark blue form are of purely decorative nature. Therefore, they are less distinctive than the other elements in the contested sign.
The verbal elements ‘NAUTILUS’ and ‘XENOLID’ and the figurative element of a nautilus are the co-dominant elements in the contested mark, considering their size and central position within the logo. The expression ‘-The Art of Floating-’, written at the bottom of the sign in a considerable smaller typeface will have a secondary position in the global impression created by the sign.
Visually, the signs coincide in the distinctive element ‘NAUTILUS’, which is the only element of the earlier mark and it is a co-dominant element in the contested sign. The signs however differ in the additional verbal and figurative elements of the contested sign and in particular, in the device of a nautilus and in the term ‘XENOLID’ which are co-dominant.
In light of the presence of dissimilar co-dominant elements, the signs are visually similar only to a low degree.
Aurally, the pronunciation of the signs coincides in the syllables ‘NAU-TI-LUS’, present identically in both signs. The pronunciation differs in the syllables ‘XE-NO-LID’ and, if pronounced, in the syllables ‘THE-ART-OF-FLO-A-TING’ of the contested mark, which have no counterparts in the earlier mark.
Considering that the expression ‘The Art of Floating’ is likely to be ignored when referring to the sign and taking into account the similarities between the distinctive and dominant elements ‘NAUTILUS’ and ‘NAUTILUS XENOLID’, in particular their identical beginnings, the signs are aurally similar to an average degree.
Conceptually, as above stated, the term ‘NAUTILUS’ included in both signs and the device in the contested EUTM will be identified by the public in the relevant territory as referring to the Spanish term ‘nautilo’. The public will not attribute any meaning to the rest of the elements of the contested EUTM. As both signs will be perceived as referring to the same concept (a ‘nautilus’) the signs are conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence to prove this claim.
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.
- 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).
The contested goods have been found similar to a high degree to the applicant’s goods. Moreover, the earlier trade mark ‘NAUTILUS is fully included in the contested trade mark, where it plays an independent distinctive role. Clearly, the expression ‘NAUTILUS XENOLID’ will not be perceived by the relevant public in Spain as a unitary whole. Furthermore, the term ‘NAUTILUS’ enjoys a co-dominant position within the contested trade mark. Admittedly, the signs differ in other co-dominant elements present in the contested EUTM, that is, the device of a nautilus and the verbal element ‘XENOLID’. However, the Cancellation Division considers that these differences cannot counterbalance the similarities. These elements do not enjoy a greater relative importance than ‘NAUTILUS’. In particular, the device element just reinforces the concept of a ‘nautilus’ common to both trade marks. As regards ‘XENOLID’, it cannot be excluded, as argued by the applicant, that the relevant public considers that the element ‘XENOLID’, which lacks any meaning in Spanish and which is written after ‘NAUTILUS’, refers to a new line of ‘NAUTILUS’ products.
In light of the high degree of similarity of the goods and the similarity of the signs, in application of the interdependence principle, the Cancellation Division finds that there is a likelihood of confusion, even in relation to luxury goods for which the public shows an enhanced degree of attention. It should be noted in this regard that 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.
Considering all the above, there is a likelihood of confusion on the part of the relevant public in Spain. As the application for a declaration of invalidity is successful for the designated territory of Spain, there is no need to examine the remaining relevant territories designated by the earlier International Trade Mark Registration No 499 588.
Therefore, the application is well founded on the basis of the applicant’s International Trade Mark registration No 499 588 designating Spain. It follows that the contested trade mark must be declared invalid for all the contested goods.
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, she 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
José Antonio GARRIDO
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.