CANCELLATION No 9443 C (INVALIDITY)

Soap & Glory Limited, 1 Thane Road West, NG2 3AA Nottingham, United Kingdom  (applicant), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray's Inn Road, London WC1X 8BT, United Kingdom  (professional representative)

a g a i n s t

Boi Trading Company Ltd., Units 1-7 The Eurocentre, 116-118 Bury New Road, Manchester, Lancashire M8 8EB, United Kingdom (EUTM proprietor), represented by Novagraaf UK, Suite 8b Lowry House 17 Marble Street, Manchester M2 3AW, United Kingdom (professional representative).

On 01/03/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 10 221 059 is declared invalid for all the contested goods, namely:

Class 3:        Toiletries; aftershave; perfume; cosmetics; essential oils; soaps; shampoos; dentifrices; hair lotions.

3.        The European Union trade mark remains registered for all the uncontested goods, namely:

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; bags; trunks and travelling bags; wallets; purses; handbags; umbrellas, parasols and walking sticks.

Class 25:        Clothing, footwear, headgear.

        

4.        The EUTM proprietor bears the costs, fixed at EUR 1 150

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 10 221 059, namely against all the goods in Class 3. The application is based on, inter alia, European Union trade mark registration No 4 801 254. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1) (b) EUTMR and Article 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the earlier trade marks are similar to EUTM No 10 221 059 PRIDE & GLORY. There is also identity or similarity with the goods or services. Therefore, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade marks are protected, together with the likelihood of association with the earlier trade marks. The applicant argues further that the earlier marks have a reputation and use of the registration without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier marks.

The applicant also argues that it has an unregistered right with a passing off right sufficient to prevent registration under Article 8(4).

The proprietor requested the applicant to furnish proof that the earlier EU trade mark No 4 801 254 had been put to genuine use in European Union in connection with the goods and services in respect of which it is registered. The applicant submitted the evidence listed below.

The EUTM proprietor further argues that, due to the differences between the signs, there is no likelihood of confusion between the contested EUTM and the earlier marks with respect to the goods included within the specification of the contested EUTM, even if proof of use is provided and the goods are identical/similar. The proprietor concludes the trade marks are visually similar to a small degree and phonetically and conceptually dissimilar.

PRELIMINARY REMARK

The proprietor filed a request for revocation against European Union trade mark registration No 4 801 254 ‘SOAP & GLORY’ (word mark) (the earlier right). Decision No 9931 C partially upheld the application for revocation and the European Union trade mark remains registered for:

Class 3: Cosmetics; moisturizers; toners; serums; masks; cleansers; toiletries, soaps, perfumery; fragrances; essential oils; shampoos; conditioners; lotions; creams; anti-perspirants and deodorants for personal use; preparations for the care and treatment of the body, face, skin or hair; serums; masks; shower gels; moisture lotions; moisture creams; body scrubs; bath gels; bath oils; bath creams; facial moisturising lotions; face masks, eau de toilette; parfums; scented body sprays; body gels; body lotions; body creams; body masks; body contouring patches; facial creams, lotions and toners; hand care creams, masks, serums and scrubs; skin moisturisers; dentifrices; antiperspirants; eau de cologne; preparations for cleansing, moisturising and/or care of the skin or hair; depilatory preparations; toilet preparations for use in the bath; aftershave lotions; shaving creams; fragrances; room fragrances; essential oils.

The decision is final.

PROOF OF USE

According to Article 57(2) and (3) EUTMR  (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 42(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The EUTM proprietor requested the applicant to submit proof of use of one of the trade marks on which the application is based, namely European Union trade mark No 4 801 254.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 09/06/2014. The earlier mark was registered on 22/12/2006. The contested trade mark was published on 28/09/2011. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union, from 09/06/2009 to 08/06/2014 inclusive. Since the earlier mark was not registered for more than five years prior to the date of publication of the contested mark, use of the earlier mark does not need to be shown for any additional period.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 3:         Cosmetics; moisturizers; toners; serums; masks; cleansers; toiletries, soaps, perfumery; fragrances; essential oils; shampoos; conditioners; lotions; creams; anti-perspirants and deodorants for personal use; preparations for the care and treatment of the body, face, skin or hair; serums; masks; shower gels; moisture lotions; moisture creams; body scrubs; bath gels; bath oils; bath creams; facial moisturising lotions; face masks, eau de toilette; parfums; scented body sprays; body gels; body lotions; body creams; body masks; body contouring patches; facial creams, lotions and toners; hand care creams, masks, serums and scrubs; skin moisturisers; dentifrices; antiperspirants; eau de cologne; preparations for cleansing, moisturising and/or care of the skin or hair; depilatory preparations; toilet preparations for use in the bath; aftershave lotions; shaving creams; fragrances; room fragrances; essential oils.

According to Rule 40(6) EUTMIR in conjunction with Rule 22(3) EUTMIR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 05/09/2014 the applicant was given three months to submit proof of use.

On 03/12/2014 the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

Annex A: Decision on parallel proceedings the applicant pursued in Australia successfully.

Annex B:  The Applicant states the total retail value of sales in the United Kingdom under The Registration in relation to Class 3 goods for the year 2011 alone is £56,989,625.15. Several invoices show the Applicant made significant sales under the marks covered by the earlier registration in the relevant time period:

• Sales to Harvey Nichols, the department store in the United Kingdom from 9 March 2009 to 6 January 2012.
• Sales to Douglas stores in Germany from 7 October20l0to 24 November 2014.
• Sales to the retailer ASOS.com, in the United Kingdom from January 201 1 to July 2011.
• An invoice to RA Company (Benelux), Belgium from 16 March 2009.
• An invoice to the retailer Boots Group, United Kingdom for royalties dated I January 2008.
• An invoice to Morleys of Brixton Ltd, United Kingdom dated 27 June 2008.
• An invoice to Harrods, United Kingdom dated 1 1 January 2008.
• An invoice to Roomes of Upminster Ltd, United Kingdom dated 18 February 2010.
• An invoice to Elys of Wimbledon, United Kingdom, dated 29 September 2007.

These invoices demonstrate significant sales within the EU for a range of goods in Class 3 corresponding to those for which the earlier mark is registered

Annex C: Printouts from two websites directed towards Romanian consumers, one selling cosmetics and toiletries and the other of which is a lifestyle website, form. This Annex contains pages extracted from these third party websites to demonstrate that some Class 3 goods are still sold under the mark covered by The Registrations in Romania.

Annex D: photographs of Soap & Glory gift sets showing the mark SOAP & GLORY on every item. SOAP & GLORY appears in words underneath each product and also appears on the product itself

Annex E: historical screenshots from the website www.soapandglory.com displaying the word mark SOAP & GLORY and the logo. These printouts also show examples of some of the proprietor’s male range of products

Annex F:  printouts from www.boots.com showing some of the Proprietor’s vast range of products sold under the marks SOAP & GLORY with a volume of sales of £124.7 million in the United Kingdom and Ireland

Annex G: Downloads from The Applicants website obtained using the Way Back Archive Machine showing The Registration in use in respect of the Class 3 goods from February 2010 until present

Annex H: A list of the Douglas stores where The Applicant’s goods are sold forms part of as well as downloads from the Douglas website for Germany and Austria showing the range of Class 3 products featuring the SOAP & GLORY marks.

Annex I. Downloads from the Douglas website from February 2012 to present in Austria and February 2010 to present in Germany showing the marks in use in relation to goods in Class 3

The Cancellation Division will also consider the evidence filed on 25/05/2014, together with the statement of grounds consisting of:

• Annex 2: 14 pages of printouts from the website www.soapandglory.com displaying the word mark SOAP & GLORY and the logo. These printouts also show examples of some of the proprietor’s male range of products.
• Annex 3: 19 pages of printouts from www.boots.com showing some of the Proprietor’s vast range of products sold under the marks SOAP & GLORY. The Proprietor’s products are also sold in other stores including the upmarket and famous store Harvey Nichols. Therefore The Marks are used throughout the UK in prominent and popular stores and online.
• Annex 4 and 5: Selection of photographs (15) showing the applicant’s goods for sale in stores in the UK and Germany including Douglas stores. The Marks can clearly be seen in these photographs, demonstrating how they are used in relation to the relevant goods.
• Annex 6: Copy of a Witness Statement from Jos de Raaij, a Director of SOAP & GLORY Limited. The Marks SOAP & GLORY are currently in use in Austria, Germany, Ireland, United Kingdom and in Romania. The dates of use of The Earlier Marks in these territories are as follows:

Austria – February 2012 to June 2014

Germany – February 2010 to June 2014

Ireland – At least as early as 2009 to June 2014

Romania – September 2008 to September 2009.

United Kingdom – August 2006 to June 2014

The statement also reveals total retail value of the sales since launch in the particular territories listed above to approximately 31 December 2012 under The Earlier Marks in relation to Class 3 goods as follows:

Austria – £116,876.94

Germany – £6,439,007.74

United Kingdom and Ireland – £12,483,451.50

For the year 2011 alone, the total retail value of sales in the United Kingdom under The Earlier Marks in relation to Class 3 goods is £56,989,625.15.

Proprietor’s has spent a significant amount advertising their goods under The Earlier Marks. Their total advertising expenditure throughout the EU since launch is £2,201,900 according to the witness statement.

• Annex 7: Extracts from Facebook, Twitter and Instagram. Their current number of followers is: Facebook – 858,187 Iikes, Twitter – 43,700 followers, Instagram – 37,976 followers.
• Annexes 8 and 9: A selection of more than 80 printouts of fashion magazines publications dated in the relevant period from the United Kingdom, Ireland and Germany.

Time of use

Although some evidence is undated, some other such as extracts and printouts of magazines are dated within the relevant period, namely from 09/06/2009 to 08/06/2014 inclusive. Therefore, the evidence of use filed by the applicant contains sufficient indications concerning the time of use.  

Place of use

The printouts of the magazines and the photographs of stores’ show that the place of use is mostly Germany, Ireland and the U.K but also several other EU countries. This can be inferred from the language of the documents (English) and the currencies mentioned (Euro and British pounds).

Therefore, the evidence relates to the relevant territory and is sufficient to show place of use of the earlier trade mark.

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers. The mark as shown in the evidence is affixed on the goods or depicted in relation to cosmetics, toiletries and related kits. The EUTM is clearly used as a trade mark.

Nature of use: use of the mark as registered

Nature of use’ in the context of Rule 22(3) EUTMIR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 15(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trademark.

The mark as registered is the word sign ‘SOAP & GLORY’.

The mark appears in the evidence in the following forms:

 

The sign used shows use of the mark as registered or in a form essentially the same as

that registered and, therefore, constitutes use of the contested EUTM under Article 15 EUTMR.

Contrary to the applicant’s opinion, the addition of the backgrounds and decorative   figurative elements has a minor impact on the impression created by the sign because the elements ‘SOAP & GLORY’ are still recognisable and dominant in all the variants displayed above.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely sales figures and invoices, provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Use in relation to the registered goods

The evidence filed by the applicant shows use of the earlier mark for a broad range of cosmetics and toiletries in class 3 which include all those that appear in the specification.

Overall assessment

In the light of the above, the Cancellation Division concludes that the evidence of use in its entirety sufficiently indicates the time, place, extent and nature of use of the applicant’s earlier  EU trade mark registration No 4 801 254 for the goods for which it is registered and on which the application is based.

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 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 EU trade mark registration No 4 801 254.

1. The goods

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

Class 3:         Cosmetics; moisturizers; toners; serums; masks; cleansers; toiletries, soaps, perfumery; fragrances; essential oils; shampoos; conditioners; lotions; creams; anti-perspirants and deodorants for personal use; preparations for the care and treatment of the body, face, skin or hair; serums; masks; shower gels; moisture lotions; moisture creams; body scrubs; bath gels; bath oils; bath creams; facial moisturising lotions; face masks, eau de toilette; parfums; scented body sprays; body gels; body lotions; body creams; body masks; body contouring patches; facial creams, lotions and toners; hand care creams, masks, serums and scrubs; skin moisturisers; dentifrices; antiperspirants; eau de cologne; preparations for cleansing, moisturising and/or care of the skin or hair; depilatory preparations; toilet preparations for use in the bath; aftershave lotions; shaving creams; fragrances; room fragrances; essential oils.

The contested goods are the following:

Class 3:         Toiletries; aftershave; perfume; cosmetics; essential oils; soaps; shampoos; dentifrices; hair lotions.

The contested goods toiletries; perfume; cosmetics; essential oils; soaps; shampoos; dentifrices are identically contained in both lists.

The contested aftershave is a broader category which includes the earlier aftershave lotions. Since the Cancellation Division cannot dissect ex oficio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested hair lotions is included in the broader category of the applicant´s lotions, therefore, they are identical.

2. 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 are directed at the public at large. The degree of attention is considered to be average.

3. The signs

SOAP & GLORY	PRIDE & GLORY
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. In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is the word mark ‘SOAP & GLORY’.

The contested mark is the word mark ‘PRIDE & GLORY’.

The contested mark has no elements that could be considered clearly more distinctive than other elements.

The element ‘SOAP’ of the earlier sign will be associated with ‘soaps’. Bearing in mind that the relevant goods are ‘cosmetics and toiletries, soaps included’, this element is non-distinctive for soaps and weak for the remaining goods in class 3.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in ‘& GLORY’. However, they differ in the first word elements of the signs ‘SOAP’ and ‘PRIDE’ respectively. The differing element of the earlier sign is as already mentioned above non-distinctive for soaps and weak for the goods in class 3.

The signs are similar in their structures, the ampersand and the term GLORY, therefore, they are considered similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables /&-glo-ry/ present identically in both signs. The pronunciation differs in the syllables /soap/ of the earlier sign and /pride/ of the contested mark, respectively.

Therefore, the signs are similar to an average degree.

Conceptually, the public in the relevant territory will perceive the ampersand and the term GLORY, meaning fame and admiration that you gain by doing something impressive identically in both signs. The first word element of the earlier mark SOAP is a substance used with water for washing. The first word element of the contested mark PRIDE means a feeling of satisfaction which you have because you or people close to you have done something good. As the second part of the signs will be perceived identically, the signs are conceptually similar to an average degree.

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

4. 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.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection and reputation. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive/weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

All the goods are identical.

The signs under comparison are visually, aurally and conceptually similar on account of the coincidences between the elements & GLORY.

The first and different element of the earlier sign was found to be weak for all the registered good and even non distinctive for part of them.

Taking all this into consideration, the Cancellation Division finds that consumers will focus their attention on the element & GLORY of the earlier sign.

The EUTM proprietor refers to previous Office decisions to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the EUTM proprietor are not relevant to the present proceedings. In the case at hand, even if the differences between the signs are found in their first parts, the first element of the earlier sign has been found weak/non distinctive and therefore the signs coincide in the most distinctive elements of the earlier sign.

Considering all the above, there is a likelihood of confusion on the part of the English-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 EU trade mark registration No 4 801 254. It follows that the contested trade mark must be declared invalid for all the contested goods.

Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its reputation as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As EU trade mark registration No 4 801 254 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).

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(5) EUTMR in conjunction with Article 53(1)(a) EUTMR and Article 8(4) EUTMR in conjunction with Article 53(1)(c) 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 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) 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

Carmen SÁNCHEZ PALOMARES

Agueda MAS PASTOR

José Antonio GARRIDO OTAOLA

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.