CANCELLATION No 12 476 C (INVALIDITY)

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

a g a i n s t

Dixie ApS, Mølbjeeg 9, Søvind, 8700 Horsens, Denmark (EUTM proprietor), represented by Løje, Arnesen & Meedom Advokatpartnerselskab, Øster Allé 42, 6, 2100 Kølbenhavn Ø, Denmark (professional representative).

On 16/06/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 13 850 441 is declared invalid for all the contested goods, namely:

Class 25:        Clothing; Footwear; Headgear.

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

Class 14:                Precious metals and their alloys; horological and chronometric instruments; jewellery; precious stones.

Class 18:                Leather and imitations of leather; goods made of leather and imitations of leather, namely briefcases, cases for driving licence, for business cards, for credit cards and/or for keys, cosmetic purses and bags, purses, bags (not included in other classes); animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips; harness; saddlery.

Class 35:                 Wholesale and retail sale, including via global networks, with precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments; leather and imitations of leather, goods made of leather and imitations of leather, namely briefcases, cases for driving licence, for business cards, for credit cards and/or for keys, cosmetic purses and bags, purses, bags, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery; 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 and services of European Union trade mark No 13 850 441, namely against all the goods in Class 25. The application is based on European Union trade mark registration No 4 557 278. 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 marks are visually, aurally and conceptually very similar, as they have the word ‘define’ in common and that the goods are either identical or similar.

The EUTM proprietor did not file observations.

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.

1. 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 25:        Clothing.

The contested goods are the following:

Class 25:        Clothing; Footwear; Headgear.

The contested clothing appears in the applicant’s list of goods, and the goods are, therefore, identical.

The contested footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.

The contested headgear and clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, headgear and clothing are considered similar.

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 or similar are directed at the public at large. The degree of attention is, on the whole, average.

3. The signs

DEFINED	RE:DEFINED
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 non-English-speaking part of the relevant public (for example the Lithuanian-, Bulgarian-, Czech- and Hungarian-speaking parts of the public), for which neither the word ‘define/d’ nor the element ‘re’ has a meaning in relation to the relevant goods and for which these elements are, therefore, distinctive.

Both marks are word marks and, as such, they have no dominant elements.

Visually the marks coincide in the verbal element ‘DEFINED’ and differ in the prefix ‘RE’ and the colon (:) that follows it. Taking into account that the word that the marks have in common is far longer than the differing elements, the marks are visually highly similar.

Aurally the marks coincide in the pronunciation of the word that the marks have in common and differ in the element ‘RE’ of the contested mark. The colon will probably result in a pause in pronunciation between ‘RE’ and ‘DEFINED’. Taking into account the fact that the word they have in common is far longer than the differing elements, the marks are aurally highly similar.

Conceptually, for the abovementioned non-English-speaking part of the public, ‘define’ will have no meaning. The element ‘re’ might be perceived in a number of ways, for example a reference to a musical note and/or a reference to the Egyptian sun god (also known as ‘Ra’). If the consumers perceive one of these meanings in this element, then the marks are not conceptually similar, whereas if they perceive no meaning, a conceptual comparison is not possible and 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.

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.

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.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

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 goods are identical or similar, the relevant public is the general public and the degree of attention is average. The marks are differ in the element ‘RE’ and a colon; however, even when they are not perceived as conceptually similar, on account of the consumers perceiving a meaning in the element ‘RE’, this dissimilarity must be considered in the context of the marks being visually and aurally highly similar, as the differences are limited to very short elements and the contested mark reproduces the entire earlier mark, ‘DEFINED’, which retains an independent and distinctive role.

In addition, account must be taken of the fact that, in the field of fashion, it is common for undertakings to put on the market different versions of marks, and when, as in the present case, these marks contain the same verbal element, differing only in minor additions, such as those in the contested mark, the consumers might well think that the new mark is a sub-brand of the earlier mark (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the non-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 European Union trade mark No 4 557 278 and the contested trade mark must be declared invalid for all the contested goods.

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

Plamen IVANOV

María Belén IBARRA DE DIEGO

Angela DI BLASIO

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.