CANCELLATION No 12 913 C (INVALIDITY)

Bogaziçi sigara ve tütüncülük sanayi ve ticaret anonim sirketi, E-5 Karayolu Üzeri Evrensekiz Kavsagi Evrensekiz Lüleburgaz, 039 Kirklareli, Turkey (applicant), represented by Zeuner Summerer Stütz, Nußbaumstr. 8, 80336 Munich, Germany (professional representative)

a g a i n s t

Swisse Trade Impex, Bld. UNIRII Nr 45, Bl. E3, Sc. 4, Et. 8, Ap. 141, Bucharest, Romania (EUTM proprietor).

On 12/01/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 13 421 177 is declared invalid for some of the contested goods and services, namely:

Class 34:        Tobacco; Matches.                

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

Class 35:        Advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors.        

Class 39:        Transport; Packaging services; Storage of goods.

        

4.        Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 13 421 177. The application is based on international registration No 1 229 164 designating, inter alia, Bulgaria. 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 goods and services covered by the contested mark are either identical or similar to the goods covered by the earlier sign. The applicant states further that the conflicting signs are ‘very similar’ and that likelihood of confusion in the case at hand should be assessed against the general consumer showing an average level of attention bearing in mind also the average distinctiveness of the earlier mark. Taking into account also the fact that the verbal element ‘SWISSE’ in the contested sign is the dominant element, the applicant comes to the conclusion that by applying the principles developed by the Court, in particular the principle of interdependence, likelihood of confusion has to be acknowledged.  

The EUTM proprietor does not file 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 application is based on an international registration designating several Member States. The Cancellation Division finds it appropriate to first examine the application in relation to the designation of Bulgaria.

1. The goods and services

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 34:        Tobacco and tobacco products; smokers' articles including those made of precious metals; pipes, mouthpieces for cigars and cigarettes, ashtrays, tobacco boxes, pocket apparatus for rolling cigarettes, cigarette paper, tobacco pipes, firestones, lighters for smokers; matches.        

The contested goods and services are the following:

Class 34:        Tobacco; Matches.        

Class 35:        Advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors.        

Class 39:        Transport; Packaging services; Storage of goods.

The contested goods in Class 34 are identically contained in the specification of the earlier right.

The contested services in Classes 35 and 39 cannot be considered similar to the applicant’s goods. This is first of all because these services are fundamentally different in nature and purpose from the manufacture of goods. The different purpose excludes any possible substitution. Moreover, they are manufactured/provided and distributed by different enterprises and their method of use is obviously different. The fact that some (or any) goods may appear in advertisements, be transported or stored is insufficient for finding similarity. There is further no particular connection between them such as complementarity which could under circumstances justify some level of similarity.

Same is valid also for the contested packaging services and the applicant’s tobacco boxes. The packaging of cigarettes is normally done in the production facility where cigarettes are manufactured. However, the tobacco and cigarettes companies do not provide packaging services in general. There is no reason for consumers to believe that a company offering packaging services is also producing tobacco boxes or any other specific kind of packaging. As to the possible complementarity connection suggested by the applicant, the Cancellation Division does not find it convincing in the particular case at hand. The packaging function of a tobacco box is an inherent feature of the latter. It does not necessarily require the use of a packaging service to complement it. A smoker will just use a tobacco box to store his/her tobacco. Even in the unlikely event where a company produces the cigarettes and uses for their packaging the professional services of a packaging company there cannot be complementarity since these services are intended for professionals, while the final product (a box or a package of cigarettes) is aimed at the public at large.

Finally, the Cancellation Division notes that even if there was some sort of a complementarity connection or use in combination, this factor alone in the particular case at hand would not be enough to render the goods and services similar.    

Therefore, all the contested services are dissimilar to the goods covered by the earlier mark.

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 likely to vary from lower than average (matches) to above average (tobacco). Although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is Bulgaria.

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 figurative mark, where the only figurative feature of the verbal element ‘SWISSE’ (in upper case letters) is that it is represented in a heavily bold typescript.

The contested sign is composed of the verbal elements ‘SWISSE’ (in upper case letters) and ‘Nature’ (the first letter being upper case and the remaining letters lower case), where the former is represented in a bold rather standard typescript and the latter in stylised, italic typescript. The verbal element ‘SWISSE’ is the dominant element in the composition of the contested mark as it is significantly bigger in size than ‘Nature’ and is also taking the central upper position, while the verbal element ‘Nature’ is placed in the right lower corner of the sign.  

The verbal element ‘SWISSE’ has no meaning in Bulgarian and, therefore, its distinctiveness is average. The distinctiveness of the verbal element ‘Nature’, however, is below average. Even though it does not exist as such in Bulgarian, it will be associated with the Bulgarian word ‘натурален’ (to be transliterated as ‘naturalen’) which means ‘natural’. This is because of the common Latin origin of the words which found their way in various European languages and also because the average Bulgarian consumer is used to read signs in Latin. Moreover, derivative linguistic forms of the same root are often to be found on a large variety of products to indicate their natural origin as opposed to industrially processed or synthetic products. Therefore, the element ‘Nature’ is to be described as weak in terms of its distinctiveness.  

Visually, the signs coincide in ‘SWISSE’ and differ in ‘Nature’ of the contested sign which has no counterpart in the earlier mark. As to the graphic features of the verbal element ‘SWISSE’ in both marks it is to be noted that although the typescripts are defined as rather standard and not particularly elaborated, they are still different in their design. At the same time they both share the bold feature.

Having pointed out these details, the Cancellation Division recalls that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Moreover, the earlier mark is almost identical (the only difference being the stylisation which is not particularly elaborate) to the first part of the contested sign. Consumers generally tend to focus on the first (top) element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader.

It is finally to be added that the verbal element ‘SWISSE’ is the dominant and the more distinctive element of the contested sign.

Therefore, the signs are similar to a high degree.

Aurally, the pronunciation of the signs coincides in ‘SWISSE’, present identically in both signs. The pronunciation differs in ‛Nature’ of the contested mark, which has no counterpart in the earlier sign. Despite the fact that it is weak, the verbal element ‘Nature’ will still be pronounced and bearing in mind that it is even longer than the other verbal element (will be pronounced in three syllables vs. two syllables of the other verbal element) it’s impact for the oral comparison is greater than for the visual comparison.  

Therefore, the signs are similar to an average degree.

Conceptually, while the public in the relevant territory will perceive the verbal element ‘Nature’ with the meaning explained above, the earlier sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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, 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.

5. 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).

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.

The earlier mark is of average distinctiveness and is reproduced in its entirety in the contested sign and can clearly be identified as a verbal element in an isolated manner in the structure of the contested mark, because of its dominance and higher distinctiveness as compared to the other verbal element ‘Nature’. In such a case the overall impression produced by the composite sign may lead the public to believe that the goods at issue derive from the same company or at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.

In this scenario the degree of attention of the relevant consumer does not have a material impact on the finding of likelihood of confusion. Even a higher degree of attention will not prevent the consumer from mistakenly believing that identical goods designated by the conflicting marks come from the same or economically linked undertakings. The consumer may erroneously think that the goods designated by the contested mark are just a specific line of the same goods of the applicant. It is indeed not unusual for tobacco and tobacco products to be designated by the particular brand and accompanied by additions indicating various characteristics of the product such as ‘blended’, ‘light’, ‘mild’, ‘natural’, ‘mint’, ‘classic’, etc.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the Bulgarian public and, therefore, the application is partly well founded on the basis of the applicant’s international trade mark registration designating Bulgaria.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these services cannot be successful.

The applicant has also based its cancellation application on the same international trade mark registration designating Croatia, Austria, Poland, Slovenia, Slovakia, the United Kingdom and Greece. Since the scope of protection of these rights in relation to the covered goods cannot be greater (that is, they cover either the same or a narrower scope of goods, if at all) than the scope of protection of the Bulgarian designation for which protection was granted for the entire list of goods of the international registration, the outcome cannot be different for the services for which the cancellation application has already been rejected. Therefore, there is no likelihood of confusion for those services.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Denitza STOYANOVA-VALCHANOVA

Plamen IVANOV

Ana MUÑIZ RODRIGUEZ

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.