CANCELLATION No 12419 C (INVALIDITY)

E.M. Group Holding AG, Hettlinger Strasse 9, 86637 Wertingen, Germany (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft Mbb – Patentanwälte Rechtsanwälte, Holleralle 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

El. Fi, Via Barilari, 18, 61122 Pesaro, Italy, (EUTM proprietor), represented by Paolo Di Loreto, Via San Francesco D'Assisi n. 44, 61121 Pesaro, Italy (professional representative).

On 20/07/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 13 489 224 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 13 489 224. The application is based on international trade mark registration No 694 044 designating the European Union. 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 earlier trade mark has at least an average degree of distinctiveness. In addition, it considers that the goods in conflict are either identical or similar. It submits printouts from the websites of two companies in order to support its views that some of the goods are similar. Finally the applicant argues that the signs are visually similar and aurally highly similar (in particular in French) whereas they do not have any meaning. In conclusion, it considers that there is a likelihood of confusion.

In support of its observations, the applicant filed the following evidence:

• Document No 2: internet excerpts from the company Connock (www.connock.co.uk);
• Document No 3: internet excerpts from the company William Hodgson & Co (www.naturaloilsuk.com).

The EUTM proprietor argues that there is no risk of confusion between the trade marks in conflict. It considers that the signs display a low level of visual similarity and are not aurally similar. It submits a phonetic comparison of the sign in various EU languages. In addition, it argues that the signs are conceptually dissimilar. According to the EUTM proprietor, the contested sign ‘VEGALE’ is the result of the sum of two Italian words (‘vegano’ and ‘minerale’). From here, it infers that there is an intended reference to ‘vegan’, the specific consumers of the products; whereas the earlier sign ‘VEGA’ refers to a star. As regards the comparison of the goods, it points out that scope of the trade mark in some Member States is reduced and that the goods in Class 1 and Class 3 cannot be confused. The EUTM proprietor also considers that the relevant public of products in Class 3 has an enhanced degree of attention. Finally, it requests the applicant to submit proof of use.

In support of its observations, the EUTM proprietor filed the following evidence:

• Document No 2: Wikipedia pages on the term ‘VEGAN’;
• Document No 3: Wikipedia pages on the term ‘VEGA’;
• Document No 4: Market analysis of January 2012 from the Sustainable Production and consumption division of the Joint Research Centre of the European Commission on the cosmetics field;
• Document No 5: El.Fi.S.r.l.s certifications showing that the products sold are in compliance with the vegan standards.

In reply, the applicant argues that the earlier trade mark has not been registered for more than five years at the filing date of the cancellation request. Therefore, the request for proof of use must be rejected. The applicant also contests the EUTM proprietor’s views on the similarity of the signs and on the relevant public’s level of attention. It considers that even if the public would be paying a higher degree of attention, they would still assume that the contested mark is a sub-brand of the earlier mark.

In the rejoinder, the EUTM proprietor acknowledges the refusal by the Office of the proof of use request. However, it still argues that there has not been any actual use of ‘VEGA’. In addition, it replies to the latest applicant’s submissions by reiterating its previous arguments. It insists on the fact that the trade mark ‘VEGALE’ will be considered as a misspelling of the word ‘VEGAN’.  

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 the international trade mark registration No 694 044 designating the European Union.

As stated above, according to Article 57(2) and (3) EUTMR, the earlier mark can only be subject to the use obligation when it has been registered for not less than five years on the date of the application for a declaration of invalidity.

The present application for a declaration of invalidity was filed on 27/01/2016.

Earlier trade mark No 694 044 is an international registration designating the EU. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 07/06/2011. Therefore, the request for proof of use is inadmissible.

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 3:        Detergents and bleaching agents; cleaning, polishing and scouring preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

The contested goods are the following:

Class 1:        Collagen based ingredients for cosmetic preparations.

Class 3:        Cosmetics; Make-up.

The EUTM proprietor indicates that, according to the extract from the ROMARIN database, the protection of the earlier trade mark seems reduced in several Member States. The Cancellation Division considers that the limitation of protection submitted by some of the designated territories (including some Member States) and affecting some of the goods and services applied for has no bearing in the present proceedings. It is clear from the ROMARIN excerpt that, as far as the European Union is concerned as one of the designated territories, the earlier trade mark is protected in this territory for the goods on which the application is based.  

Contested goods in Class 1

The applicant argues that the contested goods collagen based ingredients for cosmetic preparations are similar to essential oils protected by the earlier trade mark in Class 3. According to the applicant, essential oils are distributed along with other ingredient for cosmetic preparations by the same suppliers. Moreover, they have the same purpose as other ingredients for cosmetic preparations since all of these goods are used for the production of cosmetics. As indicated above, it supports its argument that essential oils are also offered as ingredients in the cosmetics industry by submitting printouts from the website of two companies which are suppliers of natural ingredients including essential oils.

The EUTM proprietor however considers that collagen based ingredients for cosmetic preparations are semi-finished goods which are intended for professional manufacturers for the preparation of cosmetics whereas Class 3 products are finished products intended to the general public.

The Cancellation Division notes that collagen is a protein made up of amino acids. It is used in cosmetics and, in particular, for skin care in order to have a tight and elastic skin. The contested collagen based ingredients for cosmetic preparations are therefore ingredients made out of proteins used in the cosmetic industry. For instance, hydrolysed collagen proteins.

On the other hand, the applicant’s essential oils are volatile organic oils present in plants, usually containing terpenes and esters and having the odour or flavour of the plant from which they are extracted (www.collinsdictionary.com). Contrary to the EUTM proprietor arguments, they are not only used as finished products but also as ingredients for the preparation of cosmetics. For instance, essential oils are used in skin care products, in shampoos and in conditioners.

In light of the foregoing, collagen based ingredients for cosmetic preparations and essential oils coincide in their nature and intended purpose as ingredients for cosmetics. Moreover, they can coincide in producers (as shown by the evidence submitted by the applicant), can have the same customers and distribution channels. Therefore, the goods are similar.

Contested goods/services in Class 3

Cosmetics are identically contained in both lists of goods. Moreover, the contested goods make-up is included in the broader category of the applicant’s cosmetics. Therefore, they are also 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 in Class 3 are generally directed at the public at large. The goods in Class 1 are specialised goods directed at business customers in the cosmetic industry with specific professional knowledge or expertise. As regards the degree of attention of the relevant public in the cosmetic industry, the EUTM proprietor argues that it is higher than average. It submits a market analysis on ‘Revision of European Ecolabel Criteria for Soaps, Shampoos and Hair Conditioners’ (January 2012) in support. Admittedly, the conclusions of the market analysis on user behaviour point towards a trend among consumers in being more selective when purchasing soaps, shampoos and hair conditioners. However, the same study indicates that there is saturation in the market and that ‘products are failing to induce consumer engagement with brands. Most consumers do not care about what soap they buy’ (page 34).

In light of the above, the Cancellation Division considers that the degree of attention of the relevant public varies from average (for mass-consumption cosmetics) to enhanced (for cosmetics ingredients).

3. The signs

VEGA
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 French-speaking part of the relevant public, due to the enhanced aural closeness of the signs in French.

The earlier mark is a word mark consisting of the term ‘VEGA’.

The contested mark is a figurative mark consisting of the verbal element ‘VEGALE’ written in slightly stylised green typeface. On top of the letter ‘a’, there is a small curved symbol in brown which will be probably associated with an accent.

The term ‘VEGA’ may be associated by part of the French speaking part of the public with the star named ‘Véga’, as argued by the EUTM proprietor. However, contrary to the EUTM’s proprietor’s arguments, the term ‘VEGALE’ will not be perceived as referring to ‘vegan’ and it is therefore meaningless.

In light of the above, both signs are distinctive and there are no dominant elements (in the sense of visually outstanding) in the marks.

Visually, the signs coincide in the letters ‘V-E-G-A’ clearly perceivable in both signs. However, as the earlier mark is a word mark and the contested EUTM is a figurative mark, they differ in the slight stylization of the letters and the brown accent-type symbol in the contested EUTM.

Moreover, they differ in the ending letters ‘-L-E’ of the contested EUTM. In this regard, it should be noted that, to the extent that the earlier trade mark is fully included in the contested EUTM, the beginning of the conflicting marks are identical. Consumers generally tend to focus on the beginning a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Noting that the earlier trade mark is fully included at the beginning of the contested EUTM and taking into account the only slight stylisation of the later sign, the signs are visually similar to an average degree.

Aurally, the Cancellation Division does not agree with the EUTM proprietor’s views that the initial letter ‘E’ in the earlier sign will be almost not pronounced in French. The pronunciation of the first syllables ‘VE’ is identical and the pronunciation slightly differs in the ending of the marks ‘GA’ vs. ‘gal’ since in French the final ‘e’ is mute. Therefore both trade marks have two syllables (same rhythm and intonation).

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the above observations on the meaning of the signs. Part of the public in the relevant territory may perceive the earlier sign as the name of a ‘star’ whereas the other sign lacks any meaning in that territory. Therefore, for part of the public, one of the signs will not be associated with any meaning so the signs are not conceptually similar.

For the other part of the public, neither of the signs has a meaning. Thus, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

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

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

The goods have been found to be partially identical and partially similar.

Taking into account all the above, and especially the fact that the earlier trade mark ‘VEGA’ is fully included in the contested EUTM, it is considered that the additional ending letters ‘LE’ and the figurative characteristics of the contested mark cannot counteract the visual and aural similarities between the signs so as to exclude a likelihood of confusion. In addition, for a part of the relevant public, the signs do not convey any differences in their meanings which could neutralise the visual and phonetic similarities.

Even if as noted above, the level of attention of the consumers is enhanced for part of the goods, a high degree of attention does not automatically lead to a finding of no likelihood of confusion. All other factors have to be taken into account. A likelihood of confusion can exist despite a high degree of attention. For example, when there is a strong likelihood of confusion created by other factors, such as identity or close overall similarity of the marks and the identity of the goods, the attention of the relevant public alone cannot be relied upon to prevent confusion (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 53-56, decision of 06/09/2010, R 1419/2009-4, ‘Hasi’).

In the present case, the relevant consumers may think that the identical and similar goods come from the same or from economically-related companies. Those consumers might focus on the sequence of letters ‘vega’, when remembering the marks based on the imperfect recollection of them and might consequently not notice the difference between them, which aurally is very limited and visually not striking.

Considering all the above, there is a likelihood of confusion on the part of the French-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 international trade mark registration No 694 044 designating the European Union. It follows that 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

Ioana MOISESCU

Elisa ZAERA CUADRADO

Jessica LEWIS

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.