CANCELLATION No 9708 C (INVALIDITY)

KNIPEX-Werk C. Gustav Putsch KG, Oberkamperstr. 13, 42349 Wuppertal, Germany (applicant), represented by Rieder & Partner mbB Patentanwälte – Rechtsanwalt, Corneliusstr. 45, 42329 Wuppertal, Germany (professional representative)

a g a i n s t

Joyful Queen Hair Beauty Products LTD., Unit 1206, 12/F, Tower B, Center Plaza, 161 Lin He Xi Rd., Guangzhou, People’s Republic of China (EUTM proprietor), represented by Álvaro Herrera Dávila, Calle Silva, 2 – 1º 1, 28013 Madrid, Spain (professional representative).

On 30/03/2017, the Cancellation Division takes the following

DECISION

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

2.        European Union trade mark No 10 645 232 is declared invalid for all the contested goods, namely:

Class 8:        Hand tools and implements (hand-operated).

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

Class 8:        Cutlery; Side arms; Razors.        

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 10 645 232, namely against some of the goods in Class 8. The application is based on German trade mark registration No 302 011 067 394. 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 conflicting signs are visually and aurally highly similar, and the goods at issue, which are directed at consumers who buy tools at DYI shops, are identical. The consumers’ attention will very often be low. Consequently, there is a likelihood of confusion between the contested sign and the earlier mark.

The EUTM proprietor did not file any 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 goods on which the application is based are the following:

Class 8:        Pliers, namely cutting pliers.        

The contested goods are the following:

Class 8:        Hand tools and implements (hand-operated).        

The contested hand tools and implements (hand-operated) include, as a broader category the applicant’s pliers, namely cutting pliers. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

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 mainly at business customers and DIY consumers with specific professional knowledge or at least a certain technical expertise. The degree of attention is likely to vary from average to above, depending on the technical sophistication and the price of the particular tool needed.

3. The signs

Xcut
Earlier trade mark	Contested trade mark

The relevant territory is Germany.

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. In the case of word marks, it is the word as such which is protected, and not its written form. Therefore, the use of upper or lower case characters is immaterial.

The contested mark is a figurative mark composed of the verbal element ‘VxCUT’ in a stylised typeface in grey. The letter ‘C’ is particularly stylised, so as to reproduce an image vaguely resembling the blades of a two-bladed cutting tool. It cannot, therefore, be excluded that a part of the public will not recognise the letter ‘C’ in the contested mark. However, the Opposition Division will focus the assessment of a likelihood of confusion on the part of the public that does read the letter ‘C’.

Although the signs as a whole do not have any meaning, in the given context, a significant part of the relevant public will understand the English term ‘CUT’, included in both signs, as meaning (of a sharp instrument) to penetrate or incise (a person or thing) (https://www.collinsdictionary.com/dictionary/english/cut). Bearing in mind that the goods at hand are cutting tools and implements, it is considered that this element is non-distinctive in relation to all the goods.

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

Visually and aurally, the signs coincide in the sequence of letters ‘xCUT’. They differ in the letter ‘V’ and, visually, in the stylisation of the letters in the contested sign. However, the stylisation is not of such a nature as to distract the viewer from the verbal element.

Taking into account that the earlier mark is entirely included in the contested sign, although the element ‘CUT’ is non-distinctive for a significant part of the public, the signs are visually and aurally similar at least to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, they are conceptually lowly similar for a significant part of the public on account of the element ‘CUT’ included in both signs.

For the remaining part of the public, for which neither of the signs has any meaning, since a conceptual comparison is not possible, 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, despite the presence of a non-distinctive element in the mark, for a significant part of the public, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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 distinctiveness of the earlier mark as a whole is normal. Taking into account the identity of the goods at issue and the, at least, average degree of visual and aural similarity, whether or not combined with a low conceptual similarity between the signs, consumers may be led to believe that the goods at issue originate from the same undertaking or at least economically linked undertakings. Indeed, consumers could perceive the contested sign as a stylized variation of the earlier mark, identifying a particular range of goods of the applicant. This applies notwithstanding the fact that consumers may display a higher degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the application is well founded on the basis of the applicant’s German trade mark registration No 302 011 067 394. It follows that the contested trade mark must be declared invalid for all the contested goods. The European Union trade mark remains registered for all the uncontested 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

Natascha GALPERIN

Ana MUÑIZ RODRÍGUEZ

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.