ANAPURNA | Decision 0003752
Date Published: May 15, 2018
CANCELLATION No 3752 C (INVALIDITY)
Annapurna S.P.A., via A. Fleming, 26/a, 59100 Prato, Italy (applicant), represented by Dr. Modiano & Associati S.P.A., via Meravigli 16, 20123 Milan, Italy (professional representative)
a g a i n s t
Anapurna GmbH, Sieversufer 10, 12359 Berlin, Germany (EUTM proprietor), represented by Peter B. Ehrlinger, Kurfürstendamm 66, 10707 Berlin, Germany (professional representative).
On 13/01/2017, the Cancellation Division takes the following
1. The application for a declaration of invalidity is partially upheld.
2. European Union trade mark No 6 478 721 is declared invalid for some of the contested goods, namely:
Class 18: Goods made of leather and imitations of leather and not included in other classes; trunks and travelling bags.
Class 25: Clothing, footwear, headgear.
3. The European Union trade mark remains registered for all the remaining goods, namely:
Class 18: Leather and imitations of leather; animal skins, hides; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
4. Each party bears its own costs.
The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 6 478 721, namely against all the goods in Classes 18 and 25. The application is based on European Union trade mark No 1 368 166. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the marks refer to the same concept in spite of the contested sign’s having one letter ‘N’ fewer than the earlier mark, and that, taking into account the identity or similarity between the goods, there is a likelihood of confusion among the relevant public. In support of its observations, the applicant submitted some printouts from Wikipedia.
The EUTM proprietor requested proof of use of the earlier mark, but did not submit observations in relation to the documents forwarded by the Office. In connection with Article 8(1)(b) EUTMR, it states that the beginning of the word is very important, and points out that the difference between the marks is located in this position. Furthermore, it argues that the earlier mark has a lower than average degree of distinctiveness on account of its lack of reputation, and points out that the parties are not active in the same territories. Therefore, it argues, there is no likelihood of confusion among the public.
PROOF OF USE
According to Article 57(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must submit proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been genuinely used in the territories in which it is protected and for the goods or services for which it is registered and which it cites as justification for its application, or that there are proper reasons for non-use. If, at the date on which the contested EUTM application was published, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions contained in Article 42(2) EUTMR were satisfied at that date.
According to the same provision, in the absence of such proof the application for a declaration of invalidity will be rejected.
The EUTM proprietor requested that the applicant submit proof of use of the trade mark on which the application is based, European Union trade mark No 1 368 166.
On 21/08/2015 the applicant was given two months to submit proof of use. In accordance with Rule 71 EUTMIR, this deadline was extended by a further two months, until 21/01/2016.
The application for a declaration of invalidity was filed on 23/07/2009. The earlier mark was registered on 18/04/2001. The contested trade mark was published on 07/04/2008. 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 07/04/2003 to 06/04/2008 inclusive, as well as from 23/07/2004 to 22/07/2009 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, which, after the decision in revocation proceedings No C 4345, followed by the decision of 03/12/2012, R 2409/2011, ANNAPURNA, confirmed by the judgment of 06/03/2014, T-71/13, Annapurna, EU:T:2014:105, are:
Class 18: Bags.
Class 25: Articles of clothing, slippers and headgear.
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 20/01/2016, the applicant submitted observations and proof of use. In its observations, it referred to the documents already submitted in cancellation proceedings No C 4345 in order to prove use during the period from 2005 to 2010 and to some new evidence submitted to prove use during the period from 2003 to 2005.
Documents submitted in cancellation proceedings No C 4345
Exhibit 0: an affidavit signed by Ms Aida Barni, President and Legal Representative of Annapurna S.P.A.
- Exhibits 1 and 1A: company profiles of Annapurna S.P.A.
- Exhibit 2: copies of invoices dating from between 2005 and 2010.
- Exhibit 3: copies of invoices dating from between 2004 and 2010.
- Exhibit 4: a CD containing copies of price lists and some photographs.
- Exhibit 4A: a CD containing an English translation of Exhibit 4.
- Exhibit 5: copies of newspaper articles published in the Italian press, with translations.
- Exhibit 6: copies of advertisements published in the Italian press.
- Exhibit 7: copies of catalogues attesting to the participation of the applicant’s company in some exhibitions.
- Exhibit 8: a list of advertisements, reviews, sponsorship activities, trade shows and exhibitions through which the trade mark was publicised between April 2005 and April 2010 in various European countries.
- Exhibit 8 A: copies of two invoices concerning the sponsorship of a golf tournament in 2006 and 2007.
- Exhibit 9: catalogues and brochures. The codes shown on the last pages of these documents appear on the invoices.
- Exhibit 10: a list of some of the applicant’s clients and sales representatives (relating to the period between April 2005 and April 2010).
- Exhibit 10A: a list of some of the applicant’s German clients and sales representatives (relating to the period between April 2005 and April 2010).
- Exhibit 11: copies of two declarations made by two of the applicant’s agents, confirming extensive marketing of the applicant’s goods in Germany, Austria and the Scandinavian countries from 2005 to 2010.
- Exhibit 12: samples of boxes, labels, tickets, ribbons, tissue paper, envelopes, shopping bags and keyrings, and examples of the suppliers’ invoices, with translations.
- Exhibits 13 and 14: copies of extracts from the applicant’s website www.aidabarni.it.
- Exhibit 15: a copy of two extracts from the website of a fashion retailer, www.luisaaviaroma.com
Further evidence submitted
- Exhibit A: invoices dating from 2003 and 2005 issued to clients in Austria, Belgium, Denmark, Finland, France, Germany, Greece, Italy, Latvia, Portugal, Spain, Sweden, the United Kingdom and the Netherlands.
- Exhibit B: price lists for the years from 2003 to 2005.
- Exhibit C: invoices for advertisements and for participation by the applicant in trade shows and exhibitions between 2003 and 2005.
- Exhibit D: selected advertisements published in Italian magazines and newspapers between 2003 and 2005.
The financial turnover and the advertising expenses of the company are indicated by the applicant in its observations as follows:
EUR 1 441 231.88
EUR 1 363 804.08
EUR 390 984.50
EUR 205 601.09
EUR 219 866.64
EUR 108 923.36
On the basis of the evidence submitted in cancellation proceedings No C 4345, in the decision of 03/12/2012, R 2409/2011, ANNAPURNA (confirmed by the judgment of 06/03/2014, T-71/13, Annapurna, EU:T:2014:105), it was found that the criteria with regard to time, place and nature of use had been fulfilled:
18 The Board concurs with the Cancellation Division that these documents that are dated all fall within the relevant time period of 2005 to 2010. As for the place of use, i.e. the European Union, the documents relate to various EU countries, in particular Italy, Germany and France, and it was correctly decided that this complies with the current principles established by the applicable case-law of the Community courts.
19 As far as the nature of use is concerned, the Cancellation Division correctly concluded that the use of the sign in slightly altered forms, namely ‘5+1_ANNAPURNA’, ‘ANNAPURNAPULSE’ and ‘ANNAPURNA’ in stylised form are nevertheless to be considered as use of the word mark ‘ANNAPURNA’ in accordance with Article 15(1)(a) CTMR, given that its distinctive core is maintained.
With regard to the extent of use, the Board found that use had been proved only in relation to some of the goods, namely the goods in Classes 18 and 25 listed above.
In the present proceedings, there are two periods for which the use must be proved, from 07/04/2003 to 06/04/2008 inclusive, and from 23/07/2004 to 22/07/2009 inclusive, and aside from the evidence already considered, the applicant submitted further documents to prove use during the period from 2003 to 2005. These further documents are dated within those years and prove use of the goods in various countries, such as Austria, Belgium, Denmark, Finland, France, etc. The documents originate from third parties (notably the invoices and the advertisements), and the invoices demonstrate a sufficient extent of use. It must also be added, for the sake of completeness, that the provisions on use do not require continuous use as long as the use has been genuine and has been made with a view to maintaining or creating a share in the market for the goods protected by the mark (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52; and 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 38). Taking into account the fact that the two periods overlap, even the evidence for the period from 2005 to 2010 would have sufficed.
LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONJUNCTION 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 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 18: Bags.
Class 25: Articles of clothing, slippers and headgear.
The contested goods are the following:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
Contested goods in Class 18
The contested leather and imitations of leather are raw materials purchased by professionals in order to manufacture finished goods. Therefore, their nature, purpose and end consumers differ from those of the applicant’s goods, and the goods are neither complementary nor in competition. The fact that bags can be made of leather is not sufficient for a finding of similarity where none of the other criteria are fulfilled. The goods are therefore dissimilar.
The contested goods made of leather and imitations of leather, and not included in other classes include, as a broader category, the applicant’s bags. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.
The contested animal skins, hides are usually raw or semi-finished materials purchased by professionals in order to manufacture finished goods. Therefore, their nature, purpose and end consumers differ from those of the applicant’s goods, and the goods are neither complementary nor in competition. The goods are therefore dissimilar.
The contested trunks are similar to the applicant’s bags, as the goods have the same purpose, and they can have the same end users and distribution channels.
The contested travelling bags are included in applicant’s bags, and these goods are, therefore, identical.
Umbrellas are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; walking sticks are canes or other staffs used as aids for walking; whips are instruments used for driving animals; harnesses are the gear or tackle with which a draft animal pulls a vehicle or implement; and saddlery is equipment for horses, such as saddles and harnesses. These contested goods are dissimilar to all the applicant’s goods, as the goods differ in their nature, purpose and commercial origin, and they are neither complementary nor in competition with each other.
Contested goods in Class 25
Clothing and headgear appear on both lists with the same wording and are, therefore, identical.
The contested footwear includes, as a broader category, the applicant’s slippers. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.
- 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 will be, on the whole, average.
- The signs
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).
Both marks are word marks and, as such, they do not have dominant elements. Notwithstanding the fact that the contested trade mark lacks one of the letters ‘N’ present in the earlier mark, a significant part of the public will understand the marks as referring to the same concept, namely a massif in the Himalayas in north-central Nepal. Given that this concept does not relate to the goods at issue, the marks have an average degree of distinctiveness.
Visually, the signs coincide in all their letters except for the additional letter ‘N’ in the earlier mark. Bearing in mind that the words are distinctive and that the earlier mark is fully included in the contested sign, the marks are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is either identical (in those languages, such as Spanish, that do not differentiate between a single and double letter ‘N’) or highly similar (in those languages, such as German, in which the marks would be pronounced /an-na-pur-na/ and /a-na-pur-na).
Conceptually, for a significant part of the relevant public the marks are identical, as they refer to the same concept, as explained above. For the part of the public that does not perceive any concept in the marks, 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.
- 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.
The EUTM proprietor claims that the earlier mark’s distinctiveness is lower than average due to its lack of reputation in the market. In this regard, it should be noted that it is the Office’s practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it to have a normal degree of inherent distinctiveness.
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 and, therefore, the distinctiveness of the earlier mark must be seen as normal.
- 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.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.
As seen above, the marks are visually highly similar and, for a significant part of the relevant public, aurally and conceptually identical. The EUTM proprietor puts forward that the difference between the signs results from their beginnings, and points out that consumers tend to focus on the first part of a mark. However, this difference, as explained above, is merely a duplication of a letter that appears in both marks, and it can in no way counteract the similarities between the signs, which have eight out of the nine letters of the earlier mark in common.
Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration.
Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods 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 goods cannot be successful.
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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Cancellation Division
Carmen SÁNCHEZ PALOMARES
María Belén IBARRA
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.