CANCELLATION No 11234 C (INVALIDITY)

SPBI, Parc d’Activités de L’Eraudière, 85170 Dompierre-sur-Yon, France (applicant), represented by Gevers & Orès, 36 rue de Saint-Petersbourg, 75008 Paris, France (professional representative)

a g a i n s t

Elias Mundula, Via Parioli, 01 c.p. 315, 07020 Porto Rotondo (OT), Italy (EUTM proprietor) represented by Buignion S.P.A, Viale Lancetti 17, 20158 Milano, Italy (professional representative).

On 30/11/2016, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 8 956 401 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 8 956 401. The application is based on international registration No 566 710 designating, inter alia, Finland. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 8(5) EUTMR, and Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the marks are similar visually, aurally and conceptually on account of their having in common the word ‘PRESTIGE’. The goods are identical and the earlier mark enjoys reputation in several markets; therefore, confusion among consumers in relation to the origin of the goods is inevitable. In support of its observations regarding the reputation of the mark, the applicant filed several documents.

The EUTM proprietor argues that ‘PRESTIGE’ is non-distinctive and that, consequently, the coincidence in this word cannot give rise to confusion among consumers. In support of this argument, the applicant filed a list of registered marks.

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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s international registration No 566 710 designating, inter alia, Finland.

1. The goods

The goods on which the application is based are the following:

Class 12: Vehicles, apparatus for locomotion by water, specifically sailing boats, motor boats and pleasure boats.

The contested goods are the following:

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Vehicles appear in both lists with the same wording, and these goods are, therefore, identical.

Vehicles include apparatus for locomotion by land, air or water; the only difference between the goods is that vehicles are a broader category than apparatus for locomotion, as the latter has a motor whereas the former might or might not have a motor. Consequently, the goods are 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 identical goods are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention varies and may even be very high for boats, whereas it will be lower for vehicles such as bicycles.

3. The signs

PRESTIGE
Earlier trade mark	Contested trade mark

The international registration designates a number of countries, as mentioned above. The Cancellation Division will limit the evaluation to Finland, as a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57, by analogy).

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, ‘PRESTIGE’. The contested mark consists of two words, ‘Prestige’ and ‘Yacht’, which appear in white on a blue background, in stylised characters and on a curved line that could be perceived as the shape of a wave.

In its observations, the EUTM proprietor bases its defence on the lack of distinctiveness of the word ‘PRESTIGE’ and, to support its arguments, it filed a list of trade marks that contain the word ‘PRESTIGE’. In this regard account must be taken, first, of the fact that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Consequently, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘PRESTIGE’, to the extent that this widespread use might have altered the distinctive character of the word.

The Cancellation Division furthermore observes that the earlier mark is a word mark; that is, it has no figurative elements and the sign was registered as a mark solely on the basis of the word it sought to protect. In this regard, it should be remembered that, as made clear by the Court in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’. Therefore, even if Finnish consumers were to understand the word ‘PRESTIGE’ as laudatory in its meaning of ‘high status or reputation achieved through success, influence, wealth, etc.; renown‘, a certain degree of distinctiveness must necessarily be attributed to the word mark in as much as it is registered.

The word ‘YACHT’, present in the contested mark, lacks distinctiveness in relation to apparatus for locomotion by water because this word will be known by a significant proportion of the relevant consumers given that Finland is a maritime country and the word ‘yacht’ is a quite basic word in sailing vocabulary.

Visually, the signs coincide in ‘PRESTIGE’ and differ in the word ‘YACHT’ and the figurative elements in the contested mark. The signs are highly similar for the public that does not understand ‘PRESTIGE’, as account must be taken of the facts that ‘YACHT’ is descriptive for some of the goods and that figurative elements are usually less relevant than verbal elements 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).

In relation to the goods for which ‘YACHT’ is not descriptive, the degree of visual similarity is average, given that the coinciding element is the longest element in the contested sign, appearing at its beginning, and the only element of the earlier sign; the first part of a sign is the part on which consumers generally tend to focus. 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.

For the part of the public that understands the word ‘PRESTIGE’ and in relation to the goods for which ‘YACHT’ is not descriptive, the degree of visual similarity is low.

Aurally, the signs coincide in the pronunciation of the word ‘PRESTIGE’. Following the reasoning set out above, the degree of aural similarity between the signs will be high when ‘YACHT’ is descriptive, average when it is not and low when ‘PRESTIGE’ is understood and perceived as weak and ‘YACHT’ is not descriptive.

The same reasoning applies to the conceptual comparison between the marks, and the degree of similarity will be high, average or low.

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.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim will not be assessed in the present case (see below in ‘Global assessment’).

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 for part of the relevant public. For another part of the public, its distinctiveness can be seen as low.

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.). 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.

In the present case, the marks have in common the longest element in the contested mark, which is furthermore placed at the beginning of the sign. For the part of the relevant Finnish public that does not understand the word ‘PRESTIGE’, the coinciding word element has an average degree of distinctiveness. In these circumstances, and even taking into account the potentially high degree of attention for (at least) some of the relevant goods, there is a likelihood that the consumers, when confronted with a mark that begins with the word ‘PRESTIGE’ will think that the goods originate from the same undertaking or from undertakings with economic ties. Furthermore, the consumers could also think that the contested mark is a new, more modern version of the earlier mark. This is so because the goods are identical and a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Therefore, the application is well founded on the basis of the applicant’s international registration designating Finland. It follows that the contested trade mark must be declared invalid for all the contested goods. 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.

Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its extensive use as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier international registration No 566 710 leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the application, namely Article 8(4) and (5) EUTMR in conjunction with Article 53(1)(a) and (c) EUTMR.

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

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Jose Antonio GARRIDO OTAOLA

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.