CANCELLATION No 12 056 C (INVALIDITY)

Chemoform AG, Heinrich-Otto-Str. 28, 73240 Wendlingen, Germany (applicant), represented by Patentanwälte Magenbauer § Kollegen Partnerschaft mbB, Plochinger Str. 109, 73730 Esslingen, Germany (professional representative)

a g a i n s t

Heard Ian, Chadburn House, Weighbridge Road, Littleworth, Mansfield, Nottinghamshire NG18 1AH, United Kingdom (EUTM proprietor).

On 30/09/2016, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 9 407 115 is declared invalid for all the contested goods, namely:

Class 3: Cleaning, polishing, scouring and abrasive preparations; all-purpose cleaners; cleaning preparations incorporating substances for the control of allergens; bleaching preparations; detergents; preparations for laundry use; laundry additives; carpet cleaners with or without deodorizer; fabric and carpet stain removers; limescale removers and rust removers for household use; cleaning preparations which prevent the build-up of stains and limescale; drain and sink cleaning preparations; toilet cleaners; window cleaners; soaps; bar soaps; wipes, cloths, pads, tissues and sponged impregnated with cleaning preparations; pre-moistened cleansing pads, tissues or wipes; wipes, cloths, tissues and sponges impregnated with cleaning preparations, polishing preparations, detergent or disinfectant for cleaning.

Class 21: Brushes (except paint brushes); mops; sponges; cloths and wipes for cleaning or household use; cloths for polishing; articles for cleaning or polishing purposes; dusters and dusting cloths; cleaning and polishing cloths; scouring pads; dispensers for cleaning materials.

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

Class 3: Liquid hand soap; toiletries; hand washes; shower foams and gels; talcum powder; skin care preparations; skin moisturisers; barrier preparations for the skin; non-medicated impregnated wipes for personal use; shaving preparations; pre-shave and after shave preparations; deodorants and antiperspirants for personal use; dentifrices, mouth washes; perfumery; perfuming preparations for the atmosphere; cotton wool, cotton sticks; cosmetic pads, tissues or wipes; essential oils, cosmetics, hair lotions; medicated toiletries, medicated soaps, medicated hair care preparations.

Class 5: Pharmaceutical, veterinary and sanitary preparations; articles impregnated with a disinfectant or antibacterial product; articles impregnated with an antiseptic product; antiseptic preparations; antibacterial preparations; antibacterial handwash; antibacterial hand foam; hand sanitizers; Antibacterial skin sanitizer gel; bactericidal cleansing preparations for the skin; disinfecting preparations, germicides; disinfectants, including disinfectant liquid and disinfectant spray; insecticides and miticides; insect repellents; preparations for destroying and repelling vermin; fungicides; herbicides; cloths, wipes, tissues and sponges impregnated with disinfectant; cloths, wipes, tissues and sponges impregnated with medicated preparations; impregnated antiseptic wipes; sanitizing wipes; impregnated medicated wipes; air freshening preparations, air purifying preparations, air sanitising preparations; air deodorising preparations; deodorants and deodorisers (other than for personal use); air purifiers; preparations and substances for neutralising, controlling or reducing allergens; medicated skin care preparations; medicated talcum powder; plasters; medicated plasters, materials for dressing; filled first-aid boxes.

Class 21: Household and kitchen utensils and containers (not of precious metal or coated therewith); combs; brush-making materials; dispensers for soap; dispensers for wipes; aerosol dispensers; devices for dispensing or spraying air purifying preparations into the atmosphere.

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 9 407 115 namely against some of the goods in Classes 3 and 21. The application is based on German trade mark registration No 951 531. 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 contested goods are identical or similar to those for which the earlier mark is registered and that the signs are similar. It contends that this leads to a likelihood of confusion between the trade marks at issue and that the contested registration should therefore be declared invalid. In its opinion, this outcome is further supported by the earlier mark’s normal degree of distinctiveness and the fact that the goods at issue, namely cleaning tools and supplies, are usually paid a lower degree of attention by consumers who buy them.

The applicant refers to a previous decision of the Office which established the existence of a likelihood of confusion in an opposition case involving the same parties, the same German earlier mark and the contested trade mark application .

The EUTM proprietor did not 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.

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:

Chemical agents with or without disinfectant additives for cleaning and maintaining of sanitary arrangements, all of the aforesaid goods in liquid state in Classes 3 and 5.

The contested goods are the following:

Class 3: Cleaning, polishing, scouring and abrasive preparations; all-purpose cleaners; cleaning preparations incorporating substances for the control of allergens; bleaching preparations; detergents; preparations for laundry use; laundry additives; carpet cleaners with or without deodorizer; fabric and carpet stain removers; limescale removers and rust removers for household use; cleaning preparations which prevent the build-up of stains and limescale; drain and sink cleaning preparations; toilet cleaners; window cleaners; soaps; bar soaps; wipes, cloths, pads, tissues and sponges impregnated with cleaning preparations; pre-moistened cleansing pads, tissues or wipes; wipes, cloths, tissues and sponges impregnated with cleaning preparations, polishing preparations, detergent or disinfectant for cleaning.

Class 21: Brushes (except paint brushes); mops; sponges; cloths and wipes for cleaning or household use; cloths for polishing; articles for cleaning or polishing purposes; dusters and dusting cloths; cleaning and polishing cloths; scouring pads; dispensers for cleaning materials.

Contested goods in Class 3

The applicant’s mark is registered for chemical agents for cleaning and maintaining sanitary installations in Classes 3 and 5. All references to these goods below are meant to refer to those included in Class 3. Furthermore, the wording ‘chemical agents’ within the context of Class 3 is to be understood as finished products consisting of or incorporating chemical products, not as the raw chemical products that would be classified in Class 1. It is also noted that the maintaining of sanitary arrangements involves not only cleaning but also scouring, polishing. For instance, restoring/refinishing a bathtub (reviving a dull, shineless bathtub) is done through polishing, scouring and using abrasive materials.

The contested bleaching preparations; cleaning preparations; all-purpose cleaners; cleaning preparations incorporating substances for the control of allergens; detergents include, as broader categories, or overlap with, the applicant’s chemical agents with or without disinfectant additives for cleaning and maintaining of sanitary arrangements, all of the aforesaid goods in liquid state. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods.

The contested polishing, scouring and abrasive preparations are broad categories that overlap with the applicant’s chemical agents with or without disinfectant additives for maintaining of sanitary arrangements, all of the aforesaid goods in liquid state. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods.

Soap is a cleaning or emulsifying agent made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. It is used for cleaning, not only for personal purposes but also for household purposes (cleaning textiles but also other goods including sanitary goods, for instance black soap, available in liquid state, is used to clean any surfaces). Therefore, the contested soaps overlap with the applicant’s chemical agents with or without disinfectant additives for cleaning of sanitary arrangements, all of the aforesaid goods in liquid state. 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 limescale removers and rust removers for household use; cleaning preparations which prevent the build-up of stains and limescale; drain and sink cleaning preparations; toilet cleaners are included in, or overlap with, the broad category of the applicant’s chemical agents with or without disinfectant additives for cleaning of sanitary arrangements, all of the aforesaid goods in liquid state. Therefore, they are identical.

The contested pre-moistened cleansing pads, tissues or wipes; wipes, cloths, pads, tissues and sponges impregnated with cleaning preparations; wipes, cloths, tissues and sponges impregnated with cleaning preparations, detergent or disinfectant for cleaning are highly similar to the applicant’s chemical agents with or without disinfectant additives for cleaning of sanitary arrangements, all of the aforesaid goods in liquid state. The contested wipes, cloths, tissues and sponges impregnated with polishing preparations and the applicant’s chemical agents with or without disinfectant additives for maintaining of sanitary arrangements, all of the aforesaid goods in liquid state in Class 3 are also highly similar. Although differing in nature, these goods have the same purpose and are intended for the same public. They also usually share the same distribution channels and producers. Furthermore, they are interchangeable.

The contested bar soaps are soaps in solid state that can be used for household cleaning purposes. These goods only differ from the applicant’s chemical agents with or without disinfectant additives for cleaning of sanitary arrangements, all of the aforesaid goods in liquid state in that they are not in liquid state. However, the goods at issue have the same purpose, public and producers and are found in the same distribution channels. They are also interchangeable. Hence, there are highly similar.

The contested preparations for laundry use; laundry additives; carpet cleaners with or without deodorizer; fabric and carpet stain removers; window cleaners and the applicant’s chemical agents with or without disinfectant additives for cleaning and maintaining of sanitary arrangements, all of the aforesaid goods in liquid state share the same nature and are available through the same distribution channels and intended for the same public. They may have the same producers. Furthermore, the fact that they are intended for cleaning different objects (sanitary installations v clothes/linen/rug/windows) does not introduce a significantly different purpose because they are intended generally-speaking, for household cleaning. Therefore, they are similar.

Contested goods in Class 21

The contested brushes (except paint brushes); mops; sponges; cloths and wipes for cleaning or household use; cloths for polishing; articles for cleaning or polishing purposes; dusters and dusting cloths; cleaning and polishing cloths; scouring pads are implements used for household cleaning or maintaining purposes whereas the applicant’s goods are liquid preparations for cleaning and maintaining specific household goods, namely sanitary arrangements. The goods at issue have the same purpose and are intended for the same public. They are available in the same sections of stores and may be produced by the same undertakings. Furthermore, there is a link of complementarity between them to the extent that one usually needs an implement to apply the cleaning/maintaining preparations. Therefore these goods are highly similar.

The contested dispensers for cleaning materials and the applicant’s chemical agents with or without disinfectant additives for cleaning and maintaining of sanitary arrangements, all of the aforesaid goods in liquid state are complementary and can be found in the same sales outlets. They also target the same public. Despite their differences in nature, purpose and method of use, these goods are similar to a low degree.

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 or similar (to various degrees) are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Sanit	SANIT8
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 formed by the only word ‘Sanit’, hence not having elements more distinctive or dominant in comparison with others.

The contested mark is a word mark formed by the element ‘SANIT8’ that, despite the letter sequence ‘SANIT’ and the number ‘8’ being conjoined, will be perceived by the public as being formed by those two elements.

The word ‘Sanitär’ (referring to sanitary equipment) exists in German but the word ‘Sanit’ does not and ‘Sanit’ is not a common truncated form of such word. In the presence of goods for cleaning or sanitary purposes or goods intended for cleaning sanitary installations marketed under a mark containing the letters ‘SANIT’, a part of the German public is likely to recognise an allusion to the purpose of the goods in question but the allusion is done in an unusual way and the element is therefore fanciful enough not to be considered as descriptive or even weak. The distinctiveness of the element ‘SANIT’ of the signs is therefore considered normal or at most slightly below normal.

The number ‘8’ of the contested sign will be perceived as a serial number and is therefore less distinctive than the element ‘SANIT’. There are no dominant elements in the mark owing to its verbal nature.

Visually, the signs coincide in the letters ‘SANIT’ forming the entire earlier mark and differ in the number ‘8’ of the contested sign. This takes into account that in word marks, the word itself is protected and not the way it is presented; therefore, case-lettering has no impact on the visual comparison. The coincidences are placed in the contested sign’s distinctive part whereas the difference is in its less distinctive element. Furthermore, the letters in common are placed at the beginning of the contested mark which is the part that consumers will perceive first hence it is particularly relevant.

Therefore, the marks are visually highly similar.

Aurally, the pronunciation of the signs coincides in the two syllables /SA-NIT/, which is the entire earlier mark and differs in the sound of the number ‘8’ which is one syllable /ACHT/ in German. In view of what has been established above concerning, on the one hand, the distinctiveness of the element in common (and lesser distinctiveness of the differing one) and, on the other hand, the position of the letters in common in the contested trade mark, the signs are aurally highly similar.

Conceptually, both signs may remind the public of the concept of sanitary equipment. Bearing in mind, on the one hand, that the allusion is achieved in a fanciful manner and, on the other hand, that the meaning is related to purpose of the goods at issue, the resulting conceptual similarity is very low. The contested sign also includes the concept of the number ‘8’. For the part of the public that does not relate ‘sanit’ to ‘sanitary equipment’, 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, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been indicated above in the description of the signs regarding the perception that the German public will have of the word ‘Sanit’, namely that it is not a German word nor a usual truncated form of the existing word ‘Sanitär’, it is considered that the distinctiveness of the earlier mark is average or just below average.

5. Global assessment, other arguments and conclusion

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.

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).

In the present case, the contested goods are identical and similar to various degrees. The earlier mark’s distinctive character is average or slightly below average, and the signs are visually and aurally highly similar, as well as conceptually similar albeit to a low degree for part of the public. The visual, aural and conceptual difference stemming from the number ‘8’ is of very little weight because such number will only induce the public to perceive the contested mark as a variant of the earlier mark, used to distinguish a specific line of goods manufactured by the same or economically-linked companies.

Considering all the above, there is a likelihood of confusion on the part of the public. Such conclusion applies also to the goods that are similar to a low degree, given the important similarity between the signs and the principle of interdependence.

Therefore, the application is well founded on the basis of the applicant’s German trade mark registration No 951 531. It follows that the contested trade mark must be declared invalid for all the contested goods.

For the sake of completeness, it is clarified that the outcome would be the same had the element ‘SANIT’ been considered weak to the extent that this element forms the entire earlier mark and is fully included at the beginning of the contested sign and that the additional element of the latter is, even in such scenario, less distinctive. Although the weak distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61).

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

Frédérique SULPICE

Catherine MEDINA

María Belén IBARRA DE DIEGO

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.