CANCELLATION No 40 400 C (INVALIDITY)

Troll Teko Holding AS, Farmen Nedre 27, 3024 Drammen, Norway (applicant), represented by Sands Advokatfirma DA, Cort Adelers gate 33, 0254 Oslo, Norway (professional representative)

a g a i n s t

Apt. Fabrics Ltd, 18 Tullykevin Road, Greyabbey, County Down BT22 2NB, United Kingdom (EUTM proprietor), represented by Ansons, 4th Floor, Imperial House, 4-10 Donegall Square East, Belfast, BT1 5HD, Northern Ireland, United Kingdom (professional representative).

On 18/08/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 9 716 515 is declared invalid for some of the contested goods, namely:

Class 9: Protective headgear.

Class 25: Clothing and headgear.

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

Class 9: Clothing for protection against injury, accident, irradiation or fire; protective paddings.

Class 24: Textiles and fabrics; textile and fabric goods; coated textiles and fabrics; coated woven textile materials; composite textile materials; textiles treated with a fire or flame resistant finish; textiles impervious to water but permeable to moisture; fabric coated with rubber or plastics; polymer resin fibres for textile use; reinforced textile fabrics; reinforcing mesh made of textile fibres [other than for construction purposes]; vapour permeable plastic textile; textile fabric piece goods for use in the manufacture of protective clothing; textile fabrics for use in the manufacture of protective clothing.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods, namely, the goods in Classes 9 and 25, of European Union trade mark No 9 716 515 (the EUTM) for the figurative sign shown below:

The application is based on international trade mark registration No 1 016 311 ‘ACLIMA’ (word mark) with designations in Austria; Benelux; Bulgaria; Croatia; Cyprus; Czech Republic; Denmark; Estonia; EU; Finland; France; Germany; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Malta; Poland; Portugal; Romania; Slovakia; Slovenia; Spain; Sweden and the United Kingdom. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the signs in conflict share essential visual, phonetic and conceptual characteristics as they both contain the word ‘ACLIMA’. It states that both signs allude to the notion of climate control or adaption and in relation to clothing it would suggest that they are suitable for outdoor settings where cold temperature and harsh weather need to be mitigated. The different ending of the EUTM is insufficient to distinguish the signs. Moreover, it claims that all of the goods in conflict are types of clothing. Therefore, it claims there is a likelihood of confusion.

The EUTM proprietor did not submit any observations in reply to the application for a declaration of invalidity.

SUBSTANTIATION IN RELATION TO PART OF THE DESIGNATIONS OF THE EARLIER IR

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the applicant does not submit appropriate evidence.

According to Article 16(1) EUTMDR, the applicant will present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of the proceedings.

According to Article 16(1)(b) EUTMDR in conjunction with Article 7(2) EUTMDR, within the period referred to above, the applicant must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the application.

Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the applicant may provide such evidence by making reference to that source — Article 16(1)(b) in conjunction with Article 7(3) EUTMDR.

In the application for a declaration of invalidity the applicant indicated that its earlier international trade mark registration had designations in Austria; Benelux; Bulgaria; Croatia; Cyprus; Czech Republic; Denmark; Estonia; EU; Finland; France; Germany; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Malta; Poland; Portugal; Romania; Slovakia; Slovenia; Spain; Sweden and the United Kingdom. It also ticked the box to indicate that it wished to rely on online substantiation. When the Cancellation Division carried out the examination of online substantiation it transpires that the earlier mark only has a designation to the EU and not in each country individually listed above.

The invalidity application was not accompanied by any evidence as regards these further designations nor was there any information concerning these designations online.

The adversarial part of the proceedings was closed on 16/06/2020. The applicant did not submit any evidence concerning the substantiation of the further designations listed in the application for a declaration of invalidity.

According to Article 17(3) EUTMDR, if the applicant has not submitted the facts, arguments or evidence required to substantiate the application, the application will be rejected as unfounded.

The application must therefore be rejected as unfounded as far as it is based on the earlier international trade mark registration as designated in Austria; Benelux; Bulgaria; Croatia; Cyprus; Czech Republic; Denmark; Estonia; Finland; France; Germany; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Malta; Poland; Portugal; Romania; Slovakia; Slovenia; Spain; Sweden and the United Kingdom.

As such the request will only be examined in relation to the earlier international trade mark with a designation in the EU.

LIKELIHOOD OF CONFUSION — ARTICLE 60(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.

a) 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 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 9: Clothing for protection against injury, accident, irradiation or fire; protective headgear; protective paddings.

Class 25: Clothing and headgear.

Comparison of goods in Class 9

The contested goods clothing for protection against injury, accident, irradiation or fire; protective padding in Class 9 are very specific to the market of protective and safety equipment and have very different natures and purposes to the earlier goods in Class 25. They usually have different distribution channels and are produced by very different companies because their manufacturing processes require different types of research to e.g. test their safety, different technical know-how etc. Even if one of the purposes of the earlier goods in Class 25 is also "protecting the human body " it is not for protection against accidents, irradiation or fire and thus those goods are not in competition, which would be the only and closest connection to the contested goods. Therefore, the above goods under comparison do not have points of contact that would justify a level of similarity between them and are deemed to be dissimilar.

However, the contested protective headgear have a low degree of similarity to the earlier goods. Protective headgear would include inter alia ski helmets which belong to the same market sector as sportswear which is included within the general categories of goods for which the earlier mark is registered in Class 25. These goods are commonly manufactured under the control of the same entity, they are offered for sale in the same specialised shops or sports departments in stores, and satisfy the needs of the same public as the earlier goods in Class 25. Therefore, they are similar to a low degree.

Comparison of goods in Class 25

Clothing and headgear are identically contained in both lists of goods and are therefore, identical.

b) 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 a low degree are directed at the public at large. The degree of attention will vary from average (for Class 25) to higher than average (Class 9 as these are safety goods used to protect the head).

c) The signs

ACLIMA
Earlier trade mark	Contested trade mark

The relevant territory is the EU.

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). This applies by analogy to international registrations designating the European Union. 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.

As neither of the signs as a whole has any exact meaning in some languages, like French or Spanish, the Cancellation Division finds it appropriate to focus the comparison of the signs on this part of the relevant public as for these consumers as there will not be any conceptual differences to distinguish the signs.

The earlier mark is a word mark and as there is no irregular capitalisation it is irrelevant whether this word is written in upper or lower case as it is covered for both. The word ‘ACLIMA’ has no exact meaning for the relevant public under examination at present and as such, it is distinctive to an average degree.

The contested mark is a figurative mark which consists of a black triangle that is intersected by a white line from the top centre to the bottom. This element is not particularly striking or distinctive as it is made up of a basic geometric shape intersected in a white line and plays more of a decorative role within the sign. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is 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; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The contested sign also contains the word ‘Aclimatise’ written in standard black title case typeface. This word does not have any meaning for the relevant consumer under examination and is distinctive to an average degree. Therefore, the most distinctive part of the contested sign is the word ‘Aclimatise’. There is no element in the contested sign that is more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of letters ‘ACLIMA’, which is the entirety of the earlier mark and makes up the first six out of ten letters in the verbal element of the contested sign, which is also its most distinctive element. The signs differ in the figurative element of the contested sign, although this plays merely a decorative and less important role within the sign, and in the final letters ‘tise’ of the word element. However, consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and the initial part is the one that first catches the attention of the reader. The initial part of the word element is identical to the earlier mark. Therefore, visually the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the sound of the letters ‘ACLIMA’ but differ in the ending of the contested sign ‘TISE’. However, the earlier mark is fully contained within the contested sign and at the start of the word. Therefore, the signs are aurally similar to at least an average degree.

Conceptually, while the public in the relevant territory will not understand the verbal element in either sign as having any meaning, it will perceive the figurative element of the contested mark as a triangle. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. Although it must be stressed that as this difference lies in a secondary decorative feature and as such its influence will be at best limited, if at all.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

e) Global assessment, other arguments and conclusion

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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 signs in conflict are visually similar to an average degree, phonetically similar to an at least average degree and conceptually not similar, although the importance of this conceptual difference lies in a secondary decorative element and its influence will be at best very limited, if at all. The goods in conflict are either identical, similar to a low degree or dissimilar. The earlier mark has a normal degree of distinctive character and the relevant public is the public at large whose attention will range from average to high depending on the goods.

The Cancellation Division notes that the entirety of the earlier mark is contained within the most distinctive part of the contested sign, and at the beginning of the sign where consumers pay more attention. Therefore, there is a likelihood of confusion for the goods found to be identical, but also in relation to the goods for which a low degree of similarity, and for which a higher than average degree of attention of the public at large was found due to the similarities between the signs and also as the public must rely on its imperfect recollection of the signs.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the French- and Spanish-speaking part of the public and, therefore, the application is partly well founded on the basis of the applicant’s International trade mark registration with a designation in the EU. 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.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to a low degree 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 against these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(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

Julie, Marie-Charlotte HAMEL

Nicole CLARKE

Liliya YORDANOVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.