CANCELLATION No 10 837 C (INVALIDITY)

Lohmann & Rauscher International GmbH & Co. KG, Westerwaldstr. 4, 56579 Rengsdorf, Germany (applicant), represented by Zeuner Summerer Stütz Patent- und Rechtsanwälte, Nußbaumstr. 8, 80336 München, Germany (professional representative)

a g a i n s t

Elas A/S, Industrivej Nord 1, birk, 7400 Herning, Denmark (CTM proprietor), represented by Chas. Hude A/S, Marselisborg Havnevej 36, 8000 Aarhus C, Denmark (professional representative).

On 22/10/2015, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of Community trade mark No 10 434 819, namely against some of the goods in Class 10. The application is based on international trade mark registration No 593 735 designating Estonia, Finland, Greece, Lithuania, Bulgaria, Benelux, the Czech Republic, Germany, Spain, France, Croatia, Hungary, Italy, Latvia, Romania, Slovenia, Slovakia. The applicant invoked Article 53(1)(a) CTMR in connection with Article 8(1)(b) CTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there exists a likelihood of confusion on the part of the public between the contested mark and the earlier mark on account of the similarity between the signs and the goods at issue.

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

LIKELIHOOD OF CONFUSION – ARTICLE 53(1)(a) CTMR IN CONNECTION WITH ARTICLE 8(1)(b) CTMR

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:

Class 5: Elastic material for dressings, elastic gauzes for dressings.

Class 10: Elastic bandages for supporting and compressing, elastic bands for supporting and compressing.

The contested goods are the following:

Class 10: Orthopedic articles; elastic bandages; support bandages; orthopedic belts.

Contested goods in Class 10

The contested elastic bandages include, as a broader category, the applicant’s elastic bandages for supporting and compressing. It is impossible for the Cancellation Division to filter these goods from the abovementioned category. Since the Cancellation Division cannot dissect ex officio the broad category of the CTM proprietor’s goods, they are considered identical.

The contested support bandages include, as a broader category, the applicant’s elastic bandages for supporting and compressing. It is impossible for the Cancellation Division to filter these goods from the abovementioned category. Since the Cancellation Division cannot dissect ex officio the broad category of the CTM proprietor’s goods, they are considered identical.

The contested orthopedic articles include, as a broader category, the applicant’s elastic bandages for supporting and compressing. It is impossible for the Cancellation Division to filter these goods from the abovementioned category. Since the Cancellation Division cannot dissect ex officio the broad category of the CTM proprietor’s goods, they are considered identical.

The contested orthopedic belts and the applicant’s goods in Class 10 are similar. The goods at issue can have the same purpose (supporting), can be produced by the same companies and are sold through the same distribution channels to the same public.

2. The signs

ELASTRA	ELAS
Earlier trade mark	Contested CTM

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the verbal sequence ‘ELAS’. On the other hand, they differ in the last three letters ‘TRA’ of the earlier trade mark.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the marks coincides in the sound of the letters ‛ELAS’ present identically in both signs, and to that extent the marks are aurally similar. The pronunciation differs in the sound of the syllable ‛TRA’ of the earlier mark which has no counterpart in the contested mark. The presence of an additional syllable in the earlier mark also introduces a significant difference in rhythm and intonation between the signs.

Conceptually, it should be stressed that the Court has established that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (See judgment of 06/10/2004, T-356/02, Vitakraft, paragraph 51). In view of this and taking into account the goods involved, the Cancellation Division considers that although the earlier mark as a whole does not have any meaning for the public in the relevant territory, its initial sequence ‘ELAST’ will be associated by the public with ‘elastic’ or ‘elasticity’ as this sequence is used in all languages of the relevant territory for words which express such concepts. The Cancellation Division considers that such an evocation is not obvious in the contested CTM due to the absence of the letter ‘T’ at the end of ‘ELAS’ and therefore that, unlike the earlier mark, in the contested CTM, the concept of ‘elastic’ or elasticity’ will not be brought to the mind of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, it is considered that the signs are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks have no elements which could be considered clearly dominant (visually eye‑catching) or more distinctive than other elements.

The verbal sequence ‘ELAST’ of the earlier mark will be associated by the public with ‘elastic’ or ‘elasticity’ and perceived as indicating a characteristic of the relevant goods. Therefore, this element is considered less distinctive. The part of the relevant public who understands the meaning of this element will not pay as much attention to it as to the other more distinctive elements of the mark. Consequently, the impact of this less distinctive element is limited when assessing the likelihood of confusion between the marks.

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 less distinctive element in the mark for part of the public, as stated above in section c) of this decision.

5. Relevant public – level of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, the average consumer’s level 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 and similar target the public at large as well specialists with specific professional knowledge or expertise. The level of attention is deemed to range from average to higher than average depending on the purpose of the goods at issue.

6. 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” (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 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 (see judgment of 20/09/1998, C‑39/97, ‘Canon’, paragraph 17 et seq.).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 22/06/1999, C‑342/97, ‘Lloyd’, paragraph 26).

In the present case, the goods at issue have been found identical and similar and the signs are similar in that they coincide in the initial letters ‘ELAS’ as the applicant argues while referring to judgment of 17/03/2004, T-183/02 and T-184/02, MUNDICOLOR/MUNDICOR. However, unlike the cited cases, in the present case, the similarities between the signs do not extend any further than the coincidence in the initial letters ‘ELAS’. Moreover, while it is true that that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark and that it is equally true that 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, it must be stressed that such arguments cannot hold in all cases and do not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. In this respect, it should be noted that the length of the signs may modify the effect of the differences between them and may frequently lead to a different overall impression. In the present case, while the signs coincide indeed in their initial four letters ‘ELAS’, it should be borne in mind that though not exactly short, the contested CTM is not a long mark as it only contains four letters. In turn, the earlier mark is significantly longer as it contains seven letters and it is considered that the additional final letters ‘TRA’ will not pass unnoticed all the more when taking into account that, aurally, the latter also introduce an additional final syllable in the earlier mark which modifies significantly the rhythm and intonation in comparison with the two-syllabic contested CTM. Finally, in the earlier mark, the letters ‘ELAS’ are followed by the letter ‘T’ and it is considered that this difference is material to the extent that the sequence ‘ELAST’ will bring to mind a concept related to elasticity which is absent in the contested CTM.

Considering all the above, the additional letters in the earlier mark are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks, bearing in mind that the sequence ‘ELAST’ in the earlier mark, in which the similarities lay, is not particularly distinctive for the relevant public.

In view of the foregoing, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the cancellation application must be rejected.

COSTS

According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the CTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) CTMIR, the costs to be paid to the CTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Begoña URIARTE VALIENTE

Martina GALLE

Pedro JURADO MONTEJANO

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Article 2(30) CTMFR).