CANCELLATION No 15 010 C (INVALIDITY)

Henri de Preval, 2 rue du Coteau de la Bardouillière, 37350 Nazelles Negron, France (applicant), represented by Markplus International, 39 rue Fessart, 92100 Boulogne-Billancourt, France (professional representative)

a g a i n s t

Ken Virmani, Lindwurmstr. 128, 80337 München, Germany (EUTM proprietor), represented by Ostriga Sonnet Wirths & Vorwerk, Friedrich-Engels-Allee 430-432, 42283 Wuppertal, Germany (professional representative).

On 20/02/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 10 515 302 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 10 515 302 for the word mark ‘anokhi’. The application is based on French trade mark registration No 3 212 257 for the word mark ‘ANOKI’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion since the goods were similar and the signs were visually very similar, aurally identical and had no meaning that could differentiate them.

The EUTM proprietor requested the applicant to submit proof of use of its earlier mark.

The applicant submitted evidence of use (see list below) and argued that the earlier mark was used in France for jewellery, bags and scarves.

The EUTM proprietor argued that the evidence of use submitted by the applicant was insufficient to prove use of the earlier mark. In particular, he argued that the declarations were from the applicant and its suppliers and had therefore a low probative value. Regarding the invoices, he pointed out that they were issued by suppliers, no actual sales of goods to customers were proved and they did not show that the goods were marked with the trade mark ‘ANOKI’. He also considered that the product pictures only concerned bags and the remaining documents (reviews, press articles) only showed some boutiques named ‘ANOKI’ but there was no evidence that the goods sold bore the trade mark ‘ANOKI’.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based, namely French trade mark No 3 212 257 ‘ANOKI’.

The request has been filed in due time and is admissible given that the earlier trade mark was registered on 27/02/2003, namely more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 23/05/2017. The date of filing of the contested trade mark is 21/12/2011. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in France from 23/05/2012 to 22/05/2017 inclusive. Since the earlier mark was registered more than five years prior to the date of filing of the contested mark, use of the earlier mark had to be shown also for the period from 21/12/2006 to 20/12/2011 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 14: Articles of jewellery.

Class 18: Leather and imitation of leather; bags.

Class 25: Scarves.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, 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 20/09/2017, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 25/11/2017 to submit evidence of use of the earlier trade mark. This deadline was extended until 25/01/2018.

On 24/01/2018, within the time limit, the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Affidavit dated 01/10/2017 from the applicant referring to its activity, namely the sale of leather goods, jewellery and scarves bearing the trade mark ‘ANOKI’ sewn or affixed to the products, as well as in all the packaging, in four shops in France. The affidavit gives turnover figures for the years 2012-2016 ranging from EUR 1 068 293 to EUR 1 270 280.

• Affidavit dated 13/11/2017 from M. Rouillon, the auditor of the applicant’s company which main activity is the sale of leather goods, jewellery and scarves bearing the trade mark ‘ANOKI’. He gives turnover figures for the years 2006-2017 ranging from EUR 474 676 to EUR 1 309 675.

• 5 affidavits from the applicant’s suppliers certifying that they have sold to the company ‘ANOKI’ articles of jewellery (since 2005, 2009), handbags, leather goods (since 2005), textile goods (since 2008, 2014), with the trade mark ‘ANOKI’ affixed on sewn labels or hooked to the aforementioned products as well as on all packaging.

All the affidavits are submitted in French with their translation into English and they include a copy of the identity card of the signatories.

• Numerous invoices dated 2005-2017 issued by the applicant’s suppliers and addressed to ‘ANOKI’ shops (ANOKI, Mermoz SARL, Artemis SARL and Stanley ANOKI). They refer to the sale of, inter alia, scarves, bags, jewellery (rings, necklaces, bracelets, earrings). The quantities and amounts sold are significant over the whole period (2005-2017).

• Pictures of bags bearing the trade mark ‘ANOKI’.

• Extract from the French website ‘Le Bonbon’ dated 12/12/2016 referring to one of the shops ‘ANOKI’ in Paris.

• Extract from the ‘Facebook’ page of ‘My Paris view’ dated 10/09/2014 referring to one of the shops ‘ANOKI’ in Paris, selling scarves, handbags and jewellery.

• Reviews on Google search engine referring to the three ‘ANOKI’ shops in Paris, undated.

• Extract from the French blog ‘Misses Lambda’ (dated 30/03/2014 according to the applicant), referring to the shop ‘ANOKI’ in Lyon selling bags, articles of jewellery.

• Press article from L’Express dated 24/03/2011, quoting the shop ‘ANOKI’ in Paris.

• Reviews on several websites (www.yelp.fr; ‘monnuage’, ‘Mouffetard addict’) regarding the ‘ANOKI’ shops in Paris and Lyon, including pictures of some bags and pictures of the shops where it can clearly be seen that bags, articles of jewellery and scarves are offered for sale. From the website ‘monnuage’, there is one review entitled ‘Where to go shopping in Paris ?’ with the following comment : ‘It is a very cute little shop located in one of the main streets of the Latin Quartier, it has a nice colour front which invites you to enter: some model bags are made by the Parisian owner and all are marked ‘Anoki Paris’. There are also handbags, scarves’.

• 2 Screenshots from online shops (Poshmark, Vinted) selling ‘ANOKI’ bags, with a picture of the products bearing the trade mark ‘ANOKI’.

• Screenshot from ‘tripadvisor’ with a picture of an ‘ANOKI’ shop in Paris.

Assessment of genuine use – factors

Time of use

Most of the evidence is dated within the relevant periods. Therefore, the evidence of use sufficiently indicates the time of use, namely both periods from 23/05/2012 to 22/05/2017 inclusive and from 21/12/2006 to 20/12/2011 inclusive.

Place of use

The documents show that the place of use is France. This can be inferred from the language of the documents and the addresses in France (in Paris and Lyon). Therefore, the evidence relates to the relevant territory.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Genuine use does not require commercial success but just real exploitation on the market (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 32; 08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

The applicant filed several affidavits. According to the EUTM proprietor they have a low probative value as they all come from the sphere of the applicant.

Article 10(6) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources. In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

In the present case, the affidavits, in particular the affidavit from the accountant of the applicant, provide significant turnover figures for the years 2006-2017 (all over the relevant periods). Moreover, they are corroborated by numerous invoices from suppliers and press articles from independent parties. Although, as argued by the EUTM proprietor, the invoices do not show sales to the final consumers, the remaining documents show that the mark has been used publicly and outwardly in the context of commercial activity (12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68, § 39; 30/04/2008, T-131/06, Sonia Rykiel, EU:T:2008:135, § 38).

Therefore, taken as a whole, the documents submitted provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. It is considered that the mark was used in a serious attempt to create and maintain an outlet for the goods. In other words, the extent of use was sufficiently proven.

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

‘The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services … The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. [A]ccordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being “in relation to goods or services” within the meaning of Article 5(1) of the directive’ (11/09/2007, C‑17/06, Céline, EU:C:2007:497, § 21; 13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156, § 21). In other words, such use cannot be considered as use of a trade mark.

The use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T‑209/09, Alder Capital, EU:T:2011:169, § 55-56). The proof of use must establish a clear link between the use of the mark and the relevant goods. There is use ‘in relation to goods’ where a third party affixes the sign constituting its company, trade or shop name to the goods that it markets (11/09/2007, C 17/06, Céline, EU:C:2007:497, § 21 -22).

In the present case, although the sign ‘ANOKI’ is used as a shop sign, the evidence also shows that the goods are identified and offered on the market under the earlier mark ‘ANOKI’, as can be seen from the press articles (in particular the review from the website ‘monnuage’), the pictures of some products and as attested by the different affidavits. Therefore, the earlier mark was used as a trade mark.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

In the present case, the earlier mark has been used as registered.

Use in relation to the registered goods

The earlier mark is registered for articles of jewellery in Class 14; leather and imitation

of leather; bags in Class 18 and scarves in Class 25.

According to Article 64(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

In the present case, the evidence shows genuine use of the trade mark for articles of jewellery (rings, necklaces, bracelets, earrings), bags in Class 18 and scarves in Class 25. There is no evidence of use for leather and imitation of leather which are raw materials targeted at professionals.

Therefore, the Cancellation Division will only consider the following goods in its further examination of the application:

Class 14: Articles of jewellery.

Class 18: Bags.

Class 25: Scarves.

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.

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 and for which use has been proved are the following:

Class 14: Articles of jewellery.

Class 18: Bags.

Class 25: Scarves.

The contested goods are the following:

Class 9: Cases for smart phones or Notebook computers.

Class 14: Jewellery; Pendants; Key fobs; Chains.

Class 18: Change purses; Handbags; Bags; Luggage boxes; Toilet bags; Beach bags.

Class 25: Belts; Shoes; Headscarves; Scarves (clothes); Shawls; Clothes, in particular of leather and textiles and in particular for women and men.

Contested goods in Class 9

The contested cases for smart phones or Notebook computers are containers specially designed to hold and protect smart phones or notebook computers. These goods are similar to the applicant’s bags in Class 18 that cover different kinds of bags, such as travel bags. It is common for the consumer to not only use specialised cases for the contested goods, but to use interchangeably either specifically adapted or more general variants of bags. Therefore, these goods may be in competition and they can coincide in their manufacturers and distribution channels. Furthermore, they target the same public.

Contested goods in Class 14

Jewellery is identically contained in both lists of goods.

The contested pendants; chains are included in the broad category of the applicant’s articles of jewellery. Therefore, they are identical.

The contested key fobs are similar to a low degree to the applicant’s articles of jewellery. All these items are decorative, and so they can have the same purpose, they target the same public and coincide in their manufacturers and distribution channels.

Contested goods in Class 18

Bags are identically contained in both lists of goods.

The contested handbags; toilet bags; beach bags; change purses are included in the broad category of the applicant’s bags. Therefore, they are identical.

The contested luggage boxes are at least similar to the applicant’s bags. These goods have the same purpose, distribution channels and they target the same public.

Contested goods in Class 25

Scarves (clothes) are identically contained in both lists of goods.

The contested headscarves are included in the applicant’s scarves. Therefore, they are identical.

The contested clothes, in particular of leather and textiles and in particular for women and men include, as a broader category the applicant’s scarves. The term ‘in particular’ indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. 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 shawls are highly similar to the applicant’s scarves since they have the same natures, purposes, methods of use, manufacturers, distribution channels and they are in competition.

The contested belts are highly similar to the applicant’s scarves. These goods have the same natures (articles of clothing and accessories), manufacturers, distribution channels and they target the same public.

The contested shoes are similar to the applicant’s scarves. Both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and can coincide in their manufacturers.

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 varying degrees are directed at the public at large whose degree of attention is average.

3. The signs

ANOKI	Anokhi
Earlier trade mark	Contested trade mark

The relevant territory is France.

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 signs are word marks. Therefore, it is irrelevant whether they are written in upper case letters or in title case.

Both signs consist in a meaningless verbal element which is distinctive to an average degree in relation to the relevant goods.

Visually, the signs coincide in the letters ‘A-N-O-K-*-I’ placed in the same order. They have in common five letters out of six and are almost the same length. They only differ in the penultimate additional letter ‘H’ of the contested sign. Therefore, the signs are visually highly similar.

Aurally, the signs are identical since the additional letter ‘H’ of the contested sign is silent.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

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.

5. Global assessment, other arguments and conclusion

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).

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).

The goods are partly identical and partly similar to varying degrees. The degree of attention of the public is average.

The earlier mark is inherently distinctive to an average degree.

The signs are visually highly similar and aurally identical and the conceptual comparison does not influence the comparison of the signs. The additional letter ‘H’ of the contested sign is clearly insufficient to differentiate the signs.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the application is well founded on the basis of the applicant’s French trade mark registration No 3 212 257. It follows that the contested trade mark must be declared invalid for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) 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

Jessica LEWIS

Frédérique SULPICE

Lucinda CARNEY

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.