CANCELLATION No C 12 907 (INVALIDITY) 

 

Lucart S.p.A., Via Ciarpi, 77, 55016 Porcari (Lucca), Italy (applicant), represented by Avvocati Associati Feltrinelli & Brogi, Piazza dei Martiri, 1, 40121 Bologna (BO), Italy (professional representative)

a g a i n s t

Dia Retail España, S.A., C/ Jacinto Benavente 2 A - Parque Empresarial las Rozas Ed. TRIPARK, 28232 Las Rozas - Madrid, Spain (EUTM proprietor), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative).

On 29/06/2021, the Cancellation Division takes the following

DECISION

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

2.

European Union trade mark No 12 152 203 is declared invalid for some of the contested goods, namely: Class 3: Cosmetics, tissues impregnated with cosmetic lotions; cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes. Class 5:  Sanitary articles, included in this class, including breast-nursing pads. Class 16: Paper, cardboard and goods made from these materials, not included in other classes; stationery; adhesives for stationery or household purposes; plastic materials for packaging (not included in other classes).

3.

The European Union trade mark remains registered for all the remaining goods, namely:   Class 3: Soaps; perfumery, essential oils, hair lotions; essences; teeth cleaning preparations, preparations for dental hygiene, not for medical purposes.   Class 5: Dietetic substances adapted for medical use; food for babies; pharmaceutical preparations and other preparations for medical purposes, included in this class; dietetic substances adapted for medical use; food for young children; sticking plasters for medical use; dressings (medical); disinfectants for hygiene purposes; babies' napkins of paper and cellulose (disposable).   Class 10: Dummies (teats) for babies, chains for dummies, teats, soothing or teething rings, feeding bottles, cleaning preparations for dummies (teats) and preparations for cleaning feeding bottles, bath thermometers, included in this class. Class 16: Printed matter; bookbinding material; photographs; artists' materials; office requisites (except furniture); instructional and teaching material (except apparatus); paint brushes; typewriters; printers' type; printing blocks.

4.	Each party bears its own costs.

REASONS

On 06/05/2016, the applicant filed a request for a declaration of invalidity against European Union trade mark No 12 152 203 BABYSMILE (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the goods in Classes 3, 5 and 16. The application is based on European Union Trade Mark registration No 404 285 ‘SMILE’ (word mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant explains that it is a well-known Italian company engaged in the field of production and sale of goods made of paper and owns earlier EUTM SMILE, which it has widely and intensively used in the European Union to distinguish a variety of tissue products, hygienic and cleansing goods as the submitted examples of sales and advertising of goods show (Enclosures 3-9).

The earlier mark is inherently distinctive. Considering that the earlier mark has been used for at least 20 years and has no connection with the goods for which it is used, according to the applicant its distinctiveness is enhanced.

The applicant submits that there is a likelihood of confusion. The goods are identical (Class 16) or very similar (Classes 3 and 5) and the signs are visually as well as aurally almost identical and conceptually similar inasmuch as they refer to the distinctive concept of SMILE which will be immediately understood even in Spain and Italy where the applicant has its factories.

Despite the fact that a mark is generally perceived as a whole, when perceiving a word sign the consumer will break it down into elements which suggest a specific meaning or which resemble words known to him as the words ‘baby’ and ‘smile’ in the contested sign. The word ‘smile’ clearly is the distinctive and dominant part of the sign and identical to the earlier sign whereas the element ’baby’ of the contested sign only has a secondary, descriptive and ancillary function. The applicant refers to EUTMs No 12 152 153 , No 12 152 252 JUNIORSMILE (word) and No 12 152 229 which are also registered in the name of the EUTM proprietor and which all share the common denominator ‘smile’ combined with the descriptive elements ‘baby’ and ‘junior’. The latter are useful only to indicate that the goods concerned are directed at babies and infants.

Finally, the applicant refers to a number of decisions from first instance up to the Court of Justice in which a likelihood of confusion was found between earlier marks that had been fully included in the younger marks which consumers would split accordingly into various elements.

In support of its observations, the applicant submits the following documents:

Enclosure 1: Extract from the online register of the EUIPO concerning the earlier EUTM No 404 285 SMILE.

Enclosure 2: Extract from the website www.diacorporate.com/en/business/private-label of the EUTM proprietor.

The applicant submits further documents as Enclosures 3-9 which concern the use of the earlier sign and will therefore be listed in the section ‘Proof of Use’ of this decision.

In reply, the EUTM proprietor requested proof of use of earlier EUTM No 404 285 ‘SMILE’ and a translation into English of the evidence to be submitted.

The applicant submits that the earlier mark ‘SMILE’ has been widely and intensively used on the European market for distinguishing tissue products as toilet paper, napkins, kitchen paper, handkerchiefs of paper, paper rolls, towels of paper, hand-towels of paper, paper tablecloths, tissues for removing make-up, etc.. It refers to the evidence already provided with the application for declaration of invalidity and submits around 400 additional invoices (Enclosures 11-418). According to the applicant these invoices only represent a part of the total and countless invoices it issued from 2008 to 2016 concerning the earlier mark SMILE. For ease of reference and although the invoices should be self-explaining, the applicant also submits translations of the relevant information in one invoice per year.

The mark SMILE appears directly on all invoices in the product description. The invoices show use in various member states from September 2008 to May 2016 and concern toilet paper, napkins of paper, kitchen paper and kitchen towels, handkerchiefs of paper, tissues of paper, paper rolls and multipurpose rolls, paper tablecloths and table-covers of paper. The applicant explains how the abbreviations that appear in the product description such as ‘FAZ’, ‘KR’ or ‘BOB’ are abbreviations of the products in Italian (‘fazzoletti’ meaning handkerchiefs, ‘bobina’ meaning paper/multipurpose roll) or English (‘kitchen roll’) and how the first three digits of each product code reveal the goods it concerns. The product codes can also be cross-referenced with those indicated in the brochure filed as Enclosure 3.

According to the applicant, the invoices already show important sales of the applicant’s products SMILE on the European market in the relevant time period. Nevertheless, the applicant also provides total turnover and sales volume figures achieved with the sale of SMILE products in the European Union in the years 2008-2016 which are confirmed in the attached affidavits (Enclosures 419 to 422) which also include further sales data, product pictures, catalogues and price lists. Apart from the proof of use (Enclosures 11-430) that will be listed together with Enclosures 3-9 in the section ‘Proof of Use’ of this decision, the applicant submits an updated extract from the online register of the EUIPO concerning the earlier EUTM No 404 285 SMILE that shows its renewal until 14/11/2026 (Enclosure 431).

The EUTM proprietor argues that the submitted evidence does not prove genuine use of the earlier mark as registered, but only in a different form that substantially alters its distinctive character. The SMILE mark is in many instances accompanied by the term LUCART (on the goods) or the abbreviated form LUC. (in the invoices). In the second of the relevant time periods for evidencing use, this combination becomes a regular feature.

Even if this was considered to be use of the earlier mark as registered, the submitted evidence only concerns use in relation to part of the goods that could be encompassed by paper, cardboard and goods made from these materials, not included in other classes in Class 16, namely toilet paper, napkins of paper, kitchen paper, kitchen towel, handkerchiefs of paper, tissues of paper, paper roll, multipurpose roll and paper tablecloths and table-cover of paper.

The proprietor submits that there is no likelihood of confusion. In the present case, the visual and aural differences between the signs which particularly arise from their different length and beginnings, are manifestly sufficient to allow consumers to safely distinguish the signs. As regards the conceptual aspects, the proprietor highlights that the terms SMILE and BABY have only limited distinctiveness and scope of protection. Therefore, the distinctiveness of the contested sign stems from the combination of these elements, giving rise to a different overall impression than that of the earlier sign, bearing also in mind that consumers usually perceive a mark as a whole and do not proceed to analyse its various details.

Apart from paper, cardboard and goods made from these materials, not included in other classes in Class 16, the contested goods are different or only similar to a low degree to the goods for which use might at best be proven, if any.

According to the proprietor, the word mark SMILE only has a very limited degree of inherent distinctive character because it is evocative in relation to any goods and services for being associated with positive concepts such as joy, happiness, positivity or pleasures and because there are numerous marks containing the word SMILE and covering goods in Class 16, currently coexisting on the EUTM register and in the marketplace. Therefore and also bearing in mind that the earlier mark is a short mark and, as such, destined to coexist with other trade marks that only differ in minimal differences, its scope of protection should be very narrow, only barring later marks from registration that convey an identical or almost identical visual impression in relation to identical goods or services. In this regard reference is made to opposition decision no. B 2 096 751 TOTAL / TOTAL BITE (fig.).

After a suspension of the proceedings from May 2017 to February 2020 due to a pending revocation action against the earlier mark, the proprietor submits further observations reiterating its previous arguments. As regards the alleged coexistence of other SMILE marks, it adds internet screenshots aimed at showing use of eight of the EUTMs mentioned previously for household goods such as aluminium foil or food packaging and containers.

The applicant responds that the coexistence on the register is irrelevant and that the short list of trade marks SMILE only refers to marks registered for different goods, e.g. EUTM No 5 908 173 SMILE REPAIR is not registered for goods for household and personal hygiene purposes and is also not used for such tissue goods. As proof the applicant includes a screenshot of that website in its observations and indicates the goods and services for which the remaining marks are registered. The only trade mark cited by the EUTM proprietor which is registered for goods which can be similar to those protected by the earlier mark is EUTM No 3 913 241 SMILE of the company AS Prime Partner. However, it is used for wrapping and packaging for food (such as wrap, aluminium foil, ice cube bags) as shown in the screenshots included in the applicant’s observations.

As regards the inherent distinctive character of the earlier mark, the applicant contends that because of its meaning and the positive feelings which it evokes, the sign SMILE is unusual for tissue products or for goods for hygiene and personal-care or goods for house hold purposes. This lack of relation with the registered goods confers a stronger distinctive character to the earlier mark because it does not have any descriptive or allusive element that consumers could relate to the relevant goods. Accordingly, and also confirmed by its intense and heavy use on the market, the trade mark SMILE is fully distinctive. In any event, a low distinctive character of the earlier mark does not necessarily prevent a finding of a likelihood of confusion. In this regard, the applicant refers to several judgments of the Court (13/06/2012, T-277/2012, ‘iHotel’; 15/10/2015, T-642/13, ‘she’).

Contrary to what the proprietor submits, the applicant contents that the earlier mark SMILE is not a short mark, as the Office only considers signs composed of three or fewer letters or numbers to be short signs.

In support of its arguments the applicant submits the decisions of the Cancellation division (03/10/2018, C 14 768, ‘SMILE’ – Enclosure 433) and the Board of Appeal (16/10/2019, R 2359/2018-2- Enclosure 434) in the revocation case against the earlier mark as well as printouts from the website www.dia.es showing products for babies, offered for sale under the proprietor‘s figurative sign BABYSMILE (Enclosure 435) and the EUTM proprietor’s figurative mark JUNIORSMILE (Enclosure 436).

In its reply, the EUTM proprietor insists that SMILE is laudatory and weakly distinctive in relation to any goods and services. The register reveals an even higher number of other SMILE marks when the search is not limited to Class 16, but also related to goods in Classes 3 and 5. It includes a list of such registered trade marks in its observations and again refers to the use of the same eight EUTMs set out in its previous submission.

As regards the earlier cases quoted by the applicant in support of its case, the EUTM proprietor submits that only opposition decision of 10/10/2013 in case B 2 111 394 could be considered relevant as it involves two marks that shared the common element SMILE. However, unlike in the present case, in that case the goods were identical or highly similar, the two marks involved were word marks and SMILE was included as a separate term. Considering that this decision dates from eight years ago and did not even enter into any analysis of the meaning of the marks under comparison, the EUIPO could now adopt a different approach in light of the widespread awareness of the term SMILE among EU consumer and the current circumstances in the marketplace with a number of coexisting marks that contain SMILE in respect of Classes 3, 5 and 16.

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.

 

The request has been filed in due time and is admissible given that the earlier trade mark was registered on 22/01/1999, that is, more than five years prior to the date of the application for a declaration of invalidity (06/05/2016).

The application for a declaration of invalidity was filed on 06/05/2016. The date of filing of the contested mark is 18/09/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 06/05/2011 until 05/05/2016 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 18/09/2008 to 17/09/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based. After partial revocation of the earlier trade mark (03/10/2018, 14 768 C; 16/10/2019, R 2359/2018), these are the following goods:

Class 16: Goods made from paper for household and personal hygiene purposes.

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 19/08/2016, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 19/11/2016 to submit evidence of use of the earlier trade mark. On 15/11/2016, the deadline was extended until 19/01/2017 upon request of the applicant.

Together with the application for declaration of invalidity and on 16/01/2017, within the time limit, the applicant submitted evidence of use.

As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

 Enclosure 3: Undated catalogue in Italian and English downloaded from the applicant’s website showing use of the sign in relation to toilet paper, kitchen towels of paper, multipurpose paper roll, handkerchiefs, napkins and paper table cover rolls.

 Enclosures 4 A-9 H: Invoices dating from the years 2011 to 2016 and issued in Italian by the applicant to companies in different member states such as Italy, the Czech Republic, Malta, Romania, Greece, Slovakia, France, Bulgaria or Poland. The invoices concern goods that are referred to as SMILE and LUC. or LUCART with additional indications about the products like size or an acronym which, as explained by the applicant, indicates the type of product concerned. With the exception of eight article codes, all other article codes can be cross-referenced the submitted catalogue where they are used for handkerchiefs, toilet paper, kitchen towels, multipurpose rolls, napkins and table covers. According to the explanations provided by the applicant in relation to its article code system, these additional eight references refer to the same goods, namely toilet paper (811A80, 811A52, 811758), kitchen towels (821471), napkins (831112), tissues of paper (841035) and handkerchiefs (842127, 842128).

 Enclosures 11-418: Over six hundred pages of invoices issued by the applicant, regularly spread throughout the years 09/12/2008-22/04/2016 and addressed to clients in several European Union member states such as Bulgaria, Cyprus, the Czech Republic, France, Germany, Greece, Hungary, Italy, Latvia, Malta, Poland, Romania, Slovakia and Slovenia. The invoices concern mainly products referred to as SMILE with additional indications about the products. The goods sold were napkins (‘TOV’), kitchen paper/towel/roll (‘ASC’ or ‘KR’), toilet paper (‘C.I.’ or ‘TP’), handkerchiefs (‘FAZ’ or ‘HK’), tissues of paper (‘VELINA’ or ‘2PLY FACIAL’), multipurpose rolls (‘BOB’) and tablecloths/table-covers (‘TOV.ROT.’). For ease of reference, the applicant also includes English translation of the relevant data of invoice No. V8070082 of 09/12/2008 (Enclosure 11bis), invoice No. V8061602 of 20/02/2009 (Enclosure 16bis), invoice No. VD020001 of 04/01/2010 (Enclosure 55bis), invoice No. VD020003 of 03/01/2011 (Enclosure 106bis); invoice No. 01/12000021 of 02/01/2012 (Enclosure 154bis), invoice No. 01/13000042 of 02/01/2013 (Enclosure 197bis), invoice No. 01/14000099 of 02/01/2014 (Enclosure 235bis), invoice No. 01/15000076 of 02/01/2015 (Enclosure 287bis) and invoice No. 01/16000036 of 04/01/2016 (Enclosure 363bis).

 Enclosures 419: Affidavit issued on 16/12/2016 by the Sales & Marketing Consumer Director of the applicant confirming use of the mark SMILE between 2008-2016 for goods made of paper, particularly a variety of tissue products, in Italy and other European Union member states such as Greece, the Czech Republic, Malta, Romania, France, Cyprus, Bulgaria, Poland, Slovenia, Hungary, Slovakia, Estonia, Latvia, Spain, Germany and Austria. In particular, the affidavit provides seven-digit turnover figures for the years 2009-2016 relating to use of the trade mark SMILE in the European Union (including a break-down by member state).

 Enclosure 420: Affidavit issued on 19/12/2016 by the Chairman of the Board of Directors of the applicant confirming use of the mark SMILE between 2008-2016 for goods made of paper, particularly a variety of tissue products, in Italy and other European Union member states such as those listed above (Enclosure 419). He provides sales volume information for various member states broken down by product for the years 2011-2016 and turnover figures for the time periods between September 2008 and 31/12/2010 and between 01/01/2011 and November 2016 broken down by products (handkerchiefs, tissues of paper, toilet paper, kitchen roll/paper/towel, napkins, multipurpose rolls, tablecloths/table-covers) and member states (in particular, Italy, Greece, Malta, the Czech Republic, Cyprus, France, Romania, Bulgaria, Slovenia, Latvia, Hungary, Poland, Slovakia, Austria, Germany, Estonia). The total figures per member states of the latter match the figures broken down by member states for the same years in the affidavit of the Sales & Marketing Consumer Director (Enclosure 419), at least as far as Bulgaria, Hungary, the Czech Republic, Italy, France, Greece and Cyprus are concerned. Orders issued by the applicant to packaging suppliers (2008-2016), examples of emails with price lists sent to clients in various member states in 2011, 2012 and 2014 as well as pictures of the products (as allegedly sold from 18/09/2008-14/11/2016) are also attached to the affidavit.

 Enclosure 421:Affidavit of an employee of the company Tipografia Tommasi di Tommasi M. & C. responsible for printing the applicant’s catalogue SMILE in the years 2009 and 2012.The catalogues and respective invoices as well as delivery notes are attached as Enclosures B-E, H and I.

 Enclosure 422: Affidavit of an employee of the company Tipografia Francsconi snc, responsible for printing the brochure of the applicant’s products – consumer division (including the products SMILE) in 2014. The brochure for the Lucart group which displays the sign on the cover page and not only includes SMILE products, but also products of the applicant marketed under different product brands such as ‘Grazie Natural’ or ‘Tutto’ are attached together with the respective invoice and delivery note (Enclosures B-D).

 Enclosure 423: Affidavit dated 06/12/2016 and issued by an employee of the communication agency Lindbergh s.r.l. who was entrusted with the ideation and design of the applicant’s SMILE logo (Enclosure B) and packaging such as (Enclosure C-F).

 Enclosure 424: Affidavit dated 14/11/2016 and issued by the CEO of the web agency Mediaus that administers the applicant’s websites, confirming continuous use of the trade mark SMILE on the applicant’s website www.lucartgroup.com since 2009 (Enclosure B).

 Enclosure 425-428: Several affidavits dating from November 2016 and issued by various laboratory technicians of the applicant that performed chemical tests and laboratory analysis on SMILE products. The affidavits are accompanied by various documents concerning such tests for toilet paper, kitchen towel, napkins, handkerchiefs and (multipurpose) paper rolls as performed between 2010 and 2016.

 Enclosure 429: Over 45 orders issued by the applicant to packaging suppliers in the years 2008-2016, including those already filed as Enclosures D to L to Enclosure 420.

 Enclosure 430: Extract from the applicant’s website at www.lucargroup.com as archived on 05/02/2010 on the internet archive “WayBackMachine” at https://web.archive.org showing the sign SMILE on packages of toilet paper, kitchen paper/towels, handkerchiefs and napkins as well as on the front page of a catalogue (apparently the same as Enclosure 3) as follows:

Analysis of the factors

Time, place and extent of use

Most of the evidence of use, such as the submitted turnover and sales volume figures, catalogues, brochures and invoices, is dated within the two relevant periods. In particular, the invoices show that the mark SMILE is used in Italy and many other member states such as Bulgaria, Cyprus, the Czech Republic, France, Germany, Greece, Hungary, Italy, Latvia, Malta, Poland, Romania, Slovakia and Slovenia. This can be inferred from the languages of the documents (Italian, English), the currency mentioned (EURO) and some addresses in the aforementioned member states. In particular the affidavits filed as Enclosures 419 and 420 confirm significant (and coinciding) turnover within the EU in the relevant time period and are supported in this regard by a very high number of invoices which are regularly spread throughout the two whole relevant time periods and addressed at customers in many different member states. The evidence shows that use of the mark in the EU has been very intense, continuous and regular as well as geographically widespread throughout both time periods. Overall, the submitted documents therefore provide sufficient information concerning commercial volume, length of period and frequency of use. Therefore, the applicant has provided sufficient indications regarding time, place and extent of use.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in accordance with its function, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Use as a trade mark

It is obvious from the submitted evidence (affidavits, catalogues, product pictures and invoices) that the mark SMILE has been used as a trade mark. This has not been contested by the EUTM proprietor either.

Use of the mark as registered

According to the EUTM proprietor the use of sign as shown in the submitted documents, i.e. accompanied by the term ‘LUCART’ or the abbreviated form ‘LUC.’ alters the distinctive character of the earlier mark and should therefore not be considered use of the mark as registered.

Pursuant to Article 18(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 64(2) and (3) EUTMR, Article 18 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned. 

In the present case, the documents show that the mark is used as follows on the goods:

Clearly the verbal element SMILE which constitutes the earlier word mark is the most striking element. The lowercase lettering and the particular font and colour used are irrelevant because as a word mark the earlier mark is protected irrespective of its specific representation. The graphical representation against a blue logo background is also not stylised enough to alter the distinctive character of the word mark SMILE.

As regards the element LUCART which is distinctive and according to the EUTM proprietor does alter the distinctive character of the mark, it is noted that according to settled case-law several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34).

It is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

There is no legal precept in the European Union trade mark system that obliges the applicant to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 64 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are being used jointly but autonomously (07/08/2014, R 1880/2013-1, HEALTHPRESSO / PRESSO, § 42).

This is clearly the case here, where the element LUCART is represented independently below the earlier mark in much smaller size and in a clearly different typeface that corresponds to the company logo at that time as can be seen from the attached catalogues and brochures:

in 2009 and 2012 (Enclosure 421 and Enclosures H and I thereto)

in 2014 (Enclosure 422 and Enclosure D thereto).

The sign as used will therefore be perceived as juxtaposition of the applicant’s company logo with the product brand SMILE.

This also applies to the use of the sign SMILE as shown in the invoices where it is followed by the abbreviation LUC.. This clearly stands for LUCART and will be perceived as reference to the applicant’s company or its house brand which is used juxtaposed to, but independent from, the trade mark SMILE, the latter being used as registered. This perception is also reinforced by the fact that the applicant also uses “LUC.” in addition to other of its product brands such as “Grazie Natural” in the invoices (e.g. for toilet paper: “C.I. GRAZIE LUC.”).

Therefore, contrary to the arguments of the EUTM proprietor, the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

Use for the registered goods

Following a final decision in revocation proceedings C 14 768 (03/10/2018, C 14 768; 16/10/2019, R 2359/2018), the earlier mark was revoked except for goods made from paper for household and personal hygiene purposes.

It is established case-law that “[a]lthough the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (14/07/2005, T‑126/03, Aladin, EU:T:2005:288).

As the EUTM proprietor also acknowledges, the evidence refers to toilet paper, napkins of paper, kitchen paper, kitchen towel, handkerchiefs of paper, tissues of paper, paper roll, multipurpose roll and paper tablecloths and table-cover of paper. Such use covers a broad spectrum of goods made from paper for household and personal hygiene purposes. In light of the above-mentioned jurisprudence, the use shown is thus sufficiently diverse to establish genuine use for this broad category as a whole.

Overall assessment

Taking into account the evidence in its entirety, the Cancellation Division finds that genuine use of the earlier trade mark for the registered goods in the course of trade in the European Union and in both relevant time periods has clearly been established.

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 16: Goods made from paper for household and personal hygiene purposes.

The contested goods are the following:

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; essences, tissues impregnated with cosmetic lotions; cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes; teeth cleaning preparations, preparations for dental hygiene, not for medical purposes.

Class 5: Dietetic substances adapted for medical use; food for babies; pharmaceutical preparations and other preparations for medical purposes, included in this class; sanitary articles, included in this class, including breast-nursing pads; dietetic substances adapted for medical use; food for young children; sticking plasters for medical use; dressings (medical); disinfectants for hygiene purposes; babies' napkins of paper and cellulose (disposable).

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the EUTM proprietor’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’ see reference in 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, according to Article 33(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 3

The EUTM proprietor argues that the contested tissues impregnated with cosmetic lotions are only lowly similar to the applicant’s goods made from paper for household and personal hygiene purposes. The latter are disposable paper goods used in the home and for personal hygiene, such as toilet or kitchen paper, napkins, coffee filters, paper pads for changing diapers, etc. In particular, they also include paper tissues for cosmetic use, such as for removing make-up. As the contested goods can be made of cellulose, these goods can be of at least a similar nature and the method of use is the same. These goods serve the same purpose of cleansing the face. Accordingly, they can be in competition and are offered for sale to the same customers through the same distribution channels. Therefore, the Cancellation Division considers that these conflicting goods are at least similar.

The contested cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes are of different nature and do not necessarily coincide in the method of use with the paper tissues for cosmetic use as covered by the applicant’s goods. However, these goods are directed at the same customers, serve the same cosmetic purpose and can be interchangeable. They may also be found in the same sections in drug stores or supermarkets. As they coincide in the relevant public, purpose and distribution channels and can also be in competition with one another, these goods are similar.

The contested cosmetics include inter alia cosmetic cleansers which are at least lowly similar to the applicant’s goods which, as mentioned above, include paper tissues for cosmetic purposes. Cosmetic cleansers and paper tissues for cosmetic purposes both serve to cleanse the face and may also be used in combination. Against this background the conflicting goods can coincide in their purpose and be marketed to the same consumer through the same distribution channels such as drug stores or supermarkets for instance where these goods will be displayed in adjacent shelves or in close proximity. This finding of low similarity is also in line with the decision of the Second Board of Appeal (22/12/2016, R 979/2016-2, COQUETTE COQUETTE (fig.) / KOKETT, § 24) to which the EUTM proprietor referred, amongst others, to support its position.

The remaining contested goods in Class 3, namely soaps; perfumery, essential oils, hair lotions; essences; teeth cleaning preparations; preparations for dental hygiene, not for medical purposes are too far removed from the applicant’s goods. They are of different nature, do not coincide in their method of use, manufacturers or distribution channels. They are neither complementary nor in competition with each other. These goods are therefore dissimilar. This finding is in line with the decision of the Fourth Board of Appeal (05/10/2015, R 366/2015-4, DODIE / DODOT ET AL., § 28) quoted by the applicant in support of its reasoning concerning the similarity of some other goods.

Contested goods in Class 5

The contested sanitary articles, included in this class, including breast-nursing pads also include disposable diaper changing mats for babies. These goods are at least similar in nature, coincide in their purpose, method of use and relevant public with paper pads for changing diapers which fall under the applicant’s goods made of paper for personal hygiene purposes. These specific goods which fall under the conflicting categories of goods may also be in competition. Therefore, and contrary to the arguments of the EUTM proprietor, sanitary articles, included in this class, including breast-nursing pads are at least similar to goods made of paper for household and personal hygiene purposes.

Diapers are exclusively classified in Class 5. The term napkins in Class 16 thus only covers table napkins but does not include babies’ napkins (diapers). Even though the contested disposable babies' nappies of paper and cellulose may fall under the vague category of goods made from paper and cellulose as the applicant submits, they are not identical to any goods in Class 16 and dissimilar to the applicant’s goods made from paper for household and hygiene purposes. While the latter may also include products aimed at babies, such as babies’ bibs of paper or paper pads for changing diapers, these paper goods are usually not manufactured by the same companies that manufacture diapers, even though they may occasionally give out such goods for free to promote their sales of diapers. However, this is not enough to find these goods even lowly similar. These goods at most coincide in the targeted public and the distribution channels. However, they serve a very specific different purpose. Diapers, on the one hand, serve to absorb the moisture of the excretions of babies or young children who cannot yet use a toilet, to keep them dry and protect their skin and clothing. Pads for changing diapers, on the other hand, serve as a clean surface to place the baby or child for the change of diapers and bibs serve to keep the baby’s clothes clean while eating. These goods are neither in competition nor complementary in the strict sense. Even a paper pad for changing diapers is not indispensable for the use of a diaper and can also serve as a surface used for purposes other than changing diapers, such as dressing the child, drying it after a bath, applying skin care, supplying medicine, etc. Contrary to the submission of the applicant, it is certainly not common, but rather unlikely that diapers and paper towels or tissues are used together. Baby skin is particularly sensitive which is why a mother would use baby wipes which are specifically tailored to the need of the skin of the baby, are very soft and usually impregnated with caring substances to prevent skin irritation as diapers need to be changed frequently. In any event, the mere fact that these goods could eventually be used in combination would not be sufficient to establish a relevant similarity between them.

The remaining contested goods in Class 5 are pharmaceutical and medical preparations, food for babies and children, dietetic substances, plasters, dressings and disinfectants. These goods serve medical and nutritional purposes and have nothing in common with the applicant’s goods of paper for household and personal hygiene purposes. These goods are different in nature. They do not coincide in their method of use, distribution channels or producers. They are neither in competition nor complementary. Consequently, these goods are considered dissimilar.

Contested goods in Class 16

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings v1.1 (20/02/2014), the term goods made from these materials [i.e. paper and cardboard], not included in other classes, as such, does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, but not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different distribution channels and therefore relate to different market sectors.

As set out in Article 33(2) EUTMR, an EUTM applicant must identify the goods and services for which trade mark protection is sought with sufficient clarity and precision.

Pursuant to Article 41(1)(b) and Article 41(2) EUTMR the Office examines whether a trade mark application complies with the set requirements and requests that the applicant remedies the application accordingly when these requirements are not met.

However, a registration containing an unclear or imprecise term does not comply with those legal conditions by the simple fact that the examiner did not object to the wording of the specification. It is the applicant’s final responsibility to comply with these requisites (01/06/2017, R 2103/2016-1, BAD ASS / BADASS et al., § 14-15; 09/07/2015, R 863/2011-G, Malta Cross International Foundation (fig.) / DEVICE OF A MALTESE CROSS (fig.), § 55).

In the present case, the classification of the contested mark cannot be reopened ex officio by the Office and it is thus only the EUTM proprietor of that mark who can clarify (by way of a partial surrender) exactly which goods are meant to be covered by the unclear and imprecise term goods made from these materials [i.e.paper and cardboard], not included in other classes.

Furthermore, as the lack of clarity and precision is not the result of an incorrect translation but the term itself is unclear and imprecise (first language: “artículos de estas materias [papel y cartón] no comprendidos en otras clases”) and does not enable the Office to clearly determine the exact scope of protection, it cannot be interpreted in a way favourable to the EUTM proprietor of the mark (11/11/2009, T-162/08, Green by missako, EU:T:2009:432, § 31; 06/02/2014, C-301/13 P, Club Gourmet, EU:C:2014:235, § 66).

Consequently, since a specification which lacks in clarity and precision cannot be interpreted in a way favourable to the EUTM proprietor if it has not clearly specified the goods meant to be covered and as the Office is prevented from reopening the classification of the mark, the unclear and imprecise term goods made from these materials [paper and cardboard], not included in other classes cannot be considered to exclude goods which could otherwise be covered by its natural and literal meaning, unless there is an explicit partial surrender to this effect.

As a result, under the circumstances of the present case and in the absence of an explicit partial surrender on the part of the EUTM proprietor to clarify the unclear and imprecise term, the contested goods made from paper, not included in other classes must be considered to encompass the applicant’s goods made from paper for household and personal hygiene purposes, which are disposable goods made of paper (for specific purposes) and could thus potentially be covered by the contested term. Therefore, since the Office cannot ex officio specify or restrict the contested goods they must be considered to be identical to the applicant’s goods.

For the same reasons, the contested goods made from cardboard, not included in other classes must be considered to include products such as table place setting mats, drip mats or coasters of cardboard. The applicant’s goods are disposable paper products used in the home and for personal hygiene which include, for instance, table place setting mats of paper. As such, these contested goods are at least highly similar to the applicant’s goods made from paper for household purposes to which they may only differ in the material as they can otherwise coincide in their nature as well as in their purpose, method of use, relevant customer, distribution channels and producers with paper table mats covered by the applicant’s goods. Such goods are also in competition with each other.

The contested paper overlaps with the applicant’s goods made from paper for household purposes to the extent that both categories include goods such as e.g. drawer liners of paper. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, paper and goods made from paper, not included in other classes are considered identical to the applicant’s goods.

Packaging products are articles in which goods are wrapped, stored, and transported. They are primarily designed and used for or used in connection with the transport, handling, protection, marketing or sale of goods. Disposable paper products, on the other hand, are products made from paper that are designed for a single use after which they are recycled or are disposed as solid waste. While their main characteristic is their disposable character, the applicant’s goods which serve household purposes can also include goods for packaging that are used in the household and are specifically designed for a single use and to be easily disposed after such use. Therefore, the contested plastic materials for packaging (not included in other classes) are highly similar to the applicant’s goods made from paper for household purposes to the extent that both categories cover goods that can serve the same purpose and be in competition, especially when it comes to recycled materials. These conflicting categories, for instance, cover bags for packaging that can be made of either biodegradable paper or biodegradable plastic and thus basically only differ in the material they are made of. These goods can also coincide in end users and distribution channels. The decision concerning opposition B 2 099 540 quoted by the EUTM proprietor to support the dissimilarity of plastic materials for packaging (not included in other classes) cannot alter this finding. In that decision plastic materials for packaging (not included in other classes) were only compared to goods that did not include any biodegradable paper products that serve packaging purposes as is the case of the applicant’s goods here.

Along a similar line of reasoning, the contested cardboard is at least lowly similar to the applicant’s goods as it may also serve for packaging and thus have the same purpose and be in competition with the applicant’s goods made from paper for household purposes. These goods may then also coincide in distribution channels and end users.

The contested adhesives for stationery or household purposes are different types of adhesives such as glue or adhesive tape that are used for stationery or in the home. These goods are lowly similar to the applicant’s goods made from paper for household purposes. As the latter include disposable paper products for packaging, they can coincide in end users and distribution channels. Furthermore, they can be complementary. For the same reasons, the contested stationery which particularly include adhesives for stationery purposes must also be considered lowly similar to the applicant’s goods.

The contested bookbinding material includes products used in the process of bookbinding, such as bookbinding paper or adhesives and glues for bookbinding. The contested printed matter includes products that are printed and usually have certain content such as posters, calendars or books. The contested office requisites (except furniture) are products needed for office work, such as punches, staplers or paper folding machines. Instructional and teaching material (except apparatus) include books, but also other goods used for educational purposes (except apparatus) such as note books or teacher’s planners. The contested artists' materials include goods used for making art, inter alia, papers for painting, pens and pencils. The contested photographs and paint brushes are artistic works produced by artists (photographers) mainly for nostalgic or decorative purposes and utensils used to produce pieces of art (paintings) or to colour objects. The contested typewriters; printers' type; printing blocks are writing-machines and utensils used for printing. The applicant’s goods made from paper for household and personal hygiene purposes, however, are disposable paper goods used in the home and for personal hygiene, such as toilet or kitchen paper, napkins, coffee filters, paper pads for changing diapers, etc.. They are dissimilar to all the remaining contested goods in Class 16 mentioned before, none of which has any relevant point of contact with the applicant’s goods. All these remaining contested goods are neither in competition with nor complementary to the applicant’s goods. They are usually manufactured by different companies or professionals and, at least partly, also marketed through different distributions channels to a different public. With the exception of adhesives for household purposes, none of these contested goods serve hygienic or household purposes. Even adhesives for household purposes are used to fix, repair or decorate things in the home and thus have a specific purpose that is still different to that of the disposable paper goods for household purposes of the applicant which are mainly used for cleaning, cooking or setting the table. The mere fact that they share a broader purpose is therefore not sufficient to create any relevant similarity between these goods.

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 various degrees) are directed in part at the public at large and in part (also) to a professional public (e.g. sanitary articles).

The public’s degree of attentiveness may vary from average to high, depending on the frequency of purchase, the price, specialised nature, or terms and conditions of the goods purchased.

c) The signs

SMILE	BABYSMILE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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). 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.  

The conflicting signs contain or consist of the common element SMILE and, in case of the contested sign, also the additional element BABY. ‘Baby’ refers to ‘a very young child, esp. one not yet able to walk and dependent on the care of others; an infant’ (www.oed.com/view/Entry/14250?rskey=w1P8vG&result=1&isAdvanced=false#eid, accessed on 04/06/2021) and ‘smile’ describes ‘an act of smiling; a slight and more or less involuntary movement of the countenance expressive of pleasure, amusement, affection, etc., or of amused contempt, disdain, incredulity, or similar emotion.’ (www.oed.com/view/Entry/182595?rskey=8FP0K9&result=1&isAdvanced=false#eid, accessed on 04/06/2021).

As already established by the Court, the words ‘smile’ and ‘baby’ are basic English words (05/07/2012, T-466/09, Mc. Baby, EU:T:2012:346, § 40; 25/09/2014; t-484/12; SMILECARD, EU:T:2014:810; § 22). As regards the term ‘baby’, the Court has explicitly confirmed that it may therefore be understood by a relevant part of the public throughout the whole European Union. This may also apply to ‘smile’. In any event, the English-speaking public will certainly understand the meaning of both words. The Cancellation Division therefore finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

As submitted by the EUTM proprietor, the common element SMILE is associated with a state of joy, happiness, positivity or pleasure. To the extent that it may allude to the relevant goods being of such kind or quality that the consumers will be pleased or happy, it is thus laudatory and its distinctive character is accordingly below average.

The word BABY in the contested sign refers to ‘a very young child, especially one not yet able to walk and dependent on the care of others; an infant’ or to ‘a comparatively small thing of its kind’ (www.oed.com/view/Entry/14250?rskey=MsMfNT&result=1&isAdvanced=false#eid, accessed on 04/06/2021). In relation to the relevant goods that can either be tailored to babies or be of comparatively small size, the element BABY on its own is descriptive and thus non-distinctive. In combination with SMILE it acts as a qualifier. The verbal element BABYSMILE as a whole will thus be perceived as referring to the smile of a baby or a comparatively small smile. Either way, it is laudatory to the extent that a ‘smile’ in general (and likewise a baby smile) evokes positive connotations as set out above.

Visually, the signs coincide in the verbal element ‘SMILE’ that makes up the earlier mark. However, they differ in the element ‘BABY‘ at the beginning of the contested sign which has no counterpart in the earlier sign.

In word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30). However, this is not a fixed rule and the outcome depends on the circumstances of the case.

In the present case it does not apply because BABY on its own is non-distinctive and as a qualifier will anyway be perceived as subordinated to SMILE. As both words are meaningful and when combined in English remain separate words (‘a baby smile’), the relevant public will still recognize the earlier mark SMILE as a separate and more distinctive element in the contested sign.

Against this background, even though the differences between the signs mainly arise from their different beginnings and the common element is slightly weak, the signs are visually still at least similar to an average degree.

Aurally, the pronunciation of the signs coincides in the in the sound of the letters ‛S-M-I-L-E’, present identically in both signs. The pronunciation differs in the sound of the first letters ‛B-A-B-Y’ of the contested mark, which have no counterparts in the earlier sign.

As the earlier mark is fully included in the contested sign, the signs are aurally at least similar to an average degree.

Conceptually, reference is made to the above findings on the meaning of the elements of the conflicting signs. The signs are conceptually similar to the extent that they both evoke the concept of a smile. In the contested sign, the element BABY specifies the concept to the smile of a young child or an infant or to a comparatively small smile. Although the contested sign therefore evokes a narrower concept than the earlier sign, there is still an overlap in that both signs evoke the concept of a smile which may in both cases be the smile of young child or infant. Therefore, the similarities prevail against the limited impact of the conceptual variation introduced by the element BABY in the contested mark which on its own is non-distinctive for the relevant goods.

Conceptually, the signs are thus at least similar to an average degree.

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.

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 does not have to 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 direct meaning for any of the goods, but is, to a certain extent, laudatory from the perspective of the English-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark is slightly below average.

The argument of the applicant, that the inherent distinctiveness of the earlier mark is enhanced because it does not have any descriptive or allusive element that consumers could relate to the relevant goods, must be dismissed. It is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. In particular, a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

In its observations, the EUTM proprietor argues that the earlier trade mark has a weak distinctive character since many trade marks include the element ‘SMILE’. In support of its argument the EUTM proprietor refers to several European Union trade mark registrations and submits some screenshots to show use of eight of such marks on the market.

As the applicant contends, the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation on 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.

The few examples of use of such marks are not particularly conclusive, in particular, as regards the extent to which consumers have actually been exposed to such signs. They also concern different signs such as “DirectSmile”, “Combismile”, , , SMILE REPAIR in relation to different products (e.g. aluminium foil, baking cups, baking paper, cling film, software, an art blog, photo albums, sales support goods/services or banking services).

While for the maintenance of an EUTM it is sufficient that it has been used in a substantial part of the EU, the argument of low distinctiveness due to the existence of other marks is based on the fact that use of many signs consisting of or including a certain element, here the word SMILE, may affect the perception of the consumer who will then tend to rely and focus on other elements to identify the commercial origin of the goods and services at issue and therefore give less weight to the commonly used element.

For a low distinctive character of the earlier mark to be presumed, the EUTM proprietor would have had to show that the same public has been confronted with a high number of trade marks consisting of or containing the element ‘SMILE’ in relation to the relevant goods and has thus become so accustomed to such marks, that it will only perceive the earlier mark as having minimal distinctive character for these goods. However, part of the examples do only relate to UK (www.co-operativebank.co.uk) and Argentina (https://trascopier.com.ar/) which do not belong to the European Union or are at least not clearly tailored to a UK public (http://combismile.com/). The remaining examples only show isolated use of four different marks in some, but never the same member states, namely Spain, Germany, Ireland or, according to the proprietor, Sweden, Latvia, Estonia, Lithuania, Ireland and Denmark.

Consequently, the evidence does not demonstrate that the same relevant public has been exposed to widespread use of, and have become accustomed to, trade marks which include or consist of the element ‘SMILE’. Under these circumstances, the EUTM proprietor’s claims must be set aside.

e) 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 (risk of association).

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). 

From a visual, aural and conceptual perspective, the signs are at least similar to an average degree. The goods have been found partly identical, partly similar to various degrees and partly dissimilar.

Despite the fact that the signs differ in their beginnings, there is a likelihood of confusion even in relation to the goods that have been found (at least) lowly similar (cosmetics; cardboard; stationery; adhesives for stationery or household purposes). In English ‘baby smile’ consists of two separate and meaningful words. In the absence of any clear conceptual differences between the signs, it cannot be excluded that the relevant English-speaking consumer will therefore still perceive the earlier mark as an independent and more distinctive element within the contested mark. This is true for both, the general and specialised public even when they display a higher degree of attention.

Bearing in mind that the element BABY is perceived as a qualifier of the common element SMILE with the above mentioned meanings, the relevant public is likely to assume that the contested EUTM is a mere variation of the earlier mark designating a specific product line for young children or infants or with products of comparatively small size.

The distinctive character of the earlier mark is slightly below average. According to the Common Practice CP 5 concerning the impact of non-distinctive or weak components on the assessment of likelihood of confusion (https://www.tmdn.org/network/documents/10181/897c811d-65ca-4779-b91d-636c71de2ec9), when the marks share an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks, as previously assessed in the comparison of signs. That assessment takes into account the similarities/differences and distinctiveness of the non-coinciding components.

A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar. There may also be likelihood of confusion if the overall impression of the marks is highly similar or identical.

In the present case, there is likelihood of confusion despite the lower distinctiveness of the common element SMILE because the additional element ‘BABY’ on its own is non-distinctive for the relevant goods and also secondary in the contested mark where it is subordinated to the common element SMILE. The common element in this case is therefore still more distinctive than the differing element and constitutes the entire earlier mark. Given that both marks also evoke an overlapping and thus similar concept of a (specific) smile, a likelihood of confusion cannot be excluded even in relation to at least similar goods and taking into account the professional public with a higher degree of attention.

In its observations, the EUTM proprietor argues that there are numerous marks containing the word SMILE and covering goods in Class 16, currently coexisting on the EUTM register and in the marketplace. Therefore, and also considering that the earlier mark is a short sign, it considers that the earlier mark should only be able to bar nearly identical trade marks from registration.

First, it must be clarified that the Office only considers signs that consist of three or less letters to be short signs. Therefore, the applicant’s arguments based on the earlier mark being a short sign must be dismissed. Even if the earlier mark were relatively short, for the above-mentioned reasons the differences between the signs are clearly insufficient to rule out a likelihood of confusion.

As regards the alleged coexistence, according to established case-law

… the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the [Cancellation] Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the [proprietor of] the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86):

Formal coexistence of certain marks in national or Union registries is not per se particularly relevant. It also needs to be proven that the marks coexist in the market, which could indicate that consumers are used to seeing the marks without confusing them. Last but not least, the Office will in principle be restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Cancellation Division consider evidence of the coexistence of other marks in the market (and possibly in a Register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the applicant’s mark which might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, for example, different legal or factual situations in the past, or prior rights agreements between the parties involved.

In the present case, the EUTM proprietor has mainly relied on the EUTM register situation to support its argument which does not provide the Office with sufficient evidence to draw meaningful conclusions on the perception of the entire relevant public. As explained above, the evidence submitted to support use of such marks is scarce, not particularly conclusive and does not concern the exact same signs or goods. Even if these could at least be considered similar to the signs and goods at issue, the EUTM proprietor has also failed to show that the coexistence of such signs is peaceful and due to lack of confusion (and not for instance the result of an agreement between the parties). In fact, the evidence does not even show use of more than one or two marks in the same territory.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the EUTM proprietor must be rejected as unfounded.

Furthermore, the EUTM proprietor refers to previous Office decisions to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its own particularities.

This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the EUTM proprietor (21/10/2013, B 2 096 751, TOTAL BITE; 20/01/2006, B 673 758, WONDERSMILE) are not relevant to the present proceedings. They concern different goods or services (e.g. in Classes 31 and 35) and/or different signs that have other verbal elements in common (e.g. TOTAL/TOTAL BITE(fig.)) or include different elements (WONDER and “(:”) that were considered sufficient to differentiate the signs. However, for the reasons set out above, this is not the case here where the contested sign fully includes the earlier mark and the differing element JUNIOR is non-distinctive or at least clearly secondary.

Conclusion

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.  

The rest of the contested goods are dissimilar. As similarity of goods 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.

Since the cancellation application is partially 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 even for identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the earlier mark for dissimilar goods, as the similarity of goods is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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(3) 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

  

Natascha GALPERIN

Elena NICOLÁS GÓMEZ

Martin LENZ

 

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.