CANCELLATION No 13 447 C (INVALIDITY)

Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, Germany (applicant), represented by Schmidt, Von Der Osten & Huber, Rechtsanwälte Steuerberater Partnerschaft mbB, Rüttenscheider Str. 26, 45128 Essen, Germany (professional representative)

a g a i n s t

Salling Group A/S, Rosbjergvej 33, 8220 Brabrand, Denmark (EUTM proprietor), represented by Bech-Bruun Law Firm, Værkmestergade 2, 8000 Århus C, Denmark (professional representative).

On 18/11/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 754 321 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 12 754 321 ALDONI (word mark). The application is based on the following grounds and earlier rights:

 Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR in relation to the following earlier rights:

1. EUTM registration No 2 071 728 ALDI (word mark) for goods and services in Classes 3, 4, 7, 9, 16, 24, 25, 29, 30, 31, 32, 33, 34 and 36. The mark was subject to a revocation request. By cancellation decision of 06/04/2020 in case 26 122 C the mark was partially revoked for goods in Classes 3, 4, 9, 16, 24, 25, 29, 30, 31, 32, 33, 34, and for all the goods in Class 7 and all the services in Class 36.

2. EUTM registration 9 455 908 (figurative mark) for goods in Classes 29, 30, 31 and 32.

 Article 60(1)(a) EUTMR in conjunction with Articles 8(1)(b) and 8(5) EUTMR (reputation claimed in the EU and Germany) in relation to the following earlier rights:

3. EUTM registration 12 749 578 ALDI (word mark) for goods and services in Classes 3, 4, 7, 9, 16, 24, 28, 31, 34, 35, 36, 38, 39, 41, 42 and 43. Reputation was claimed for the following services in Class 35 retailing, including via the Internet, in relation to foodstuffs, laundry preparations, cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, nonprescription medicines, dietary supplements, fireworks, electric apparatus/accessories, electronic apparatus and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening apparatus and accessories therefor, bicycles and accessories therefor, car accessories, clocks and watches and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen apparatus, and accessories therefor, household goods, bed covers, including cushions, bed linen, household textile goods, clothing, headgear, footwear, sports apparatus, toys, leisure articles, animal feed, plants, tobacco products; Retail services for clothing, Also provided via the Internet, In relation to travel, printing and photographic and cinematographic development, flower delivery, and telephone and Internet offers; Operation of supermarkets, retail shops and discount retail shops for foodstuffs, laundry preparations, cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, dietary supplements, fireworks, electric apparatus/accessories, electronic apparatus and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening apparatus and accessories therefor, bicycles and accessories therefor, car accessories, clocks and watches and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen apparatus, and accessories therefor, household goods, bed covers, including cushions, bed linen, household textile goods, clothing, headgear, footwear, sports apparatus, toys, leisure articles, animal feed, plants, tobacco products; Providing information on the Internet, namely information about consumer products, consumer advice information and customer service information; Arranging contracts for the buying and selling of goods and the provision of services, for others, including on the Internet (included in class 35).

4. EUTM registration 3 360 914 ALDI (word mark) for services in Classes 35, 38 and 39. Reputation is claimed for the following services in Class 35 retailing in all product areas; online retailing in all product areas; operating supermarkets, retail outlets and discount retail outlets; advertising on the Internet, for others; providing information on the Internet, namely information about consumer products, consumer advice information and customer service information.

5. EUTM registration No 2 714 459 ALDI (word mark) for services in Classes 35 and 36. Reputation is claimed for the following services in Class 35 compilation (other than transport) of a variety of products, for others in a supermarket, in order that consumers may examine and purchase these products.

6. EUTM registration 11 181 815 ALDI TALK (word mark) for goods and services in Classes 9, 35, 37 and 38. Reputation is claimed for the following services in Class 35 Retailing relating to foodstuffs, washing and cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, food supplements, fireworks, electric apparatus/accessories, electronic devices and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening implements and accessories therefor, bicycles and accessories therefor, car accessories, horological instruments and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen utensils and accessories therefor, household goods, bed covers, including pillows, bed linen, household textiles, clothing, headgear, footwear, sporting apparatus, playthings, leisure articles, namely articles for camping, hunting, fishing, air sports, music, water sports and drawing, foodstuffs for animals, plants, tobacco goods, including via the Internet; Operating supermarkets, retail outlets and discount retail outlets, namely retailing relating to foodstuffs, washing and cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, food supplements, fireworks, electric apparatus/accessories, electronic devices and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening implements and accessories therefor, bicycles and accessories therefor, car accessories, horological instruments and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen utensils and accessories therefor, household goods, bed covers, including pillows, bed linen, household textiles, clothing, headgear, footwear, sporting apparatus, playthings, leisure articles, namely articles for camping, hunting, fishing, air sports, music, water sports and drawing, foodstuffs for animals, plants, tobacco goods; Advertising on the Internet, for others; Providing information on the Internet, namely information about consumer products, consumer advice information and customer service information; Arranging contracts for the buying and selling of goods and the provision of services, for others, including on the Internet (included in class 35) and for telecommunications in Class 38.

7. EUTM registration No 11 181 823 ALDI MOBILE (word mark) for goods and services in Classes 9, 35, 37 and 38. The applicant claimed reputation for the same services as in case of the previous trade mark (under No 6).

8. International registration No 870 876 ALDI (word mark) designating the EU for services in Classes 35, 38, 40, 41 and 42. Reputation is claimed for the following services in Class 35 advertising; business management; business administration; office functions; retailing in all product areas; online retailing in all product areas; operating supermarkets, retail outlets and discount retail outlets; advertising in the Internet, for others; providing information on the Internet, namely information about consumer products, consumer advice information and customer service information; arranging of commercial transactions for third parties, also on the Internet; arranging of contracts regarding the purchase and sale of goods, as well as the providing of services for others, also via the Internet.

 Article 60(1)(a) EUTMR in conjunction with Article 8(2)(c) EUTMR in relation to the following earlier right:

 Non-registered mark ALDI claimed to be well-known in Germany in relation with retailing, including via the Internet, in relation to foodstuffs, laundry preparations, cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non- prescription medicines, dietary supplements, fireworks, electric apparatus/accessories, electronic apparatus and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening apparatus and accessories therefor, bicycles and accessories therefor, car accessories, clocks and watches and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen apparatus, and accessories therefor, household goods, bed covers, including cushions, bed linen, household textile goods, clothing, headgear, footwear, sports apparatus, toys, leisure articles, animal feed, plants, tobacco products; Retail services for clothing, Also provided via the Internet, In relation to travel, printing and photographic and cinematographic development, flower delivery, and telephone and Internet offers; Operation of supermarkets, retail shops and discount retail shops for foodstuffs, laundry preparations,. cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, dietary supplements, fireworks, electric apparatus/accessories, electronic apparatus and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening apparatus and accessories therefor, bicycles and accessories therefor, car accessories, clocks and watches and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen apparatus, and accessories therefor, household goods, bed covers, including cushions, bed linen, household textile goods, clothing, headgear, footwear, sports apparatus, toys, leisure articles, animal feed, plants, tobacco products; Providing information on the Internet namely information about consumer products, consumer advice information and customer service information; Arranging contracts for the buying and selling of goods and the provision of services, for others, including on the Internet (included in class 35).

 Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR in relation to the following earlier right:

9. German company name ALDI used in the course of trade in relation with retailing in relation to foodstuffs and non-food products, operating supermarkets, retail shops and discount retails shops for foodstuffs and non-food product.

Case remitted from BoA

On 18/01/2019 the Cancelation Division issued a decision in the present case (13 447 C) rejecting the invalidity request as unfounded. On 01/02/2019, the cancellation applicant filed an appeal against the decision (case R 259/2019-2).

On 10/02/2020 the Board of Appeal issued a decision in case R 259/2019-2. It annulled the contested decision and remitted the case back to the Cancelation Division. The Board of Appeal assessed if it could endorse the reasoning in the contested decision with respect to Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR if it were to be assumed, as the Cancellation Division did, that the earlier marks enjoy the highest degree of reputation and, the Board added, genuine use was demonstrated for all earlier marks subject to such proof and the services contained therein. Furthermore, the assessment was carried out by the Board of Appeal under the assumption that earlier EUTM application No 12 749 578 ‘ALDI’ (back then subject to opposition proceedings) has matured to registration. Finally, the Board refrained from examining if the right concerning the IR designating the EU ‘ALDI’ has been substantiated.

Under such circumstances, the Board agreed with the Cancelation Division that in principle the public in the European Union will not attribute any meaning to the verbal components of the signs ‘ALDI’ and ‘ALDONI’ and will thus perceive the marks as a whole. However, the Board noted that in Italy the ‘suffix’ – ONI – is used to make the augmentative form of plural masculine nouns ending in ‘I’ (e.g. libri / libroni = books / big books; pesci / pescioni = fish / big fish). In particular if it were to be assumed that the earlier marks ‘ALDI’ were to have a significant reputation in Italy for certain services, it cannot be excluded that the word ‘ALDONI’ with respect to related goods may be perceived as an augmentative form of ‘ALDI’ (despite the latter being fanciful), which would further reinforce the association between the marks. In light of the foregoing, the Board considered that the Cancellation Division erred in its reasoning leading to the finding that the application for a declaration of invalidity was not well founded under Article 60(1(a) EUTMR in conjunction with Article 8(5) EUTMR. Further the Board considered that contrary to the contested decision, the visual and aural degree of similarity between the marks was average and not low.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claims that there is a likelihood of confusion between the contested sign and the earlier marks invoked and refers in general to the trade mark ALDI being reputed in Germany and other Member States filing also some evidence in this sense.

The EUTM proprietor considers that there is no risk of confusion between the marks as the similarity from both visual and aural perspective is low; it asked for the proof of use of some of the earlier marks and commented on the evidence adduced by the applicant.

The application is based on more than one earlier trade mark. Proof of use of the earlier marks under Nos 1, 2, 4, 5 and 8 was requested by the EUTM proprietor. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s earlier mark under No 3, EUTM registration 12 749 578 ALDI (word mark) which is not subject for a request of proof of use.

a) The goods and services

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 services on which the application is based are, amongst others, the following:

Class 35: Retailing, including via the Internet, in relation to foodstuffs.

The contested goods are the following:

Class 29: Frozen prepared meals consisting principally of vegetables; Frozen meat products; Fish products being frozen; Prepared dishes consisting principally of meat.

Class 30: Frozen pizzas; Panettone; Panettone; Ready-made dishes containing pasta; Bread; Preparations for making bakery products.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find an average degree of similarity between the retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

The contested goods in Classes 29 and 30 are all foodstuffs (‘any substance that is used as food or to make food’¹) ; consequently, they are similar to an average degree to the applicant’s retailing, including via the Internet, in relation to foodstuffs.

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 and services found to be similar are directed at the public at large. The degree of attention will be average. This was also the opinion of the Board of Appeal in its decision of 10/02/2020.

c) The signs

ALDI	ALDONI
Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

The marks in conflict are word marks so there are no elements which are more dominant than other elements. The Cancellation Division considers that the public in the European Union will not attribute any meaning to the verbal components of the signs ‘ALDI’ and ‘ALDONI’ and will thus perceive the marks as a whole. Therefore, in relation to the relevant goods/services the signs’ components are distinctive to an average degree. The Board of appeal was also of the same opinion in its decision of 10/02/2020.

Visually and aurally, the marks in conflict have in common the letters ‘ALD’ at the beginning and the letter ‘I’ at the end of the contested mark and at the end of the earlier mark. They differ in the letters ‘ON’ in the contested mark. Contrary to the first decision of the Cancellation Division which found a low degree of similarity between the marks at hand, the Board of Appeal considered that the marks are visually and aurally similar to an average degree. The Board stated:

36 It is true that in view of the shortness of the earlier marks (four letters), the difference of the additional two letters of the contested mark (in total six letters) has an impact on the length and overall impression of the signs at issue. As also pointed out by the cancellation applicant, in respect of word marks which are relatively short, the central parts of the signs are in general just as important as the elements at the beginning and end of the sign (21/10/2008, T-95/07, Prazol, EU:T:2008:455, § 43 and the case-law cited therein).

37 However, an equal importance does not imply that, due to the two additional and different letters ‘ON’ in one mark, the overall impression of the signs is such that the differences therefore outweigh the common features. The beginnings and endings of both signs as a whole are the same. Furthermore, the additional component ‘ON’ is not a particularly eye-catching feature (contrary to, for example, a double ‘QQ’ as in the word ‘CHIQQO’ in the Boards of Appeal decision 03/03/2015, R 830/2014-5 CHIQQO / CHIO to which the cancellation applicant refers and in which the Board found a low degree of visual and phonetic similarity for the purpose of Article 8(1)(b) EUTMR).

39 From a phonetic point of view, due to the position of the additional letters ‘ON’, the signs ‘AL-DO-NI’ and ‘AL-DI’ differ in their amount of syllables. Therefore, the Cancellation Division correctly found that the pronunciation will be longer for the contested mark. Insofar as the Cancellation Division considered that the signs completely differed at the ends of the marks, the Board considers that the fact that both signs end on the same vowel ‘I’ is not a negligible feature. Moreover, it should be noted that the signs coincide in the first syllable and the first letter of the second syllable. Finally, the signs differ in their last letters – in both cases a vowel – in the second syllable.

Since the Cancellation Division is bound by the decision of the Board of Appeal, the marks are considered similar to an average degree.

Conceptually, the marks have no meaning in the relevant territory. A possible meaning in Esperanto of the contested mark (as the EUTM proprietor claims) is irrelevant to the present proceedings as this is not an official language of an EU Member State. Therefore, between the earlier mark and the contested sign a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

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 ALDI has been extensively used and enjoys an enhanced scope of protection. In the observations attached to the notice of invalidity the reference to the higher distinctiveness or reputation of the trade mark ALDI is made exclusively to shops or supermarkets.

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 meaning for any of the services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods and services have been found to be similar to an average degree. In the present case, the marks have been found to have an average degree of visual and aural similarity, without this impression being mitigated by any relevant conceptual perception. The marks’ first three letters out of four and six respectively are identical. Furthermore, both marks end with the same letter. The differences between the signs which reside in two letters placed in the middle of the contested sign are not sufficient to counteract the similarities between the marks. Consequently, taking all the above into account, the Cancellation Division finds that a likelihood of confusion between the marks in conflict cannot be excluded and the cancellation invalidity is totally upheld on the basis of the earlier mark under No 3.

Since the cancellation application is 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 reputation as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right under No 3 leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the application, namely Article 8(4) and (5) EUTMR in conjunction with Article 60(1)(a) and (c) EUTMR.

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(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

Oana-Alina STURZA

Ioana MOISESCU

Birgit CESSY FILTENBORG

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.