CANCELLATION No 11 644 C (INVALIDITY)

The Procter & Gamble Company, One Procter & Gamble Plaza, Cincinnati, Ohio 45202-3315, United States of America (applicant), represented by Danièle Le Carval, Procter & Gamble France SAS, 163/165 quai Aulagnier, 92600 Asnières-sur-Seine, France (employee representative)

a g a i n s t

Copacabana Investments Limited, No. 30, Cresta Apartments, Suite 9, Imradd Street, Ta' Xbiex XBX 1150, Malta (EUTM proprietor), represented by Andrea Micallef, 30, Cresta Apartments, Apt. 9, Imradd Street, Ta' Xbiex XBX 1150, Malta (professional representative).

On 30/03/2016, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 762 001 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 700.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 762 001. The application is based on European Union trade mark registration No 7 156 201. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1) (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the relevant goods are identical and the signs similar to a high degree to the extent that the most prominent and distinctive element within the earlier sign, namely the verbal element ‘DAZ’, is entirely reproduced at the beginning of the contested sign and also to the extent that there are common features in the stylisation of their respective word and figurative elements.

According to the applicant, the additional differentiating elements are not sufficient in themselves to counteract the high degree of visual, aural and conceptual similarity between the earlier trade mark and the contested trade mark. In addition, it should be noted that consumers tend to remember the similarities rather than the dissimilarities between signs. Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind. The applicant also submits that, taking into account the principle of imperfect recollection, it should be considered that the similarities between the signs are sufficient to cause at least a significant part of the public in the relevant territory to believe that the conflicting goods, which are identical and complementary, come from the same undertaking or economically linked undertakings.

In light of the foregoing, the applicant submits that there is a likelihood of confusion (including a likelihood of association) under Article 53 (1)(a) EUTMR on the part of the relevant public in respect of all the contested goods.

Consequently, the applicant requests the invalidation of the EUTM registration No 12 762 001 for all the goods covered by the registration, and that the applicant be granted costs in the present invalidation proceedings.

The EUTM proprietor did not submit any observations in reply.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically‑linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The goods on which the application is based are the following:

Class 3: Washing and bleaching preparations for household purposes.

The contested goods are the following:

Class 3: Laundry preparations; ammonia [volatile alkali] [detergent]; anti-smear agents for cleaning purposes; bleaching preparations; canned pressurized air for cleaning and dusting purposes; carpet shampoo; carpet cleaning preparations; cleaning agents for household purposes; cleaning compositions for spot removal; cleaning fluids; cleaning preparations for use on tiles; cleaning preparations impregnated into pads; chemical laundry preparations; colour-brightening chemicals for household purposes [laundry]; commercial laundry detergents; dry-cleaning preparations; fabric brighteners; fabric conditioning preparations; fabric softeners for laundry use; laundry bleach; laundry blue; laundry detergents for household cleaning use; laundry glaze; laundry liquids; laundry soaking preparations; laundry soaps; laundry wax; natural starches for laundry purposes; other substances for laundry use; rinsing aids for use when washing clothes; smoothing preparations [starching]; cleaning preparations in the form of foams; cloths impregnated with a detergent for cleaning; color-removing preparations; colorants for toilet purposes; destainers; detergent strengtheners; detergents; detergents for household use; dishwasher powder; dishwashing detergents; drying agents for dishwashing machines; emulsifying solvent cleaners; floor cleaning preparations; floor polish; floor shining compositions; floor treatment compositions; floor wax removers [scouring preparations]; foam detergents; furniture cleaner; furniture polish; germicidal detergents; glass cleaning preparations; grease-removing preparations; household bleach; household detergents; lavatory cleaning compositions; lime removers; liquid floor polishes; natural floor polishes; natural floor waxes; non-slipping liquids for floors; non-slipping wax for floors; oven cleaning preparations; parquet floor wax; polish for furniture and flooring; polishing creams; polishing powders; polishing preparations; prepared wax for polishing; rinse aids; shining preparations [polish]; spray polish; stain removing agents; stain removing preparations; stain removing preparations for use on household goods; starch for cleaning purposes; time-release solid drain detergent; toilet cleaners; unblocking drain pipes (preparations for -); wallpaper cleaning preparations; washing liquids; washing preparations; washing-up detergent; window cleaners [polish]; window cleaners in spray form; window cleaning compositions; wipes incorporating cleaning preparations; wood treatment preparations for polishing.

The contested laundry preparations; ammonia [volatile alkali] [detergent]; anti-smear agents for cleaning purposes; bleaching preparations; carpet shampoo; carpet cleaning preparations; cleaning agents for household purposes; cleaning compositions for spot removal; cleaning fluids; cleaning preparations for use on tiles; chemical laundry preparations; colour-brightening chemicals for household purposes [laundry]; commercial laundry detergents; dry-cleaning preparations; fabric brighteners; fabric conditioning preparations; fabric softeners for laundry use; laundry bleach; laundry blue; laundry detergents for household cleaning use; laundry glaze; laundry liquids; laundry soaking preparations; laundry soaps; laundry wax; natural starches for laundry purposes; other substances for laundry use; rinsing aids for use when washing clothes; smoothing preparations [starching]; cleaning preparations in the form of foams; color-removing preparations; destainers; detergent strengtheners; detergents; detergents for household use; dishwasher powder; dishwashing detergents; drying agents for dishwashing machines; emulsifying solvent cleaners; floor cleaning preparations; floor treatment compositions; foam detergents; germicidal detergents; household bleach; household detergents; lavatory cleaning compositions; lime removers; rinse aids; stain removing agents; stain removing preparations; stain removing preparations for use on household goods; starch for cleaning purposes; time-release solid drain detergent; wallpaper cleaning preparations; washing liquids; washing preparations; washing-up detergent are included in or, at least, overlap with the applicant’s washing and bleaching preparations for household purposes. These goods are identical.

The contested canned pressurized air for cleaning and dusting purposes; cleaning preparations impregnated into pads; cloths impregnated with a detergent for cleaning; colorants for toilet purposes; floor polish; floor shining compositions; floor wax removers [scouring preparations]; furniture cleaner; furniture polish; glass cleaning preparations; grease-removing preparations; liquid floor polishes; natural floor polishes; natural floor waxes; non-slipping liquids for floors; non-slipping wax for floors; oven cleaning preparations; parquet floor wax; polish for furniture and flooring; polishing creams; polishing powders; polishing preparations; prepared wax for polishing; shining preparations [polish]; spray polish; toilet cleaners; unblocking drain pipes (preparations for -); window cleaners [polish]; window cleaners in spray form; window cleaning compositions; wipes incorporating cleaning preparations; wood treatment preparations for polishing are not washing or bleaching preparations but they are still similar to the applicant’s goods as they are mainly cleaning or polishing products which can be produced by the same companies and distributed through the same distribution channels and the same outlets and be addressed to the same public.

2. Relevant public – level of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, the average consumer’s level of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical and similar target the public at large and business consumers with specific professional knowledge or expertise. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

As a consequence of the unitary character of the European Union trade mark, laid down in Article 1(2) EUTMR, a European Union trade mark has identical protection in all Member States. Earlier European Union trade marks may, therefore, be relied upon to challenge any subsequent application for a trade mark which would prejudice their protection, even if this is only in relation to how they are perceived by consumers in part of the European Union. It follows that the principle laid down in Article 7(2) EUTMR, which provides that it is sufficient that an absolute ground for refusal exists in only part of the European Union for a trade mark application to be refused, applies, by analogy, to a relative ground for invalidity under Article 53(1)(a) in conjunction with Article 8(1)(b) EUTMR. In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

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

The verbal elements ‘CLEANS YOUR CLOTHES & PLEASES YOUR NOSE’ and ‘SUMMER FLOWER POWER’ of the earlier mark are advertising slogans. The first one describes the destination and the qualities of the goods, namely that they clean consumers’ clothes which, after washing, will smell nice. The second one evokes that, after washing clothes with the earlier goods, a powerful scent of summer flowers will emerge from them. Bearing in mind that the relevant goods are washing and bleaching preparations for household purposes, these slogans are weak for all the goods. A similar assessment can be made as regards some figurative features of the earlier mark, namely the bubbles, the white circular halo with rays similar to a sun, the scintillating star and the flowers included in the letters ‘O’ of ‘FLOWER POWER’: respectively, they evoke the soap suds, the brightness as a result of washing, and reinforce the idea of a scent of flowers as contained in the verbal elements ‘SUMMER FLOWER POWER’. These figurative elements are also weak for all the relevant goods. The public will understand the meaning of these elements and will not pay as much attention to them as to the other more distinctive elements of the mark. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks.

The verbal element ‘DAZ’ of the earlier mark, by virtue of its size and central as well as predominant position, is the dominant element as it is the most eye‑catching.

Furthermore, when a mark consists of both verbal and figurative components, in principle, the verbal components of the sign usually have a stronger impact on the consumer than the figurative components. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal elements than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Taking into account all the previous considerations as regards the earlier mark, it is considered that the element with more impact in the sign is the verbal element ‘DAZ’.

The verbal element ‘DAZZLE’ of the contested sign is an English term which means ‘to blind or be blinded partially and temporarily by sudden excessive light’ or ‘to amaze, as with brilliance’ or a ‘bright light that dazzles’ (Extracted on 10/03/2016 from the web site http://www.collinsdictionary.com/dictionary/english). This word evokes the brightness resulting from the use of the contested goods. Bearing in mind that the relevant contested goods are laundry, bleaching, washing, cleaning and polishing products, this element is weak for all the goods.

A similar assessment can be made as regards some figurative features of the contested mark, namely the bubbles, the blue and white circles and the scintillating star which evoke the circular movement of soapy water in a washing machine and the brightness, respectively. These figurative elements are weak as they are all evocative of the process and/or the result of cleaning. The public will understand the meaning of these elements and will not pay as much attention to them as to the other more distinctive elements of the mark. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks. More generally, as regards the figurative elements, namely those abovementioned as well as the golden wavy line and the typographic style, the principle of the stronger impact of the verbal elements indicated above for the earlier mark also applies to the contested sign.

The verbal element ‘DAZZLE’ of the contested sign, by virtue of its size and central as well as predominant position, is the dominant element as it is the most eye‑catching.

Taking into account all the previous considerations as regards the contested sign, it is considered that there is no element really more distinctive than others in the sign. However, bearing in mind the dominant position of the element ‘DAZZLE’ and the fact that the verbal element has usually more impact than the figurative elements, it is considered that this verbal element has a stronger impact than the figurative elements.

Visually, the signs are similar to the extent that the distinctive and dominant verbal element ‘DAZ’ of the earlier mark is totally incorporated at the beginning of the verbal element ‘DAZZLE’ that has the greatest impact in the contested sign. In this respect, it must be pointed out that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. With regard to the figurative elements, they also share some features: in each sign, the coinciding verbal elements are written in blue embossed letters, with a slight upward inclination from left to right, they are overprinted on a white circular halo, they are surrounded by bubbles and they are next to a scintillating star. On the other hand, they differ in the additional verbal elements of the earlier mark which have a low distinctive character and are not dominant, namely the verbal elements ‘CLEANS YOUR CLOTHES & PLEASES YOUR NOSE’ and ‘SUMMER FLOWER POWER’. The signs also differ in the additional letters ‘-ZLE’ placed at the end of the contested sign and in some figurative features such as the specific colours or the size of the bubbles in each sign, the rays in the earlier mark or the circles and the golden wavy line in the contested sign. It is recalled that the figurative elements of the signs have less impact than the verbal elements ‘DAZZ’ of the earlier mark and ‘DAZZLE’ of the contested sign, for the reasons already explained above.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the marks coincides in the syllable ‘DAZ’ which forms the dominant verbal element of the earlier mark and the first part of the contested sign, and to that extent the marks are aurally similar. The pronunciation differs in the second syllable ‘-ZLE’ of the contested sign, which has no counterpart in the earlier mark. However, in English, the emphasis is put on the first syllable ‘DAZ-’, while the pronunciation of the last syllable ‘-ZLE’ is toned down. As the additional elements of the earlier mark are advertising slogans, the Cancellation Division considers that they will not be pronounced by the public when referring to the marks.

Therefore, the signs are aurally similar to an average degree.

Conceptually, both signs coincide in the fact that they both include a scintillating star and bubbles which have a low distinctive character. The phrases ‘CLEANS YOUR CLOTHES & PLEASES YOUR NOSE’ and ‘SUMMER FLOWER POWER’ in the earlier mark, without equivalence in the contested sign, will be perceived by the English-speaking part of the relevant public as advertising slogans the meanings of which have already been defined above and the distinctive character is low. The word ‘DAZZLE’ of the contested sign is meaningful as already defined above and, therefore has a concept that is not present in the earlier mark. The remaining figurative elements include some concepts which are not shared by both signs, such as the white halo with rays, perceived as a sun and the flowers in the earlier mark as well as the blue and white circles perceived as the circular movement of the water in a washing machine.

To the extent that the signs coincide in weak elements, namely a scintillating star and bubbles, the signs are conceptually similar to a low degree.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Article 8(1)(b) EUTMR states that a EU trade mark application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

The goods are identical or similar and target the public at large and/or business consumers with specific professional knowledge or expertise. The degree of attention is considered to be average. The signs are visually and aurally similar to an average degree and conceptually similar to a low degree. Despite the presence of some weak elements, the distinctiveness of the earlier mark must be seen as normal, mainly because of the presence of the distinctive and dominant element ‘DAZ’. With the exception of some divergences in the typographic style, this element is fully incorporated at the beginning of the word ‘DAZZLE’ which is the element with most impact in the contested sign. Visually, the signs also coincide in some figurative features, such as the blue embossed letters of the coinciding verbal elements, both inclined upward from left to right, both overprinted on a white circular halo and both surrounded by bubbles and next to a scintillating star. As regards the additional last three letters ‘-ZLE’ of the contested sign, it must be pointed out that, from a phonetic point of view, emphasis is put on the coinciding first three letters ‘DAZ-’, while the pronunciation of the last three ‘-ZLE’ is toned down. Although the signs differ in other additional verbal and figurative elements, these elements have been considered weak or, at least, with less visual impact and no influence on the pronunciation of the signs.

However, it should be noted that the average consumer rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (see judgment of 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323). Bearing also in mind that the likelihood of confusion includes the likelihood of association, it is likely that, in the present case, the contested sign will be associated by the relevant public with the earlier mark, creating the impression that the relevant goods are different lines of products which originate from the same undertaking or economically linked undertakings.

Despite the differences between the signs, there is still a likelihood of confusion due to the strong impact of the coinciding verbal elements. The earlier mark is fully incorporated at the beginning of the contested sign and most of the differences between the signs reside in elements with a lesser impact and not sufficient to rule out a likelihood of confusion.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the English-speaking part of the public in the relevant territory. As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested trade mark.

Therefore, the cancellation application is well founded on the basis of the applicant’s European Union trade mark registration No 7 156 201. It follows that the contested trade mark must be cancelled for all the contested goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(iii) 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and, therefore, did not incur representation costs.

The Cancellation Division

Vanessa PAGE

Benoit VLEMINCQ

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Article 2(30) EUTMFR).