CANCELLATION No 13759 C (INVALIDITY)

Swatch AG (Swatch SA) (Swatch Ltd), Jakob-Stämpfli-Str. 94, 2502 Biel/Bienne, Switzerland (applicant), represented by Despacho González-Bueno, S.L.P., c/Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

LG Electronics Inc., 128 Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic of Korea (EUTM proprietor), represented by Novagraaf France, Bâtiment O2-2, rue Sarah Bernhardt, 90017, 92665 Asnières-sur-Seine, France (professional representative).

On 05/06/2017, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 777 521 is declared invalid for some of the contested goods, namely:

Class 14: Watches with the function of wireless communications with electronic terminals such as smartphones, tablet computers, PDA, computers; Watch bands with the function of wireless communications with electronic terminals such as smartphones, tablet computers, PDA, computers; Wristwatches with the function of mobile communications; Clocks; Wristwatches; Electronic clocks and watches; Dials {clock and watch making}; Watch crystals; Watch chains; Watch cases; Parts for watches; Watch pouches; Necklaces {jewelry}; Bracelets {jewelry}; Key rings [trinkets or fobs] of precious metal; Wire of precious metal {jewelry}; Rings {jewelry}.

3. The European Union trade mark remains registered for all the remaining goods, namely:

Class 9: Downloadable image file containing artwork, text, audio, video, games, and Internet Web links relating to sporting and cultural activities; Electronic downloadable publications in the nature of magazines, newspapers, books, manuals in the field of electronics.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 777 521. The application is based on, inter alia, Swedish trade mark registration No 333 568. 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 goods are identical and the signs are very similar, as both contain the word ‘skin’, and the earlier mark enjoys an enhanced degree of distinctiveness due to its extensive use on the market. Therefore, the conditions for Article 8(1)(b) EUTMR to be applicable are met.

The EUTM proprietor claimed that it missed its deadline to file observations in reply to the applicant because it did not receive the notification from the Office.

PRELIMINARY REMARK

As mentioned above, the EUTM proprietor claims that it did not receive the communication from the Office inviting it to submit observations regarding the invalidity action against its trade mark. The Office conducted an investigation and sent the party proof that the notification (sent by e-communication) had indeed been successful. In line with this, it is worth recalling 04/05/2017, T‑97/16, GEOTEK, § 41-46, where the Court found that even positive fax reports were adequate means to prove the reception of a notification to a party.

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.

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s Swedish trade mark registration No 333 568.

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 14: Precious metals and their alloys; jewelry, precious stones; clocks and watches and time measuring instruments; parts thereof included in this class.

The contested goods are the following:

Class 9: Downloadable image file containing artwork, text, audio, video, games, and Internet Web links relating to sporting and cultural activities; Electronic downloadable publications in the nature of magazines, newspapers, books, manuals in the field of electronics.

Class 14: Watches with the function of wireless communications with electronic terminals such as smartphones, tablet computers, PDA, computers; Watch bands with the function of wireless communications with electronic terminals such as smartphones, tablet computers, PDA, computers; Wristwatches with the function of mobile communications; Clocks; Wristwatches; Electronic clocks and watches; Dials {clock and watch making}; Watch crystals; Watch chains; Watch cases; Parts for watches; Watch pouches; Necklaces {jewelry}; Bracelets {jewelry}; Key rings [trinkets or fobs] of precious metal; Wire of precious metal {jewelry}; Rings {jewelry}.

Contested goods in Class 9

The contested downloadable image file containing artwork, text, audio, video, games, and internet web links relating to sporting and cultural activities; electronic downloadable publications in the nature of magazines, newspapers, books, manuals in the field of electronics are all dissimilar to the applicant’s goods in Class 14, as they have different natures, purposes, methods of use, providers and distribution channels.. They are not complementary or in competition with each other.

Contested goods in Class 14

The contested watches with the function of wireless communications with electronic terminals such as smartphones, tablet computers, PDA, computers; watch bands with the function of wireless communications with electronic terminals such as smartphones, tablet computers, PDA, computers; wristwatches with the function of mobile communications; clocks; wristwatches; electronic clocks and watches; dials {clock and watch making}; watch crystals; watch chains; watch cases; parts for watches; watch pouches are included in the broader categories of the applicant’s clocks and watches and time measuring instruments; parts thereof included in this class. The goods are, therefore, identical.

The contested necklaces {jewelry}; bracelets {jewelry}; key rings [trinkets or fobs] of precious metal; wire of precious metal {jewelry}; rings {jewelry} are included in the broader category of the applicant’s jewelry. The goods are, therefore, identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication and specialised nature of the goods. For example, it may be average in relation to some watch chains whereas it will be high for some rings {jewelry}.

3. The signs

SKIN	Smart Skin
Earlier trade mark	Contested trade mark

The relevant territory is Sweden.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both marks are word marks and, as such, they do not have elements that can be deemed more dominant than others.

Swedish consumers have, in general, a good command of English and will understand the meanings of the English words contained in the signs (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23); therefore, they will understand ‘SKIN’ as, inter alia, ‘the thin layer of tissue forming the natural outer covering of the body of a person or animal’ and ‘Smart’ as ‘having or showing a quick-witted intelligence’ (information extracted from Oxford Online Dictionary on 22/05/2017 at https://en.oxforddictionaries.com/definition/us/skin). Even though consumers may not understand the expression contained in the contested trade mark as a whole, due to the prevalence in the market of goods such as ‘smartphones’ the consumers will be able to understand that, in connection with some of the goods at issue (watches and parts and pieces of them and some other electronic devices), the word refers to devices that are capable of performing the functions of a computer and, therefore, is descriptive of these goods. The element ‘SKIN’ is distinctive.

Visually, aurally and conceptually, the signs coincide in the word ‘SKIN’ and differ in ‘Smart’. Taking into account that this latter word merely qualifies the word ‘SKIN’ that the marks have in common and is descriptive for some of the goods, on all three levels of comparison the signs are highly similar.

As the signs have been found similar, 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.

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

5. Global assessment, other arguments and conclusion

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 marks have the word ‘SKIN’ in common and differ in the word ‘Smart’, included in the contested trade mark, which, as seen above, merely qualifies the coinciding word and is descriptive for some of the goods, a fact that gives rise to important links between the signs visually, aurally and conceptually. Some of the goods are identical and are aimed at both the professional and the general public with at least an average degree of attention. It must be borne in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Furthermore, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical to those of the earlier trade mark, namely goods in Class 14.

The rest of the contested goods (in Class 9) are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at 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. 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 and services is a sine qua non condition for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The applicant has also based its cancellation application on earlier international trade mark registration No 682 103 designating all the Member States of the European Union, except Malta. It is registered for precious metals and their alloys and goods in precious metals or coated therewith not included in other classes; jewelry, precious stones; timepieces and chronometric instruments in Class 14.

This mark is less similar than the one compared above and, though it covers slightly more goods than the one above, it must be taken into account that they are all in Class 14, which means that there can be no likelihood of confusion for the goods in relation to which the invalidity action has been rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Carmen SÁNCHEZ PALOMARES

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. 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.