CANCELLATION No 37 622 C (INVALIDITY)

Next Retail Limited, Desford Road, Enderby, LE19 4AT, Leicester, Leicestershire, United Kingdom (applicant), represented by Marks & Clerk LLP, 15 Fetter Lane, EC4A 1BW London, London, United Kingdom (professional representative)

a g a i n s t

Jor'el Cristen Nathan Mitchell, 48a Sandringham Road, Hackney, E8 2LP London, United Kingdom (EUTM proprietor).

On 17/12/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 847 323 is declared invalid for all the contested services, namely:

Class 35: Retail services connected with the sale of clothing; advice and information relating to the above.

3. The European Union trade mark remains registered for all the uncontested services, namely:

Class 35: Advertising services; classified advertising services; provision of advertising space on internet websites; advertising services provided via the Internet or via other communications networks; promoting and marketing the goods and services of others via the Internet; marketing and promotional services; business management of performing artists; commercial administration of the licensing of the goods and services of others; business networking; retail services connected with the sale of music, musical recordings, sound and/or video recordings, downloadable sound, video or music recordings, CDs, DVDs, printed matter, books, magazines, apparatus for recording, transmission or reproduction of sound or images; advice and information relating to the above.

Class 41: Entertainment; entertainment services; musical entertainment; entertainment services provided online via a global communications network; entertainment services namely website where music, sound and video recordings can be watched and listened to; performance of music; production of music and/or musical recordings; video production; publishing; music publishing services; music recording services; production of musical works in a recording studio; music composition services; music library services; music and video distribution services; providing digital music [not downloadable] from the Internet; information services in the field of entertainment and music; disc jockey services; arranging, organising, producing, managing and conducting events, concerts, shows, performances in the field of music and/or entertainment; recording studio services; distribution services in the field of sound and/or visual recordings and entertainment; education, teaching and training in the field of music and entertainment; downloadable publications in the field of entertainment and music; providing an Internet website portal in the field of music and entertainment; advisory, consultancy and information relating to the above.

Class 45: Social networking services; on-line social networking services; copyright management; advisory services relating to copyright; licensing services relating to music publishing; advisory, consultancy and information relating to the above.

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

REASONS

The applicant filed an application for a declaration of invalidity against some of the services of European Union trade mark No 12 847 323 ´NextSpot´, namely against some of the services in Class 35. The application is based on European Union trade mark registration No 1 620 434 ´NEXT´. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is identity between the services involved and a similarity between the earlier mark and the contested sign, as the earlier mark is entirely reproduced at the beginning of the contested sign. It further argues that the earlier mark enjoys enhanced distinctiveness, but does not submit any evidence in support of this claim. It states that there is a likelihood of confusion on the part of the public in the relevant territory and requests that the EUTM is declared invalid for all the contested services.

The EUTM proprietor does not submit any arguments in reply.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

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

1. The services

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

Class 35: Retail services in the fields of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras; the bringing together for the benefit of others of a variety of goods including the aforesaid products; enabling customers to conveniently view and purchase these goods; services for the retail of products through high street stores, via mail order catalogues or over the Internet; providing on-line retail store services in the field of the aforesaid goods; information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods; on-line trading services, trading services in respect of a wide range of goods; excluding modelling agency services.

The contested services are the following:

Class 35: Retail services connected with the sale of clothing; advice and information relating to the above.

Retail services connected with the sale of clothing; advice and information relating to the above are identically contained in both lists of services (including synonyms).

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 services found to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

NEXT	NextSpot
Earlier trade mark	Contested trade mark

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.

Both signs are word marks, the earlier one consists of the sole element ‘NEXT’ and the contested one of the sole element ‘NextSpot’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

Furthermore, it can be reasonably assumed that part of the relevant public, such as the English-speaking public will perceive the contested mark as the juxtaposition of the words ‘next’ and ‘spot’. This is because when perceiving a word sign, the consumers will break it down into elements which suggest a specific meaning or resemble words known to them (06/10/2004, T‑356/02, Vitakraft EU:T:2004:292, § 51; 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the Cancellation Division considers it appropriate to focus the examination on the English-speaking part of the relevant public, as meaning would be found by that part of the public in both the earlier mark and the contested sign and for that part of the public the likelihood of confusion may be higher.

Consequently, the element (component) ‘NEXT’ of both signs will be perceived in the meaning of, inter alia, ‘coming immediately after the present one in order, rank, or space’ (information extracted from https://www.lexico.com/en/definition/next). Taking into account that this meaning has no relation to the relevant services, it is considered that ´NEXT´ is distinctive.

The element ‘Spot’ of the contested sign will be perceived as, inter alia, ‘a small mark on a surface; a geographical area that is restricted in extent; a location’ (information extracted from https://www.collinsdictionary.com/dictionary/english/spot). Taking into account that this meaning has no relation to the relevant services, it is considered that ´Spot´ is distinctive. The components ´Next´ and ´Spot´ are also likely to be understood together as meaning ´next place´.

It follows that, conceptually, as both signs will be perceived as referring to ‘next’, and taking into account the distinctiveness of the elements/components specified above, the signs are conceptually similar to an average degree. This conclusion is valid even when the components ´Next´ and ´Spot´ of the contested sign are perceived as the conceptual unit, specified above.

Visually and aurally, the signs coincide in the sequence/sound of letters ‘NEXT’, forming the entire earlier mark and the first four letters of the contested sign. The signs differ in the sequence/sound of letters ‘SPOT’ of the contested sign.

Taking into account what has been stated above regarding the distinctiveness of the elements (components) of the signs, the signs are considered visually and aurally 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.

4. Distinctiveness of the earlier mark

The applicant claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence to prove this claim. It refers to previous decisions of the Office, in which ´NEXT´ was considered to enjoy enhanced distinctiveness, but it did not quote any particular evidence (such as dated submissions and annexes) that the Cancellation Division should take into consideration from previous cases.

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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The 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 covered are from the same or economically linked undertakings.

It was found that the services are identical and the level of attention is average when choosing the services in question. The earlier sign is considered to enjoy an average degree of distinctiveness.

The signs are visually, aurally and conceptually similar to an average degree, due to the coincidences between them, analysed above, which originate from the common sequence of letters/sounds ´NEXT´ and the shared concept.

Therefore, taking into account the similarities between the signs, analysed above, it is highly likely that the relevant public would perceive the contested mark, when used in relation to the services found to be identical, as a variation of the earlier sign, indicating a new (a sub)- line of services.

Bearing in mind what has been said above, it is concluded that the relevant public may believe that the services in question, found to be identical, come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s earlier European Union trade mark registration No 1 620 434. It follows that the contested trade mark must be declared invalid for all the contested services.

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, he must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Oana-Alina STURZA

Irina SOTIROVA

Boyana NAYDENOVA

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.