CANCELLATION No 13849 C (INVALIDITY)

Snapfy Teknoloji Sanayi Ve Ticaret Anonim Sirketi, Maden Mah. Gediz Sokak No:7, 34450 Sariyer Istanbul, Turkey (applicant), represented by Esquivel, Martin, Pinto & Sessano European Patent and Trade Mark Attorneys, Calle de Velázquez, 3 - piso 3, 28001 Madrid, Spain (professional representative)

a g a i n s t

Marco Cavazzana, Renstiernas gata 47, 135 52 Stockholm, Sweden (EUTM proprietor).

On 31/05/2018, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 13 356 423 is declared invalid for some of the contested goods and services, namely:

Class 9: Application software.

Class 45: On-line social networking services.

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

Class 16: Prints.

4. Each party bears its own costs.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 13 356 423 for the figurative mark . The application is based on European Union trade mark registration No 11 071 396 ‘SNAPFY’ (word). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claims that there is a likelihood of confusion because the signs are aurally identical and visually extremely similar. Conceptually, the applicant alleges that the signs both refer to photography as ‘SNAP’ is said to mean ‘photography’ and ‘FY’ “referred/related to”. As regards the goods and services, the applicant particularly argues that the goods and services in Classes 16 and 45 are merely complements of the goods application software in Class 9 and, as a result, should also be considered similar to the applicant’s goods.

The EUTM proprietor did not submit any observations in reply to the application.

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 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 goods on which the application is based are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines; computer software; fire-extinguishing apparatus.

The contested goods and services are the following:

Class 9: Application software.

Class 16: Prints.

Class 45: On-line social networking services.

Contested goods in Class 9

The contested application software overlaps with the applicant’s computer software. Therefore, these goods are identical.

Contested goods in Class 16

The contested prints are dissimilar to the applicant’s goods in Class 9. The applicant’s claim that these goods are only accessories to the contested application software must be dismissed. Prints are pictures that have been printed from a block or plate on which designs have been cut out. Such goods are not usually used together with software. The applicant’s goods in Class 9 can all be generally described as specialised, technical products that differ clearly in nature from the contested goods in Class 16. Even though there may some points of contact between these goods, particularly including teaching apparatus and instruments, and the contested goods which may all target the same public and be used in the field of education, they differ in all the other aspects. Their method of use is different. They do not serve the same purpose, are usually manufactured by different companies and marketed through different distribution channels. These goods are also neither in competition nor complementary. Therefore, they are considered dissimilar.

Contested services in Class 45

The contested on-line social networking services are similar to the applicant’s computer software which includes mobile applications. It is common for the contested services to be provided through such mobile applications and the mobile application is usually marketed by the same company that provides the services. Therefore, and although goods and services are essentially different in nature, these goods and services are considered similar as they coincide in their usual origin and general purpose. They target the same public and may be offered through the same distribution channels.

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 and services found to be identical or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high depending on the specialised nature and price of the goods and the context in which the services are rendered.

3. The signs

SNAPFY
Earlier trade mark	Contested trade mark

The relevant territory is 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 earlier mark is a word mark. As such, it protects the verbal element as such and not its written portrayal. It is therefore irrelevant, in particular, whether it is written in upper or lower case letters.

The contested mark is a figurative mark consisting of the verbal element ‘znapify’ written in standard lower case letter against a white background in a black rectangular frame.

The applicant claims that the element ‘SNAPFY’ means photography (SNAP) and ‘referred to/related to’. While the Cancellation Division agrees that the English-speaking public will understand the element ‘SNAP’ as referring to a photograph as claimed by the applicant, the element ‘FY’ is just a common suffix used in verbs that derive from nouns which will not be perceived as having an independent meaning. Although the verb SNAPFY does not exist, this element may indeed be perceived as meaning ‘turning something into a photograph’ by the English-speaking public.

However, the same meaning will not be perceived in the element ‘znapify’ as the opponent argues. “znap” is not a common misspelling of “snap” and the word “znapify” or “snapify” does not exist. Even the English-speaking public is, therefore, highly unlikely to perceive the concept of a photograph arising from that word as the applicant claims.

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, by analogy). 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. In the present case, as the abovementioned allusive meaning of ‘SNAPFY’ may have an impact on its distinctive character, the Cancellation Division finds it appropriate to focus the comparison of the signs on the non-English-speaking public.

As ‘SNAPFY’ has no meaning for the relevant non-English-speaking public and it will be perceived as a fanciful word with normal distinctiveness.

The verbal element ‘znapify’ of the contested sign is meaningless and, therefore, distinctive for the relevant goods and services. The figurative elements of that mark are banal and as such non-distinctive. There is no element in the contested sign that would be more dominant than others.

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.

Visually, the signs coincide in five out of six or seven letters respectively which appear in the same order (NAP-FY). They differ in their first letters ‘S’ and ‘Z’. They also differ in the additional ‘I’ and stylization of the contested sign. However, as mentioned above, the figurative elements are non-distinctive. As the additional ‘I’ is located in the middle of the contested sign, this difference will be more easily overlooked.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛NAP‑FY’, present identically in both signs. The pronunciation differs in the sound of the letters ‘S’ and ‘Z’ which is, however, very similar in most languages when followed by the letter ‘N’. In some languages such as Danish, the pronunciation of these letters will even be identical. The signs also differ in the additional sound of the letter ‛I’ of the contested sign, which has no counterpart in the earlier sign but is located in the middle of the signs and as such may not be clearly pronounced or perceived.

As the pronunciation of the initial part of the signs is very similar and there are only slight differences in the middle of the contested signs, the signs are aurally at least similar to an above average degree. For those consumers that perceive no difference in the pronunciation of ‘S’ and ‘Z’ the aural similarity will be high.

Conceptually, neither of the signs has a meaning for the non-English-speaking public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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

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).

Account is taken of the fact 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). 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).

The signs have been found to be visually similar to an average degree and aurally at least to an above average degree. In particular, the initial letters are also visually and aurally similar to a certain extent. Regardless the level of attention the signs will thus be perceived as very similar, particularly from an aural point of view. In the absence of any conceptual aspects that could enable the relevant non-English-speaking consumer to safely distinguish between the signs the visual and aural differences are not even sufficiently distinct to exclude a likelihood of confusion on part of the profession public. The likelihood of confusion is increased for the general public as it is more prone to confusion.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the non-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. 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.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods 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 against these goods cannot be successful.

The cancellation application must also fail insofar as it is based on grounds under Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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(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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Jose Antonio GARRIDO OTAOLA

Elena NICOLÁS GÓMEZ

Ana MUÑIZ RODRÍGUEZ

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.