CANCELLATION No 12 348 C (INVALIDITY)

Roca Sanitario, S.A., Av. Diagonal, 513, 08029 Barcelona, Spain (applicant), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Alliages Ceramiques, Rue Stuart Mill Zone Industrielle de Magre, 87000 Limoges, France (EUTM proprietor), represented by Bernard Soyer Conseil, 45 avenue Marceau, 75116 Paris, France (professional representative).

On 04/08/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 13 394 515. The application is based on, inter alia, international trade mark registration No 905 212 designating the European Union and the Spanish trade mark registration No 2 630 486. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b), 8(2)(c) and 8(5) EUTMR. The applicant claimed that its trade marks are reputed and well known in Spain for goods in Classes 11, 20 and 21.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the earlier marks are reputed and well known in Spain. It also states that the goods covered by the marks are identical and the signs are similar (the aural perception is more important than the visual one in this case). To support its arguments for similarity the applicant quotes two previous decisions of the EUIPO: decision of 17/11/2014 in case R 421/2014-4 regarding the similarity between ARGO and ERGO, where the Board found that at least for the German and Dutch public the marks are aurally very close, and the Opposition Decision No B 2 211 608 regarding the similarity between the marks NORO and KORO.

In support of its observations, the applicant filed the following evidence:

1. Decision of 6^th May 1997 of the administrative appeal filed before the Spanish Patent and Trademark Office (SPTO) (in Spanish and the translation into English thereof) where the trade mark application No 1 973 069 R ROCA GRUPO (figurative) in Class 42 is rejected because of the well-known character of the ROCA trade mark No 1 020 059 in the name of Compañia Roca Radiadores SA (former name of Roca Sanitario SA).

2. Decision of the SPTO (in Spanish and the translation into English thereof) of 19^th April 2006 ruling on the opposition filed against the trade mark application No 2 651 349 ROCACERAMIC in Classes 19 and 39, because of the reputation of the earlier ROCA trade marks M 1 012 241 and M-915 635 belonging to the applicant.

3. Data regarding the sales (in thousands of euro) from 1985 to 2005 of Compañia Roca Radiadores SA (former name of Roca Sanitario SA) and Roca Sanitario SA.

4. Data regarding the sales (in thousands of euro) from 1985 to 2005 of the Roca Group.

5. Evolution of sales (in thousands of units) from 1985 to 2005 regarding porcelain.

6. Article in Spanish “Las Marcas Con Mas Prestigio” (“The trade marks with more prestige”) published in the Spanish newspaper ‘El Pais’ on 10^th June 2007. The ‘ROCA’ trade mark appears first in a table titled “Las 5 primeras marcas españolas mas renombradas”. The applicant claims that the trade mark ‘ROCA’ is considered the most reputed trade mark in Spain. The content of the article has not been translated into the language of the proceedings, English.

7. Article “El poder de las marcas” “(“The power of trade marks”) published in the Spanish newspaper ‘El Pais’ on 10^th June 2007 with the trade mark ‘ROCA’ appearing first in a list entitled “marcas españolas más renombradas por sectores”. The applicant claims that this article also considers the trade mark ‘ROCA’ as the most reputed trade mark in Spain. The content of the article has not been translated into the language of the proceedings, English.

8. Copy of the article “El Gran Consumo, Protagonista” (“Mass Consumption, Protagonist”) published in the Spanish newspaper ‘El Pais’ on 10^th June 2007 with references to the ‘ROCA’ trade mark and a list entitled “50 primeras marcas españolas mas renombradas” where the trade mark ‘ROCA’ appears in the first place. The content of the article has not been translated into the language of the proceedings, English but the applicant claimed that the list shows the 50 most reputed Spanish trade marks.

9. Copy of the article “Armani se asocia con ROCA para crear su division de cuartos de baño” (“Armani goes into partnership with ROCA to create its bathroom division”) published in the Spanish newspaper ‘La Vanguardia’ the 16^th of April 2010 with references to the Roca Group and the ‘ROCA’ trade mark. The content of the article has not been translated into the language of the proceedings, English.

10. Copy of the 2007 ranking of best Spanish trade marks according to their value prepared by INTERBRAND where the ROCA trade mark appears in the 25^th place with a value of EUR 272 million; the entire document is in Spanish and has not been translated into English.

11. Copy of the 2009 Annual Report of the Roca Group including information in Spanish and English about:

    • The Roca Group turnover (EUR 1.420 million) and sales in the Spanish market (EUR 401 million);

    • The prizes received. For instance: the ‘Red Dot Award for Communication Design’ and ‘the ISH 09 Design Plus Prize’, or the Spanish ‘Premio Superbrands’;

    • The audited annual accounts.

The EUTM proprietor did not file any arguments in reply.

REPUTATION – ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

According to Article 53(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, a European Union trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, where there is an earlier mark as referred to in Article 8(2) EUTMR and the conditions set out in paragraph 5 of that Article are fulfilled (that is, where the contested trade mark is identical with, or similar to, the earlier trade mark and it is registered for goods or services which are identical to, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark).

Therefore, the grounds of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The earlier trade mark must have a reputation. As to relevant moment in time, it has to be pointed out that an invalidity applicant must prove that its earlier right(s) has/have acquired a reputation by the filling date of the contested EUTM (taking into account, where appropriate, any priority claimed) and also that earlier right(s) continue(s) to enjoy reputation at the time the decision on invalidity is taken. Moreover, reputation must exist in the territory concerned and for the goods and/or services on which the application is based and for which reputation is claimed.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for a declaration of invalidity under Article 53(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (by analogy 16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The application for a declaration of invalidity may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the present case, the EUTM proprietor did not claim to have due cause for using the contested mark. Therefore and in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier marks

According to the applicant, the earlier marks have a reputation in Spain.

Reputation implies a knowledge threshold which is reached only when the earlier marks are known by a significant part of the relevant public for the goods or services they cover. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 23/10/2014. Therefore, the applicant was required to prove that the trade marks on which the application for a declaration of invalidity is based had acquired a reputation in Spain prior to that date and that they continue to enjoy a reputation at the time the decision on invalidity is taken. Indeed, the requirements of Article 53(1)(a) EUTMR that there is an earlier mark [...] and that the conditions set out in paragraph 5 of Article 8(5) EUTMR are fulfilled (emphasis added) have to be interpreted in the sense that reputation of the earlier mark must also exist by the time of filing the request for invalidity and subsist by the date when the decision is taken. This is because in invalidity proceedings the time span between the filing date of the contested EUTM and the invalidity decision can be considerable and it cannot be normally presumed, in the absence of evidence that reputation subsists.

Furthermore, the evidence must also show that the reputation was acquired for the goods for which the applicant has claimed reputation, namely:

IR No 905 212

Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, sanitary apparatus and taps; water heaters; air-conditioning and water heating installations; feeders and boiler pipes for heating installations and feeders, pipes and flue conduits for heating boilers; radiators and heating plates, and electric radiators; humidifiers for central heating radiators; air valves for steam heating installations; solar panels and collectors; water filtration and purification apparatus and installations; water intake apparatus; regulating and safety accessories for water or gas apparatus and for water or gas conduits; gas scrubbing apparatus; filters for air conditioning; facial vaporizers; bathtubs (spa baths) and portable Turkish baths cabinets; hand-drying apparatus for washbasins.

Class 20 Furniture of all kinds, particularly furniture for toilets and kitchens; plastic indoor blinds and their slats; plastic boxes, cases and containers; mirrors and picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; decorative wall fittings (not of textile); non-metallic locks (other than electric); non-metallic plugs; plastic valves for drain pipes and water supply valves; plastic drain traps (valves) and non-metallic valves (other than machine parts); mirrors (silvered glass).

Class 21 Combs, brushes, sponges, soap dishes, sponge holders, washbasins, buckets, basins, brush holders, coasters, soap savers, soap dispensers, toilet brushes, toilet paper roll holders, towel holders (of non-precious metal); perfume and cologne sprayers; baby bathtubs; heat-insulated containers; ceramics for household purposes; glass and porcelain flasks; glassware; bottles, insulated flasks, jugs, pitchers, vases, mortars, salt cellars, cooking pot sets, flower pots, fruit bowls, pots, non-electric coffeepots, teapots, oil and vinegar cruets; laundry drying racks, laundry hangers and ironing boards; porcelain, terra cotta or glass works of art; cooking utensils and containers for household or kitchen use (of non-precious metal); watering devices.

ES No 2 630 486

Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, sanitary apparatus and taps; water heaters (apparatus); air conditioning installations and water heating installations; feeding apparatus and pipes for heating boilers and feeding apparatus, pipes and flues for heating boilers; radiators and heating plates, and electric radiators; humidifiers for central heating radiators; air valves for steaming heating installations; solar plates and collectors; apparatus for filtering and purifying water; water intake apparatus; regulating and safety accessories for water or gas apparatus and pipes; gas scrubbing apparatus; air filters; steam facial apparatus; bath tubs (spa baths) and transportable Turkish bath cabinets; hand drying apparatus for washrooms.

Class 20 Furniture of all kinds, in particular furniture for bathrooms and kitchens; indoor blinds of plastic and slats therefore; boxes, cases and plastic containers; mirrors and frames; goods (not included in other classes) of wood, cork, reed, cane, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics.; decorative wall plaques, not of textile; non-metallic lock (not electric); bungs, not of metal; waste water fittings and water-pipe valves of plastic; drain traps of plastic (valves) and non-metallic valves (except parts of machines); silvered glass (mirrors).

Class 21 Combs, brushes, sponges, soap holders, washbasins, buckets, washbowls, brush holders, coasters, soap trays, soap dispensers, toilet brushes; holders for toilet paper rolls, towel holders (not of precious metal); perfume and cologne vaporisers; baby bathtubs; heat-insulated containers; ceramics of household purposes; glass and ceramic jars; glassware; bottles, insulated flasks, jugs, pitchers, vases, mortars, saltcellars, cooking pot sets, flowerpots, fruit bowls, crocks, non-electric coffee makers, teapots, cruets; dryers, airers and ironing boards; works of art made of porcelain, fired clay or glass; kitchen utensils and containers for household or kitchen use (not of precious metal); sprinkling devices.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

Assessment of the evidence

The applicant filed evidence in order to shows that the trade marks ROCA have been considered by the Spanish Patent and Trade Marks Office as reputed in Spain. Nevertheless these documents are insufficient as such for the Office to conclude that indeed the earlier trade marks have a reputation in Spain.

First, decisions of national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

However, even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

That being said, the decisions rendered in the previous cases referred to by the applicant are not relevant to the present proceedings because on one hand they refer to other trade marks than the ones involved in the present proceedings and the Cancellation Division does not have information about the nature of the respective signs or whether or not they are identical to the earlier signs in the present proceedings. On the other hand, there is no information on the factual/legal background of the cases presented or about the evidence on which the Spanish Patent and Trade Marks Office based the respective decisions. Apart from that, the decisions submitted are dated long time ago (in 1997 and 2006) and the applicant should have demonstrated that such reputation still existed at least on 23/10/2014.

The documents filed as exhibits 6 to 10 which are articles from Spanish newspapers are also insufficient to prove the reputation of the earlier marks in Spain. They are dated in 2007 (exhibits 6, 7, 8 and 10) and 2010 (exhibit 9) therefore seven and four years respectively before the filing date of the contested EUTM. The applicant translated only the title of those articles not also their content. The Office only requests translations as regards evidence presented as proof of use; when these documents should serve as evidence of reputation, they must be considered evidence in support of the application pursuant to Rule 38(2) EUTMIR and the applicant should have filed translations on its own motion. Therefore, it is quite complicated to assess the importance of these articles only having the scarce information provided by the applicant about their content and the translation of the articles’ titles. Apart from that, the information about the goods or services for which the marks are considered reputed is missing.

Last but not least, the documents listed under points 3, 4, 5 and 11 originate from the applicant itself. They refer to the period 1985-2005 or contain the annual report for 2009; therefore they provide some date about periods almost nine to twenty-nine years earlier or, respectively, five years earlier than the EUTM’s filing date. Furthermore, they actually refer to the company of the applicant and less or not at all to the actual earlier trade marks. For example, the annual report which is written in Spanish and English gives information only about the applicant’s company. The Cancellation Division cannot estimate what percentage of the turnovers of the company are related to the ROCA trade marks only; neither it can assume that these turnovers are related exclusively to the ROCA trade marks.

To sum up, the evidence does not provide information on the degree of recognition of those trade marks by the relevant public at the moment of the EUTM filing. The evidence, even taken as a whole, does not allow for the conclusion to be drawn that a significant part of the Spanish public is familiar with the earlier trade marks.

As seen above, one of the cumulative requirements for the application for a declaration for invalidity to be successful under Article 8(5) EUTMR is that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled.

For the sake of completeness, the Cancellation Division notes that the applicant should have filed evidence or at least put forward a coherent line of arguments, showing what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

WELL KNOWN TRADE MARKS - ARTICLE 8(2)(c) IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

The applicant claimed that the earlier signs are also well known in Spain.

The threshold for establishing whether a trade mark is well known is usually the same as the threshold for establishing reputation. Therefore, the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the relevant public and for the goods for which use has been proved.

The evidence submitted by the applicant to prove the reputation of the earlier trade marks has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR. Therefore, having examined the material listed above, the Cancellation Division finds that the evidence does not show that the earlier marks have become well known in the relevant territory.

As it has not been proven that the earlier marks are well known by the relevant sector of the public, the invalidity request based on Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR must be rejected as unfounded.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONJUNCTION 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 goods on which the application is based are the following:

IR No 905 212

Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, sanitary apparatus and taps; water heaters; air-conditioning and water heating installations; feeders and boiler pipes for heating installations and feeders, pipes and flue conduits for heating boilers; radiators and heating plates, and electric radiators; humidifiers for central heating radiators; air valves for steam heating installations; solar panels and collectors; water filtration and purification apparatus and installations; water intake apparatus; regulating and safety accessories for water or gas apparatus and for water or gas conduits; gas scrubbing apparatus; filters for air conditioning; facial vaporizers; bathtubs (spa baths) and portable Turkish baths cabinets; hand-drying apparatus for washbasins.

Class 20 Furniture of all kinds, particularly furniture for toilets and kitchens; plastic indoor blinds and their slats; plastic boxes, cases and containers; mirrors and picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; decorative wall fittings (not of textile); non-metallic locks (other than electric); non-metallic plugs; plastic valves for drain pipes and water supply valves; plastic drain traps (valves) and non-metallic valves (other than machine parts); mirrors (silvered glass).

Class 21 Combs, brushes, sponges, soap dishes, sponge holders, washbasins, buckets, basins, brush holders, coasters, soap savers, soap dispensers, toilet brushes, toilet paper roll holders, towel holders (of non-precious metal); perfume and cologne sprayers; baby bathtubs; heat-insulated containers; ceramics for household purposes; glass and porcelain flasks; glassware; bottles, insulated flasks, jugs, pitchers, vases, mortars, salt cellars, cooking pot sets, flower pots, fruit bowls, pots, non-electric coffeepots, teapots, oil and vinegar cruets; laundry drying racks, laundry hangers and ironing boards; porcelain, terra cotta or glass works of art; cooking utensils and containers for household or kitchen use (of non-precious metal); watering devices.

ES No 2 630 486

Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, sanitary apparatus and taps; water heaters (apparatus); air conditioning installations and water heating installations; feeding apparatus and pipes for heating boilers and feeding apparatus, pipes and flues for heating boilers; radiators and heating plates, and electric radiators; humidifiers for central heating radiators; air valves for steaming heating installations; solar plates and collectors; apparatus for filtering and purifying water; water intake apparatus; regulating and safety accessories for water or gas apparatus and pipes; gas scrubbing apparatus; air filters; steam facial apparatus; bath tubs (spa baths) and transportable Turkish bath cabinets; hand drying apparatus for washrooms.

Class 20 Furniture of all kinds, in particular furniture for bathrooms and kitchens; indoor blinds of plastic and slats therefore; boxes, cases and plastic containers; mirrors and frames; goods (not included in other classes) of wood, cork, reed, cane, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics.; decorative wall plaques, not of textile; non-metallic lock (not electric); bungs, not of metal; waste water fittings and water-pipe valves of plastic; drain traps of plastic (valves) and non-metallic valves (except parts of machines); silvered glass (mirrors).

Class 21 Combs, brushes, sponges, soap holders, washbasins, buckets, washbowls, brush holders, coasters, soap trays, soap dispensers, toilet brushes; holders for toilet paper rolls, towel holders (not of precious metal); perfume and cologne vaporisers; baby bathtubs; heat-insulated containers; ceramics of household purposes; glass and ceramic jars; glassware; bottles, insulated flasks, jugs, pitchers, vases, mortars, saltcellars, cooking pot sets, flowerpots, fruit bowls, crocks, non-electric coffee makers, teapots, cruets; dryers, airers and ironing boards; works of art made of porcelain, fired clay or glass; kitchen utensils and containers for household or kitchen use (not of precious metal); sprinkling devices.

The contested goods are the following:

Class 11: Sinks; kitchen sinks of metal (in particular of stainless steel), enamel, plastic material, natural stone, artificial stone or ceramic.

The contested goods are included in the earlier marks goods of Class 11 sanitary apparatus. These goods are considered 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 relevant goods are primary used for sanitary purposes. However they also have an important decorative function and thus the clients looking for such goods will pay a higher attention to elements like design, colour, quality, size, durability or material. The degree of attention may vary from average to high.

3. The signs

	IOKA
Earlier trade marks	Contested trade mark

The relevant territory is the European Union and Spain for the Spanish earlier trade mark.

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 marks are figurative marks composed of the word ‘Roca’ in bold black rather standard title case, underlined by an interrupted waiving line which becomes straight under the letter ‘a’. The contested mark is a word mark composed of the term ‘IOKA’.

The earlier marks’ element ‘ROCA’ means in Spanish and Romanian ‘a stone, very hard and solid’. Bearing in mind that the relevant goods can be made of stone or can be promoted as being as solid as stone, it is considered that this element is weak for the relevant goods, i.e. sanitary apparatus in Class 11, as the public will understand its meaning. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. The figurative element of the earlier marks has a purely decorative function.

The trade marks have no elements which are clearly more dominant (visually outstanding) than other elements.

Visually, the signs coincide in their second and last letters (‘O’ and ‘A’) and differ in the first and third letters (R and C of the earlier marks against I and K of the contested sign) as well as in the stylization of the earlier marks. The marks are visually similar to a very low 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 last three letters of the signs O‑C/K‑A. The pronunciation differs in the sound of the first letters of the signs ‘R’ against ‘I’. Therefore, the signs are similar to an average degree from an aural point of view.

Conceptually, as mentioned above the earlier marks have a meaning in Spanish and Romanian. The other sign is meaningless in all the relevant territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar as regards Spain and Romania.

For the public who will not confer any meaning to the signs in conflict, a conceptual comparison is not possible; therefore, 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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion. According to the applicant, the earlier trade marks are reputed and well known in Spain. However, as explained above the applicant did not succeed in proving its allegations.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se.

Considering what was stated above in section c) of this decision, concerning the Romanian and Spanish public the distinctiveness of the earlier marks must be seen as low for the relevant goods sanitary apparatus in Class 11.

The marks have a normal degree of distinctiveness for the remaining part of the relevant territory, where they have no meaning for the abovementioned goods.

5. Global assessment, other arguments and conclusion

The goods in conflict are identical and the marks have been found visually similar to a low degree, aurally similar to an average degree and conceptually either not similar or a conceptual comparison will not influence the assessment of similarity between the signs. The earlier marks’ distinctiveness as regards the Spanish and Romanian territories is weak whereas the earlier IR has a normal distinctiveness as regards the remaining Member States.

That being said, the Cancellation Division considers that a likelihood of confusion is safely excluded in the case at hand. As regards the Romanian and Spanish public for which the earlier marks have a low degree of distinctiveness, the average degree of aural similarity and the low degree of visual similarity are not sufficient to tip the balance in favor of likelihood of confusion.

For the remaining public, considering what it was mentioned in section b), it is the Cancellation Division’s opinion that the visual aspect has a stronger impact as regards the relevant goods. Since there is only a low degree of visual similarity and since the differentiating letters are clearly dissimilar from a visual point of view, taking also into account that the marks are quite short and, therefore, every distinguishing element will be noticed by the attentive public (especially since one of those elements is at the beginning of the signs), the Cancelation Division concludes that also for the remaining part of the public the likelihood of confusion does not exist.

Finally, the Cancellation Division considers that the Office’s previous decisions invoked by the applicant are not relevant for the case at hand. The similarity between the marks ERGO and ARGO in case R 421/2014-4 is obviously higher than in the case at hand, because apart from sharing three letters in common they both start with vowels which in some languages such as Dutch and German sound rather close. This is not applicable to the case at hand.

As regards the Opposition Decision in case B 2 211 608, the applicant quoted the paragraph referring to judgment of 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, which stated that consumers generally tend to remember similarities rather than dissimilarities between signs. However a more recent judgment of the Court states exactly the opposite:

It cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. In accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs (13/05/2015, T-169/14, Koragel/CHORAGON, EU:T:2015:280, § 84).

Conclusion

The Cancellation Division concludes that the invalidity request is unfounded in its entirety.

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 applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Victoria DAFAUCE MENÉNDEZ

Ioana MOISESCU

Oana–Alina STURZA

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.

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 from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.