CANCELLATION No 24541 C (INVALIDITY)

I Lan Foods Industrial Co., Ltd., No. 19-13, Shin Cheng N. Road, Shin Cheng Li, Su-Aou, I Lan, Taiwan (applicant), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Supermercados Oriental Food Store S.L., C/ Dolores Barranco, 27 Local, 28026 Madrid, Spain (EUTM proprietor), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative).

On 23/05/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 13 636 915 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 13 636 915 . The application is based on, inter alia, European Union trade mark registration No 4 816 575 . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

The applicant also invoked Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion, including a likelihood of association, between the trademarks in conflict because the signs are visually, aurally and conceptually nearly identical, given that they share the exact same device, the word elements and the same figurative arrangement, and the goods and services are identical and/or similar.

It also argues that the application was filed in bad faith since it had knowledge that the applicant’s trade marks were well-known in China and the purpose of the EUTM proprietor is to ‘free-ride’ on the reputation of the invalidity applicant’s registered marks and to take advantage of that reputation. Indeed, the device is identical, as are the Chinese characters, so it is obvious that the proprietor wants to take advantage of the reputation of the earlier sign in China (and therefore known to Chinese traders doing business in the EU) to introduce it on the EU market.

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

Annex 1: Extracts showing the particulars of the earlier marks.

Annex 2: Screenshot of pages from the website of the Chinese Trade Mark Office showing the status of the earlier mark “旺旺” and an extract from Wikipedia about Want Want Holdings Limited.

Annex 3: Pictures showing products bearing the earlier marks.

Annex 4: Sponsorship of the earlier mark on the Cinemania Film Festival which took place from 7-12 March 2017 in Amsterdam.

Annex 5: An extract which shows a list of the stores in The Netherlands and Germany.

Annex 6: List of other marks of the EUTM proprietor.

The EUTM proprietor did not argue or submit evidence 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.

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 European Union trade mark registration No 4 816 575.

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 29: Pork, dried meat floss, fish products, canned foods, canned meat, fruit preserves, ketchup, jams, pickles, sauerkraut, soup, eggs, milk beverages (milk based), milk products, edible oils, raisins, potato chips, fruit salad, frozen fruits, jellies, jellies for food, processed peanuts, edible jew's ears, tofu.

Class 30: Cakes, bread, waffles, sherbets (ices), fondant, peanut confectionery, rice, biscuits, rice crackers, ginger bread, peppermint sweets, tea, coffee-based beverages, sugar, honey, fried noodle cakes, egg roll cookies, oatmeal, wheat flour, instant noodles, instant bean noodles, instant rice noodles, gluten for food, starch for food, cooking salt, vinegar, condiments, yeast, aromatic preparations for food, meat tenderizers for household purposes, coffee, cocoa, tapioca, sago, artificial coffee, flour and preparations made from cereals, pastry and confectionery, ices, treacle, baking-powder, mustard, sauces (condiments), spices; mint cookies, prepared cereal foods, soya sauce, mustard meal; milk tea, ging-seng tea, herbal tea, not for medical use.

Class 32: Beer, draught beer, aerated water, fruit juice, mineral water.

The contested goods and services are the following:

Class 29: Salted fried beans; Fruit jellies.

Class 30: Rice biscuits; wheat crackers; Fruit sweets (confectionery).

Class 35: Sale in shops and via global computer networks of foodstuffs.

Contested goods in Class 29

The contested fruit jellies are included in the broader category of the applicant’s jellies. Therefore, they are identical.

On the other hand, the contested salted fried beans are similar to the applicant’s potato chips since they have the same nature and purpose, are addressed to the same users and distributed through the same channels.

Contested goods in Class 30

The contested rice biscuits are included in the broader category of the applicant’s biscuits. Therefore, they are identical. In the same sense, the contested fruit sweets (confectionery) are included in the broader category of the applicant’s confectionery, being identical.

Moreover, the contested wheat crackers are included in the broader category of the applicant’s preparations made from cereals Therefore, they are identical.

Contested services in Class 35

The applicant’s goods included in Classes 29 and 30 are a variety of items which fall into the broad category of foodstuff.

Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale and it allows consumers to satisfy different shopping needs in one place and are usually directed at the general consumer.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested sale in shops of foodstuffs is similar to a low degree to the applicant’s goods in Classes 29 and 30.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as the contested sale via global computer networks of foodstuffs in Class 35. They are also similar to a low degree to the applicant’s goods in Classes 29 and 30.

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 or similar are mass consumption products directed at the public at large. The degree of attention will vary from low to average. A lower degree of attention can be associated, in particular, with habitual buying behaviour. Purchase decisions in this area relate to, for example, inexpensive goods purchased on a daily basis (judgment of 15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43).

As regards the services found to be similar to a low degree, they are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will be, as a whole, average.

3. The signs

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 marks under comparison are figurative marks which consist of a central common element representing a toddler smiling and looking upwards, although his tongue is represented in red in the contested mark whereas it is depicted in black in the earlier mark. His arms and legs are widely open and he is wearing suspender trousers in yellow, blue and red in the contested mark and in black and white in the earlier mark. Since this element has no direct and immediate relation to the relevant goods and services, it has an average degree of distinctive character. The figurative element included in both trade marks is the most eye-catching element by virtue of its central position and size. Therefore it is the visually dominant element of both trade marks.

Below the central element and in a smaller size, the earlier mark includes the phrase ‘WANT WANT’ written in standard black letters linked by a hyphen (-). It will be understood by the English-speaking part of the relevant public as an informal expression meaning a person that has a strong desire to possess or do (something) whereas for the remaining part of the relevant public it conveys no meaning. Be that as it may, since such phrase does not have a clear and direct message to the relevant goods, it has an average degree of distinctive character.

On the other hand, the contested mark includes verbal elements which are written below the figurative element and in a smaller size which consist of the Asian characters ‘旺旺’ linked by a hyphen (-) or they might be perceived as a figurative element. Although a part of the relevant public might perceive the Asian characters as the letters ‘BI BI’ linked by a hypen (-), for the majority of the European public they will convey no meaning. For those consumers that will perceive those characters as a figurative element, it does not convey any meaning. Be that as it may, since they have no relation to any of the relevant goods and services, their level of distinctiveness is average.

At the bottom of the contested mark and in a smaller size, ‘WANG WANG’ is represented in standard black letters. They are fanciful terms and therefore distinctive to an average degree.

The applicant argues that the term ‘WANG WANG’ is the transliteration of the Chinese characters ‘旺旺’. However, the Cancellation Division considers that it is unlikely that the relevant consumers will perceive ‘WANG WANG’ as the transliteration of the Asian characters. Therefore, the applicant’s argument is dismissed as unfounded.

Visually, the signs coincide in the representation of a toddler depicted in the same posture, the same costumes although in different colours and the same position of the arms and feet. They also coincide in the string of letters ‘WAN* WAN*’ and in the graphical representation and the position of the verbal and figurative elements within the signs.

However, the signs differ in the colours of the suspender trousers as mentioned above and in the tongue as well as in the final letters T of ‘WANT WANT’ and the hyphen in the earlier mark versus the letters ‘G’ of ‘WANG WANG’ of the contested mark. Finally, they also differ in the other element of the contested mark either if it consists of Asian characters or a figurative element or are perceived as the letters ‘BI BI’.

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 ‘WAN* WAN* placed in the same position and order which produces the same rhythm and intonation. The pronunciation differs in the sound of the final letters ‘T’ in the earlier mark versus ‘G’ of the contested mark. The Cancellation Division also considers that the hyphen will not be pronounced by the relevant public. The signs also differ in the Asian characters in case they will be perceived and pronounced as the letters ‘BI BI’.

Therefore, the signs are aurally highly similar for a part of the consumers and similar to an average degree for those consumers who will pronounce the Asian characters as the letters ‘BI BI’.

Conceptually, the public in the relevant territory will perceive the representation of the figurative element of both marks as a reference to a toddler. The marks under comparison differ in the meaning of the verbal elements ‘WANT-WANT’ included in the earlier mark, which will be understood by the English-speaking part of the public and in the Asian characters of the contested mark in case they will be perceived as a figurative element.

Since the marks convey the same concept on account of the common silhouette of a toddler depicted in the same position wearing suspender trousers, the signs are conceptually similar to an average degree for the English speaking part of the public. However, the signs will be conceptually similar to a high degree for the non-English speaking consumers.

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.

According to the applicant, the earlier mark has been extensively used and enjoys reputation.

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

The Court has set out the essential principle that 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

The interdependence of those factors is expressly referred to in the preamble to the EUTMR, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (10/09/2008, T‑325/06, Capio, EU:T:2008:338, § 72 and the case-law cited).

The goods and services are in part identical and in part similar to various degrees, the degree of attention of the relevant public varies from low to average for the relevant goods and average for the relevant services and the distinctiveness of the earlier mark is normal.

In the present case, it is considered that the similarities between the signs are enough to counteract the dissimilarities between them. The fact that they share the same concept of a toddler represented in the same position with the same costume, although in different colours, which is the dominant element, and an additional verbal element placed in the same position within the signs with the same string of letters ‘WAN* WAN*’ creates the same overall impression and does render the signs similar. The final letters ‘T’ versus ‘G’ of the verbal elements included in both signs respectively and the other element of the contested mark being a figurative element, which are not pronounced, or being the letters BI BI, is not sufficient to counteract that the signs are similar and that there is a likelihood of confusion for the identical and similar goods and services.

Moreover and taking into account the interdependence principle expressed above, the contested trade mark must be rejected also for the services found to be similar to a low degree to the goods of the earlier trade mark as the obvious similarities between the signs offset the differences between them.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 4 816 575. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

Since the cancellation application is 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 reputation as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right No 4 816 575 leads to the success of the application and the cancellation of the contested trade mark for all the goods and services against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the application, namely Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR and Article 59(1)(b) EUTMR.

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, it 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

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

Michaela SIMANDLOVA

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.