CANCELLATION No 14 507 C (INVALIDITY)

Zill GmbH & Co. KG, Hanns-Martin-Schleyer-Str. 31, 89415 Lauingen, Germany (applicant), represented by Charrier Rapp & Liebau, Fuggerstr. 20, 86150 Augsburg, Germany (professional representative)

a g a i n s t

British Polythene Limited, One London Wall, London EC2Y 5AB, United Kingdom (EUTM proprietor), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative).

On 16/09/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 13 714 209 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 of European Union trade mark No 13 714 209 ‘POLIWRAP’ (word mark), namely against all the goods in Classes 16, 17 and 19. The application is based on German trade mark registration No 39 755 863 and international trade mark registration No 706 341 designating the Benelux countries, Denmark, Estonia, France, Italy, Lithuania, Hungary, Austria, Romania, Slovenia, Finland and Sweden and the UK. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

On 02/08/2018 the Cancellation Division took a decision which resulted in the rejection of the cancellation application pursuant to Article 64(2) and (3) EUTMR on the grounds that the evidence submitted by the applicant was insufficient to prove that the earlier trade mark had been genuinely used.

The decision was appealed and the Board of Appeal decided in case R 1613/2018-2 on 23/07/2019. The Board’s decision annulled the contested decision and remitted the case to the Cancellation Division for further prosecution. The Board examined the evidence of use in detail and considered that the applicant had sufficiently proven the use of the earlier German trade mark registration No 39 755 863 for plastic sheeting for agricultural purposes, in Class 17. Therefore, it annulled the contested decision and remitted the case back to the Cancellation Division to examine the application under Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the scope of the earlier marks covers all goods made of plastic and therefore, that it is identical to the contested goods. It also states that the signs at issue are nearly identical and that therefore, there exists a likelihood of confusion.

The EUTM proprietor requests the applicant to submit proof of use of the earlier marks on which the application is based. The proprietor claims that the applicant has incorrectly indicated the territories for which the international mark is registered and must prove this point. Moreover, the proprietor claims that the applicant has not submitted information in English about the goods for which this international mark is registered and which have been granted for each country designated. Consequently, it requests the applicant to submit evidence of the scope and protection of the international registration in each country of designation. It also refutes the evidence submitted to substantiate the earlier German right. The proprietor contests the arguments of the applicant and denies that the earlier goods cover all goods of plastic, and as such, that there is no identity or even similarity between the goods in conflict. The proprietor puts forward that the applicant is actually using the mark in relation to silage wrapping which is in Class 16 and not for the goods for which it is registered in Class 17. Moreover, it distinguishes the signs due to the figurative element of the earlier marks and different letters and claims that the applicant cannot have a monopoly on the sign. The proprietor argues that many of the consumers in the countries in which the earlier rights are registered will understand the meaning of the terms ‘POLY’ and ‘WRAP’ as being descriptive. Therefore, the proprietor denies any likelihood of confusion.

The applicant submits evidence of use and insists that it is sufficient to prove the use of the earlier marks on which the application is based. The applicant argues that both the German and French translations of the goods for which both marks are registered translate as ‘goods made from plastic material’ or ‘products made of plastic’. Therefore, the term ‘in extruded form’ in the English translation clearly means that it is not referring to extruded plastic in Class 1 but to any goods made of plastic by an extrusion process which is protected under Class 17 of the Nice Classification. As such, the applicant puts forward that the goods must be interpreted as being ‘goods of plastic made by extrusion’ and are therefore, identical to all of the contested goods. It argues that the same plastic can be used for wrapping purposes as for agricultural or building purposes, and they can have the same source, distribution channels and customers, at least in part. Therefore, the applicant argues that the goods are identical or at least highly similar. It claims that the earlier marks have at least a normal degree of distinctiveness and that the signs are similar, and actually phonetically and conceptually identical. Therefore, the applicant insists that there is a likelihood of confusion.

The EUTM proprietor contests the evidence of use provided and denies that it shows the use in relation to plastics in extruded form. It repeats and expands its previous arguments. It points out that all the evidence only shows use in relation to bale wrap and these goods are not protected under the earlier marks and should be protected under Class 16. It contests the evidence and claims that it is undated and that there is no way to know whether these brochures were distributed in the relevant territory of not. Moreover, it states that this evidence is in English and not in the local languages where the marks are registered, and the applicant should have submitted dated copies and translations of these documents into English. It submits evidence concerning bale wrapping processes and different methods of packing silage and again claims that the goods which are used in this respect are more correctly classified in Class 16 as they wrap around the bale of hay to keep out mould or contamination. Class 17 covers plastic sheeting for agricultural purposes, which is different from that of Class 16 in that they are large plastic sheets used to cover grass which is compacted into a mound in order to ferment into silage. Therefore, it denies that the applicant has shown use for any goods in Class 17. It further claims that the applicant could never have achieved registration for its earlier sign had it applied for the correct goods for which it is using its mark in Class 16 as it would have been descriptive as POLY is an abbreviation of polythene, and wrap is wholly descriptive. It further provides evidence of third parties in the same field who have sought protection of silage bale wrap in Class 16 and not for the imprecise term of plastics in extruded form. It also contests the evidence individually and claims that the individual pieces of evidence are insufficient to prove use. It states that the description of the goods on the invoices has not been translated but it submits the translation as ‘Polywrap-Roundbale netwrap’ for which they are not registered. Therefore, it claims that the application must be rejected.

After the proceedings had closed both parties submitted further observations, however, these submissions will not be taken into consideration as they arrived after the time limit given to the parties to submit such observations.

Preliminary remarks

The applicant argued that the observations of the EUTM proprietor dated 03/11/2017 contained new evidence and that it did not have the opportunity to comment on this and as such it should have the right to be heard. The EUTM proprietor denies that the submissions contain any new evidence.

The Cancellation Division notes that nothing in the EUTM proprietor’s final submissions can be considered as new evidence which is relevant to the final outcome of the decision and as such, the proceedings will not be re-opened.

Moreover, the Cancellation Division notes that on the application form, the applicant claims that the earlier international trade mark registration No 706 431 is registered in the Benelux countries, Denmark, Estonia, France, Italy, Lithuania, Hungary, Austria, Romania, Slovenia, Finland, Sweden and the UK. The international mark does not actually designate Hungary, which can be seen from the printout from the Romarin database. Indeed, in the applicant’s observations dated 01/08/2017, it specifically limits the list of territories on which it relies to Austria, Italy and the Benelux countries, Slovenia, Romania, Finland and France. Therefore, these are the only territories which the Cancellation Division will take into account for the present purposes.

PROOF OF USE

The Board of Appeal in its decision of 23/07/2019 in case R 1613/2018-2 examined in detail the evidence of use submitted by the applicant and held that is was sufficient to prove the use of the earlier German trade mark registration No 39 755 863 for plastic sheeting for agricultural purposes, in Class 17. The Cancellation Division is bound by the assessment of the Board and refers to its findings as regards the proof of use. Therefore, the applicant has shown sufficient evidence to prove genuine use of the earlier German trade mark registration No 39 755 863 for plastic sheeting for agricultural purposes, in Class 17. Consequently, the examination of likelihood of confusion will continue in regard to the abovementioned goods.

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 German trade mark registration No 39 755 863.

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.

After the examination of proof of use the goods on which the application is based are the following:

Class 17: Plastic sheeting for agricultural purposes.

The contested goods are the following:

Class 16: Wrapping and packaging materials; packaging material of plastic; plastic film for packaging, films; sheets or tubes of plastic; sacks, bags and containers made of plastic materials; carrier bags; cling film made wholly or principally of plastic materials; plastic bubble packs; all the aforegoing being for wrapping and packaging purposes; bags for microwave cooking; garbage bags, refuse sacks, dustbin liners; self-sealing plastic mail bags; resealable plastic bags; polythene bags; stretch film; silage bale wrap (packaging material).

Class 17: Plastics, namely, in extruded form for use and manufacture and semi-processed plastic substances; semi-processed plastic substances; plastic fibres; plastics in the form of films, foils, sheets, rods, slabs or tubes; plastics materials in the form of moulding and extrusions; foils, boards, poles and pipes made of plastic; tubes made of plastic; sealing, packing and insulating materials; plastics in extruded form for use in manufacture, and for use in agriculture and horticulture; plastic mulches (sheets or films) for use in agriculture and horticulture; plastic sheeting for horticultural, agricultural, industrial or civil engineering use; sheet plastics; plastics in sheet or film form for laying on the ground for preventing weed growth; plastics in sheet or film form and in perforated or aperture sheet or film form, for use in agriculture and horticulture; plastic materials for agriculture and horticulture applications; silage sheets; packing, padding and stuffing materials of plastics or rubber; semi-processed synthetic resins; silage bale wrap (horticultural film); plastic membranes and vapour barriers.

Class 19: Plastics materials for use in building, road-making, civil engineering, construction, namely, building materials of all plastic, construction elements of plastic, films of plastic for use in building, expanded plastics for use in building and construction, fibre and reinforced plastic construction materials, roofing materials of plastic, membranes for roofing, damp proof membranes of synthetic plastic materials, building and construction materials and elements (not of metal), plastic materials for applications in agriculture and horticulture, namely, protective enclosures for horticultural use and plant propagation, expanded plastics for use in construction of agricultural or horticultural structures, films of plastic for agricultural or horticultural structures, field tunnel film, carrot film, green house film, frames (non-metallic) for greenhouses and horticultural structures plastic road building materials (non-metallic).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term namely’, used in the EUTM proprietor’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 16

The contested wrapping and packaging materials; packaging material of plastic; plastic film for packaging, films; sheets or tubes of plastic; sacks, bags and containers made of plastic materials; carrier bags; cling film made wholly or principally of plastic materials; plastic bubble packs; all the aforegoing being for wrapping and packaging purposes; bags for microwave cooking; garbage bags, refuse sacks, dustbin liners; self-sealing plastic mail bags; resealable plastic bags; polythene bags; stretch film; silage bale wrap (packaging material) are, or can, be all made out of plastic and can be used, inter alia, to carry objects or to move them from one place to another; they are also used for packaging and wrapping and they are finished goods. The applicant’s goods are semi-finished goods, plastic sheeting for agricultural purposes, which are also made of plastic but in extruded form and are used to hold the hay bale in a cylindrical form for agricultural purposes in order to keep hay dry when stored or convert damp grass into silage. Even though the contested goods concern finished products compared to the applicant’s semi-finished product, they have a similar purpose. The nature of these goods may be the same or similar as well and they are likely to be produced by the same kind of undertaking. Therefore, these goods are considered to be similar.

Contested goods in Class 17

The contested mark contains plastics, namely, in extruded form for use and manufacture and semi-processed plastic substances; semi-processed plastic substances; plastic fibres; plastics in the form of films, foils, sheets, rods, slabs or tubes; plastics materials in the form of moulding and extrusions; foils, boards, poles and pipes made of plastic; tubes made of plastic; sealing, packing and insulating materials; plastics in extruded form for use in manufacture, and for use in agriculture and horticulture; plastic mulches (sheets or films) for use in agriculture and horticulture; plastic sheeting for horticultural, agricultural, industrial or civil engineering use; sheet plastics; plastics in sheet or film form for laying on the ground for preventing weed growth; plastics in sheet or film form and in perforated or aperture sheet or film form, for use in agriculture and horticulture; plastic materials for agriculture and horticulture applications; silage sheets; packing, padding and stuffing materials of plastics or rubber; semi-processed synthetic resins; silage bale wrap (horticultural film); plastic membranes and vapour barriers. These goods are at least similar to the earlier goods, some are even identical, as they are all types of semi-processed plastics and have a similar nature and can have a similar purpose. They can be produced by the same companies and distributed through the same channels.

Contested goods in Class 19

The contested goods in this class are plastics materials for use in building, road-making, civil engineering, construction, namely, building materials of all plastic, construction elements of plastic, films of plastic for use in building, expanded plastics for use in building and construction, fibre and reinforced plastic construction materials, roofing materials of plastic, membranes for roofing, damp proof membranes of synthetic plastic materials, building and construction materials and elements (not of metal), plastic materials for applications in agriculture and horticulture, namely, protective enclosures for horticultural use and plant propagation, expanded plastics for use in construction of agricultural or horticultural structures, films of plastic for agricultural or horticultural structures, field tunnel film, carrot film, green house film, frames (non-metallic) for greenhouses and horticultural structures plastic road building materials (non-metallic). All of the contested goods in this class are types of plastics for use in agriculture, horticulture, building, road-making and civil engineering. Although the contested goods cover a wide range of goods which differ, in the most part, from the earlier goods they are all made out of plastics, and some are even directed at the same agricultural sector. Therefore, these goods are deemed to be at least lowly similar as they can have a similar nature and could be manufactured by the same companies and in some cases also sold through the same distribution channels and aimed at the same end customer.

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 similar to varying degrees are directed at either the public at large (in the case of, for example, garbage bags; resealable plastic bags) or the specialist public in the agricultural, construction, civil engineering, packaging or plastics industry (for example, plastic sheeting for agricultural purposes, building materials of all plastic).

The degree of attention will range from low to high depending on the exact nature, price and level of sophistication of the goods (for example, low in relation to garbage bags which are inexpensive everyday goods and high in relation to construction elements of plastic which would have to conform to building regulations and standards).

3. The signs

	POLIWRAP
Earlier trade mark	Contested trade mark

The relevant territory is Germany.

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 figurative mark in which the word ‘Poly’ is written in a standard italic red typeface with the first letter capitalised and the others in lower case, then a space before the word ‘wrap’ which is written in a standard italic lower case black typeface. The figurative element merely consists in a rather standard italic typeface and the colours red and black and it is merely decorative and places a secondary role in the overall impression of the sign. Some of the relevant public will not understand the meaning of the term ‘Poly wrap’ as it does not have any exact meaning in German and for these consumers this term is distinctive to an average degree and is the most distinctive part of the earlier sign. However part of the relevant consumers of the goods at issue may understand this term as referring to something which derives from plastic as ‘poly’ as it is an abbreviation of polyethylene or polythene in English or ‘Polyethylen’ or as meaning ‘more than one’. The word ‘wrap’ may be understood as something used to enclose or pack, either due to their knowledge of English or because in German it is commonly used to describe a type of sandwich using a tortilla which wraps around the other ingredients to hold it, or wrap, it in place. Therefore this term has a limited scope of protection in relation to the earlier goods as it alludes to type of goods at issue and its distinctiveness is below average. The earlier sign does not have any element which is more dominant (visually eye-catching) than other elements.

The contested mark is a word mark consisting of one word ‘POLIWRAP’. Part of the consumers in Germany will not understand any meaning for this term and this word is distinctive. However, part of the consumers will understand it as having an identical meaning to that of the earlier mark as the letter ‘I’ is commonly substituted for the letter ‘Y’ and is phonetically identical. In the case where they understand this term it has, for analogous reasons as laid out previously, a below average degree of distinctive character. As the contested sign is a word mark it does not have any element which can be more dominant than others and it is protected in both capital and lower case typeface.

Visually, the signs coincide in the sequence of letters ‘POL*WRAP’. They differ in the fourth letter of each sign, namely, ‘Y’ and ‘I’ respectively, in the fact that the earlier mark is depicted in two words while the contested sign is one word, and also in the figurative element being the typeface and colours of the earlier mark which have no counterpart in the contested sign. However, the signs coincides in seven out of eight letters in the same order.

Therefore, the signs are at least similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters) ‛POL*WRAP’ present identically in both signs. Indeed even the letters ‘I’ and ‘Y’ will be pronounced in a very similar, if not identical fashion. Therefore, the signs are at least aurally highly similar, if not identical.

Conceptually, reference is made to the findings above. Neither of the signs has a clear meaning part for the public in the relevant territory and therefore a conceptual comparison is not possible. For that part of the public who understand the terms used in the signs, the marks will be understood as having the same meaning and are therefore conceptually identical.

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, for the consumers that do not understand the word element the earlier trade mark as a whole has no meaning for any of the goods and the distinctiveness of the earlier mark must be seen as normal. For the remaining consumers, who understand the meaning, the mark has a below average degree of distinctiveness, despite a slightly figurative arrangement with colours.

5. Global assessment, other arguments and conclusion

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).

In the case at hand, the signs in conflict have been found to be visually at least similar to an average degree, aurally at least similar to a high degree, if not identical, and conceptually identical or conceptual aspect does not influence the assessment of the similarity of the signs. The goods in conflict were found to be similar to varying degrees. The earlier mark has either an average degree (for the consumers who do not understand the term) or a below average degree (for the consumers who do understand the term) of overall inherent distinctiveness and the relevant consumer in Germany will be either the average or the specialist consumer with a level of attention ranging from low to high.

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).

The lower degree of similarity of some of the goods in conflict is offset by the high similarities between the signs, particularly the phonetic similarities, but also, for some of the consumers, the conceptual identity between the signs.

In as much as the degree of distinctiveness of the earlier mark is rather low for some of the consumers, namely, those who understand the meaning of the sign,, the same can be said of the contested sign, and both allude to the concept that the goods may be made of plastic and used for wrapping. Therefore, for the consumers who understand the meaning of the signs, despite the rather low level of distinctiveness of the earlier mark both signs coincide in this concept and therefore, could be easily confused, even by consumers with a higher level attention. Moreover, as mentioned above, for the part of the consumers who do not understand the meaning of either sign the earlier mark has an average degree of distinctive character.

Therefore there is a likelihood of confusion between the signs and this also applies to the goods which are lowly similar due to the high similarity of the signs. These findings are not altered in the case where the level of attention of the relevant consumer is high as the signs are phonetically highly similar if not identical and conceptually, at least for part of the consumers identical, and in both cases these similarities can lead to even a professional consumer with a high degree of attention confusing the signs. Consequently, there is a likelihood of confusion for all of the contested goods and the application must be upheld in its entirety.

As the earlier German trade mark registration No 39 755 863 leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier international trade mark No 706 341 invoked by the applicant as said examination will not affect the outcome of the present decision (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Rhys MORGAN

Nicole CLARKE

Ioana MOISESCU

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.