CANCELLATION No 20 806 C (INVALIDITY)

Stone Fashion Group B.V., Tokyostraat 7‑11, 1175 RB Lijnden, Netherlands (applicant), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative)

a g a i n s t

Ralf Schellenberger, Bayernstr. 6, 63939 Wörth, Germany (EUTM proprietor), represented by Kohler Schmid Möbus Patentanwälte Partg mbB, Kaiserstr. 85, 72764 Reutlingen, Germany (professional representative).

On 21/05/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 14 944 607 is declared invalid for some of the contested goods, namely:

Class 18: Leather and imitations of leather, and goods made of these materials, namely trunks and travelling bags; umbrellas, sun umbrellas, parasols.

Class 25: Clothing, in particular outer clothing for women and men; tights, footwear, headgear.

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

Class 3: Perfumery, essential oils, cosmetics, hair lotions, dentifrices.

Class 18: Walking sticks.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark application No 14 944 607 (figurative mark), namely against all the goods in Classes 18 and 25. The application is based on international trade mark registration designating the European Union No 1 311 131 (figurative mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

Preliminary remark

The following rights were further invoked as basis of the application, namely Benelux application No 1 322 192 ‘RR’ (figurative mark); Benelux application No 1 322 191 ‘RR’ (figurative mark) and Benelux application No 1 322 190 ‘RR’ (figurative mark). Pursuant to Article 12(2)(a) EUTMDR, the indication of these rights as bases of the application should be provided in the application itself and as this is submitted at a later stage, the application is not considered to be based on these rights.

SUMMARY OF THE PARTIES’ ARGUMENTS

On 21/03/2018, the applicant submitted an application for a declaration of invalidity of the EUTM, by which it requested the contested mark to be partially declared invalid on the basis of Article 60(1)(a) in connection with Article 8(1)(b). In its arguments, the applicant stated that there was a likelihood of confusion because of the similarity of the signs and the identity of the goods.

The EUTM proprietor did not reply to the applicant’s observations but requested that the Office issue a decision on the substance.

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

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 18: Leather and imitation leather; suitcases, trunks; bags, briefcases, handbags, shoulder bags, tote bags, travel bags, sports bags, shopping bags, beach bags, beauty cases [not fitted], rucksacks, backpacks, sling bags for carrying babies and children garment bags [travel bags]; purses, wallets and purses; aforementioned goods whether or not wholly or partly of leather or imitation leather; umbrellas and sunshades [parasols].

Class 25: Garments; men’s and women’s clothing, ready made garments, jackets, suits, trousers, shirts, tops, blouses, sweaters, sweaters, shirts, t-shirts, vests, corselets, underwear, stocking suspenders, dresses, corsets, lingerie, bras, brassieres, bodysuits, body stockings, underpants, briefs, boxer shorts, tights, socks, stockings, leg warmers, outerwear, jackets, raincoats, coats, parkas, pullovers, ponchos, pajamas, swimming shorts, trousers, shorts, bermuda shorts, leggings, skirts, petticoats, dresses, petticoats, frocks; baby wear, swimwear, sportswear; footwear, including shoes, sport shoes, boots, sneakers, sandals, flip-flops, slippers, beach slippers, sandals; headgear, including bathing caps, shower caps, hats, headbands, hats, caps, berets; gloves [clothing], mittens, scarves, mufflers, scarves, bandanas, ties and bow ties, suspenders, belts and sashes for wear.

The contested goods are the following:

Class 18: Leather and imitations of leather, and goods made of these materials, namely trunks and travelling bags; umbrellas, sun umbrellas, parasols; walking sticks.

Class 25: Clothing, in particular outer clothing for women and men; tights, footwear, headgear.

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

The term ‘in particular’, used in the EUTM proprietor’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

However, 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 18

Leather and imitations of leather, and goods made of these materials, namely trunks and travelling bags; umbrellas, parasols are identically contained in both lists of goods (including synonyms).

The contested sun umbrellas are included in the applicant’s broad category of umbrellas and sunshades [parasols]. Therefore, they are identical.

The contested walking sticks in Class 18 are canes or other articles used as aids for walking, while the applicant’s goods could be summarised as bags, suitcases, umbrellas and sunshades in Class 18 and variety of garments in Class 25. The nature and the purposes of the goods are very different (assistance with walking v storage container for carrying things, protection from rain/sun, covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers and target different end users. Furthermore, they are neither complementary nor in competition. These goods are considered dissimilar.

Contested goods in Class 25

Tights, footwear and headgear are identically contained in both lists of goods.

The contested clothing, in particular outer clothing for women and men are synonyms of the applicant’s men’s and women’s clothing. Therefore, they are 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 the professional public (notably in relation to leather and imitations of leather). The degree of attention is considered 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 signs are figurative marks composed of the two letters ‘RR’, where the first letter ‘R’ is reversed and inverted, the two letters sharing their vertical stroke. Due to its position, the first letter ‘R’ will be perceived only by part of the public, while the other part will only perceive the letter that is not reversed and will consider the first letter of the signs as figurative elements. The letter ‘R’ has no meaning for the relevant goods other than the concepts of the letters being reproduced. Moreover, if seen as a figurative element, the first part of the sign does not convey any special meaning in relation to the relevant goods. Therefore, these elements are distinctive.

Neither of the mark contains any element that could be considered as being more dominant (eye-catching).

Visually, the signs coincide in the letters ‘RR’ and in the depiction of the reversed and inverted first letter ‘R’. They only differ in their graphic depictions — the slightly modified curves in the contested sign and the bold font in the earlier mark. However, these figurative elements of the marks are merely decorative and do not serve as a point of distinction between the two signs. Indeed, consumers will focus less, if at all, on these elements, as they will use the verbal elements to refer to the marks.

Therefore, it is considered that the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the two signs are identically pronounced as they coincide entirely in their only verbal element ‘RR’ or ‘R’.

Conceptually, as mentioned above, the two signs coincide in their verbal element ‘RR’ or ‘R’ and convey the concept of these letters, that is, the 18th letter of the Latin alphabet. Therefore, they are conceptually identical.

As the signs have been found similar (and even identical) in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 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.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The contested goods are partly identical and partly dissimilar. These goods target the public at large and the professional public with an average degree of attention. The distinctiveness of the earlier mark is normal.

The earlier trade mark and the contested sign are visually similar to a high degree and aurally and conceptually identical, as they coincide in the depiction of two mirrored and inverted letters ‘R’ and only differ in their graphic depiction.

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).

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the cancellation application must be partially upheld on the basis of the applicant’s European Union trade mark registration No 1 311 131 and pursuant to Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR for the goods found identical.

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)(b) EUTMR, the application based on these articles and directed against these goods cannot be successful.

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

The Cancellation Division

Irina SOTIROVA

Birgit Holst FILTENBORG

Julie, Marie-Charlotte HAMEL

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.