CANCELLATION No 15168 C (INVALIDITY)

Wimpy Limited, 2 The Listons, Liston Road, Marlow Buckinghamshire SL7 1FD, United Kingdom (applicant), represented by D Young & Co LLP, 120 Holborn, London EC1N 2DY, United Kingdom (professional representative)

a g a i n s t

Kuwait Food Company (Americana) S.A.K, Shuwaikh Industrial 3 - Block A - St 71 - Parcel 198 - B.O 5087, Safat 13051, Kuwait (EUTM proprietor), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative).

On 14/12/2018, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 15 146 509 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 15 146 509 . The applicant invoked Article 59(1)(b) EUTMR, Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and (5) EUTMR and Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR. As regards the relative grounds of refusal, the application is based, inter alia, on European Union trade mark registration No 6 548 655 ‘WIMPY’ and on the United Kingdom non-registered trade mark ‘WIMPY’.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the signs are highly similar and the goods and services clearly identical and similar, and therefore that there is a likelihood of confusion.

It further claims that the earlier marks have a reputation and the use without due cause of the contested EUTM would take unfair advantage of, and be detrimental to, their distinctive character and their repute; that it owns several UK non-registered trade marks, which have been used in the course of trade of more than mere local significance, and which, pursuant to the UK law of passing-off, would confer on the applicant the right to prohibit the use of the contested EUTM, and, finally, that the applicant was acting in bad faith when filing the application.

The EUTM proprietor did not submit any observations in response.

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 6 548 655.

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 and services on which the application is based are the following:

Class 29: Salads; meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; potato chips and fries; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; prepared meals included in this class; snacks included in this class; desserts included in this class.

Class 30: Hamburgers; sandwiches; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; prepared meals included in this class; snacks included in this class; desserts included in this class; bread rolls containing cooked foods.

Class 43: Bar, cafe, cafeteria, restaurant, canteen and catering services; self-service restaurants; services for providing food and drink.

The contested goods and services are the following:

Class 29: Meat; processed chicken (frozen, refrigerated); frozen vegetables; frozen processed potato; frozen fish; preserved, dried, frozen and cooked fruit and vegetables; meat, fish, poultry and game; fish, poultry and meat preparations; Meat extracts; jams (all kinds of fruit jams); jellies, jams, compotes; eggs; milk; milk products; Edible oils; Edible fats; preserved food; pickles.

Class 43: Services for providing food and drink; temporary accommodation.

Contested goods in Class 29

The contested meat (which appears twice), fish, poultry and game; processed chicken (frozen, refrigerated); frozen fish; preserved, dried, frozen and cooked fruit and vegetables; frozen vegetables; frozen processed potato; preserved food; pickles; meat extracts; jams (all kinds of fruit jams); jellies, jams, compotes; eggs; milk; milk products; edible oils; edible fats; fish, poultry and meat preparations are identical to the applicant’s meat, fish, poultry and game; preserved, dried and cooked fruits and vegetables; meat extracts; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; prepared meals included in this class, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the contested goods.

Contested services in Class 43

Services for providing food and drink are identically contained in both lists.

The contested services of temporary accommodation are similar to the applicant’s services for providing food and drink, since they can originate from the same provider and share the same distribution channels and relevant public.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical and similar are directed at the public at large.

The degree of attention as regards the services at issue is considered to be average. As regards the goods at issue, and considering that they are inexpensive food products purchased on a daily basis, the degree of attention will be lower than average.

3. The signs

WIMPY
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

The common element ‘WIMPY’ is meaningful in English, but not in other languages of the relevant territory. Consequently, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Visually, the signs coincide in their verbal elements. They merely differ in the slight stylization of the contested sign which is so simple that it will not distract the consumers’ attention away from the word element. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in all word components, present identically in both signs. Therefore, the signs are identical.

Conceptually, the relevant English speaking public will understand the word ‘Wimpy’ as ‘weak and cowardly or feeble’. Since the marks evoke the same concept they are identical.

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 an enhanced scope of protection. 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 and services 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

In the light of the above, and taking into account the identity and similarity of the goods and the high level of visual similarity of the signs, their aural and conceptual identity, as well as the average and below average level of attention of the public and the average inherent distinctiveness of the earlier mark, there is clearly a likelihood of confusion on the part of the English-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 6 548 655. 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.

Since the application is fully successful on the basis of the earlier EUTM No 6 548 655 and on the grounds of Article 60(1)(a) in connection with Article 8(1)(b) EUTMR, there is no need to further examine the other earlier rights on which the application was based or the other grounds invoked by the applicant, namely Article 59(1)(b) EUTMR, Article 60(1)(a) EUTMR in connection with Article 8(5) EUTMR and Article 60(1)(c) EUTMR in connection with Article 8(4) 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

Elena NICOLÁS GÓMEZ

José Antonio GARRIDO OTAOLA

Carmen SÁNCHEZ PALOMARES

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.