CANCELLATION No 15 531 C (INVALIDITY)

Seven for all Mankind International SAGL, Via Penate, 4, 6850 Mendrisio, Switzerland (applicant), represented by Bear & Wolf IP LLP, Third Floor, 57, Farringdon Road, London EC1M 3JB, United Kingdom (professional representative)

a g a i n s t

Rnb Retail and Brands AB (publ), P.O. Box 16142, 103 23 Stockholm, Sweden (EUTM proprietor), represented by Ramberg Advokater KB, P.O. Box 3137 Jakobsbergsgatan 13, 6 tr, 103 62 Stockholm, Sweden (professional representative).

On 24/04/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 15 218 101 is declared invalid for some of the contested goods and services, namely:

Class 18: Leather and imitation leather; laces (leather -); portmanteaus; net bags for shopping; leather thread; backpacks; suitcases; purses; leather laces; beach bags; pouches, of leather, for packaging; vanity cases, not fitted; travelling sets (leatherware); leather thread; garment bags for travel; pouches, of leather, for packaging; straps (leather -); briefbags; travel cases; attache cases; bags for campers; cases, of leather or leatherboard; wheeled shopping bags; school book bags; backpacks; satchels; shopping bags; bags for climbers; haversacks; umbrellas; casings, of leather, for springs; handbags; trunks [luggage]; leather shoulder belts; trunks and travelling bags; umbrellas, big umbrellas; bags [envelopes, pouches] of leather, for packaging; bandoliers; casual bags; wallets; chain mesh purses; sport bags.

Class 25: Clothing, footwear, headgear; stockings; socks; caps (headgear); jackets (stuff -) [clothing]; lingerie; waistcoats; sneakers; parkas; shawls; ear muffs (clothing); singlets; sandals; clothing for gymnastics; tee-shirts; bath slippers; stocking suspenders; babies’ pants [clothing]; cyclists’ clothing; outerclothing; scarves; vests; aprons for wear; brassieres; swimsuits; lounging robes; chemisettes; esparto shoes or sandals; skirts; undershirts; cuffs; topcoats; headbands (clothing); ski boots; bath sandals; hats; slips (undergarments); pants; denim jeans; gabardines [clothing]; jumpers; layettes (clothing); stocking suspenders; slacks; skull caps; sweaters; topcoats; underwear; clothing; gymnastic shoes; coats; pyjamas; berets; shoulder wraps; knickers; cuffs; beachwear; knickers; bathing trunks; bathrobes; slips [undergarments]; blouses; shirts; knitted goods (clothing); slippers; pullovers; bandanas (neckerchiefs); furs (clothing); muffs (clothing); beach shoes; dresses; jackets [clothing]; swimming caps; footwear; clothing of imitations of leather; shoulder wraps [clothing]; hats; mittens; paper clothing; petticoats; lace boots; camisoles; sweaters; ready-to-wear clothing; neckties; gloves (clothing); corsets (underclothing); weatherproof clothing; swimming costumes; leg warmers; smocks; hoods(clothing); sunvisors; belts (clothing); belts(garments); tights; suits; leather clothing; swimming trunks; bikinis; boots; cardigans; mittens; shifts; chinos; jackets.

Class 35: Retailing of clothing, footwear, headgear, trousers, jackets, shirts, tee-shirts, waistcoats, dresses, underclothing, outerclothing, leather and imitations of leather, bags, travelling bags, wallets, soaps, perfumery, essential oils, cosmetics, hair lotions, cosmetic preparations for baths, cutlery, razors, apparatus for recording, transmission or reproduction of sound or images, computers, mobile telephones, clocks, jewellery, hair driers, lamps, books, pictures, magazines, lifestyle magazines, furniture, mirrors, home furnishings, household or kitchen utensils and containers, ornaments of glass and porcelain, textiles and textile goods, bed clothes, mats and matting, games and playthings, gymnastic and sporting articles, candy, confectionery, chocolate, wine, liqueur, cheese, spirits, charcuterie, recorded music, napkins, cloths, belts, suspenders, candles, perfumed candles.

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

Class 18: Umbrella or parasol ribs; walking sticks.

Class 25: Ready-made linings (parts of clothing); visors (hatmaking); cap peaks.

Class 35: Marketing of clothing, footwear, headgear, trousers, jackets, shirts, tee-shirts, waistcoats, dresses, underclothing, outerclothing, leather and imitations of leather, bags, travelling bags, wallets, soaps, perfumery, essential oils, cosmetics, hair lotions, cosmetic preparations for baths, cutlery, razors, apparatus for recording, transmission or reproduction of sound or images, computers, mobile telephones, clocks, jewellery, hair driers, lamps, books, pictures, magazines, lifestyle magazines, furniture, mirrors, home furnishings, household or kitchen utensils and containers, ornaments of glass and porcelain, textiles and textile goods, bed clothes, mats and matting, games and playthings, gymnastic and sporting articles, candy, confectionery, chocolate, wine, liqueur, cheese, spirits, charcuterie, recorded music, napkins, cloths, belts, suspenders, candles, perfumed candles.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 15 218 101 for the word mark ‘Man of a kind’, namely against all the goods and services in Classes 18, 25 and 35. The application is based on, inter alia, European Union trade mark registrations No 4 144 135 and No 2 677 821 both for the word mark ‘FOR ALL MANKIND’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there exists a likelihood of confusion between the signs to the extent that they share the same element ‘mankind’, which is the most distinctive and dominant element of the earlier marks. It further claimed that the earlier marks constitute a family of marks with the common element ‘MANKIND’ and that they enjoy a higher than normal degree of distinctiveness due to the fact that they are syntactically unusual. Finally, it argued that the goods and services are either identical or similar.

The EUTM proprietor submitted observations in reply, contesting the assessment of the similarity between the marks. It notably pointed out that the marks should be considered as a whole and that therefore, they convey a different overall impression. It also argued that the marks are conceptually dissimilar since they do not convey the same meanings. Therefore, the relevant public would be able to distinguish between the signs.

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 registrations No 4 144 135 and No 2 677 821.

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:

European Union trade mark registration No 4 144 135

Class 25: Clothing, footwear, headgear; swimwear; lingerie; men’s, women’s, and children’s clothing, namely, shirts, tshirts, blouses, dresses, vests, jerseys, sweatshirts, sweaters, coats, raincoats, trenches, jackets, outerwear, suits, jeans, pants, sweat pants, shorts, jogging suits, pullovers, socks, gloves, robes, sportswear, neckties; footwear, namely, shoes, boots, and sandals; and head gear, namely, scarves, hats, and caps; wristbands.

Class 35: Online, catalogue and mail order and retail services; online, catalogue and mail order retail services in the field of clothing, fashion accessories, leather goods, luggage, jewellery, shoes, eyewear, cosmetics and personal care products.

European Union trade mark registration No 2 677 821

Class 18: Leather and imitation leather goods, namely, wallets, purses, belts, backpacks, briefcase-type portfolios, knapsacks, rucksacks, handbags, attache cases, shopping bags, satchels, key holders, shaving kit bags, umbrellas; animal skins and hides; luggage, luggage trunks, travel bags, and suitcases.

Class 25: Men’s, women’s, and children’s clothing, namely, shirts, t-shirts, blouses, dresses, vests, jerseys, sweatshirts, sweaters, coats, raincoats, trenches, jackets, outwear, suits, jeans, pants, sweat pants, shorts, jogging suits, pullovers, socks, gloves, robes, sportswear, neckties; footwear, namely, shoes, boots, and sandals; and head gear, namely, scarves, hats and caps; wristbands.

The contested goods and services are the following:

Class 18: Leather and imitation leather; laces (leather -); portmanteaus; net bags for shopping; leather thread; backpacks; suitcases; purses; leather laces; beach bags; pouches, of leather, for packaging; vanity cases, not fitted; travelling sets (leatherware); leather thread; garment bags for travel; pouches, of leather, for packaging; straps (leather -); briefbags; travel cases; attache cases; bags for campers; cases, of leather or leatherboard; wheeled shopping bags; school book bags; backpacks; umbrella or parasol ribs; satchels; shopping bags; bags for climbers; haversacks; umbrellas; casings, of leather, for springs; handbags; trunks [luggage]; leather shoulder belts; trunks and travelling bags; umbrellas, big umbrellas and walking sticks; bags [envelopes, pouches] of leather, for packaging; bandoliers; casual bags; wallets; chain mesh purses; sport bags.

Class 25: Clothing, footwear, headgear; stockings; socks; caps (headgear); jackets (stuff -) [clothing]; lingerie; waistcoats; sneakers; parkas; shawls; ear muffs (clothing); singlets; sandals; clothing for gymnastics; tee-shirts; bath slippers; stocking suspenders; babies’ pants [clothing]; cyclists’ clothing; outerclothing; scarves; vests; aprons for wear; brassieres; swimsuits; lounging robes; chemisettes; esparto shoes or sandals; skirts; undershirts; cuffs; topcoats; headbands (clothing); ski boots; bath sandals; hats; slips (undergarments); pants; denim jeans; gabardines [clothing]; jumpers; layettes (clothing); stocking suspenders; slacks; skull caps; visors (hatmaking); sweaters; topcoats; underwear; clothing; gymnastic shoes; coats; pyjamas; berets; shoulder wraps; knickers; cuffs; beachwear; knickers; bathing trunks; bathrobes; slips [undergarments]; blouses; cap peaks; shirts; knitted goods (clothing); slippers; pullovers; bandanas (neckerchiefs); furs (clothing); muffs (clothing); beach shoes; dresses; jackets [clothing]; swimming caps; footwear; clothing of imitations of leather; shoulder wraps [clothing]; hats; mittens; paper clothing; petticoats; lace boots; camisoles; sweaters; ready-to-wear clothing; neckties; gloves (clothing); ready-made linings (parts of clothing); corsets (underclothing); weatherproof clothing; swimming costumes; leg warmers; smocks; hoods(clothing); sunvisors; belts (clothing); belts(garments); tights; suits; leather clothing; swimming trunks; bikinis; boots; cardigans; mittens; shifts; chinos; jackets.

Class 35: Retailing and marketing of clothing, footwear, headgear, trousers, jackets, shirts, tee-shirts, waistcoats, dresses, underclothing, outerclothing, leather and imitations of leather, bags, travelling bags, wallets, soaps, perfumery, essential oils, cosmetics, hair lotions, cosmetic preparations for baths, cutlery, razors, apparatus for recording, transmission or reproduction of sound or images, computers, mobile telephones, clocks, jewellery, hair driers, lamps, books, pictures, magazines, lifestyle magazines, furniture, mirrors, home furnishings, household or kitchen utensils and containers, ornaments of glass and porcelain, textiles and textile goods, bed clothes, mats and matting, games and playthings, gymnastic and sporting articles, candy, confectionery, chocolate, wine, liqueur, cheese, spirits, charcuterie, recorded music, napkins, cloths, belts, suspenders, candles, perfumed candles.

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

The term ‘namely’, used in the applicant’s list of goods and services 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 and services.

Contested goods in Class 18

Suitcases; trunks [luggage]; trunks and travelling bags are identically contained in both lists of goods.

The contested purses; attache cases; satchels; shopping bags; handbags; backpacks (listed twice); umbrellas (listed twice); wallets (which may be made of materials other than leather and imitation leather) cover as broader categories, respectively, the applicant’s leather and imitation leather goods, namely wallets, purses, backpacks, handbags, attache cases, shopping bags, satchels, umbrellas. Since the Cancellation Division cannot dissect ex officio the broader categories of the contested goods, they are considered identical to the applicant’s goods.

The contested briefbags includes, as a broader category, the applicant’s leather and imitation leather goods, namely attaché cases (as these terms are synonyms). Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested net bags for shopping; wheeled shopping bags are included in, or overlap with the applicant’s leather and imitation leather goods, namely, shopping bags. These goods are therefore identical.

The contested casual bags encompasses all kind of bags including those made of materials other than leather and imitation leather. Therefore, they overlap with the applicant’s leather and imitation leather goods, namely, handbags. Therefore, they are identical.

The contested big umbrellas overlap with the applicant’s leather and imitation leather goods, namely, umbrellas. They are therefore identical.

The contested portmanteaus; travel cases; travelling sets (leather-ware); garment bags for travel are included, or overlap with, the applicant’s travel bags. They are therefore identical.

The applicant’s satchels are bags carried on the shoulder by a long strap and closed by a flap, used especially for school books. They are thus synonyms of the contested school book bags. Therefore, they are identical.

The applicant’s leather and imitation leather goods, namely, belts refers to goods such as straps/strips/cords of leather, namely belts used in the making of leather goods. It follows that the contested leather shoulder belts; leather laces; laces (leather -); leather thread; straps (leather -); bandoliers; casings, of leather, for springs, which all refer to various kinds of leather straps, are either included in, hence identical to, the applicant’s leather and imitation leather goods, namely, belts, or at least similar to the latter because they have the same nature and purpose, are intended for the same public, are available through the same distribution channels and produced by the same manufacturers.

The contested chain mesh purses are highly similar to the applicant’s leather and imitation leather goods, namely, purses since they have same purpose, can be sold by same producers through the same distribution channels. They target the same public. Furthermore, they are in competition.

Haversacks are backpacks, notably used by campers to carry their equipment. Therefore, the contested haversacks; bags for campers; bags for climbers; sport bags are all, at least, highly similar to the applicant’s leather and imitation leather goods, namely, backpacks, knapsacks, rucksacks since they share same nature and purpose. Moreover, they can be sold through the same distribution channels and target the same public. Furthermore, they usually originate from the same undertakings.

The contested vanity cases, not fitted are similar to the applicant’s leather and imitation leather goods, namely, handbags since they coincide in nature, purpose and producers. Moreover, they can have the same distribution channels and target the same relevant public. Furthermore, they are in competition.

The contested beach bags are similar to the applicant’s leather and imitation leather goods, namely, handbag to the extent that they have the same purpose and can coincide in distribution channels and providers. Moreover, they have the same relevant public.

The contested leather and imitation leather is tanned animal skin and imitation thereof. It follows that the contested leather is identical and the imitation leather is similar to the applicant’s animal skin and hide as they are, respectively, on the one hand, synonyms, and, on the other hand, they coincide in purpose (to be used in the production of goods). Furthermore, they may have the same distribution channels and commercial origin and are in competition.

The contested cases, of leather or leatherboard are containers used to carry personal effects, such as documents or money. Therefore, they are similar to the applicant’s travel bags as they coincide in purpose, they can originate from the same companies and be distributed through the same channels. Moreover, they target the same public.

The contested pouches, of leather, for packaging (listed twice); bags [envelopes, pouches] of leather, for packaging and the applicant’s travel bags may come from the same companies, target the same consumers, and be sold through the same distribution channels. Therefore, these goods are considered similar to a low degree.

The remaining contested goods, namely umbrella or parasol ribs; walking sticks are wooden or metal ribs used to manufacture umbrellas or parasols, and articles to aid walking. They are dissimilar to all of the applicant’s goods and services. Although there is a certain link between some of them, for example between the contested umbrella ribs and the applicant’s umbrella, it is not sufficient to consider that they are similar. The above listed contested goods have a very specific nature and purpose that are very different from those of the applicant’s goods and services. They do not usually coincide in their distribution channels. Moreover, they are generally manufactured by different undertakings and target different end users. Furthermore, they are not complementary or in competition. The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61). Similarity will only be found in exceptional cases and requires that at least some of the main factors are present, such as similarity and/or complementarity of producer and/or public.

Contested goods in Class 25

Clothing (listed three times), footwear (listed twice), headgear; socks; caps (headgear); jackets (stuff -) [clothing]; lingerie; tee-shirts; dresses; hats(listed twice); sweaters (listed twice); neckties; gloves (clothing); suits; boots; jackets (listed twice); coats are identically contained in both lists of goods (including synonyms).

The contested stockings; waistcoats; parkas; shawls; ear muffs (clothing); singlets; clothing for gymnastics; stocking suspenders; babies’ pants [clothing]; cyclists’ clothing; outerclothing; scarves; vests; aprons for wear; brassieres; swimsuits; lounging robes; chemisettes; skirts; undershirts; cuffs (listed twice); topcoats; headbands (clothing); slips (undergarments); pants; denim jeans; gabardines [clothing]; jumpers; layettes (clothing); stocking suspenders; slacks; topcoats; underwear; pyjamas; shoulder wraps; shoulder wraps [clothing]; knickers (listed twice); beachwear; bathing trunks; bathrobes; slips [undergarments]; blouses; shirts; knitted goods (clothing); pullovers; bandanas (neckerchiefs); furs (clothing); muffs (clothing); clothing of imitations of leather; mittens (listed twice); paper clothing; petticoats; camisoles; ready-to-wear clothing; corsets (underclothing); weatherproof clothing; swimming costumes; leg warmers; smocks; belts (clothing); belts(garments); tights; leather clothing; swimming trunks; bikinis; cardigans; shifts; chinos; hoods (clothing) are included in the applicant’s broad category of clothing. Therefore, they are identical.

The same applies for the contested sneakers; sandals; bath slippers; esparto shoes or sandals; ski boots; bath sandals; gymnastic shoes; slippers; beach shoes; lace boots and the contested skull caps; berets; swimming caps; sunvisors with the applicant’s broad categories of footwear and headgear respectively. Therefore, these goods are identical.

However, the contested ready-made linings (parts of clothing) are parts and fittings for clothing, namely layers of cloth that are attached to the inside of an item of clothing to make it thicker or warmer. Although there is a degree of complementarity between them, these goods are dissimilar to the applicant’s clothing: they have different natures and purposes and are usually sold through different distribution channels. Moreover, they are generally manufactured by different undertakings and may target different end users. Furthermore, they are not in competition. The contested ready-made linings (parts of clothing) are also dissimilar to the rest of the applicant’s goods and services in Classes 18, 25 and 35.

The same reasoning applies to the contested visors (hatmaking); cap peaks that are parts of caps that can be used to manufacture hats and head-wear. They are dissimilar to all of the applicant’s goods in services in Classes 18, 25 and 35 as they have different natures and purposes and are usually sold through different distribution channels. They are generally manufactured by different undertakings and may target different end users. Furthermore, they are not in competition.

Contested goods in Class 35

Retailing of clothing, cosmetics; jewellery are identically contained in both lists of goods.

Footwear is an outer covering for the feet, such as shoes. Therefore, the contested services retailing of footwear include, as a broader category, the applicant’s retail services in the field of shoes. Since the Cancellation Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the applicant’s services.

The contested retailing of headgear, trousers, jackets, shirts, tee-shirts, waistcoats, dresses, underclothing, outerclothing, bags, travelling bags, wallets, soaps, perfumery, essential oils, hair lotions, cosmetic preparations for baths, belts, suspenders are highly similar to the applicant’s retail services in the field of clothing, jewellery, cosmetics and personal care products, fashion accessories as they have the same nature (retail services) and purpose of allowing consumers to satisfy their shopping needs, and the same method of use. Furthermore, they refer to identical and similar goods and thus may coincide in relevant public and distribution channels.

The contested retailing of leather and imitations of leather, cutlery, razors, apparatus for recording, transmission or reproduction of sound or images, computers, mobile telephones, clocks, hair driers, lamps, books, pictures, magazines, lifestyle magazines, furniture, mirrors, home furnishings, household or kitchen utensils and containers, ornaments of glass and porcelain, textiles and textile goods, bed clothes, mats and matting, games and playthings, gymnastic and sporting articles, candy, confectionery, chocolate, wine, liqueur, cheese, spirits, charcuterie, recorded music, napkins, cloths, candles, perfumed candles are similar to the applicant’s retail services in the field of clothing, fashion accessories, leather goods, luggage, jewellery, shoes, eyewear, cosmetics and personal care products to the extent that they coincide in nature, purpose and method of use.

However, the remaining contested services marketing of clothing, footwear, headgear, trousers, jackets, shirts, tee-shirts, waistcoats, dresses, underclothing, outerclothing, leather and imitations of leather, bags, travelling bags, wallets, soaps, perfumery, essential oils, cosmetics, hair lotions, cosmetic preparations for baths, cutlery, razors, apparatus for recording, transmission or reproduction of sound or images, computers, mobile telephones, clocks, jewellery, hair driers, lamps, books, pictures, magazines, lifestyle magazines, furniture, mirrors, home furnishings, household or kitchen utensils and containers, ornaments of glass and porcelain, textiles and textile goods, bed clothes, mats and matting, games and playthings, gymnastic and sporting articles, candy, confectionery, chocolate, wine, liqueur, cheese, spirits, charcuterie, recorded music, napkins, cloths, belts, suspenders, candles, perfumed candle are dissimilar to all of the applicant’s goods and services. Indeed, marketing services are, like advertising services, intended to promote other companies’ goods/services. In order to fulfil this purpose, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, and so on. The nature and purpose of such marketing services are fundamentally different from the manufacturing of goods or from the provision of many other services. Therefore, they are dissimilar to the goods or services being advertised. They also differ from the applicant’s retail services, which are rendered by specialised retail outlets. It follows that the contested marketing services differ in nature, purpose, method of use and relevant public from those of the applicant’s goods and services. They also have different distribution channels and providers. Furthermore, they are neither in competition nor complementary.

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 or similar to various degrees are directed at the public at large and at the professional public with specific professional knowledge or expertise (notably for leather and imitation of leather in Class 18 and some retailing services in Class 35).

The degree of attention is considered to be average.

3. The signs

FOR ALL MANKIND	Man of a kind
Earlier trade marks	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.

As pointed out by the EUTM proprietor, the elements ‘MANKIND’ and ‘Man / kind’ are meaningful in English. However, their conceptual differences will not be perceived in all the relevant territory, that is, the European Union, which includes countries where a substantial part of the public has only, at most, a basic level of English, such as in France, Poland or Spain. Consequently, the Cancellation Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public.

The marks are word marks. Therefore it is irrelevant whether they are written in upper-, lower-case letters or in a combination thereof.

The earlier marks are composed of the words ‘FOR ALL MANKIND’ and the contested sign consists of the words ‘Man of a kind’.

The word ‘FOR’ in the earlier marks and ‘of’ and ‘a’ in the contested sign are basic English words that will be understood as such by the majority of the relevant public. As they are articles and pronouns, they have a limited distinctive character and are not likely to catch the consumers’ attention.

The English word ‘ALL’ of the earlier marks will not be understood by the majority of the relevant public given that it is not commonly used and it is quite distinct from the equivalent in other languages (such as tout/tous in French or todo/todos in Spanish). It is therefore distinctive to a normal degree for the relevant goods and services.

The word ‘man’ in the contested sign is part of basic English vocabulary and will be understood as such by the relevant public (25/05/2012, T‑233/10, Jumpman, EU:T:2012:267, § 53). The word ‘man’ is commonly used to indicate that it is a specific line of goods for men (as opposed to for women); it will be therefore perceived as such by the relevant public in relation to some of the goods and services, namely those for which there commonly exists on the market a separate range for men and women, that is, for some of the bags in Class 18, clothing and footwear in Class 25, and retail services in relation to these goods, as well as in relation to cosmetics in Class 35. As it is an indication of one of the characteristics of the goods and services (the targeted consumers), it is non-distinctive. However, as regards the other goods and services, such as luggage in Class 18 and retail services in relation to computers or mobile phones in Class 35, since they are not usually specially manufactured for men, the word ‘man’ is distinctive to an average degree.

The word ‘kind’ in the contested sign is meaningless from the relevant public’s perspective and therefore, distinctive to a normal degree.

The word ‘MANKIND’ of the earlier marks is distinctive as a whole for the relevant goods and services as it does not convey any meaning for the relevant public. However, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Consequently, while as a rule, marks are perceived as a whole, the exception to this rule is that, under certain circumstances, consumers may break down marks into smaller parts. In the present case, the verbal element ‘MANKIND’ is likely to be dissected by the public, since the word ‘MAN’ is a basic English word commonly used in the market, even though the second part, ‘KIND’, will not be understood by the relevant public (as explained above). It follows that the word ‘KIND’ is distinctive to a normal degree while the word ‘MAN’ is non-distinctive for part of the relevant goods and services, as in the contested sign.

Visually and aurally, the signs coincide in the letters (and the sound of letters) ‘MAN’ and ‘KIND, and differ in their other components, that is, ‘FOR ALL’ in the earlier marks, and ‘of a’ in the contested sign.

Taking into account, on the one hand, the lack of distinctive character of the common word ‘MAN’ in relation to part of the relevant goods and services, and, on the other hand, the distinctiveness of the common element ‘KIND’, the signs are visually and aurally similar to a low degree for part of the goods and services for which ‘MAN’ is non-distinctive, and similar to an average degree for the other part of the goods and services.

Conceptually, the signs, as a whole, do not have any meaning for the relevant public. The coinciding word ‘MAN’ evokes the same concept, namely to be for men. However, it is non-distinctive for part of the goods and services and therefore the coincidence in this element has no impact in the conceptual comparison. Consequently, the signs are not similar for these goods and services. For the other goods and services, the signs are similar.

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.

The applicant did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services from the perspective of the relevant public. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a non-distinctive element in the marks in relation to part of the goods and services as stated above in section c) of this decision.

In this regard, the applicant claimed that the earlier marks ‘enjoy a higher than usual degree of distinctiveness’ because they are composed of an unusual grammatical construction. However, it is recalled that when an earlier mark, as a whole, has no meaning for any of the goods/services from the perspective of the public in the relevant territory, it is considered as having no more than an average degree of inherent distinctiveness, which applies in this case.

5. Global assessment, other arguments and conclusion

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, C39/97, Canon, EU:C:1998:442, § 17).

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).

The goods and services in question are partly identical and similar to varying degrees and partly dissimilar. They target both the public at large and business consumers. The degree of attention is average and the earlier marks as a whole enjoy a normal degree of distinctiveness, as established in the previous section.

The signs will be perceived by the relevant public as including the same two words, ‘MAN’ and ‘KIND’. Even if the common element ‘MAN’ will be perceived as descriptive of the targeted consumers for part of the goods and services, the other word ‘KIND’ is distinctive and therefore is likely to attract the consumers’ attention. Therefore, the Cancellation Division considers that the differences between the signs are not sufficient to enable consumers to safely distinguish between the signs, even for the goods and services in relation to which the word ‘MAN’ is non-distinctive.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and, therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registrations No 4 144 135 and No 2 677 821. 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.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to those of the earlier trade marks, including insofar as the goods and services that are similar to a low degree are concerned taking into account the similarities between the signs. Indeed, as regard to the goods considered to be similar to a low degree, the common element ‘MAN’ is distinctive and, consequently, the signs are visually and phonetically similar to an average degree. Therefore, there exists a likelihood of confusion following the interdependence principle.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed against these goods and services cannot be successful.

The applicant has also based its cancellation application on the following earlier trade marks:

• European Union trade mark registration No 4 443 222 ‘SEVEN FOR ALL MANKIND’ for clothing, t-shirts, blouses, dresses, pants, skirts, vests, jerseys, sweatshirts, sweaters, coats, suits, seat pants, jogging suits, pullovers, swimwear, lingerie, belts, socks, gloves, wristbands, robes, neckties, footwear, shoes, boots, and sandals, and head gear, scarves, hats, and caps in Class 25;

• European Union trade mark registration No 2 665 719 ‘7 FOR ALL MANKIND’ for leather and imitation leather goods, namely, wallets, purses, belts, backpacks, briefcase-type portfolios, knapsacks, rucksacks, handbags, attache cases, shopping bags, satchels, key holders, shaving kit bags, leather desk set items, umbrellas; animal skins and hides; luggage, luggage trunks, travel bags, and suitcases in Class 18 and men’s, women’s, and children’s clothing, namely, shirts, t-shirts, blouses, dresses, vests, jerseys, sweatshirts, sweaters, coats, raincoats, trenches, jackets, outwear, suits, jeans, pants, sweat pants, shorts, jogging suits, pullovers, socks, gloves, robes, sportswear, neckties; footwear, namely, shoes, boots, and sandals; and head gear, namely, scarves, hats, and caps; wristbands, hats and gloves in Class 25;

• European Union trade mark registration No 8 952 641 ‘7 FOR ALL MANKIND’ for retail store services featuring clothing, footwear, shoes, sandals and boots, head gear, hats, caps, headbands, scarves, belts, eye glasses, sun glasses and cases for same, jewelry, namely jewelry made of precious metals and stones, bracelets, earrings, rings, necklaces, cufflinks, tie tacks, tie fasteners, pins, watches, watchbands, belt buckles of precious metals, leather and imitation leather goods, namely wallets, purses, backpacks, briefcase-type portfolios, knapsacks, rucksacks, handbags, attaché cases, shopping bags, satchels, shaving kit bags sold empty, umbrellas, animal skins and hides, luggage, luggage trunks, travel bags, and suitcases in Class 35.

Since these marks cover the same or a narrower scope of goods and services. The outcome cannot be different for goods and services for which the cancellation application has already been rejected. Therefore, there is no likelihood of confusion for those goods and services.

The applicant claimed that the earlier trade marks, all characterised by the same verbal components ‘MANKIND’, constitute a ‘family of marks’. However, the existence of a ‘family of marks’ has no impact in the present case in the assessment of the likelihood of confusion. This is because for a ‘family of marks’ to be applied in relation to Article 8(1)(b), an identity or similarity of goods is required, and this is not so in the case in question. Therefore, the applicant’s argument does not need to be considered.¹

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

The Cancellation Division

Carmen SÁNCHEZ PALOMARES

Julie, Marie-Charlotte HAMEL

Catherine MEDINA

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.