CANCELLATION No 20 981 C (INVALIDITY)

Krasnyj Octyabr, ul. Malaya Krasnoselskaya d. 7, str. 24, 107140 Moscow, the Russian Federation (applicant), represented by Foral Patent Law Offices, Kaleju 14-7, 1050 Riga, Latvia (professional representative)

a g a i n s t

Spółdzielnia "Pokój", ul. Legionów 52, 43-302 Bielsko-Biała, Poland (EUTM proprietor), represented by Kancelaria Rzecznika Patentowego Andrzej Rygiel, ul. Bohaterów Warszawy 26. Lok. F, 43-300 Bielsko-Biała, Poland (professional representative).

On 05/07/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 15 371 305 is declared invalid in its entirety.

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

REASONS

On 26/03/2018, the applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 15 371 305 . The application is based on international trade mark registration No 844 698 designating Germany, Greece and Spain . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there exists a likelihood of confusion on the part of the public, on account of the similarity of the marks and the identity/similarity of the goods.

The EUTM proprietor contends in the main that there is no likelihood of confusion because the marks are different visually, aurally and conceptually. It further points out that ‘none of the words: ‘KOPOBKA’, ‘KOROVKA’ and ‘KRÓWKA’ alone cannot be treated as a trademark, because it is the product generic name, comparable to the words, such as: butter, oil, coffee, sweets, etc., which also cannot receive trademark protection’. In support of its claims, the proprietor submitted evidence, which will be listed and analysed further in the decision, if necessary.

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 goods on which the application is based are the following:

Class 30: Confectionery; sweetmeats; chocolate; pralines; waffles; pastries; cakes.

The contested goods are the following:

Class 30: Confectionery; candy; fudge.

Confectionery is identically contained in both lists of goods.

Candy and fudge (a type of sugar candy) are included in the broad category of the applicant’s confectionery. 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. The degree of attention is average.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territories are Germany, Greece and Spain, respectively.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The marks to be compared are figurative.

The earlier mark has no element that could be considered clearly more dominant than other elements, since both ‘KOPOBKA’ (which is in Cyrillic characters) and ‘KOROVKA’ (the transliteration in Latin characters) are of an identical size.

The contested sign is a complex mark in colour, composed of several verbal and figurative elements, as shown in the table above. It is noted from the outset that the mark contains the words ‘TRADYCJA JAKOŚĆ’, which are barely perceptible. In this regard it is recalled that a negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. As these words are likely to be disregarded by the relevant public, they will not be taken into consideration.

The elements that are visually more outstanding in the contested sign are the word ‘KRÓWKA’ (written in red bold capital letters and placed in the middle of a rectangular-shaped background in beige and white), the figurative elements of the milk tank, two pieces of fudge candy and what appears to be a scooped piece of butter and the rectangular image depicting children, further portrayed at the right side of the sign.

The applicant puts forward that, as shown by the extract from WIPO’s official database, the elements of the earlier mark mean little cow which will lead to a high degree of conceptual similarity with the element ‘KRÓWKA’ of the contested mark.

In turn, the EUTM proprietor claims that ‘KOROVKA’ is distinctive from other registered marks only by its spelling and therefore there is no other distinctiveness regarding confectionery, sweetmeats, chocolate, pralines, waffles, pastries, cakes in such countries as e.g.: Germany, Spain, Greece and other. It further argues that ‘KOPOBKA’, ‘KOROVKA’ and ‘KRÓWKA’ cannot function as a trade mark and files in support of its arguments a Polish industrial standard concerning the production of fudge and cream fudge (in Polish: ‘krówki’ and ‘kremówki’) of 1977 and the results of a trade mark search for the words ‘korovka’ and ‘krówka’. The proprietor points out that a large number of the marks revealed by the search originate from Poland and therefore, it should be assumed that the Polish Patent Office treated the word ‘krówka’, as the generic name of the product not subject to protection right from the start. In addition, the proprietor submits two articles, one presenting the history of ‘krówki’ (fudge) manufacturing and one that mentions the ‘Krówkowa (Fudge) War’ between the manufacturers from Ukraine and Belarus, and points out that as can be seen from the application for the declaration of invalidity, the manufacturers from Russia also join that group.

The Cancellation Division cannot share such views. While it is true that the WIPO extract indicates the translation of the earlier mark to be little cow and irrespective of the meaning in Polish of ‘krówka’/‘krówki’, the comparison of the signs (and the evaluation of the likelihood of confusion for that matter) has to be conducted from the perspective of the relevant public, i.e. the public in the territories where the earlier international registration is protected.

Furthermore, it should be noted that the relevant public in the various Member States of the EU mainly speaks the languages predominant in their respective territories (23/10/2002, T-6/01, Matratzen+ Matratzenmarkt Concord (fig.), EU:T:2002:261, § 27) and these languages are normally the official languages of the relevant territory. Therefore and in the absence of any evidence from the parties that the words ‘KOPOBKA’, ‘KOROVKA’ and ‘KRÓWKA’ are known by a relevant portion of the German, Greek and respectively Spanish consumers, it is concluded that the elements in question will be perceived as words (possibly of Slavic origin) with no immediately perceptible meaning for the goods at issue. Therefore, the distinctiveness of each of the elements of the earlier mark and that of the word ‘KRÓWKA’ of the contested sign in relation to the relevant goods must be deemed as average, since these terms are not descriptive of or allusive to the characteristics of the goods in a way which may materially affect their ability to act as a badge of origin.

This is not called into question by the search results filed by proprietor since the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Consequently, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the elements in question and under these circumstances, the EUTM proprietor’s claims must be set aside.

Along similar lines of reasoning as for ‘KOPOBKA’, ‘KOROVKA’ and ‘KRÓWKA’, the same conclusion of an average distinctiveness must be reached as regards the elements ‘Pokój’ (which refers to the proprietor’s name and which appears at the upper part of the contested sign), ‘SŁODKIE CHWILE Z DZIECIŃSTWA’ (placed below ‘KRÓWKA’ and referring in Polish to sweet moments of children, as per the information provided by the EUTM proprietor) and ‘TRADYCYJNA RECEPTURA’ (meaning traditional recipe in Polish, according to the proprietor) since these words would not readily convey to consumers any semantic content either.

The figurative element of the bird placed above the word ‘Pokój’ is distinctive to an average degree for the relevant goods.

However, that does not hold true as regards the figurative elements of the milk tank, fudge and butter. Consumers will not attach any trade mark significance to these elements since they are clearly descriptive of the goods (fudge candy)/their ingredients and cannot function as a badge of origin. Considering that the rectangular image at the right side of the sign depicts children (mainly playing) and having regard to the goods at issue, it is considered that the ability of this figurative element to function as a mark has been significantly lowered since it strongly suggests that the goods are intended for children.

Finally, the beige and white rectangular background and the red element with blue and white borders (against which the word ‘Pokój’ is depicted) are simple geometrical shapes, common place and banal that serve a purely decorative purpose and, therefore, they are considered non-distinctive.

Visually, it cannot be denied that the general configuration of the signs under comparison is rather distinct (two verbal components in the earlier mark and various verbal and device elements in the contested sign). Nevertheless, the only verbal dominant component of the contested sign, ‘KRÓWKA’, the one that will mostly focus and retain consumers’ attention reproduces the first and last two letters that form the components of the earlier mark, ‘KOPOBKA KOROVKA’. The signs further contain the same vowel ‘O’ albeit not placed in the exact same positions and, as regards the second component of the earlier mark, also the consonant ‘R’). The differences between the signs are confined to the remaining letters of the earlier mark and of the element ‘KRÓWKA’ of the contested one and to the further verbal and figurative elements of the contested sign, as described above. The additional differentiating elements of the contested sign, albeit not completely disregarded, will not be attributed particular importance by consumers (if at all), either because of their limited/no distinctiveness, as detailed above, their secondary position or merely decorative role. Account must also be taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign (in this case ‘KRÓWKA’) usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Bearing in mind the foregoing, it is concluded that the signs have at least a low degree of visual similarity.

Aurally, the earlier mark will be referred to as ‘KOPOBKA KOROVKA’. As regards the contested sign, common experience shows that when faced with marks that include many sequences of text elements, consumers have a natural tendency to shorten them to the elements they find easy to identify and remember. Bearing this in mind, it is reasonable to assume that the relevant public will identify aurally the contested mark by pronouncing the element ‘KRÓWKA’ (which is placed in the center of the sign and simple enough to notice and remember) and, eventually, ‘Pokój’, but not the remaining text elements, ‘SŁODKIE CHWILE Z DZIECIŃSTWA’ and ‘TRADYCYJNA RECEPTURA’. It follows that the pronunciation of the signs coincides in the sound of their first letter ‘K’ and last two letters ‘-KA’, present identically in both marks. There are further strong aural coincidences with the second component of the earlier mark, which will be almost identically pronounced as ‘KROWKA’ of the contested sign, except for the missing second vowel ‘O’ which is only present in the earlier mark. In addition, the presence of the vowel ‘O’ also in the first element of the earlier mark (doubled by the identical letters ‘K’ in the beginning and ‘-KA’ at the end) further contributes to a similar rhythm and intonation. The pronunciation differs in the sound of the remaining letters of these words as well as in the sound of the letters forming the word ‘Pokój’ of the contested sign (if referred to aurally by consumers). The proprietor’s claims on the pronunciation of the signs being different (‘KOPOBKA KOROVKA’ would sound as ‘KAROVKA’ and ‘KROWKA’ as ‘KROOVKA’) cannot succeed. When a sign contains foreign words, it should be assumed, in principle, that the relevant public is unfamiliar with how foreign native speakers pronounce their own language. Accordingly, the public will tend to pronounce a foreign word in accordance with the phonetic rules of their own language. Against this background, the signs are aurally similar to at most below average.

Conceptually, reference is made to the above findings on the semantic content and distinctiveness of the components of the signs. While the public in the relevant territories will perceive in the contested mark the semantic content conveyed by the figurative elements (bird, children playing, a girl pouring water etc.), the other sign lacks any meaning for the consumers. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 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, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical to the applicant’s goods.

As detailed in section c) above, the signs, assesed overall, are visually similar at least to a low degree and aurally similar to at most below average.

Notwithstanding the differentiating elements of the marks, the Cancelation Division is of the opinion that these are not sufficient to significantly influence the overall impression they create to the extent where a likelihood of confusion on the part of the public could safely be excluded.

The EUTM proprietor claims that given the differences between the marks no customers would confuse them. In this regard it points out that the goods designated by the marks are in great numbers at retailers, where a few types of ‘krówki’ from different manufacturers can be found next to one another on the shelves, so the customer will pay special attention to the one he/she is looking for not to make an error. In support of these claims it files three undated pictures allegedly taken in August 2018 at some retail stores in Poland and showing candy packaging bearing the signs ‘krówki’/’krówka’. In this regard, the Cancellation Division concurs with the applicant in that the three pictures have no bearing on the present matter, given that the relevant territories for the purposes of the present assessment are Germany, Greece and Spain.

Considering all the above and bearing in mind also the principle of interdependence (according to which a lower degree of similarity between signs may be offset by a greater degree of similarity between the goods and/or services and vice-versa), there is a likelihood of confusion on the part of the public in Germany, Greece and Spain respectively.

Therefore, the application is well founded on the basis of the applicant’s international No 844 698 designating Germany, Greece and Spain. It follows that the contested trade mark must be declared invalid for all the contested goods.

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

Ioana MOISESCU

Oana-Alina STURZA

Richard BIANCHI

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.