CANCELLATION No C 36 838 (INVALIDITY)

 

Interstar Chim SA, Basarabia No.256, Bucharest, Romania (applicant), represented by Răducu Turtoi, Splaiul Independentei no. 3, Bl. 17, 3rd floor, ap.7, District 5, 040011 Bucharest, Romania (professional representative)

 

a g a i n s t

 

Jarosław Prymas "Agrecol" J.P., Mesznary 2, 98-400 Wieruszów, Poland  (EUTM proprietor), represented by Kancelaria Prawa Własności Przemysłowej, Wrocławska 33 lok.4, 30-011 Kraków, Poland (professional representative).

On 11/12/2020, the Cancellation Division takes the following

 

 

DECISION

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

 

2.	European Union trade mark No 15 495 401 is declared invalid for all the contested goods, namely:   Class 5: Fungicides; Herbicides; Insecticides; Pesticides; Herbicides; Repellents; Preparations for destroying dry rot fungus; Larvae exterminating preparations; Chemical preparations to treat mildew; Repellents (insect -); Preparations for destroying insects; Slug exterminating preparations; Preparations for destroying rodents; Tobacco extracts (insecticides).
3.	The European Union trade mark remains registered for all the uncontested goods in Classes 1, 3 and 8.
4.	The EUTM proprietor bears the costs, fixed at EUR 1 080.

 

REASONS 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 15 495 401   (figurative mark), (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the goods in Class 5. The application is based on Romanian trade mark registration No 98 397 (figurative sign) and Romanian trade mark registration No 114 226 (figurative sign). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that the goods in conflict are identical and that the signs in conflict are similar and that this leads to a likelihood of confusion.

 

The EUTM proprietor requests the applicant to submit proof of use for both of the earlier marks. The proprietor provides a history of the different proceedings between the parties. It argues that in the previous opposition proceedings between the parties, involving the same EUTM, the applicant could have relied on its earlier Romanian mark which is the basis of this application but it did not and relied on another EUTM which was then invalidated so they withdrew the opposition. It claims that they should not be allowed to use this Romanian registration No 98 397 now as it creates a precedent for allowing multiple repetitions of proceedings by indicating new grounds and argues that Article 60(4) EUTMR applies. It argues that the applicant has not used the signs in relation to the relevant goods or at least not in relation to fungicides or herbicides.

The applicant submitted evidence to prove the use of the earlier Romanian mark No 98 397 only, as it believes this is sufficient for the present purposes. This evidence will be listed in detail below. It claims that the evidence is sufficient to prove use of the earlier mark and that it has been used in Romania for more than 15 years for a large variety of products like insecticides and repellents. It is the second best-selling brand for insecticides in Romania and the sales run into the millions of EUR. Moreover, it claims to have invested large amounts in the promotion of the brand and provides numbers in this regard. The applicant states that its goods are sold in all hypermarkets in Romania and submits a number of invoices to prove these sales.

 

The EUTM proprietor notes that the applicant only submitted proof of use of one of the earlier marks, namely, No 98 397. It goes through each piece of evidence and claims that they are insufficient to prove use. In particular, it claims that the catalogues submitted are actually product portfolio documents and not catalogues and they do not contain certified dates but only a small date on the bottom in a different font and colour than the rest of the documents which gives rise to doubts about their reliability. Therefore, it claims they should not be taken into consideration. It states that annex 5 does not contain a certified date either, only a time stamp, so it must be disregarded. Annex 7 is not dated and it contends that for this reason it must be disqualified also but even so, it claims it only shows insecticides marked with the earlier sign. Annexes 8-9, it argues, do not specify which particular goods they reference and as such they are not reliable proof that the relevant goods were sold during the relevant period. Annexes 10-11 only show the sales or advertising of insecticides and nothing else. Finally, it claims that Annex 12 only shows invoices of AROXOL marked products without the possibility of identifying the actual goods in question and which were all sold to Kaufland stores. The proprietor claims that most of the documents are in Romanian and no translation has been submitted and therefore, the applicant is in breach of Article 146(7) and (9) EUTMR. It argues that the applicant did not submit the translations within the one month time limit and this untranslated evidence should be disregarded. It can not identify the goods from these documents. It claims that the English translation of the goods in Annex 7 is laid out in such a way as to make it impossible to properly identify them from the catalogue or portfolio. Therefore, it claims that the applicant has failed to prove use of the earlier mark due to the lack of translations and the lack of dates on some of the enclosures. However, it states that if the Cancellation Division considers the evidence sufficient that it believes that the evidence only shows use for household insecticides as no evidence of pesticides or herbicides has been proven. It defines both herbicides, pesticides and fungicides and denies that the evidence shows proof of these goods, but only in relation to insecticides and not for any of the remaining goods like dental wax or materials for stopping teeth.

The proprietor states that all of the goods in conflict are aimed at both the general public and the professional consumer, being gardeners and farmers, whose degree of attention will be higher than average as they are toxic substances and potentially harmful for their users and the environment. It denies that the applicant is the direct competitor of the proprietor as the applicant specializes in manufacturing sprays and traps for insects whereas the proprietor manufactures plant protection, household chemistry and insect and animal chemical repellents. Moreover, it claims that the proprietor’s goods have mainly red packaging and a very distinctive graphic design and labels. The nature and purpose of the goods are different and they are not complementary to each other. Their distribution channels are different also, the proprietors being sold in specialist stores while the applicant’s are sold in supermarkets. Therefore, the consumer will clearly notice the difference between the products. The proprietor then compares the signs and their different elements and concludes that the distinctive and dominant elements of the contested sign, ‘AROX’ and the red banner and the different lengths of the signs, clearly set differentiate the signs. The signs are only similar to a low degree. In terms of concepts, it claims that the additional element ‘OL’ at the end of the earlier mark will be associated with ‘oil’ by the relevant public whereas the contested sign has no meaning but the concept of a shield and banner while figurative element of the earlier mark has no meaning. It further claims that the contested sign has been subject to a wide and long use in the EU due to the earlier Polish trade mark registration No 230 148. Therefore, it claims that the applicant must have been aware of its existence as the contested sign is only a graphic modification of the earlier sign. It submits evidence of its use of the sign for almost 9 years and claims that the sign is well-known in the European market. Therefore, it requests that the application for invalidity be rejected in its entirety.

In support of its arguments the EUTM proprietor submitted the following evidence:

 Annex 1: CD ROM which contains all kinds of documentation presenting products bearing the AROX trademark: advertising spots, designs of product labels, advertisements for press, leaflets, catalogues etc.

 Annex 2: Advertisements in trade journals (m.in. VIRIDIS – Magazyn Centrów Ogrodniczych and Biznes Ogrodniczy).

 Annex 3: expenses for sponsoring of programmes and/or films broadcasted in Polish nationwide television channels – TVP1 and TVN.

 Annex 4: Lists of AROX products volumes sold both in Poland and abroad are enclosed (Polish version and a translation into English).

 Annex 5: Statements of advertising expenses are enclosed (Polish version and its translation into English).

 Annex 6: catalogues of AROX products.

PROOF OF USE

 

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

 

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade marks on which the application is based, namely,  Romanian trade marks No 98 397 and No 114 226. The request has been filed in due time and is admissible given that the earlier trade marks were registered on 10/02/2009 and 25/05/2011 respectively, that is, more than five years prior to the date of the application for a declaration of invalidity (23/07/2019). 

The application for a declaration of invalidity was filed on 23/07/2019.  The date of filing of the contested mark is 01/06/2016. The applicant was, therefore, required to prove that the trade marks on which the application is based was genuinely used in Romania from 23/07/2014 until 22/07/2019  inclusive. Since the earlier marks were registered more than five years prior to the date of filing of the contested mark, use of the earlier mark had to be shown also for the period from 01/06/2011 to 31/05/2016 inclusive.

 

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

 

Romanian trade mark No 98 397

Class 5:   materials for stopping teeth, dental wax; preparations for destroying vermin; fungicides, herbicides. 

Romanian trade mark No 114 226

Class 5:   preparations for destroying vermin; fungicides, herbicides.. 

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

 

On 22/10/2019, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 26/12/2019 to submit evidence of use of the earlier trade marks. 

 

On 23/12/2019, within the time limit, the applicant submitted evidence of use.

 

The evidence to be taken into account is the following:

 

 Annexes 1-4: Catalogues showing AROXOL branded goods dated between 2016-2019. The dates appear in very small print at the bottom of the first page under the indication www.interstar.ro. The catalogues show pictures of the different goods bearing the earlier signs, including sprays, aerosols, plug in liquids, traps, spirals, sticks etc. and with images of dead flies, moths, insects, etc.

 Annex 5: Details of the AROXOL portfolio.

 Annex 6: Translation into English of the AROXOL goods as they appear in the catalogues. The main categories are products against flying insects, crawling insects, mosquitos, outdoor protection against flies and mosquitos, against moths and with natural essential oils against mosquitos and it specifies the different formats of the goods available, such as sprays, tablets, liquids etc.

 Annex 7: Interstar Chim catalogue showing different brands, including AROXOL.

 Annexes 8-9: AROXOL marketing investments between 2014-2017 in GRP’s and from 2015-2019.

 Annex 10: Total sales figures for Romania for AROXOL goods.

 Annex 11: AROXOL advertisements on national TV stations in Romania on a CD.

 Annex 12: Copies of invoices dated between 2015-2019 issued to customers in Romania for the sales of AROXOL goods.

 Annex 13: Excerpt of OSIM database for the trade mark AROXOL.

The Cancellation Division notes that the applicant in its letter of 23/12/2019 in which it submitted the evidence of use stated that it was only submitted evidence of use of the earlier Romanian trade mark No 98 397. As the applicant has not submitted any evidence of use of the remaining earlier Romanian trade mark No 114 226 the opposition must be rejected as far as it is based on this earlier right in accordance with Article 64(2) and (3) EUTMR. The present decision will continue by assessing the evidence filed in relation to the Romanian trade mark No 98 397.

Preliminary remarks answering some of the EUTM proprietor’s arguments

The EUTM proprietor argues that in the previous opposition proceedings between the parties, involving the same EUTM, the applicant could have relied on its earlier Romanian mark which is the basis of this application but it did not and relied on another EUTM which was then invalidated so it withdrew the opposition. It claims that the applicant should not be allowed to use it now as it creates a precedent for allowing multiple repetitions of proceedings by indicating new grounds and argues that Article 60(4) EUTMR applies. However, the fact that the applicant brought opposition proceedings based on different trade marks and did not invoke this earlier right is not a bar to it being able to bring cancellation proceedings. Indeed Article 60(4) EUTMR states the following:

‘Where the proprietor of one of the rights referred to in paragraph 1 or 2 has previously applied for a declaration that an EU trade mark is invalid or made a counterclaim in infringement proceedings, he may not submit a new application for a declaration of invalidity or lodge a counterclaim on the basis of another of the said rights which he could have invoked in support of his first application or counterclaim’.

As can be seen from the text of the invoked Article, only the bringing of a prior application for a declaration of invalidity or a counterclaim would disbar the applicant from bringing an additional application for a declaration of invalidity, not a prior opposition proceedings. The applicant does not have to rely on all of its earlier rights in opposition proceedings in order to rely on them in subsequent invalidity proceedings. Therefore, this argument is rejected.

The EUTM proprietor argues that the applicant did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration. However, the applicant is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office in accordance with Article 10(6) EUTMDR, applicable mutatis mutandis to cancellation proceedings according to Article 19(2) EUTMDR. Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, the catalogues and invoices, and their self-explanatory character, the Cancellation Division considers that there is no need to request a translation. In particular, the catalogues show images of the goods themselves with the different insects that the goods kill or repel and the applicant did provide a translation of the different types of goods involved in the catalogues so they can be identified for the most part. Moreover, the invoices can be contrasted with the catalogues to identify many of the goods. Therefore, the Cancelation Division considers it unnecessary to prolong the proceedings further by requesting a translation of the evidence and this argument is set aside.

The EUTM proprietor also argues that some of the documents are not dated and cannot be taken into consideration. However, not all of the documents need to be dated. The invoices are clearly dated within the relevant period. Moreover, the catalogues provide information as to the goods contained in the invoices and the products offered under the mark and there are indications of dates on the catalogues, but even if there were not as the proprietor casts doubt about the reliability of this information, the fact that this evidence assists in identifying the products which are sold in the dated invoices means that this evidence cannot be rejected for this reason. Therefore, this argument must be set aside.

The EUTM proprietor argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the earlier mark is registered. The EUTM proprietor´s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

As far as advertising or turnover figures claimed these figures come from the interested party itself. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources.

 

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

Analysis of each of the four factors

Most of the evidence of use is dated within the relevant periods. Reference is made to what has been outlined above in respect of the EUTM proprietor’s doubts regarding the validity of the dates on some of the evidence. The invoices are billed for the most part in the first relevant time period, however, there are also some invoices which cover the first relevant period. The catalogues, advertisements and invoices etc. show that the place of use is Romania. This can be inferred from the language of the documents (Romania), the currency mentioned (LEI) and some addresses in Romania. Some of the documents, (i.e. invoices and corresponding turnover and marketing figures), provide sufficient information concerning commercial volume, length of period and frequency of use. Although the turnover and marketing figures emanate from the interested party itself, the information contained therein is supported by independent evidence, namely, the invoices showing actual sales to end customers. Finally, the evidence shows that the sign was used as a trade mark and as registered for some but not all of the relevant goods.

The earlier mark is registered for:

Class 5:   materials for stopping teeth, dental wax; preparations for destroying vermin; fungicides, herbicides. 

The evidence does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 64(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.’

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

The proprietor, although it contends that due to the non-translation of the evidence or the lack of dated evidence the evidence is insufficient to prove use, it states that the use has only be shown in relation to the goods insecticides. The Cancellation Division agrees with the proprietor in this respect. These goods can be considered to form an objective subcategory of preparations for destroying vermin, as vermin covers not only rodents but also insects or other animals that are harmful to crops, humans, animals etc. Therefore, the Cancellation Division considers that the evidence shows genuine use of the trade mark only for the following sub-category of goods:

Class 5: insecticides.

The evidence does not show use in relation to the remaining goods. Therefore, the Cancellation Division will only consider the abovementioned goods of the earlier Romanian trade mark registration No 98 397 in its further examination of the application.

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. 

a) 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 and for which a genuine use of the mark was proven are the following: 

Class 5: insecticides. 

The contested goods are the following: 

Class 5: fungicides; herbicides; insecticides; pesticides; herbicides; repellents; preparations for destroying dry rot fungus; larvae exterminating preparations; chemical preparations to treat mildew; repellents (insect -); preparations for destroying insects; slug exterminating preparations; preparations for destroying rodents; tobacco extracts (insecticides).

The goods insecticides are identically contained in both lists of goods.

The contested fungicides; pesticides; repellents; larvae exterminating preparations; chemical preparations to treat mildew; repellents (insect -); preparations for destroying insects; slug exterminating preparations; preparations for destroying rodents; tobacco extracts (insecticides) are identical to the applicant’s insecticides either because they are synonyms or because the applicant’s goods include the contested goods or they overlap with the contested goods.

The contested herbicides (listed twice) are highly similar to the earlier insecticides as they have the same purpose and nature. Moreover, they usually coincide in producer, relevant public and distribution channels.

The contested preparations for destroying dry rot fungus are highly similar to insecticides of the earlier mark as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The EUTM proprietor argues that the applicant is not the direct competitor of the proprietor as the applicant specializes in manufacturing sprays and traps for insects whereas the proprietor manufactures plant protection, household chemistry and insect and animal chemical repellents. The nature and purpose of the goods are different and they are not complementary to each other. Their distribution channels are different also, the proprietor’s being sold in specialist stores while the applicant’s are sold in supermarkets. Therefore, the proprietor claims, the consumer will clearly notice the difference between the products. However, the Cancellation Division is restricted in its examination as to the actual goods listed and can not look to the exact marketing strategy of the goods on the market, but only the goods as actually listed in both specifications. Therefore, this argument is rejected.

b) 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, contrary to the applicant’s arguments, the goods found to be identical or similar to a high degree are directed at the public at large and at business customers with specific professional knowledge or expertise such as farmers and horticulturalists. The applicant provided evidence that the goods bearing the earlier mark are sold through supermarkets or online, via Amazon^®. However, what is important is the general category of goods itself; the way the goods are marketed individually by the applicant is not decisive. Therefore, the broad categories of goods for which all of the marks in conflict are registered, and which have been found to be identical or highly similar, will be directed at both the general public and the professional public. Consequently, the applicant’s argument in this respect must be rejected.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price and also due to the fact that these goods can have an adverse effect on the health of the users or their environment.

c) The signs

 

Earlier trade mark	Contested sign

 

The relevant territory is  Romania.  

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 comprised of the single word ‘AROXOL’ which has no meaning in relation to the earlier goods. The proprietor argues that ‘OL’ will be understood by the relevant public as meaning ‘OIL’, however, the proprietor has not submitted any evidence to back up this assertion. Moreover, the Cancellation Division notes that the Romanian word for ‘oil’ is ‘ulei‘ which is rather far removed from ‘OL’. Therefore, this argument must be rejected. The relevant consumer in Romania will not understand any meaning for this term. The figurative element consists of the above mentioned word depicted in a rather standard but sloping upwards white capital typeface superimposed on a navy background which dips down into a type of triangle below and contains within it an additional red elongated triangle which serves to partially underline the word ‘AROXOL’. This figurative element is not particularly striking or original and merely serves a decorative purpose and highlights the word element. Therefore, this figurative element is secondary overall in the impression of the sign. The most distinctive element of the earlier sign is the term ‘AROXOL’.

The earlier sign has no elements that could be considered clearly more dominant than other elements. 

The contested sign is a figurative sign consisting of a green shield with a gold frame with a red ribbon superimposed on top and encircling the shield which produces a somewhat 3D visual effect. On top of the red ribbon appears the word ‘AROX’ written in white standard upper case letters. The shield has at least a certain degree of distinctive character particularly in relation to its somewhat original 3D like effect.

In terms of the dominant elements of the contested sign it is the verbal element ‘AROX’ and the red banner which are the most dominant (visually eye-catching). In particular, the word ‘AROX’ is written in large bold white capital typeface which stands out on the red background of the banner and they are centrally placed in the middle and to the front of the sign (due to the 3D effect) which causes this element to stand out.

Since the word ‘AROX’ is meaningless, it is distinctive to an average degree in relation to the goods. In relation to the figurative element, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign 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).

The EUTM proprietor argues that its goods have mainly red packaging and a very distinctive graphic design and labels which will distinguish it from the earlier mark. Again, the Cancellation Division can only take into account the actual signs as registered and not the market reality of how they appear on the packaging of the goods. Therefore, this argument is rejected.

Visually, the signs coincide in the first four letters of the verbal element in both signs, namely ‘AROX’. However, they differ in the additional two letters in the earlier mark’s verbal element, ‘OL’ and in the figurative element, layout and colour in both signs.

However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign 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; 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Moreover, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The signs coincide in the first four letters of both signs ‘AROX’, which is the entirety of the word element (which is co-dominant and the most important part of the contested sign) and the beginning of the word element of the earlier mark where consumers place more attention.

Therefore, visually the signs are similar to an average degree.

Aurally,  the pronunciation of the signs coincide in the sound of the letters ‘AROX’ which is the entirety of the verbal element of the contested sign and the beginning of the earlier mark. They differ in the additional two letters of the earlier mark which has no counterpart in the contested mark. Therefore, they are phonetically similar to an average degree.

Conceptually, as seen above, neither of the verbal elements of either sign has a meaning for the public in the relevant territory. However, the contested sign also depicts a banner and a shield whose concept could be understood. Therefore, the signs are not conceptually similar, although it must be highlighted that the impact of this conceptual difference is limited as this element only has a certain degree of distinctive character which is not particularly high.

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

d) The 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 

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). 

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.

Moreover, 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). This also holds true even for the professional consumer or where the consumer has a higher degree of attention as they must rely on their imperfect recollection of the signs.

In the present case the signs were found to be visually and phonetically similar to an average degree and they were conceptually dissimilar although, for the reasons mentioned above, this difference has a limited impact. The goods in conflict were found to be either identical or similar to a high degree. The earlier mark is distinctive to a normal degree and the relevant consumer is both the public in general and the specialist professional, such as farmers or gardeners. Their degree of attention will range from average to high.

Applying the interdependence rule outlined above, the similarities between the signs as stated above, coupled with the either identical or highly similar goods leads to a finding of likelihood of confusion in relation to all of the contested goods.  

The EUTM proprietor argues that its EUTM has a reputation and has submitted various items of evidence to substantiate this claim. 

However, it must be noted that the right to an EUTM begins on the date when the EUTM is filed and not before. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts related to the EUTM which happened before its filing date are irrelevant because the applicant’s rights, insofar as they predate the EUTM, are prior to the EUTM proprietor’s EUTM. Moreover, the proprietor relies on the existence of its earlier Polish mark which is slightly different to the contested sign. However, the territory at issue in the present application is that of Romania and not Poland or any other EU country. Therefore, for the above reasons, this argument must be rejected.

Conclusion

 

Considering all the above, there is a likelihood of confusion on the part of the public.

 

Therefore, the application is well founded on the basis of the applicant’s Romanian trade mark registration No 98 397. 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

Nicole CLARKE

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.