CANCELLATION No 33 002 C (INVALIDITY)

Karatzi Industrial and Hotelier Enterprises Société Anonyme, Stelios Kazantzidis kai Vosporou 2A St, 71601 Irakleio, Kritis, Greece (applicant), represented by Dryllerakis & Associates, 5, Chatzigianni Mexi Str., 11528 Athens, Greece (professional representative)

a g a i n s t

Novatex Italia S.P.A., Via Per Dolzago 37, 23848 Oggiono (Lecco), Italy (EUTM proprietor), represented by Perani & Partners SPA, Piazza Armando Diaz, 7, 20123 Milano, Italy (professional representative).

On 14/04/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 15 571 003 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 15 571 003   (figurative mark). The application is based on European Union trade mark registration No 14 822 944 (figurative mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that the contested trade mark should be declared invalid because the similarity between the signs and the identity or similarity between the goods led to a likelihood of confusion. It also explained that its company is active in the field of netting packaging solutions, provided historical data regarding its creation and its development and submitted evidence of use in support of these contentions.

The EUTM proprietor denied that a likelihood of confusion existed and requested the Office to reject the application for cancellation.

The parties focussed their arguments essentially on the distinctiveness of the coinciding term of the sign, namely the term ‘MAGLIA’, an Italian word which is the equivalent of the word ‘mesh’ in English.

The EUTM proprietor argued that there was no likelihood of confusion because the word in question, which is a synonym of the word ‘net’, is not distinctive for the Italian public in relation to the goods at issue which are, inter alia, nets and nettings. It added that the Italian word could be understood by a significant part of the European Union public because similar words exist in other languages such as French, Portuguese and Spanish. It referred to the decision of refusal on absolute grounds of EUTM application No 15 077 019 ‘MAGLIA LARGA’ (word mark) which considered that the word mark was non-distinctive and that the claimed acquired distinctiveness through use was not proved. It mentioned that the decision in question had been confirmed by the Board of Appeal (26/06/2018, R 1968/2017‑2, MAGLIA LARGA). It suggested that these decisions made it clear that the contested mark in these cancellation proceedings had, therefore, been accepted only because of its additional elements and that, in particular, its figurative elements introduced sufficient differences from the earlier mark for a likelihood of confusion to be excluded. It referred, in this respect, to the ‘Common Communication on the Common Practice of Distinctiveness — Figurative Marks containing descriptive/non-distinctive words’ agreed upon by the IP Offices of the European Trade Mark and Design Network (giving guidance concerning when a figurative mark, containing purely descriptive/non-distinctive words, passes the absolute grounds examination because the figurative elements render sufficient distinctive character). It concluded that the marks were not confusingly similar, also taking into account the particularly high attention of the professional public which the goods at issue target. In support of this conclusion, it referred to previous decisions of the Office in which a likelihood of confusion was excluded because the coincidence between them was only in a non-distinctive element.

By contrast, the applicant maintained throughout the proceedings, that the word ‘MAGLIA’ was meaningless in all languages of the European Union except for Italian and was, therefore, a distinctive element for the majority of the relevant public. It referred to, and submitted, the decisions of the Boards of Appeal of 18/07/2019, R 1443/2018‑1, Maglia larga winner (fig.) / Maglia grande (fig.) and 18/07/2019, R 1444/2018‑1, Maglia larga triomphe (fig.) / Maglia grande (fig.)), in which the Boards confirmed the conclusions of the Opposition Division in its decisions (30/05/2018, B 2 928 037; 30/05/2018, B 2 928 045), that a likelihood of confusion existed for the French- and Spanish-speaking parts of the public between the earlier EUTM and the contested trade mark applications, and , respectively.

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, inter alia, the following:

Class 17: Waterproofing film (plastic -) [other than for packaging]; Flexible plastic films, other than for packaging;

Class 22: Ropes and strings; Nets; Cotton netting; Hemp nettings; Nets for leaves; Garden nets; Netting made from acrylic; Nets for protective use in gardening; Non-metallic twines.

The contested goods are the following:

Class 17: Plastic film for packing, cushioning or stuffing purposes [other than for wrapping].

Class 22: Strings. Baling twine; Nets; Nettings for agricultural purposes; Nets for rotary presses.

Contested goods in Class 17

The contested plastic film for packing, cushioning or stuffing purposes [other than for wrapping] overlaps with the applicant’s flexible plastic films, other than for packaging. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

Contested goods in Class 22

Strings and nets are contained identically in both lists of goods.

The contested nets for rotary presses are included in the applicant’s nets. The contested baling twine is included in the applicant’s non-metallic twines. Therefore, the mentioned contested goods are identical.

The contested nettings for agricultural purposes overlap with the applicant’s hemp nettings and are also 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.

At least some of the goods at issue target professionals who are expected to display a higher than average degree of attention since professional interests are at stake (e.g. netting for agricultural purposes; nets for rotary presses).

Other goods, such as strings, target both the general public and professionals (who may use these goods as raw materials for the manufacture of other goods), and a normal degree of attention, at least on the part of the general public, is to be taken into account.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

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

No clearly visually dominant element can be found in the earlier mark despite the larger size of the word ‘MAGLIA’ and the figurative element. In the contested sign, the words ‘MAGLIA’ and ‘larga’ are visually clearly more eye-catching that the world ‘REKORD’ because of their larger sizes, their positions or the space they occupy in the sign, and the fact that the term ‘REKORD’ is depicted in red letters which despite a thin white outline do not contrast with red background.

The EUTM proprietor argued that the coinciding word ‘MAGLIA’ is non-distinctive for the Italian-speaking part of the public. When assessing the similarity of the marks, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish a likelihood of confusion due to similarities that pertain solely to non-distinctive elements. Indeed, according to a Common Practice under the European Trade Mark and Designs Network, agreed between the Office and a number of trade mark offices of the European Union, with regard to the impact on likelihood of confusion of components that are non-distinctive or distinctive only to a low degree, a coincidence only in non-distinctive components does not lead to likelihood of confusion, unless the overall impression of the marks is highly similar or identical.

However, the assessment of the marks in this case is not limited to the perception of the Italian public. As long as the earlier EUTM was considered registrable as a whole on absolute grounds without meeting any objection on the part of the Examination Division of the Office, the Cancellation Division is not competent to re-assess the registrability of

the mark in the context of these proceedings based on relative grounds, and, as propounded by the applicant, the principle of the unitary character of the European Union trade mark is applicable. Based on this principle, 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.

In their decisions (18/07/2019, R 1443/2018‑1, Maglia larga winner (fig.) / Maglia grande (fig.); 18/07/2019 R 1444/2018‑1, Maglia larga triomphe (fig.) / Maglia grande (fig.)), the Boards of Appeal considered that the word ‘MAGLIA’ was descriptive for the Italian-speaking public but that it was not similar enough to the equivalent French and Spanish words ‘maille’ and ‘malla’ to enable the French- and Spanish-speaking parts of the public to understand the Italian word. The Cancellation Division fully agrees with these findings and sees no valid reason to depart from the approach taken by the Boards. Therefore, this assessment will be based on the perception of the French- and Spanish-speaking parts of the relevant public.

For these parts of the public, the coinciding term ‘MAGLIA’ is meaningless and, therefore, distinctive.

The verbal element ‘GRANDE’ of the earlier mark refers to something large in size in Spanish and is the feminine form of the adjective ‘grand’ which means ‘big, tall’ in French. Therefore, this term will be perceived by the public under analysis as a descriptive indication concerning the size of the goods in question.

The verbal element ‘larga’ in the contested mark means ‘long’ in Spanish (in the feminine form) and will be associated with the existing French word ‘large’, which means ‘wide, broad’. Therefore, it also has a descriptive meaning related to the size of the goods at issue. The verbal element ‘rekord’ of the contested sign will immediately be associated by the public taken into consideration with the word ‘record’ which is used in both languages within the meaning of the best result achieved in a particular activity, in particular sports. As such it may be perceived as a suggestion that the goods at issue achieve very good results and are the best in their category. Therefore, its distinctiveness is below average.

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). The EUTM proprietor argues that this principle does not apply in this case. It stresses that the contested sign has only been accepted for registration on the basis of its figurative elements. However, this argument is based on the perception of the Italian-speaking public which, for the reasons explained above, cannot on its own determine the reasoning and outcome of the assessment. Furthermore, the figurative elements of the contested sign essentially consist in the stylization of the verbal elements and a rectangular background which the public will perceive as ordinary means of bringing the verbal elements of the sign to the public’s attention, rather than as elements indicating the commercial origin of the goods. As far as the earlier mark is concerned, the figurative element consisting of an abstract pattern of red circles is neither sufficiently memorable nor sufficiently eye-catching in the overall impression of the sign to invalidate the principle that the public remembers the word elements more easily and uses them to identify signs (18/09/2012, T-460/11, Bürger, EU:T:2012:432, § 35).

Visually, the signs coincide in the independent, distinctive element ‘MAGLIA’ of the signs, which is immediately perceptible in both signs due to its position.

They differ in the remaining elements of both signs all of which have lower impact for the public taken into consideration for the reasons set out above.

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

Aurally, the signs coincide in the pronunciation of their initial elements ‘MAGLIA’ and differ in the sounds of the remaining elements which will be perceived as descriptive or laudatory indications concerning the goods at issue. The coincidence is placed at the beginning of the signs which is the part of signs which, in terms of recognition and recall, than consumers remember most clearly.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, although the marks as a whole do not have any meaning for the public in the relevant territory, their elements ‘GRANDE’ as regards the earlier mark, and ‘LARGA’ and ‘REKORD’, as regards the contested mark, will be understood by the public at issue, with the meanings previously indicated. There are some semantic links between the adjectives ‘GRANDE’ and ‘LARGA’ as they are used to describe something that is of consequent size for the former and of consequent size in terms of length or width for the latter. However, this is not enough for a conceptual similarity to be established, given that these elements will not be perceived as indicating the commercial origin of the goods in question. Because of the element ‘REKORD’ of the contested sign, which retains some distinctive character, the signs are not conceptually similar; however the difference thus introduced has reduced impact given that the word in question is laudatory and has reduced visual impact.

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 briefly referred, in one sentence, to the extensive use of the earlier mark and submitted evidence of use, but did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. It limited itself to asserting that the distinctiveness of the earlier mark should be considered at least normal, as already pointed out in the Opposition Division decisions it submitted.

In any case, a claim for acquired distinctiveness would not be particularly relevant in the present case (see below in ‘Global assessment’).

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The earlier 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, despite the presence of a non-distinctive element in the mark as stated above in section c).

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, 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 marks and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods are identical and at least some of them will give rise to a higher than average degree of attention on the part of the relevant public. The marks are visually similar to an average degree and aurally similar to an above average degree. The visual and aural degree of similarity arises not only from the fact that the marks coincide in the distinctive element ‘MAGLIA’ but also from the reduced impact of the differences between them.

The signs are conceptually not similar but this does not introduce a significant difference between them given that this is linked to the presence of a laudatory, not particularly conspicuous element of the contested sign.

Therefore, the public under analysis, including individuals considered to have a high degree of attention, is likely to perceive the identical goods at issue as being manufactured by the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the French- and Spanish-speaking parts of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

To support its arguments, the EUTM proprietor referred to previous Office decisions which excluded a likelihood of confusion. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the EUTM proprietor (18/5/2018, R 1524/2017‑5, ORTHO 7 (fig.) / ortho x (fig.); 10/05/2019, B 2 924 010) involve signs which coincided in components deemed descriptive and non-distinctive, or of very limited distinctiveness for the entire relevant public. Therefore, the situations are not comparable to this one and these cases are not relevant to the present proceedings.

It follows that the application is well founded on the basis of the applicant’s European Union trade mark registration and that the contested trade mark must be declared invalid for all the contested goods.

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR.

As previously mentioned in section d) of this decision, the applicant does not explicitly mention that its mark has increased its distinctiveness through its use on the market. In any case, as the cancellation application is fully successful on the basis of the inherent distinctiveness of the earlier mark. An enhanced degree of distinctiveness of the earlier mark due to its extensive use would not change the outcome of this assessment.

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

Richard BIANCHI

Catherine MEDINA

Jessica LEWIS

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.