CANCELLATION No 30 823 C (INVALIDITY)

Evelina GmbH, Handwerkerstr. Süd 1, 39044 Neumarkt, Italy (applicant), represented by Nicola Novaro, Via Marconi, 14, 18013 Diano Castello (Imperia), Italy (professional representative)

a g a i n s t

Evelina Konceigo, C/ Mayor, Nº 2, 22528 Velilla (Huesca), Spain (EUTM proprietor), represented by Peleato Patentes y Marcas, S.L., Plaza Del Pilar 12 1º 1ª, 50003 Zaragoza, Spain (professional representative).

 

On 02/10/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 15 694 706 is declared invalid for some of the  contested goods and services, namely

Class 31: Fresh fruits and vegetables.

Class 35: Wholesaling, retailing in shops and retailing via global computer networks of fresh fruits.

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

Class 35: Wholesaling, retailing in shops and retailing via global computer networks of fresh vegetables; Advertising; Import and export services; franchising relating to business management assistance.

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 15 694 706 ‘KONCEIGO EVELINA’ (word mark), (the EUTM), namely against all of the goods and services in Classes 31 and 35. The application is based on the earlier EUTM No 9 075 946 for the figurative sign shown below:

The applicant also based the application for invalidity on the earlier international registration No. 8 383 82A ‘Evelina’ (word mark) which it claims has designations to Austria; Benelux; Bulgaria; Croatia; Cyprus; Czech Republic; Denmark; Estonia; the EU; Finland; France; Germany; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Malta; Poland; Portugal; Romania; Slovenia; Spain; Sweden; and the United Kingdom. The applicant ticked the box to indicate that it wished to rely on online substantiation.

Along with the application form, the applicant also submitted printouts from the Romarin database for a different trade mark, namely, earlier international registration No. 8 383 82 ‘Evelina’ (word mark) with designations to Austria; Benelux; Bulgaria; Croatia; Czech Republic; Denmark; Finland; France; Germany; Greece; Hungary; Ireland; Italy; Poland; Portugal; Romania; Slovenia; Slovakia; Spain; Sweden; and the United Kingdom.

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 is a likelihood of confusion as the signs in conflict are similar and the goods in conflict are identical or similar.

The EUTM proprietor did not submit any observations in reply to the application for invalidity.

ADMISSIBILITY

According to Article 12(2)(2) EUTMR in addition to the requirements laid down in paragraph 1, an application for a declaration of invalidity based on relative grounds shall contain the following:

(a)	in the case of an application pursuant to Article 60(1) of Regulation (EU) 2017/1001, an identification of the earlier right on which the application is based, in accordance with Article 2(2)(b) of this Regulation, which shall apply mutatis mutandis to such an application;

According to Article 2(2)(b) EUTMR a clear identification of the earlier mark or right on which the opposition is based, namely: (i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) of Regulation (EU) 2017/1001, the file number or registration number of the earlier mark, an indication of whether the earlier mark is registered or an application for registration of that mark, as well as an indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is an EU trade mark;

In the present case, the invalidity application is based on, inter alia, the earlier international registration No. 8 383 82A ‘Evelina’ (word mark). The applicant claims that this mark has a designation to the EU and also lists the countries: Austria; Benelux; Bulgaria; Croatia; Cyprus; Czech Republic; Denmark; Estonia; Finland; France; Germany; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Malta; Poland; Portugal; Romania; Slovenia; Spain; Sweden; and the United Kingdom. The applicant ticked the box to indicate that it wished to rely on online substantiation. However, when the Cancellation Division checked the WIPO database it appears that this mark was filed in Germany and has only one designation to China. Therefore, this earlier right does not have designations to any Member State of the EU.

According to Article 8(2)(a) for the purposes of paragraph 1 ‘earlier trade mark’ means:

1. trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

1. EU trade marks;

2. trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;

3. trade marks registered under international arrangements which have effect in a Member State;

4. trade marks registered under international arrangements which have effect in the Union;

As such an international trade mark registration that only has a designation to China cannot be relied upon under Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR as it is outside of the EU and does not have effect within the Union. Therefore, the applicant cannot rely on this right as a bases for the cancellation, and this right is deemed to be inadmissible.

SUBSTANTIATION

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the applicant does not submit appropriate evidence.

According to Article 16(1) EUTMDR, the applicant will present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of the proceedings.

According to Article 16(1)(b) EUTMDR in conjunction with Article 7(2) EUTMDR, within the period referred to above, the applicant must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the application.

In particular, if the application is based on a registered trade mark that is not a European Union trade mark, the applicant must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, or equivalent documents emanating from the administration by which the trade mark was registered — Article 16(1)(b) in conjunction with Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the applicant may provide such evidence by making reference to that source — Article 16(1)(b) in conjunction with Article 7(3) EUTMDR.

Along with the application form, the applicant submitted printouts from the Romarin database for the international registration No. 8 383 82 ‘Evelina’ (word mark). This certificate shows that this mark has designations to Austria; Benelux; Bulgaria; Croatia; Czech Republic; Denmark; Finland; France; Germany; Greece; Hungary; Ireland; Italy; Poland; Portugal; Romania; Slovenia; Slovakia; Spain; Sweden; and the United Kingdom. As the details of this mark were submitted along with the application form the Cancellation Division accepts it as a valid basis of the application. However, the applicant did not submit details of this mark on the application form and as such did not tick the box to indicate that it wished to rely on online substantiation. Therefore, for substantiation purposes the Cancellation Division can only take into account the extract from the Romarin database submitted with the application. The relevant goods and services for which this mark is registered are not included in the certificate and no further evidence was submitted by the applicant to prove the scope of goods for which it is registered.

This evidence is not sufficient to substantiate the abovementioned applicant’s earlier trade mark, because the database extract does not contain all the necessary elements like the relevant goods for which it is registered. The adversarial part of the proceedings closed on 12/03/2019 and no further evidence was submitted.

According to Article 17(3) EUTMDR, if the applicant has not submitted the facts, arguments or evidence required to substantiate the application, the application will be rejected as unfounded.

The application must therefore be rejected as unfounded, as far as it is based on the abovementioned earlier international registrations.

Therefore, the examination of the application will only proceed as based on the earlier EUTM No 9 075 946 for the figurative sign shown below:

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 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 on which the application is based are the following:

Class 31: Fresh fruit; natural plants.

The contested goods and services are the following:

Class 31: Fresh fruits and vegetables.

Class 35: Wholesaling, retailing in shops and retailing via global computer networks of fresh fruits and vegetables; Advertising; Import and export services; franchising relating to business management assistance.

Contested goods in Class 31

The contested fresh fruits are contained in the list of both marks and are therefore identical.

The contested goods fresh vegetables are highly similar to the earlier goods fresh fruits. These goods have the same nature. Moreover, they usually coincide in producer, relevant public and distribution channels.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested wholesaling, retailing in shops and retailing via global computer networks of fresh fruits are similar to a low degree to the applicant’s fresh fruit.

However, the wholesaling, retailing in shops and retailing via global computer networks of fresh vegetables and the earlier fresh fruit are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only highly similar and not identical. Therefore, they are dissimilar.

The remaining contested services, namely, advertising; Import and export services; franchising relating to business management assistance are also dissimilar to the earlier goods. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture or production of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.

The same applies to the comparison of the earlier goods with the remaining services of import and export services; franchising relating to business management assistance that can be used as a medium for transporting, marketing and selling the earlier goods. These services are different in nature to the earlier goods which are fruit and plants and serve a different purpose. Moreover, they are directed at different end consumers and provided by different companies. The fact that these services might be aimed at fruit or plants does not result in them being similar as goods and services are dissimilar by nature and they do not share any commonalities. Therefore, these services are dissimilar.

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 varying degrees are directed at the public at large (e.g. fresh fruit) or the specialist professional public (e.g. wholesaling of fresh fruit).

The degree of attention will range from average (e.g. for fresh fruit) to high (e.g. for wholesaling of fresh fruit).

3. The signs

	KONCEIGO EVELINA
Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

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

The earlier mark is a figurative mark comprised of the single word ‘evelina’ in rather standard red lower case typeface and with a green leaf placed over the first letter ‘e’. As mentioned the typeface is rather standard and therefore is non-distinctive. The green leaf is descriptive in relation to the goods for which the earlier mark is registered and as such, is also non-distinctive. The word ‘Evelina is a female forename originally of German origin. The relevant consumer will understand this meaning but it has no significance in relation to the relevant goods at issue and is therefore distinctive to an average degree.

The contested mark is a word mark comprised of two words ‘KONCEIGO EVELINA’. The word ‘KONCEIGO’ is a surname of Slavic origin and may be understood as such by a part of the relevant consumers. For the remaining consumers this word has no particular meaning. In both cases this word has an average degree of distinctive character. The word ‘EVELINA’, as discussed above, will be understood as a female forename originally of German origin but it has no significance in relation to the relevant goods and services at issue and is therefore also distinctive to an average degree. The contested sign, as a word mark, has no element which can be considered more dominant, and moreover, has no element which can be considered more distinctive than other elements.

Visually, the signs coincide in the word ‘EVELINA’ which is the entirety of the verbal element of the earlier mark, which is also its most distinctive element, and which is fully contained within the contested sign, playing an independent and observable role within the sign. The signs differ in the additional distinctive word 'KONCEIGO’ of the contested sign and the non-distinctive figurative element, typeface and colour of the earlier sign. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the distinctive word ‘EVELINA’, present identically in both signs. This word is the entirety of the distinctive verbal element of the earlier mark, while it plays an independent and distinctive role also within the contested sign. The pronunciation differs in the additional distinctive word ‘KONCEIGO’ of the contested sign which has no counterpart in the earlier mark. Therefore, the signs are phonetically similar to an average degree.

Conceptually, the public in the relevant territory will perceive the word ‘EVELINA’ in both signs as referring to a female forename and the signs are similar in this respect. Some of the relevant public will understand the word ‘KONCEIGO’ as being a surname and for these consumers the signs are conceptually similar to an average degree. The figurative element of the earlier mark will evoke a concept of a leaf but it does not serve to establish any conceptual similarity because this element is not capable of indicating the commercial origin of the sign and this non-distinctive figurative element, including the typeface, will not affect the conceptual comparison.

For the remaining consumers who will not understand any meaning for the word ‘KONCEIGO’ the signs will both be understood as referring to the female forename ‘EVELINA’ and therefore, they are conceptually highly 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.

It is unclear whether the applicant actually claims that the earlier mark has gained an enhanced distinctiveness or reputation. However, it does argue that the EUTM proprietor is attempting to take advantage of its commercial success and states that the sign has a high degree of distinctive character. Therefore, for the sake of completeness, the Cancellation Division will examine whether the earlier mark has gained an enhanced degree of distinctive character through use. Contrary to what the applicant argues, the fact that the word does not have any meaning in relation to the registered goods does not make the sign highly distinctive. It is the practice of the Office that signs can be inherently only distinctive to an average degree and anything higher than that must be demonstrated by submitted relevant evidence to prove enhanced distinctiveness gained through use or reputation (see judgement of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

The applicant submitted the following evidence:

1. Extract of the contested Trademark “KONCEIGO EVELINA”;

2. Extract of the international trademark “EVELINA” owned by Evelina

GmbH;

3. Extract pt of the EU trademark “EVELINA” owned by Evelina GmbH;

4. Evidence of Evelina GmbH’s international presence.

5. Leaflet Evelina

The evidence submitted is insufficient to prove the longstanding or intensive use of the sign or its recognition by the relevant public. It consists of an advertisement of the applicant and a picture of its stand at an exhibition without providing any information as regards the dissemination figures or geographical extent of the advertisement or how many people attended the exhibition etc. This evidence does not show that the earlier mark has been subjected to long-standing or intensive use in the EU in relation to the registered goods. Moreover, the evidence comes directly from the applicant itself and is not backed up by further independent evidence. The applicant could have submitted turnover figures and invoices, examples of advertising in the press with circulation figures, articles, awards, surveys, opinion polls, or any other type of independent evidence to prove that the earlier mark has gained an enhanced degree of distinctive character. Therefore, the Cancellation Division considers that the applicant has failed to prove the enhanced distinctive character of the earlier mark.

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, despite the presence of some weak elements as described in section c) above.

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).

In the present case the signs in conflict are visually and aurally similar to an average degree and conceptually either similar to an average degree (where the relevant public understands both words) or to a high degree (for the public that only understands the word ‘EVELINA’ in both signs). The goods and services in conflict have been found to be partly identical, partly highly similar, partly similar to a low degree and partly dissimilar. The earlier mark has an average degree of distinctive character and the relevant public is both the average consumer and the professional public whose degree of attention ranges from average to high.

The identity or similarity between part of the goods and services in conflict and the average degree of visual, aural and conceptual similarities (also high conceptual similarity for some consumers) between the signs is sufficient to find a likelihood of confusion between the signs. Moreover, even in relation to the services which are lowly similar, the similarities between the signs are sufficient to come to the same conclusion. The coinciding word is distinctive in both signs and the entirety of the verbal element of the earlier mark is fully incorporated into the contested sign as an independent and observable element.

Therefore, there is a likelihood of confusion for the goods and services which are identical or similar to varying degrees. This conclusion even stands in relation to the services which have been found to be lowly similar due to the similarities between the signs, in particular the conceptual similarities. This conclusion, moreover, also stands in relation to the consumers with a higher degree of attention as they must also rely on their imperfect recollection of the signs.

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 and services covered are from the same or economically linked undertakings. In the present case, as the distinctive word of the earlier mark is fully incorporated into the contested sign the relevant consumer may confuse the signs or believe that the contested goods originate from the applicant or a related undertaking.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s EUTM No 9 075 946.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

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

Rhys MORGAN

Nicole CLARKE

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.