CANCELLATION No C 29 661 (INVALIDITY)

 

Merck Sante (Société Par Actions Simplifiée), 37, rue Saint Romain, 69008 Lyon, France (applicant), represented by Best Rechtsanwälte Partmbb, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

 

a g a i n s t

 

Coswell S.P.A., Via P. Gobetti, 4, 40050 Funo di Argelato, Italy (EUTM proprietor), represented by Porta & Consulenti Associati S.P.A., Via Vittoria Colonna, 4, 20149 Milano, Italy (professional representative).

On 15/09/2020, the Cancellation Division takes the following

 

 

DECISION

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

2. European Union trade mark No 16 403 412 is declared invalid for some of the contested goods, namely:

Class 3: Cosmetics, in particular skin cream, anti-cellulite cream.

Class 5: Dietary supplements for treatment of venous insufficiency, varicose veins and oedemas; Sanitary preparations for medical purposes; Dietetic substances adapted for medical use; Disinfectants; Transdermal patches.

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

Class 5: Dietary supplements for fighting cellulite; Infant formula; adhesive bands for medical purposes.

4. Each party bears its own costs.

REASONS 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 16 403 412 FLEBODERM (word mark), (the EUTM). The request is directed against all the goods covered by the EUTM. The application is based on French trade mark registration No 97 709 359 PHLEBOCREME (word mark), (the earlier mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Articles 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the marks in conflict as the marks are highly similar and the goods are identical or highly similar.

The EUTM proprietor requested proof of use of the earlier mark and the applicant filed the requested evidence. The EUTM proprietor contested the evidence of use (in particular the invoices) filed by the applicant on the grounds that it does not originate from the applicant itself but from another company. The EUTM proprietor considers the marks visually and conceptually different and aurally similar to a very low degree. The EUTM proprietor files an annex showing the differences between the nature of its goods (supplements for the well-being of the legs –prevention of skin imperfection due to vein dilatation - cellulite) and the applicant’s goods (haemorrhoidal creams).

The applicant replied by indicating the relationship with the company issuing the invoices and maintained that there is a likelihood of confusion between the marks.

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 mark on which the application is based.

The request has been filed in due time and is admissible given that the earlier trade mark was registered on 12/12/1997 that is, more than five years prior to the date of the application for a declaration of invalidity (15/11/2018). 

The application for a declaration of invalidity was filed on 15/11/2018. The date of filing of the contested mark is 24/02/2017. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in France, from 15/11/2013 until 14/11/2018  inclusive.  Since the earlier mark was 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 24/02/2012 to 23/02/2017 inclusive.

 

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based. The applicant translated from French the goods ‘produits pharmaceutiques’ to pharmaceuticals which is essentially the same thing. However, for the good order the Cancellation Division will consider the earlier goods as:

Class 5: Pharmaceutical products

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 for which it is registered and on which the application is based.

 

On 15/02/2019, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 20/04/2019 to submit evidence of use of the earlier trade mark. This date was later extended until 20/06/2019.

 

On 12/06/2019, within the time limit, the applicant submitted evidence of use.

 

The evidence to be taken into account is the following:

 

• Statutory declaration: sworn by the Brand Manager of the applicant. This statement gives – in conjunction with the documents referred to therein - information on the place (France), time (2013 - 2018), nature (product packaging and leaflet) and extent of use (more than EUR 450 000/year).

• Catalogues: extracts from product catalogues dated 2013, 2014, 2016 and 2018 containing the product PHLEBOCREME. They give indications of the place (the catalogues are in French), time (the dates are between 2013 and 2018) and the concerned goods (‘medicament crisis hemorroidaire’).

• Invoices addressed to pharmacies in France. The addressees are in various cities in France and the dates are between 2013 and 2018. The trade mark PHLEBOCREME is  mentioned as well as the article code which corresponds to the code appearing in the product catalogues.

• Samples of products: a picture of the product packaging (box) as used since, the applicant states, 2015. It is further claimed that this item in conjunction with the statutory declaration gives information on how the trade mark has been used and for which product; a picture of the product packaging (tube) as it is in use, according to the applicant, since 2011; a package leaflet as it was used, according to the applicant, from 2012 to 2014. 

Preliminary remark

The EUTM proprietor contests the evidence of use filed by the applicant on the grounds that the invoices do not originate from the applicant itself but from another company.

According to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor will be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. The fact that the applicant submitted evidence of use of its marks made by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

 

Consequently, since it can be presumed that the evidence filed by the applicant is an implicit indication that the use was made with its consent, the EUTM proprietor claim is unfounded. In any case the applicant filed evidence to prove the economic link with the company issuing the invoices.

 

To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use made by those other companies was made with the applicant’s consent and thus is equivalent to use made by the applicant.

Assessment of genuine use – factors

Preliminary remark

From the outset the Cancellation Division states that as far as the statutory declaration  is concerned, Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. 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.

Time and place of use

The evidence must show genuine use of the earlier mark within the relevant periods which largely overlap (from 15/11/2013 until 14/11/2018 inclusive and from 24/02/2012 to 23/02/2017 inclusive) and in France.

Some of the documents are not dated, such as the photographs of the packaging. However, the information contained in the statutory declaration, the catalogue extracts and the invoices sufficiently indicates the period of use which is from 2013-2018, sufficiently to cover both relevant periods. It is recalled that the EUTM proprietor does not have to prove use for an ‘uninterrupted’ period of five years counted back from the date of the revocation application, as the applicant puts forward. Regarding the duration of use, it is important to remember that only trade marks whose genuine use was interrupted for a continuous period of five years are subject to the sanctions provided for in Article 18(1) EUTMR. Therefore, it is sufficient for avoiding these sanctions that a trade mark was genuinely used for only part of this period (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52 09/07/2009, R 623/2008-4, Walzer Traum (fig.) / Walzertraum, § 28).

The documents submitted by the applicant (and in particular the invoices, the catalogues and packaging clearly show that the place of use is France. This can be inferred from the language of the documents (French) and the references to cities located in France.

Therefore, it is considered that the evidence of use filed by the applicant contains sufficient indications concerning the time of use and that it relates to the relevant territory.

Nature of use: use as a trade mark and use of the mark as registered

Nature of use requires, inter alia, that the earlier mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the earlier mark.

The evidence submitted, when assessed as a whole, shows that the earlier mark was used in such a way as to identify particular goods thus making it possible for the relevant consumer to link the goods to a certain commercial origin and to distinguish them from the goods of other manufacturers.

In addition, the documents on file show use of the earlier French mark as registered or in a broadly equivalent form . The use of the coulour, slightly stylised characters and accents is acceptable without altering the distinctive character of the registered sign, as such additions have no trade mark significance.

Therefore, it is considered that, in the context of the evidence as a whole, the documents submitted do show that, in relation to some of the contested goods (see more on this further down below in the following sub-section of the decision) the earlier mark was used as a trade mark and in a form which does not alter its distinctive character.

Extent of use and Nature of use: use in relation to the registered goods

Concerning the extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

The Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

It is also reminded that the obligation to produce evidence of genuine use of a trade mark is not designed to monitor the commercial success or to review the economic strategy of an undertaking. It may be economically and objectively justified for an undertaking to market a product or a range of products even if their share in the annual turnover of the undertaking in question is minimal (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 49).

The earlier mark is registered for pharmaceutical products in Class 5. However, the evidence does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

It is true that the proprietor submitted partly redacted invoices, in which the prices and total sums were deleted but the quantities of products sold are visible as well as the name of the trade mark referring to the products (in the list of sold products). This is not, of its own and in the absence of evidence to the contrary, sufficient to raise significant doubts as regards the genuineness of these documents. Invoices are documents relevant in trade and with tax implications. Furthermore, it is well known that the products sold, which are haemorrhoidal creams/preparations, are not expensive medications and are commonly purchased. Moreover, the respective invoices are clearly example of such documents. All in all, the evidence provided is sufficient to prove the extent on use, at least in relation to some of the goods and this will be examined further on.

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)

In the present case, the evidence as a whole and in particular the invoices, proves use for hemorrhoidal preparations exclusively. These goods have a specific purpose for a specific area of the body and, as such, can be considered to form an objective subcategory of pharmaceutical products. Therefore, the Cancellation Division considers that the evidence shows genuine use of the trade mark only for hemorrhoidal preparations.

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 the applicant proved a genuine use of the earlier mark are the following: 

Class 5: Hemorrhoidal preparations

The contested goods are the following: 

Class 3: Cosmetics, in particular skin cream, anti-cellulite cream.

Class 5: Dietary supplements for treatment of venous insufficiency, varicose veins and oedemas; Dietary supplements for fighting cellulite; Sanitary preparations for medical purposes; Dietetic substances adapted for medical use; Infant formula; Adhesive bands for medical purposes, Disinfectants; Transdermal patches.

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

The term ‘in particular’, used in the EUTM proprietor’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’ see reference in 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 3:

In general, the broad categories pharmaceuticals and cosmetics are considered similar. Cosmetics include preparations used to enhance or protect the appearance or odour of the human body. Pharmaceuticals, on the other hand, comprise products, such as skin - or hair -care preparations, with medical properties. They may therefore have the same purpose as cosmetics. Moreover, they have the same distribution channels, since they can be found in pharmacies or other specialized shops. They may target the same public and are often manufactured by the same companies.

However, when comparing specific pharmaceuticals with cosmetics, they may have only a low degree of similarity or they may even be entirely dissimilar, depending on the specific drug and its specific purpose (medical indication/effect) or its method of use. The goods cosmetics, in particular skin cream, anti-cellulite cream protected by the contested mark include a range of products designed to improve or protect the appearance of the human body, in particular of the skin. In the case at hand, as explained above, the term in particular does not limit the protection of the contested mark only to skin cream and anti-cellulite cream which are specifically mentioned in the list and which, on their own, are dissimilar to the goods of the earlier mark. The Cancellation Division has to compare the broad category of cosmetics (which may include similar and dissimilar goods when compared individually) with the earlier mark’s hemorrhoidal preparations in Class 5, which are specific products with medicinal properties intended to temporarily relieve swelling, burning, pain, and itching caused by haemorrhoids. These goods have the same sales channels, as they are available in pharmacies. They turn to the same customers and could be produced by the same companies. The goods are at least lowly similar.

Contested goods in Class 5:

Hemorrhoidal preparations in Class 5 are similar to dietary supplements for treatment of venous insufficiency, varicose veins and oedemas; sanitary preparations for medical purposes; dietetic substances adapted for medical use; disinfectants in Class 5 as they have the same general purpose to treat or prevent a medical problem. Some of the contested goods directly relate to a venous problem as the applicant’s goods do. Furthermore, the compared goods usually coincide in relevant public and distribution channels. Some contested goods are supplements that can treat haemorrhoids or affected areas from the inside out by normalising digestion function and preventing haemorrhoids in the future. The same conclusion of similarity is applicable for the contested transdermal patches also called skin patches which are medicated adhesive pads that are placed on the skin to deliver a timed-release dose of medication through the skin into the bloodstream. They are similar to hemorrhoidal preparations in Class 5 using the same abovementioned criteria.

The contested dietary supplements for fighting cellulite; infant formula; adhesive bands for medical purposes in Class 5 are dissimilar to the applicant’s goods which are specific pharmaceutical products with the purpose of treating or preventing haemorrhoids. The compared goods do not have the same nature, purpose or method of use. Furthermore, they do not share the same distributions channels, producers and end users. Moreover, they are neither complementary nor in competition.

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, the goods found to be similar or at least lowly similar target mainly the public at large as far as the goods in Class 3 are concerned, and both the public at large and professionals in the medical or pharmaceutical sector as far as the goods in Class 5 are concerned.

For the goods in Class 5, it is likely that the public would display a relatively high degree of attention when purchasing them, considering that they may, to a lesser or greater extent, affect their state of health (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and quoted case law).

For the relevant goods in Class 3, the degree of attention of the public may vary from average to higher than average as consumers may be particularly careful and selective in choosing them (for example in order to prevent allergies) so some degree of brand loyalty may be assumed.

c) The signs

 

PHLEBOCREME	FLEBODERM
Earlier trade mark	Contested sign

 

The relevant territory is France.

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).

Both marks have no meaning as such in French. Although the marks are formed by single verbal elements, the relevant consumers will break them down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The element ‘CRÈME’¹ of the earlier sign will be associated, despite the missing accent on the first E, and in the context of the relevant goods, with a ‘cosmetic emulsion more or less thick, scented, intended for skin care’. Bearing in mind that the relevant goods are hemorrhoidal preparations which usually have the nature of creams, this element is non-distinctive for these goods. The same conclusion of non-distinctiveness applies to the ending ‘DERM’ of the contested mark which will be associated with ‘DERME’² (meaning skin) especially taking into account that the relevant goods are directly related to skin and intended to be applied on skin and/or treat skin problems.

As regards the terms ‘PHLEBO’ and ‘FLEBO’, since they are identically pronounced in French, they will convey the same meaning when perceived aurally. They will be associated with a medical condition named ‘PHLÉBITE’ ³(in English ‘PHLEBITIS’⁴) which is inflammation of a vein, often occurring in the legs and involving the formation of a thrombus, characterized by swelling, pain, and change of skin colour. ‘PHLEBO-‘ is also a prefix of ‘phlebologie’⁵ (branch of medicine that studies the entire venous system and its diseases) or ‘phlebologue’ (a specialist in phlebology). In the context of the relevant goods in this case these two words are considered to be allusive at most so their distinctiveness is below average.

Since the marks in conflict are word marks they do not have any elements that are dominant in comparison with other elements.

 

Visually, the signs have a similar length eleven versus nine letters of which five are placed in the same order (four of these forming the group LEBO in the first part of the marks and the fifth being at the end in both marks). Furthermore, the letters RE appear in the contested mark in a reverse order as ER. The difference between the marks from a visual point of view are the letters PH at the beginning C in the middle and E at the end of the earlier mark and F at the beginning and D in the middle of the contested mark with the specification that the differences in the middle of the marks are often not noticed by the public due to their position and surrounding identical or similar groups of letters

PHLEBOCREME

FLEBODERM

Therefore, the signs are similar to an average degree.

Aurally, as mentioned above, PHLEBO and FLEBO are identically pronounced. Furthermore, CRÈME and DERM are aurally similar to a certain extent since they share the same number of sounds, four (the last E in the earlier mark being mute) and due to the inversed order of the letters R and E and the common sound M. In any case, any aural dissimilarity in the second half of the marks has a minimum impact since, as explained above, CREME and DERM are not distinctive for the relevant goods. It is true that the identical terms PHLEBO and FLEBO do not have a significantly higher inherent distinctive character in connection with the relevant goods; but even if just allusive, their weight will be the same in both marks. Therefore, the signs are considered as similar at least to an average degree.

Conceptually, reference is made to the above findings regarding the meaning and weight of every distinguishable elements in the marks. Although the signs as a whole do not have any meaning for the public in the relevant territory, in both marks the reference to the same medical condition is evident; therefore, the signs are conceptually similar to an average degree.

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

d) 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 just quoted Article 8(5) EUTMR (reputation of the earlier mark) in its observations without giving any arguments or submitting any evidence in connection with this article.

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 territory. However, the distinctiveness of the earlier mark must be seen as slightly below average taking into account that it is formed of one non-distinctive and one allusive element as explained above in section c) of this decision.

e) Global assessment, other arguments and conclusion 

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.

The goods are partly similar, partly at least lowly similar and partly dissimilar. They target the general public and business customers with specific professional knowledge or expertise in the pharmaceutical or medical field. The degree of attention varies from average to high.

The signs are visually and conceptually similar to an average degree and aurally similar at least to an average degree. In spite of the differences between the verbal elements, there is a likelihood of confusion. The initial part of the signs PHLEBO and FLEBO are the most distinctive part in both marks since they are just allusive. The differences between CREME and DERM are less important since they are the ending elements in both marks and since these words have no distinctiveness. The structure of the marks is very similar since they both contain two co-joined words of a similar length. Moreover, when pronounced, due to the fact that the PH and F are identically uttered and the last letter E of the earlier mark is mute, the signs will have the same rhythm and intonation.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Admittedly, the inherent degree of distinctiveness of the earlier mark is below average for the goods at issue. However, this cannot prevent the invalidity from succeeding. It is only one of a number of elements entering into that assessment, and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods 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 degree of similarity between the marks overweight the lower degree of similarity between the goods.

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 French trade mark registration. 

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be similar to various degrees to those of the earlier trade mark. 

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the application based on this article and directed against these goods 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

The Cancellation Division

Nicole CLARKE

Ioana MOISESCU

Birgit FILTENBORG

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.