CANCELLATION No 43 646 C (INVALIDITY)

Forestry Timber Holdings Limited, Level 8, Block D, Dataran PHB, Saujana Resort, Section U2, 40150 Shah Alam, Selangor, Malaysia (applicant), represented by Maqs Advokatbyrå AB, Östra Hamngatan 24, SE‑404 39 Göteborg, Sweden (professional representative)

a g a i n s t

Kastamonu Entegre Agaç Sanayi Ve Ticaret Anonim Sirketi, Mahir Iz Caddesi. No:25, Altunizade Üsküdar, 34662 Istanbul, Turkey (EUTM proprietor), represented by Bojinov & Bojinov Ltd., 38 Alabin Str., 1000 Sofia, Bulgaria (professional representative).

On 30/07/2021, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 16 466 708 is declared invalid in its entirety.

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

REASONS

On 12/05/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 16 466 708 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM. The application is based on European Union trade mark registration No 8 928 046 . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

On 12/05/2020, the applicant submitted an application for a declaration of invalidity of the contested mark on the grounds of the existence of a likelihood of confusion. It argued that the goods are identical and that the signs are visually, aurally, and conceptually similar.

On 18/09/2020, the EUTM proprietor requested the applicant submit proof of use of the earlier mark on which the application is based. Furthermore, it stated that the relevant public is composed of highly specialised professionals. Therefore, the level of attention is above average. It also argued that the figurative elements and the font used create a very different visual impression and that the first element of the earlier mark will be read as ‘HOOR’. Therefore, the signs are visually and conceptually dissimilar.

On 22/12/2020, the applicant submitted evidence of use (listed and assessed below) and argued that the relevant goods target the public at large, which may include both professionals and amateurs. The degree of attention of the public will vary between average and above average. It added that the verbal elements dominate the overall appearance of both marks. It is clear that the earlier trade mark will be read as ‘FloorArt’.

On 09/03/2021, the EUTM proprietor argued that the evidence submitted by the applicant is insufficient to establish genuine use of the earlier mark. Indeed, various documents, such as the photos or the internet excerpts should be considered irrelevant for the present proceedings, since they are not dated within the relevant period, they do not refer to the relevant territory of the European Union (EU) and/or they do not demonstrate use in relation to the registered goods in Class 19. Furthermore, they cannot demonstrate sufficient extent of use of the earlier trade mark.

The proprietor submitted observations as regards each separate item of evidence provided by the applicant. It claimed that the invoices have not been issued by the applicant ‘Forestry Timber Holdings Limited’, but rather by a third party – ‘Forestry Timber Export Sdn. Bhd’. The applicant did not adduce any evidence to demonstrate that the applicant is economically linked with the seller ‘Forestry Timber Export Sdn. Bhd’. It is not proven that the goods featured therein have been sold with the consent of the applicant. After analysing each piece of evidence, the EUTM proprietor concludes that taken in its entirety, the evidence submitted by the applicant does not prove genuine use of the earlier mark in the EU within the period 12/05/2015 - 12/05/2020. The advertising materials are not dated, and it cannot be inferred by any additional evidence that they have been disseminated amongst EU consumers in the relevant period. Some of the evidence indicates some presence of the applicant’s mark on websites or in a mobile application but the mere presence of a mark on the internet does not amount to genuine use. There is no supporting evidence that EU consumers actually visited the websites and applications within the relevant period or whether purchases of the registered goods in Class 19 have been made. The internet printouts are irrelevant since they do not refer to the earlier mark. The invoices and the shipping documents are irrelevant since they do not refer to the earlier mark, and they are issued by an entity that is different from the applicant. The invoices do not demonstrate the commercial volume of the goods sold. A mere indication of an approximate turnover figure in a witness statement originating from the applicant is insufficient since it is not supported by additional accounting documents.

On 22/04/2021, after the closure of the proceedings, the applicant submitted supplementary observations and evidence to demonstrate that it was present at the Domotex trade show in Hannover in 2018 and that the relevant goods and the trade mark were on display.

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 that the applicant submit proof of use of the trade mark on which the application is based.

The request was filed in due time and is admissible given that the earlier trade mark was registered on 18/08/2010 that is, more than five years prior to the date of the application for a declaration of invalidity (12/05/2020).

The application for a declaration of invalidity was filed on 12/05/2020. The date of filing of the contested mark is 14/03/2017. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 12/05/2015 to 11/05/2020 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 also had to be shown for the period from 14/03/2012 to 13/03/2017 inclusive.

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

Class 19: Parquets (parquet flooring); parquet floor; parquet floor boards; floors, not of metal; wood paving; paving blocks, not of metal; slabs, not of metal; tiles, not of metal; worked timber; manufactured timber; semi-worked wood; scantlings [carpentry]; floor boards; veneers; windows, not of metal; window frames, not of metal; doors, not of metal; door frames, not of metal; sills, not of metal; door casing, not of metal; staircases not of metal; building materials, not of metal.

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 22/09/2020, in accordance with Article 19(2) EUTMDR, after an extension of time, the Office gave the applicant until 27/01/2021 to submit evidence of use of the earlier trade mark.

On 22/12/2020, within the time limit, the applicant submitted evidence of use.

The evidence to be taken into account is the following:

 Exhibits 1 and 2: screenshots of the internet archive of the applicant’s website, showing a photo gallery from the Domotex trade show held in Hannover, Germany from 14/01/2017 to 17/01/2017 and 12/01/2018 to 15/01/2018.

 Exhibit 3: four invoices addressed to a customer in Ireland, dated between 2015 and 2016. Shipping documents sent to a customer on December 2016 are also included. They demonstrate that the relevant goods have been sold in large quantities.

 Exhibit 4: catalogue pages, showing use of the trade mark. According to the applicant (in the affidavit), the catalogue was used in the EU from 2015 to 2017.

 Exhibit 5: images of packaging material and pallets of goods in large quantities. Page 3 demonstrates printed information in German, Turkish, Swedish, Spanish, Danish and French.

 Exhibit 6: screenshots of a distributor’s webpage, parkestil.com, from 2016 to 2019. The distributor Parkestil S.C.C.L. is based in Spain.

 Exhibit 7: a product catalogue (undated), showing the use of the trade mark and containing evidence of the goods.

 Exhibit 8: three catalogue covers (undated). They contain evidence of the goods and the sign .

 Exhibit 9: three product pages, including information regarding certifications of the products in France and Germany.

 Exhibit 10: a printout of the web page appadvice.com, accessible in the EU, showing use of the trade mark for a mobile application marketing parquet floors. It demonstrates use of the trade mark for the goods in the EU from 30/12/2012 (release date) to at least 09/12/2017 (last updated).

 Exhibit 11: screenshots and printouts of the web page for the Domotex trade show 2018 in Germany. They demonstrate that the applicant was an exhibitor.

 Exhibit 12: screenshots from the internet archive capturing the applicant’s web page, floorartparquetry.com, dated 2016-2018. It demonstrates use of the trade mark and the goods (flooring). They list the applicant’s sales managers in the EU and demonstrate a list of exhibitions where the applicant had participated at the time, inter alia, Domotex, and a list of case studies, inter alia, references to Prague and Slovakia.

 Exhibit 13: two declarations of performances, dated 01/05/2020, for two kinds of multi-layered parquet flooring. They demonstrate the verbal element ‘FLOORART’ of the trade mark and the goods (parquet flooring). Two ‘summary results of the determination of the product-type’, dated 14/08/2015, issued by LIGNOTESTING a.s. in Bratislava, Slovakia, were submitted. They demonstrate the applicant’s company name, the verbal element of the trade mark and the goods (multi-layer wood parquet).

 Exhibit 14: a letter sent from the CEO of the applicant on 15/12/2020, declaring that the contested trade mark has been used since 2005 for parquet flooring in the United Kingdom, Ireland, Spain, Switzerland, Denmark, Sweden, Germany, France and Greece. The sales of parquet floor goods in the EU under the logo amounted to approximately EUR 4,000,000 during the five-year period 2015-2020. The mobile application ‘FloorArt Parquetry’ referred to in Exhibit 10 was available for downloading at the apple app store in all EU countries.

Preliminary remarks

On 22/04/2021, the applicant submitted additional evidence as proof of use. The issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take it into account can remain open, as the evidence previously submitted within the time limit is sufficient to prove the required genuine use of the EUTM for some of the goods for which it is registered, and the additional evidence does not contain any reference to the remaining goods. Since it does not modify the outcome of this decision, it is therefore not necessary to reopen the proceedings in order to invite the proprietor to comment upon it.

Witness statement

The EUTM proprietor argues that the witness statement of the applicant’s CEO has no evidentiary value as it comes from the sphere of the applicant itself and is of low probative value.

As far as witness statements are concerned, Article 10(6) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. 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.

On the assessment of the evidence

The EUTM proprietor argued 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.

Use by a third party

The EUTM proprietor further contended that ‘the invoices have not been issued by the cancellation applicant “Forestry Timber Holdings Limited”, but by a third party – “Forestry Timber Export Sdn. Bhd.”’, and since no evidence was submitted demonstrating the link between the applicant and the seller, those invoices cannot be construed as evidence that proves use by or with the applicant’s consent.

This argument of the EUTM proprietor cannot succeed either. First, it is recalled that where an applicant submits evidence of use of its mark by a third party, this is an implicit indication that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). Moreover, in the present case, each of the two declarations of performance mentions that Mr Gurjeet Singh is the CEO of both companies, which furthermore share the same address (Exhibit 13). Although the applicant did not submit any documents regarding the said companies (e.g. extracts from the Malaysian company register), the Cancellation Division finds it is evident that ‘Forestry Timber Export Sdn. Bhd.’ is the commercial vehicle through which the applicant conducts its business. Consequently, the EUTM proprietor’s claims are unfounded.

Place of use

The documents show that the place of use is the European Union and in particular Germany (Exhibits 1, 2 and 11: the Domotex trade show 2017 and 2018), Ireland (Exhibit 3: invoices) and Spain (Exhibit 6: distributor’s website), France and Germany (Exhibit 9: certifications of the goods), the Czech Republic and Slovakia (Exhibit 12: case studies). This can be inferred from the language of the documents (Exhibit 4: catalogue pages in four languages: English, French, German and Spanish), the addresses on the invoices or the list of sales managers. Therefore, the evidence relates to the relevant territory.

Time of use

The evidence must show genuine use of the earlier trade mark within the relevant periods, namely from 14/03/2012 to 13/03/2017 inclusive (first relevant period) and from 12/05/2015 to 11/05/2020 inclusive (second relevant period). There is an overlap between these two periods.

The documents are dated within the relevant periods. Furthermore, use does not have to be continuous throughout the relevant five-year periods. It is sufficient if use was made at the very beginning or end of the period, provided the use was genuine (16/12/2008, T‑86/07, Deitech, EU:T:2008:577).

The EUTM proprietor’s claims that some documents are undated and therefore have ‘no evidential value’ cannot succeed. Images of products/product packaging may serve to demonstrate how the mark was used in relation to the relevant goods and to provide information regarding the type of goods the proprietor manufactures and markets, and therefore cannot be ignored in the overall evaluation of the evidence (13/02/2015, T‑287/13, HUSKY, EU:T:2015:99, § 67-68). The same is true for the product catalogues.

Therefore, it is considered that the evidence contains sufficient indications concerning the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

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.

The evidence in support of the extent of use consists, in particular, of an affidavit and four invoices sent to clients in Ireland in 2015-2016. The applicant also submitted catalogues and evidence to prove the presence of its mark in trade shows. Although the invoices do not mention the trade mark , the goods are identified by a product name and some of them can be found in the catalogues submitted. Furthermore, all the invoices indicate that they were sold in ‘FLOORART packing’ (images of this packaging, where the mark is shown, can be seen in Exhibit 5). The invoices show that the relevant goods have been sold in large quantities. Therefore, the invoices, taken together, supported by the catalogues, the trade shows and the applicant’s website demonstrate that significant sales of ‘FLOORART’ parquet goods were made. Furthermore, given the turnovers mentioned in the affidavit, the invoices submitted can be considered mere illustrations of the total sales. Finally, genuine use does not require commercial success, but simply genuine exploitation in the market.

It is important to remember that use does not have to be made during a minimum period of time to qualify as ‘genuine’. In particular, use does not have to be continuous throughout the relevant periods of five years. Therefore, the materials submitted show that the applicant has seriously tried to maintain or create a commercial position in the relevant market, and there is sufficient information concerning the commercial volume, the duration, and the frequency of use.

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

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in accordance with its function, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The earlier mark was used to identify the commercial origin of the goods. The evidence filed by the applicant shows that the earlier mark was displayed on the goods’ packaging and catalogues and was used in the websites and trade shows for the products. Consequently, there is a sufficient link to prove that the goods concerned are provided under the earlier mark.

The registered sign is the figurative mark . The documents show use of the figurative marks , , and .

According to Article 18(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 64(2) and (3) EUTMR, Article 18 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

All the signs depicted above clearly reproduce the element ‘FLOORART’. This element is represented in the same stylisation, typeface, colours or position.

One of the signs used is identical to the earlier mark, the alterations of the other marks used are confined to the backgrounds and to the presence of a leaf. However, the backgrounds are merely decorative and the depiction of a leaf, which could be perceived as relating to the organic origin of the goods, has a limited distinctive character. The symbol ® merely indicates that the mark is registered. However, it has no trade mark significance and does not alter the distinctive character of the earlier mark either. Consequently, there is sufficient use of the mark as registered or of a variation thereof.

Therefore, the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

Use in relation to the registered goods

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 proves use only for parquets (parquet flooring); parquet floor; parquet floor boards.

These goods can be considered to form an objective subcategory of floors, not of metal; worked timber; manufactured timber; semi-worked wood, floor boards; building materials, not of metal.

Therefore, the Cancellation Division considers that the evidence shows genuine use of the trade mark only for parquets (parquet flooring); parquet floor; parquet floor boards and the Cancellation Division will only consider the abovementioned goods in its further examination of the application. There is no evidence that would safely allow for a conclusion that the earlier EUTM has been commercially active for the remaining goods.

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 are, after the assessment of proof of use, the following:

Class 19: Parquets (parquet flooring); parquet floor; parquet floor boards.

The contested goods are the following:

Class 19: Parquet flooring of wood; laminated flooring made of wood based panels; parquet floor boards; wood paving; wood boards; wood; wood (semi-worked); wood joists; wood veneers; wood floors; furrings of wood; wood panelling; wood jalousies; wood tiles for building; artificial wood; wood awning constructions; wall and ceiling wood coverings in the form of panels, tiles and boards; screens of wood [building materials].

Contested goods in Class 19

Parquet floor boards are identically contained in both lists of goods (including synonyms).

The contested parquet flooring of wood; laminated flooring made of wood based panels; wood floors are identical to the applicant’s parquet floor because the applicant’s goods include, or overlap with, the contested goods.

The contested wood paving; wood boards; wood; wood (semi-worked); wood joists; wood veneers; furrings of wood; wood panelling; wood tiles for building; artificial wood; screens of wood [building materials] are all elements and materials made of wood and used in the construction sector. These goods can have the same purpose and method of use as the applicant’s parquets (parquet flooring); parquet floor; parquet floor boards, namely that they can be used for flooring. Moreover, these goods are usually made by the same manufacturers and have the same distribution channels. They also target the same relevant public. Furthermore, the contested wood paving is also in competition with the applicant’s goods. Therefore, they are at least similar to an average degree.

The contested goods wood jalousies; wood awning constructions; wall and ceiling wood coverings in the form of panels, tiles and boards are similar to an average degree to the applicant’s goods. These goods are usually made by the same manufacturers and have the same distribution channels. They also target the same relevant public.

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 identical or similar to varying degrees are directed at both the public at large, for example DIY enthusiasts, and at business customers with specific professional knowledge or expertise. 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.

c) The signs

Earlier trade mark	Contested sign

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 unitary character of the European Union trade mark means that 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.

The common elements are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the relevant territory.

Both signs are figurative marks. The earlier mark is composed of the verbal element ‘FloorArt’, depicted in italic, white and orange, lower-case letters. Due to the different colours and the upper-case letter ‘A’ of the component ‘Art’, consumers will perceive the verbal element of the earlier mark as having two components, ‘Floor’ and ‘Art’. The contested mark is composed of the verbal element ‘ARTFLOOR’, depicted in rather standard, black and white, upper-case letters. Due to the different colours, consumers will perceive the verbal element of the contested mark as having two components, ‘ART’ and ‘FLOOR’.

The coinciding component ‘Floor’ is an English word which means ‘the layer of boards, brick, stone, etc. in an apartment, on which people tread; the under surface of the interior of a room’ (information extracted from Oxford Dictionaries on 21/07/2021 at https://www.oed.com). Bearing in mind that some of the relevant goods can be used as a floor covering or are intended for floors, this component is descriptive in relation to the kind or destination of the relevant goods of the earlier mark, namely parquets (parquet flooring); parquet floor; parquet floor boards and in relation to the contested goods parquet flooring of wood; laminated flooring made of wood based panels; parquet floor boards; wood paving; wood boards; wood; wood (semi-worked); wood joists; wood veneers; wood floors; furrings of wood; wood panelling; wood tiles for building; artificial wood; screens of wood [building materials]. This term is distinctive for the remaining contested goods, namely wood jalousies; wood awning constructions; wall and ceiling wood coverings in the form of panels, tiles and boards.

The common component ‘ART’ will be perceived by the relevant public essentially as the conjunction of ‘paintings, sculpture, and other pictures or objects which are created for people to look at and admire or think deeply about’ (information extracted from Collins English Dictionary on 21/07/2021 at https://www.collinsdictionary.com/dictionary/english/art). This term alludes to the idea that the relevant goods are somehow the result of an imaginative and creative process. The idea that the goods are the result of an ‘artistic’ design or artistic work confers a certain pleasing aesthetic character on those goods. Therefore, the word ‘ART’, even if in a rather vague and indirect manner, is allusive of certain positive characteristics of the goods concerned. For that reason it has a below-average degree of distinctiveness in relation to the goods (28/09/2016, T‑593/15, THE ART OF RAW / * art (fig.) et al., EU:T:2016:572, § 40; 06/12/2016, T‑735/15, SHOP ART (fig.) / *art (fig.) et al., EU:T:2016:704, § 47).

The verbal elements are placed against coloured rectangular backgrounds, which are merely decorative and are devoid of distinctive character.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the components ‘FLOOR’ and ‘ART’, although placed in an inverse order. The signs also differ in their typeface and colours. In this context, it has to be considered that, 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).

Each of the signs in question is composed of two identical and clearly identifiable elements used in inverse order. The mere inversion of the elements of a mark cannot allow the conclusion to be drawn that there is no visual similarity. Although the coinciding components ‘FLOOR’ and ‘ART’ are non-distinctive and/or weak for most of the goods, since the marks coincide in the combination of these elements, although placed in an inverse order, and the remaining elements are also non-distinctive or decorative, the signs are visually similar to an average degree, contrary to the EUTM proprietor’s arguments.

The EUTM proprietor argued that the first element of the earlier mark will be read as ‘HOOR’. However, it is unlikely that the consumer will read the word ‘hoor’. Firstly, because the first letter does not look like the letter ‘H’ and, secondly, because the goods concerned are floors and the term ‘Hoor’ has no meaning in English. Therefore, the EUTM proprietor’s argument is put aside.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘FLOOR’ and ‘ART’, present in both signs albeit in a different position. Both signs have the same number of syllables and are phonetically identical in length. The fact that the syllables are pronounced in an inverted order cannot prevent the signs from being similar. The modification of the signs does not result from the inversion of the syllables, but from the shifting of the component ‘FLOOR’ from the first place to the last place, in such a way that, phonetically, the relevant public would immediately perceive, and without any difficulty, that the difference between the two signs lies in that shift alone. Therefore, since there is no other element that introduces a phonetic discrepancy, the signs are aurally similar to an average degree, contrary to the EUTM proprietor’s arguments.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although, as a whole, a certain difference may be perceived between the signs, for example that ‘FLOORART’ conveys the idea of ART applied to a FLOOR as a medium, while ‘ARTFLOOR’ would seem to refer to the FLOOR on which ART is located (e.g. in a department store with multiple floors featuring different items), it is true that both signs refer to the same concepts of ART and FLOOR. Therefore, they can be considered 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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark as a whole must be seen as below-average for all the goods in question, namely parquets (parquet flooring); parquet floor; parquet floor boards in Class 19.

e) Global assessment, other arguments and conclusion

The contested goods are partly identical and partly similar to varying degrees to the applicant’s goods. The signs are visually, aurally, and conceptually similar to an average degree. The goods, which are identical or similar, target both the public at large (DIY enthusiasts) and business customers with specific professional knowledge or expertise. The degree of attentiveness of the relevant public may vary from average to higher than average.

As mentioned above, where a trade mark is composed of verbal and figurative elements, the verbal elements usually have a stronger impact on the consumer than the figurative components. Hence, the stylisation of the verbal elements of the signs and their backgrounds will be perceived as graphical means intended to bring their verbal elements to the attention of the public.

Although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in the case involving an earlier mark of weak distinctive character, and a trade mark applied for which is not a complete reproduction of it, 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, § 61). In the present case, notwithstanding the assessment of the distinctive character of the earlier mark, the existence of a likelihood of confusion may be established in light of the similarity of the signs at issue and the identity and similarity of the goods in question.

Account is also 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).

Considering the limited differentiating impact of merely shifting a verbal element in the signs at hand, there is a likelihood of confusion with regard to the average consumer even when that consumer displays a high degree of attention

Conclusion

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part 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.

Therefore, the application is well founded on the basis of the applicant’s EUTM registration No 8 928 046. 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(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

Carmen SÁNCHEZ PALOMARES

Richard BIANCHI

Frédérique SULPICE

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.