CANCELLATION No C 46 573 (INVALIDITY) 

 

Valhall LLC, 2711 Centerville Road - Suite 400, 19808 Wilmington, Delaware, United States of America (applicant), represented by Plasseraud IP, Immeuble le Rhône Alpes, 235 Bis cours Lafayette, 69006 Lyon, France (professional representative)

 

a g a i n s t

 

Anundsjö Byggnads AB, Prästbordet 115, 895 30 Bredbyn, Sweden (EUTM proprietor), represented by Finn Torell, Sandsmovägen 15, 881 91 Sollefteå, Sweden (professional representative).

On 22/04/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

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

2. European Union trade mark No 16 638 215 is declared invalid in its entirety.

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

 

REASONS

 

On 07/10/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 16 638 215 ‘MODULUS’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM. The application is based on, inter alia, international registration No 529 417 ‘MODULO’ designating Austria. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that the goods are identical or highly similar and that the signs are very close and, therefore, there is an undeniable risk of confusion.

The EUTM proprietor did not file observations.

 

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION 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 marks, the distinctive and dominant elements of the conflicting signs and the relevant public. 

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s international registration No 529 417 designating Austria.

 

a) The goods

 

The goods on which the application is based are the following: 

Class 19: Non-metallic building materials; bricks and reconstituted facing stones and plaster mouldings for interior decoration; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; non-metallic monuments.

 

The contested goods are the following: 

 

Class 19: Concrete building elements; prefabricated building components (non-metallic -); prefabricated building elements (non-metallic -) for on-site assembly; slabs, not of metal, for building; prefabricated houses [kits], not of metal; prefabricated non-metal buildings; buildings, transportable, not of metal; framework, not of metal, for building; buildings, not of metal; joists, not of metal; posts, not of metal; posts of non-metallic materials.

The contested buildings, transportable, not of metal appear with a slightly different wording in both lists and, therefore, the goods are identical.

The contested prefabricated non-metal buildings overlap with non-metallic transportable buildings protected by the earlier mark and the goods are, therefore, identical.

The contested buildings, not of metal include, as a broader category, the applicant’s non-metallic transportable buildings. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested framework, not of metal, for building; joists, not of metal; posts, not of metal; posts of non-metallic materials are identical to the applicant’s non-metallic building materials as the former are included in the latter.

The contested prefabricated houses [kits], not of metal are identical to the applicant’s non-metallic transportable buildings as the goods overlap.

The contested goods concrete building elements; prefabricated building components (non-metallic -); prefabricated building elements (non-metallic -) for on-site assembly; slabs, not of metal, for building are included in the applicant’s non-metallic building materials and, therefore, they are identical to these goods.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

The degree of attention may vary from average to high, depending on the exact nature of the goods, the frequency of purchase and their price.

 

c) The signs

 

MODULO	MODULUS
Earlier trade mark	Contested sign

 

The relevant territory is Austria. 

Although both marks allude to the German term ‘Modul’ (‘exchangeable, complex element within an overall system, device or similar that forms a closed [functional] unit’ from the online version of DUDEN DICTIONARY, retrieved at https://www.duden.de/rechtschreibung/Modul_Element_Lehreinheit on 20/04/2021) the words ‘MODULO’ and ‘MODULUS’ do not exist, as such in German, and the overall impressions they produce are sufficiently far removed from that term for the confronted signs to have a normal degree of distinctiveness.

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).

 

None of the marks has any element that is dominant (visually outstanding) and, as stated above, the elements MODULO and MODULUS included in both signs respectively are normally distinctive.

The marks share five out of seven letters (‘MODUL*’) and the different letters (*O/*US) are found at the very end of the signs. Consequently, the marks are similar to a high degree visually and aurally.

Conceptually, both words allude to the same concept and, therefore, they are identical from this point of view.

 

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 was stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as normal for all the goods.

e) Global assessment, other arguments and conclusion 

 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Moreover, although the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with 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).

The earlier mark has a normal degree of distinctiveness, and the public is the public at large with at least an average degree of attention. Given that the signs are at least highly similar on all three levels of comparison, in the presence of identical goods, the public might confuse their commercial origin and think that they all originate from the same companies or undertakings with economic links, even for the public with a higher degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the application is well founded on the basis of the applicant’s earlier international registration No 529 417 designating Austria. It follows that the contested trade mark must be declared invalid for all the contested goods.

As this earlier right leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein. 

 

The Cancellation Division

 

Natascha GALPERIN

María Belén IBARRA DE DIEGO

Carmen SÁNCHEZ PALOMARES

 

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.