CANCELLATION No 41 265 C (INVALIDITY)

Jens Ohlemeyer, Jöllenbecker Str. 238 E, 33613 Bielefeld, Germany (applicant), represented by Dr. Stracke, Bubenzer & Partner Rechtsanwälte PartGmbB, Marktstr. 7, 33602 Bielefeld, Germany (professional representative)

a g a i n s t

Functional Training Technologies Corporation Ltd, 58 High Street, London, Wimbledon London, City of SW19 5EE, United Kingdom (EUTM proprietor).

On 16/07/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 16 722 522 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 16 722 522 ‘Ecross’ (word mark), (the EUTM). The application is based on the German trade mark registration No 302 016 203 493 for the figurative sign as shown below:

The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claims that there is a likelihood of confusion between the marks.

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

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 and services on which the application is based are the following:

Class 12: Bicycles; Racing bicycles; Fittings for bicycles for carrying luggage; Fittings for bicycles for carrying beverages; Bicycle carriers; Bicycle saddles; Bags for bicycles; Bicycle trailers (riyakah); Baskets adapted for bicycles; Pumps for bicycle tyres; Cycle hubs; Chains for bicycles, cycles; Bicycle frames.

Class 35: Business Acquisitions; Acquisitions (Advice relating to -); Business promotion services provided by audio/visual means; Preparation of advertising material; Preparation of publicity documents; Loyalty card services; Issuing of publicity leaflets; Provision of information relating to advertising; Display services for merchandise; Exhibition event for advertising purposes; Advice on the analysis of consumer buying habits and needs provided with the help of sensory, quality and quantity-related data; Consultance relating to the organisation of promotional campaigns for business; Marketing advice; Advisory services relating to sales promotion; Consultancy relating to advertising; Management advice; Advertising, marketing and promotional consutancy, advisory and assistance services; Provision of advertising space; Business management; Business analysis, research and information services; Business administration assistance; Assessment analysis relating to business management; Professional business consultancy; Database marketing; Promotion services; Advertising agency services; Advertising agency; Digital advertising services; Direct marketing.

Class 41: Education information; Educational services provided to industry; Staff training services; Management education services; Provision of training facilities for young people; Educational services provided for teachers of children; Management of education services; Business training services; Educational services relating to sports; Vocational skills training; Education services relating to business training; Educational services relating to sports; Educational services relating to physical fitness; Educational instruction; Training of sports teachers; Training of sports players; Educational instruction; Educational and training services relating to games; Educational and training services relating to sport; Education information; Training; Recreation information; Providing entertainment information; Rental of newspapers and magazines; Exhibition services for entertainment purposes; Party planning consultation; Provision of educational information; Education and training consultancy; Consultancy services relating to training; Consultation services relating to the publication of books; Consultation services relating to the publication of magazines; Consultation services relating to the publication of written texts; Educational advisory services; Recreation information; Advisory services relating to entertainment; Providing entertainment information; Consultancy services in the field of entertainment; Providing publications from a global computer network or the internet which may be browsed; Provision of electronic publications (not downloadable); Providing online electronic publications, not downloadable; Provision of online computer games; Providing online publications; Provision of leisure facilities; Vocational training services; Career counselling and coaching; Coaching services for sporting activities; Discotheque services; Operating of martial arts' schools; Operating of music-halls; Art gallery services; Library services; Nursery schools; Provision of training facilities; Institutes of education (Services provided by -); Entertainment services; Provision of club entertainment services; Correspondence courses; Fitness club services; Provision of recreational areas; Providing recreation facilities; Provision of club entertainment services; School services; Swimming facilities.

The contested goods and services are the following:

Class 28: Sporting articles and equipment.

Class 35: Advertising, marketing and promotional services; Business analysis, research and information services.

Class 41: Education, entertainment and sport services; Publishing and reporting; Education, entertainment and sports.

Contested goods in Class 28

The contested goods are sporting articles and equipment. These goods are similar to a low degree to some of the earlier services in Class 41, for example, training of sports players; educational and training services relating to games; educational and training services relating to sport; fitness club services. The organization of sporting activities or trainings involves the use of ‘games’—and, by extension, ‘gymnastic and sporting articles’—hence, a degree of low similarity exists between them (16/09/2013, T-250/10, Knut – der Eisbär, EU:T:2013:448, § 68-76). They can have the same purpose and usually coincide in relevant public. Furthermore they are complementary.

Contested services in Class 35

The contested advertising, marketing and promotional services are identical to the earlier advertising, marketing and promotional consultancy, advisory and assistance services; promotion services; advertising agency services; direct marketing either because they are identically contained in both lists (including synonyms) or because the applicant’s services are included in the contested services.

The contested business analysis, research and information services are identically contained in both lists of services.

Contested services in Class 41

The contested education, entertainment and sport services; publishing and reporting; education, entertainment and sports are identical to the earlier services such as Educational services provided to industry; Management education services; Educational services relating to sports; Training of sports players; Educational instruction; Educational and training services relating to games; Educational and training services relating to sport; Exhibition services for entertainment purposes; Providing publications from a global computer network or the internet which may be browsed; Provision of electronic publications (not downloadable); Providing online electronic publications, not downloadable; Provision of online computer games; Providing online publications; Coaching services for sporting activities; Discotheque services; Operating of martial arts' schools; Operating of music-halls; Art gallery services; Institutes of education (Services provided by -); Entertainment services; Provision of club entertainment services; Correspondence courses; Fitness club services; school services; Swimming facilities either because they are identically contained in both lists (including synonyms) or because the applicant’s services are included in, or overlap with, the contested services.

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 a low degree are partly directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. the goods in Class 28 and some of the services in Class 41) and partly directed at business consumers only (e.g. the services in Class 35).

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

	ECross
Earlier trade mark	Contested trade mark

The relevant territory is Germany.

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 which comprises the term ‘e CROSS’, the letter ‘e’ written in lowercase with the remaining letters in upper case green standard typeface with a dot between the letter ‘e’ and the word ‘cross’ and then followed by the word ‘GERMANY’ written in uppercase, slightly thinner, standard blue typeface. The difference in colour helps to separate ‘e cross’ from ‘Germany’ so the consumers will easily distinguish the different parts. The word ‘Germany’ is the English word for the name of the country which is also the relevant territory, ‘Deutschland’, and will be understood by the relevant consumers under as a descriptive indication of the origin of the goods or services. Therefore, the word ‘GERMANY’ is non-distinctive. The figurative element is comprised of a broken circle around the letter ‘e’, with half being green and half blue and a white line intersecting the two and the right hand side of the circle is also intersected by the letter ‘C’ and around this circle would appear to be a representation of half a white tire out of which are coming flames, green on top, a white line in the middle, and blue flames on the bottom, which indicates the tire is moving at great speeds. This element is somewhat original and thus distinctive to a normal degree.

Both signs also contain the identical term, although written slightly differently, namely, ‘ECross’ or ‘e CROSS’ respectively. The letter ‘e’ is commonly used in trade marks to indicate that something is offered in electronic form or online and as such this element would be at best weak. The term ‘cross’ would, for the German public, be understood as being the name of a type of punch in boxing or when used in combination with other words like ‘cross country’ or ‘cross training’ as meaning across the country or a combination of trainings and therefore could be somewhat allusive in relation to some of the contested goods and services although it would still be distinctive to a normal degree as it does not have an exact meaning in relation to any of the goods and services. The contested sign as a word mark does not have any element which can be considered more dominant than other elements. The earlier sign is made up of components which are roughly of the same size and there is no particular element which is more eye-catching or dominant either.

Visually and aurally, the signs coincide in the term and sound ‘ECross’ although, as mentioned above, it is depicted slightly differently in both signs as there is no space between the letters in the contested sign while there is in the earlier mark and in the use of capital or lowercase typeface, although as the contested mark is a word mark it is protected for both upper and lower case representations. However, the same letters are in both signs in the same order. Moreover, ‘cross’ is distinctive in both signs. However, they differ in the figurative element of the earlier mark, which is normally distinctive and the non-distinctive word ‘GERMANY’, although this latter element will not play an important role in the overall impression of the signs as it is descriptive.

Moreover, hen signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, as both signs coincide in the term ‘ECross’ and the verbal element only differs in a non-distinctive element, the signs are visually and aurally at least similar to an average degree.

Conceptually, reference is made to the above findings on the meanings and distinctiveness of the elements of both signs. The concept of the figurative element of the earlier mark will be understood by the public and is not included in the contested sign and to this extent the signs differ. Although, the word element is of more importance and both signs coincide in the meaning of the term ‘ECross / e CROSS’ which will be understood identically despite the visual differences in the depiction in both signs. The word ‘GERMANY’ as it is descriptive and non-distinctive will not serve to distinguish the signs. Therefore, overall the signs are similar to at least an average degree.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 exact meaning for any of the goods and services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a some non‑distinctive or weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The signs in conflict have been found to be at least similar to an average degree visually, phonetically and conceptually. The goods and services in conflict are either identical or similar to a low degree. The earlier mark has an average degree of distinctive character and the relevant public is partly both the average and the professional public and partly only the professional public whose degree of attention will range from average to high.

Considering all the above, there is a likelihood of confusion, which includes a likelihood of association, on the part of the German public, even in relation to the goods which are similar to a low degree and even where the attention of the relevant public is higher as even the professional public must rely on its imperfect recollection of the signs and both signs contain the letter ‘E’ followed by the word ‘CROSS’.

Therefore, the application is well founded on the basis of the applicant’s German trade mark registration No 302 016 203 493. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

COSTS

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

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

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

The Cancellation Division

Richard BIANCHI

Nicole CLARKE

Julie, Marie-Charlotte HAMEL

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.