CANCELLATION No 40 305 C (INVALIDITY)

Scavanti AB, Västergatan 3, SE-280 64 Glimåkra, Sweden (applicant), represented by Bergenstråhle & Partners Småland AB, Lasarettsgatan 17, SE-331 21 Värnamo, Sweden (professional representative)

a g a i n s t

Antonio Gordon, Via Botticelli 25, 81031 Aversa, Italy (EUTM proprietor), represented by Daniela Pasquali, Galleria Umberto I n. 83, 80132 Napoli, Italy (professional representative).

On 07/09/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 056 318 is declared invalid for some of the contested goods, namely:

Class 18: Bags, wallets and other carriers; cosmetic cases sold empty; bags; shoulder bags; cross-body bags; children’s shoulder bags; fashion handbags; beach bags; bags for sports; canvas bags; shopping bags; leather bags and wallets; bags made of imitation leather; waterproof bags; all-purpose carrying bags; bags for sports clothing; purses; handbags; evening handbags; handbags made of imitations leather; handbags made of leather; handbags, purses and wallets; small purses; pocket wallets; souvenir bags; clutches [purses]; bumbags; rucksacks; leather coin purses; daypacks; key cases; key-cases of leather and skins; leather laces.

Class 25: Clothing; footwear; headgear; casualwear; waterproof clothing; ladies’ clothing; menswear; girls’ clothing; clothing of imitations of leather; formal evening wear; formalwear; clothing of leather; sportswear; boys’ clothing; dresses; gym suits; beach robes; evening wear; dinner suits; bikinis; underwear; bodies [clothing]; boy shorts [underwear]; waist cinchers; stockings; socks; shirts; socks and stockings; bed socks; turtleneck shirts; open-necked shirts; dress shirts; vest tops; cardigans; leather jackets; coats for men; evening coats; coats; coats for women; chemises; evening suits; tutus; waist belts; tights; sundresses; swim wear for gentlemen and ladies; beach clothes; sweat shirts; turtlenecks; jackets [clothing]; men’s and women’s jackets, coats, trousers, vests; shirt-jacs; knee-high stockings; polar fleece jackets; sweatjackets; down jackets; long jackets; bed jackets; rainproof jackets; blousons; skirts; culotte skirts; fleeces; denims [clothing]; weatherproof clothing; raincoats; denim jeans; undershirts; hosiery; sports jerseys; sleeveless jerseys; maternity shirts; running vests; athletics vests; short-sleeved T-shirts; liveries; leggings [leg warmers]; lingerie; maillots [hosiery]; sweaters; jogging tops; fleece tops; sports jerseys and breeches for sports; turtleneck sweaters; trousers; pedal pushers; golf pants, shirts and skirts; fleece shorts; swimming trunks; trunks; dress pants; stretch pants; sweatpants; trousers of leather; weatherproof pants; casual trousers; pyjamas; coverups; parkas; pelisses; furs [clothing]; moisture-wicking sports pants; sports pants; salopettes; brassieres; rain ponchos; polo shirts; polo knit tops; cuffs; ponchos; long sleeve pullovers; crew neck sweaters; slipovers; hooded pullovers; stocking suspenders; sock suspenders; sports bras; overcoats; collar protectors; shawls [from tricot only]; tee-shirts; skirt suits; stoles; jogging sets [clothing]; running suits; body stockings; crop tops; maternity tops; trench coats; shift dresses; ladies’ dresses; athletic uniforms; uniforms; unitards; leather suits; clothing for gymnastics; footwear for women; footwear for men; training shoes; leisure shoes; flip-flops; slippers; shoes; ladies’ sandals; men’s sandals; sandals and beach shoes; sandals; bath shoes; gymnastic shoes; beach shoes; boots; ladies’ boots; heels; waterproof boots; rain boots.

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

Class 14: Jewellery; time instruments; jewellery boxes and watch boxes; key rings and key chains, and charms therefor; gemstones, pearls and precious metals, and imitations thereof; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; identification bracelets [jewelry]; decorative articles [trinkets or jewellery] for personal use; copper tokens; prize cups of precious metals; commemorative statuary cups made of precious metal; trinkets coated with precious metal; trinkets of bronze; ceramic discs for use as tokens of value; objet d’art made of precious stones; objet d’art of enamelled gold; fancy keyrings of precious metals; objet d’art of enamelled silver; silver objets d’art; works of art of precious metal; boxes of precious metal; monetary coin sets for collecting purposes; commemorative shields; agate as jewellery; amulets [jewellery]; platinum rings; silver rings; gold rings; jewellery being articles of precious stones; articles of jewellery with ornamental stones; jewellery incorporating diamonds; jewellery fashioned of cultured pearls; jewellery containing gold; jewellery made of glass; jade [jewellery]; plastic costume jewellery; body costume jewellery; custom jewelry; bracelets; rings [jewellery] made of precious metal; jewellery in the form of beads; jewellery coated with precious metal alloys; jewellery for personal adornment; personal jewellery; crosses [jewellery]; jewellery fashioned of semi-precious stones; semi-precious articles of bijouterie; jewellery made from silver; sterling silver jewellery; jewellery made of precious stones; pewter jewellery; jewellery made of precious metals; jewellery made of semi-precious materials; articles of jewellery made of precious metal alloys; jewellery made of crystal coated with precious metals; shoe jewellery; jewellery made of plastics; hat jewellery; jewelry for the head; cameos [jewelry]; silver bracelets; bracelets and watches combined; wooden bead bracelets; bead bracelets; gold bracelets; charity bracelets; silver-plated bracelets; gold plated bracelets; friendship bracelets; cabochons for making jewellery; cabochons; bracelets of precious metal; bracelets made of embroidered textile [jewellery]; bracelets [jewellery]; gold plated chains; gold chains; square gold chain; chains [jewellery]; collets being parts of jewellery; bracelet charms; necklace charms; jewellery charms; jewelry charms in precious metals or coated therewith; bib necklaces; gold necklaces; jewelry clips for adapting pierced earrings to clip-on earrings; jewellery rope chain for necklaces; rope chain [jewellery] made of common metal; jewelry guard chains; ankle bracelets; pendants; cuff links; wedding rings; tie clips; diadems; metal badges for wear [precious metal]; lapel badges of precious metal; flexible wire bands for wear as a bracelet; silver-plated necklaces; gold-plated necklaces; decorative cuff link covers; facial jewellery; enamelled jewellery; platinum jewelry; body jewellery; jewellery, clocks and watches; jewellery, including imitation jewellery and plastic jewellery; precious jewellery; jewellery of yellow amber; lapel pins [jewellery]; chain mesh of semi-precious metals; badges of precious metal; corporate recognition jewelry; gold jewellery; ivory jewellery; articles of jewellery coated with precious metals; jewellery made of bronze; women’s jewelry; jewellery being articles of precious metals; jewellery incorporating precious stones; jewel pendants; ornaments [jewellery, jewelry (Am)]; imitation jewellery ornaments; silver-plated earrings; pierced earrings; gold earrings; earrings of precious metal; silver earrings; gold plated earrings; parts and fittings for jewellery; ear ornaments in the nature of jewellery; personal ornaments of precious metal; dress ornaments in the nature of jewellery; gold medals; medallions; earrings; hoop earrings; drop earrings; medals; commemorative medals; medals made of precious metals; medals coated with precious metals; eternity rings; ornamental pins; decorative pins of precious metal; cloisonne pins; decorative brooches [jewellery]; brooches [jewellery]; jewelry pins for use on hats; pearls [jewellery]; precious stones; pins [jewellery]; synthetic stones [jewellery].

Class 18: Saddlery, whips and apparel for animals; leather for harnesses; luggage; leather, unworked or semi-worked; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; moleskin [imitation of leather]; leather twist; labels of leather; harness fittings; casings, of leather, for springs; studs of leather; straps for soldiers’ equipment; kid; trunks [luggage]; travel luggage; luggage; travelling trunks; trunks and suitcases; bags [envelopes, pouches] of leather, for packaging; travel baggage; travelling handbags; cases of imitation leather; travel bags made of plastic materials; travelling bags made of imitation leather; weekend bags, garment bags for travel made of leather; shoe bags for travel; flexible bags for garments; shoe bags; roll bags; travel cases; overnight bags; luggage covers; suitcases; leather suitcases.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 17 056 318 for the figurative mark , namely against all the goods in Classes 18 and 25. The application is based on, inter alia, Swedish trade mark registration No 106 728 for the work mark ‘GULLIVER’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM should be invalidated under Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR. It argues that there is identity (in Class 25) or aesthetical similarity (in Class 18) between the goods involved and also similarity between the earlier mark and the contested sign. It claims that the earlier mark enjoys enhanced distinctiveness. As a result, according to the applicant, there is a likelihood of confusion on the part of the public.

The EUTM proprietor did not submit observations in reply, although he was invited to do so by the Office.

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.

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 abovementioned Swedish trade mark registration.

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 the following:

Class 25: Manufacturing and selling of clothing and footwear.

The contested goods are the following:

Class 18: Saddlery, whips and apparel for animals; luggage, bags, wallets and other carriers; leather for harnesses; leather, unworked or semi-worked; leather laces; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; moleskin [imitation of leather]; leather twist; labels of leather; harness fittings; casings, of leather, for springs; studs of leather; straps for soldiers’ equipment; kid; cosmetic cases sold empty; cases of imitation leather; key cases; trunks [luggage]; travel luggage; luggage; key-cases of leather and skins; travelling trunks; trunks and suitcases; bags; shoulder bags; cross-body bags; children’s shoulder bags; fashion handbags; bags [envelopes, pouches] of leather, for packaging; beach bags; bags for sports; travel baggage; travelling handbags; travelling bags made of imitation leather; travel bags made of plastic materials; garment bags for travel made of leather; shoe bags for travel; canvas bags; weekend bags; shopping bags; leather bags and wallets; bags made of imitation leather; waterproof bags; flexible bags for garments; all-purpose carrying bags; bags for sports clothing; shoe bags; roll bags; souvenir bags; purses; handbags; evening handbags; handbags made of imitations leather; handbags made of leather; travel cases; overnight bags; handbags, purses and wallets; clutches [purses]; bumbags; small purses; luggage covers; leather coin purses; pocket wallets; suitcases; rucksacks; leather suitcases; daypacks.

Class 25: Clothing; footwear; headgear; casualwear; waterproof clothing; ladies’ clothing; menswear; girls’ clothing; clothing of imitations of leather; formal evening wear; formalwear; clothing of leather; sportswear; boys’ clothing; dresses; gym suits; beach robes; evening wear; dinner suits; bikinis; underwear; bodies [clothing]; boy shorts [underwear]; waist cinchers; stockings; socks; shirts; socks and stockings; bed socks; turtleneck shirts; open-necked shirts; dress shirts; vest tops; cardigans; leather jackets; coats for men; evening coats; coats; coats for women; chemises; evening suits; tutus; waist belts; tights; sundresses; swim wear for gentlemen and ladies; beach clothes; sweat shirts; turtlenecks; jackets [clothing]; men’s and women’s jackets, coats, trousers, vests; shirt-jacs; knee-high stockings; polar fleece jackets; sweatjackets; down jackets; long jackets; bed jackets; rainproof jackets; blousons; skirts; culotte skirts; fleeces; denims [clothing]; weatherproof clothing; raincoats; denim jeans; undershirts; hosiery; sports jerseys; sleeveless jerseys; maternity shirts; running vests; athletics vests; short-sleeved T-shirts; liveries; leggings [leg warmers]; lingerie; maillots [hosiery]; sweaters; jogging tops; fleece tops; sports jerseys and breeches for sports; turtleneck sweaters; trousers; pedal pushers; golf pants, shirts and skirts; fleece shorts; swimming trunks; trunks; dress pants; stretch pants; sweatpants; trousers of leather; weatherproof pants; casual trousers; pyjamas; coverups; parkas; pelisses; furs [clothing]; moisture-wicking sports pants; sports pants; salopettes; brassieres; rain ponchos; polo shirts; polo knit tops; cuffs; ponchos; long sleeve pullovers; crew neck sweaters; slipovers; hooded pullovers; stocking suspenders; sock suspenders; sports bras; overcoats; collar protectors; shawls [from tricot only]; tee-shirts; skirt suits; stoles; jogging sets [clothing]; running suits; body stockings; crop tops; maternity tops; trench coats; shift dresses; ladies’ dresses; athletic uniforms; uniforms; unitards; leather suits; clothing for gymnastics; footwear for women; footwear for men; training shoes; leisure shoes; flip-flops; slippers; shoes; ladies’ sandals; men’s sandals; sandals and beach shoes; sandals; bath shoes; gymnastic shoes; beach shoes; boots; ladies’ boots; heels; waterproof boots; rain boots.

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

As mentioned above, the earlier mark is registered for manufacturing and selling of clothing and footwear in Class 25. According to the Nice Classification, Class 25 covers offering goods and not rendering services. Obviously, before being offered to the consumers, the goods need to be manufactured. Moreover, putting them on the market in most cases involves selling them. However, all these activities (manufacturing and selling) are not offered as separate services to third parties. What is offered to the consumers is the final product, namely, in this case, clothing and footwear. Therefore, for the sake of comparison, the earlier mark will be considered as registered for clothing and footwear.

Moreover, according to Article 33(7) EUTMR, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 18

The contested bags, wallets and other carriers; cosmetic cases sold empty; bags; shoulder bags; cross-body bags; children’s shoulder bags; fashion handbags; beach bags; bags for sports; canvas bags; shopping bags; leather bags and wallets; bags made of imitation leather; waterproof bags; all-purpose carrying bags; bags for sports clothing; purses; handbags; evening handbags; handbags made of imitations leather; handbags made of leather; handbags, purses and wallets; small purses; pocket wallets; souvenir bags; clutches [purses]; bumbags; rucksacks; leather coin purses; daypacks; key cases; key-cases of leather and skins; leather laces are similar to the applicant’s clothing and footwear in Class 25. It is not unusual for clothing manufacturers to directly produce and market different kinds of bags, wallets and other carriers as aesthetically complementary accessories to articles of clothing and footwear. These goods are closely connected with each other and may well be distributed in the same outlets. The same applies to leather laces, which are often produced and offered by shoe manufacturers.

However, the contested luggage; trunks [luggage]; travel luggage; luggage; travelling trunks; trunks and suitcases; travel baggage; travelling handbags; cases of imitation leather; bags [envelopes, pouches] of leather, for packaging; casings, of leather, for springs; travelling bags made of imitation leather; travel bags made of plastic materials; weekend bags; garment bags for travel made of leather; shoe bags for travel; travel cases; luggage covers; suitcases; leather suitcases; flexible bags for garments; shoe bags; roll bags; overnight bags, which are all different kinds of luggage and cases for storage and travelling, are dissimilar to the applicant’s goods. The mere fact that the contested goods can be used to carry clothing or footwear is not sufficient to find similarity. The nature of the contested goods is very different from that of clothing and footwear in Class 25. They serve different purposes (storage v covering the body). Moreover, the arguments in the paragraph above do not apply to these kinds of carriers, as travelling bags are not regarded as complementary accessories to articles of clothing and footwear. They do not usually have the same retail outlets and are not usually made by the same manufacturers.

Likewise, the contested leather for harnesses; leather, unworked or semi-worked; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; moleskin [imitation of leather]; leather twist; labels of leather; harness fittings; studs of leather; straps for soldiers’ equipment; kid are either raw materials (e.g. leather) or fasteners for finished products (e.g. studs of leather). The fact that one product is used for manufacturing another (e.g. leather for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the end consumer. They are sold in different outlets, are of a different nature and serve a different purpose from clothing and footwear in Class 25. Therefore, these goods are dissimilar.

Finally, the contested saddlery, whips and apparel for animals are accessories for animals that have nothing in common with the applicant’s clothing and footwear in Class 25 and therefore they are dissimilar. They are sold in different outlets and have a different nature and different purposes. They do not have the same retail outlets or manufacturers.

Contested goods in Class 25

The contested clothing; footwear; casualwear; waterproof clothing; ladies’ clothing; menswear; girls’ clothing; clothing of imitations of leather; formal evening wear; formalwear; clothing of leather; sportswear; boys’ clothing; dresses; gym suits; beach robes; evening wear; dinner suits; bikinis; underwear; bodies [clothing]; boy shorts [underwear]; waist cinchers; stockings; socks; shirts; socks and stockings; bed socks; turtleneck shirts; open-necked shirts; dress shirts; vest tops; cardigans; leather jackets; coats for men; evening coats; coats; coats for women; chemises; evening suits; tutus; waist belts; tights; sundresses; swim wear for gentlemen and ladies; beach clothes; sweat shirts; turtlenecks; jackets [clothing]; men’s and women’s jackets, coats, trousers, vests; shirt-jacs; knee-high stockings; polar fleece jackets; sweatjackets; down jackets; long jackets; bed jackets; rainproof jackets; blousons; skirts; culotte skirts; fleeces; denims [clothing]; weatherproof clothing; raincoats; denim jeans; undershirts; hosiery; sports jerseys; sleeveless jerseys; maternity shirts; running vests; athletics vests; short-sleeved T-shirts; liveries; leggings [leg warmers]; lingerie; maillots [hosiery]; sweaters; jogging tops; fleece tops; sports jerseys and breeches for sports; turtleneck sweaters; trousers; pedal pushers; golf pants, shirts and skirts; fleece shorts; swimming trunks; trunks; dress pants; stretch pants; sweatpants; trousers of leather; weatherproof pants; casual trousers; pyjamas; coverups; parkas; pelisses; furs [clothing]; moisture-wicking sports pants; sports pants; salopettes; brassieres; rain ponchos; polo shirts; polo knit tops; cuffs; ponchos; long sleeve pullovers; crew neck sweaters; slipovers; hooded pullovers; stocking suspenders; sock suspenders; sports bras; overcoats; collar protectors; shawls [from tricot only]; tee-shirts; skirt suits; stoles; jogging sets [clothing]; running suits; body stockings; crop tops; maternity tops; trench coats; shift dresses; ladies’ dresses; athletic uniforms; uniforms; unitards; leather suits; clothing for gymnastics; footwear for women; footwear for men; training shoes; leisure shoes; flip-flops; slippers; shoes; ladies’ sandals; men’s sandals; sandals and beach shoes; sandals; bath shoes; gymnastic shoes; beach shoes; boots; ladies’ boots; heels; waterproof boots; rain boots are identical to the applicant’s clothing and footwear, either because they are identically contained in both lists or because the applicant’s goods include the contested goods.

The contested headgear is similar to the applicant’s clothing. Both are used for covering and protecting parts of the human body and for fashion and therefore serve the same purpose. They are often found in the same retail outlets and target the same public. Consumers looking for articles of clothing will expect to find all kinds of headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both articles of clothing and headgear.

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 are directed at the public at large. The degree of attention is average.

c) The signs

GULLIVER
Earlier trade mark	Contested trade mark

The relevant territory is Sweden.

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 verbal element ‘GULLIVER’, present in both signs, is a Scandinavian male first name or a surname, both of which exist but are not very popular in Sweden. The name ‘GULLIVER’ will be known by average consumers as it was popularised by the classic novel Gulliver’s Travels by Jonathan Swift, an adventure story describing several voyages of Lemuel Gulliver. Therefore, this element is meaningful and distinctive, as it does not describe any of the characteristics of the relevant goods.

The verbal element ‘TRAVELMATE’ of the contested sign is formed of English words and will be meaningful for the relevant public, whose knowledge of English has been confirmed by the Court (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23). ‘TRAVELMATE’ will be understood as describing a person who is traveling with another person (travel – ‘to make a journey, usually over a long distance’; -mate – ‘suffix used to show that two people share a space or are involved in the same activity’; information extracted from Cambridge Dictionary on 26/08/2020 at https://dictionary.cambridge.org/dictionary/english). The distinctiveness of this element is slightly diminished because it alludes to the fact that the goods bearing the mark are designed to assist people when travelling. Moreover, as this element is depicted in a very small typeface at the bottom of the sign, it has a secondary character and consumers will not pay much attention to it.

The contested sign contains also a figurative element representing a stylised letter ‘G’ on a stick. It will be perceived merely as a depiction of the first letter of the main verbal element of the sign, ‘Gulliver’, and, therefore, in itself, does not add much distinctiveness or conceptual content to the sign. This is because it is common practice for manufacturers and service providers to form figurative elements on the basis of the first letter(s) of the verbal components of signs. Therefore, the relevant consumers are accustomed to this practice and will generally regard the letter ‘G’ as emphasis added to the verbal element. Consequently, although this element and the verbal element ‘Gulliver’ are distinctive and co-dominant (eye-catching) in the overall impression created by the mark, the figurative element has less impact than the verbal element ‘Gulliver’. It must be borne in mind 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; 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).

Visually, the signs coincide in ‘GULLIVER’, which is the entire earlier mark and is fully included as the contested mark’s co-dominant element. The signs differ in the figurative element of the contested sign, which, however, although visually noticeable and co-dominant, will be given less attention, as mentioned above. The signs also differ in the additional verbal element ‘TRAVELMATE’ of the contested sign, which, however, has a very small impact on the visual impression created by the mark, due to its small size and position at the bottom. Finally, the signs differ in the cursive typeface in which the word ‘Gulliver’ is depicted in the contested sign.

Bearing in mind that the earlier mark is fully included in the contested sign, as its element that attracts the most attention, the signs are considered visually similar to at least an above-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‘GULLIVER’, present identically in both signs. Bearing in mind that marks that include several words will be generally abbreviated orally to something easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75), it is not likely that at the consumers will pronounce the visually secondary ‘TRAVELMATE’ of the contested sign. Likewise, the figurative element in the contested sign depicting the letter ‘G’ will not be pronounced. Therefore, the signs are aurally identical.

Conceptually, the public in the relevant territory will perceive the name ‘GULLIVER’ in both signs, as mentioned above. The additional verbal element ‘TRAVELMATE’ of the contested sign, although adding the concept of a travel companion, is closely linked to ‘GULLIVER’, who is known to be a book character famous for his travels. The single letter ‘G’ in the contested mark will be perceived as standing for ‘Gulliver’, so it adds no additional concept to the sign. Therefore, the marks are conceptually highly similar.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence to prove this claim.

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 descriptive or otherwise non-distinctive meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are partly identical, partly similar and partly dissimilar. The relevant public’s degree of attention is average. The signs are visually similar to at least an above‑average degree, aurally they are identical and conceptually highly similar.

The coinciding element ‘GULLIVER’ constitutes the entire earlier mark and is the element attracting the most attention in the contested sign. As a consequence, the signs also have a concept in common. The additional verbal element of the contested sign, ‘TRAVELMATE’, is visually secondary and the consumers will not pay attention to it, also because of its reduced distinctiveness. Neither this element nor the figurative element ‘G’ will help the consumers to differentiate between the signs. Furthermore, as it is a common practice for manufacturers to make variations in their trade marks, for example by adding elements to endow the trade mark with a new, modern image, the relevant consumers may perceive the contested sign as a sub-brand of the earlier mark (e.g. a new line designed for travelling) as both marks have the element ‘GULLIVER’ in common (see, by analogy, 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 Swedish trade mark registration.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar 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) EUTMR, the application based on this article and directed against these goods cannot be successful.

The applicant has also based its cancellation application on the following earlier trade marks:

 Danish trade mark registration No VR 198 900 851 for the figurative mark , registered for footwear in Class 25,

 Finnish trade mark registration No 109 702 for the figurative mark , registered for footwear in Class 25.

Since these marks are almost identical to the one compared and cover a narrower scope of goods, the outcome cannot be different for goods for which the cancellation application has already been rejected. All the remaining goods have been already compared with footwear (for which the remaining earlier marks are registered) and found dissimilar. Therefore, there is no likelihood of confusion for those goods.

The cancellation application must also fail insofar as it is based on grounds under Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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

Julie, Marie-Charlotte HAMEL

Marta Maria CHYLIŃSKA

Liliya YORDANOVA

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.