CANCELLATION No C 39 346 (INVALIDITY)

Roland Corporation, 2036-1 Nakagawa, Hosoe-cho, Kita-ku, 431-1304 Hamamatsu, Shizuoka, Japan (applicant), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

 

a g a i n s t

 

Light In The Box Limited, Room 705-706, 7/F China Insurance Group Building, No. 141 des Voeux Road, C Central, the Hong Kong Special Administrative Region of the People's Republic of China (EUTM proprietor), represented by AL & Partners S.R.L., Via C. Colombo ang. Via Appiani, (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 16/12/2020, the Cancellation Division takes the following

 

 

DECISION

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

 

2.	European Union trade mark No 17 100 504 is declared invalid for some of the contested goods, namely: Class 9: Tablet computers; Smart-glasses; Computers; Cameras [photography]; Portable media players; Video screens; Cabinets for loudspeakers; Video projectors; Smartwatches; Luminous pointers; Navigation apparatus for vehicles [on-board computers]; Vehicle radios; Satellite navigational apparatus; Monitoring apparatus, electric; Diaphragms [acoustics]; Headphones; Batteries, electric, for vehicles; Battery chargers; Chargers for electronic cigarettes; Camcorders; Remote control starters for vehicles; Batteries, electric; Accumulators, electric; Solar batteries; Mobile phones; Cell phone straps; Electric door bells; Fire alarms; Smoke detectors; Transmitters of electronic signals; Transmitters of electronic signals for camcorders. Class 12: Reversing alarms for vehicles; Back-up warning alarms for vehicles; Anti-theft devices for vehicles; Anti-theft alarms for vehicles.
3.	The European Union trade mark remains registered for all the remaining goods, namely: Class 9: Encoded key cards. Class 11: Lights for vehicles; Lamps; Searchlights; Autoclaves [electric pressure cookers]; Air conditioning installations; Air filtering installations; Gas scrubbing apparatus; Cooking apparatus and installations; Stoves; Kettles, electric; Refrigerating apparatus and machines; Refrigerators; Drying apparatus and installations; Electric fans for personal use; Bath installations; Disinfectant apparatus; Radiators, electric; Pocket warmers; Gas lighters; Lighters; Chinese lanterns. Class 12: Cigar lighters for automobiles; Remotely controlled land vehicle [for transport].
4.	Each party bears its own costs.

REASONS

The applicant filed a request for a declaration of invalidity against European Union trade mark No 17 100 504 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM. The application is based on international trade mark registration designating the European Union No 1 301 469 . 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 there is a likelihood of confusion since the marks under comparison are almost identical and the contested goods are either identical or highly similar to various degrees to those of the applicant's mark. It adds that the most distinctive and dominant element of the earlier mark is the word ‘WAZA’ as the Asian characters will be perceived as simply fancy characters. The term ‘CRAFT’ is descriptive and non-distinctive for the goods at stake and, as such, it will not impact the overall impression of the signs. In support of its observation about the descriptive character of the element ‘CRAFT’, the applicant submits previous decisions from the Office.

The EUTM proprietor denies the existence of any likelihood of confusion as the signs at stake differ in a substantial way, therefore, no confusion is possible for the average European consumer. It states that the signs under comparison are not visually similar and the presence of the word ‘CRAFT’ in the earlier mark makes the two signs aurally and conceptually different. As regards the goods, although it admits the similarity of some of the respective goods, it argues the dissimilarities of others.

In reply, the applicant reiterates its previous arguments. It emphasizes that the stylization of the contested mark and the use of different colours are secondary and will be disregarded by the relevant public.

The EUTM proprietor did not submit any arguments in reply in its last round of observations.

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 the following:

Class 9: Electrical wires and cables; telecommunication apparatus; telecommunications equipment; apparatus for recording, transmission, processing and reproduction of sound, images or data; electron tubes; electronic circuits; computer operating programs; downloadable computer programs; recorded computer programs; computer software for processing digital music files; computer software for creating and editing music and sounds; metronomes; electronic circuits and CD-ROMs recorded with automatic performance programs for electronic musical instruments; electric and electronic musical effects equipment; electric and electronic effects units for musical instruments; guitar amplifiers; amplifiers for bass guitar; musical instrument amplifiers; phonograph records; downloadable music files; downloadable image files; recorded video discs and tapes; exposed cinematographic films; exposed slide films; slide film mounts; electronic publications, downloadable.

The contested goods are the following: 

Class 9: Tablet computers; Smart-glasses; Computers; Cameras [photography]; Portable media players; Video screens; Cabinets for loudspeakers; Video projectors; Encoded key cards; Smartwatches; Luminous pointers; Navigation apparatus for vehicles [on-board computers]; Vehicle radios; Satellite navigational apparatus; Monitoring apparatus, electric; Diaphragms [acoustics]; Headphones; Batteries, electric, for vehicles; Battery chargers; Chargers for electronic cigarettes; Camcorders; Remote control starters for vehicles; Batteries, electric; Accumulators, electric; Solar batteries; Mobile phones; Cell phone straps; Electric door bells; Fire alarms; Smoke detectors; Transmitters of electronic signals; Transmitters of electronic signals for camcorders.

Class 11: Lights for vehicles; Lamps; Searchlights; Autoclaves [electric pressure cookers]; Air conditioning installations; Air filtering installations; Gas scrubbing apparatus; Cooking apparatus and installations; Stoves; Kettles, electric; Refrigerating apparatus and machines; Refrigerators; Drying apparatus and installations; Electric fans for personal use; Bath installations; Disinfectant apparatus; Radiators, electric; Pocket warmers; Gas lighters; Lighters; Chinese lanterns.

Class 12: Cigar lighters for automobiles; Remotely controlled land vehicle [for transport]; Reversing alarms for vehicles; Back-up warning alarms for vehicles; Anti-theft devices for vehicles; Anti-theft alarms for vehicles.

Contested goods in Class 9

The contested tablet computers; computers are included in the broader category of the applicant’s apparatus for processing of data. They are therefore identical. In the same vein, the broad category of the navigation apparatus as well as the broad category of the apparatus for processing of data, both include, for example, navigation apparatus for vehicles [on-board computers]. Since there is an overlap between these goods, the contested navigation apparatus for vehicles [on-board computers] are identical to the applicant’s apparatus for processing of data.

The contested cameras [photography], camcorders (electronic devices originally combining a video camera and a videocassette recorder) are included in the broader category of the applicant’s apparatus for recording images. They are thus identical.

The contested portable media players are included in the broader category of the applicant’s apparatus for recording, transmission, processing and reproduction of sound, images or data. They are thus identical.

The contested headphones; vehicle radios are included in the broader category of the applicant’s apparatus for reproduction of sounds. They are therefore identical.

The contested video screens; video projectors are included in the broader category of the applicant’s apparatus for reproduction of images. They are thus identical.

The contested mobile phones are included in the broader category of the applicant’s telecommunication apparatus. Therefore, they are identical.

In the field of acoustics, a diaphragm is a transducer intended to inter-convert mechanical vibrations to sounds, or vice versa. It is commonly constructed of a thin membrane or sheet of various materials, suspended at its edges. Therefore, the contested diaphragms [acoustics] are identical to the applicant’s apparatus for recording, transmission, processing and reproduction of sound since they are included in this broad category.

The contested smartwatches are electronic wristwatches that are able to perform many of the functions of a smartphone or tablet computer; consequently, they possess many more functions than the standard function of measuring time as in the case of traditional watches. Therefore, they have certain points in common with the applicant’s apparatus for processing of data. They are often offered by the same companies. Furthermore, they are sold through the same distribution channels and target the same public. They also have the same methods of use. Therefore, they are highly similar. The same reasoning applies to the contested smart-glasses which are wearable computer glasses that add information alongside or to what the wearer sees. They are at least similar to an average degree to the applicant’s apparatus for processing of data since they are often offered by the same companies, they are sold through the same distribution channels and target the same public.

The contested cabinets for loudspeakers are similar to the applicant’s apparatus for the transmission of sound. A loudspeaker cabinet is an enclosure (often box-shaped) in which speaker drivers (e.g. loudspeakers and tweeters) and associated electronic hardware are mounted. The purpose of a loudspeaker cabinet is to provide a controlled acoustical enclosure for the drivers to operate efficiently, and to provide a physical structure to hold all the drivers in place while positioning them optimally for the listener. Indeed, a loudspeaker cannot be used without installing it in a cabinet of some type, or mounting it into a wall or ceiling. Considering that the broad category of sound transmitting apparatus include loudspeakers, sound transmitting apparatus and cabinets for loudspeakers are complementary and target the same relevant public. Furthermore, they coincide in producers and distribution channels.

The contested satellite navigational apparatus are at least similar to an average degree to the applicant’s apparatus for processing of data as they are often offered by the same companies. Furthermore, they are sold through the same distribution channels and target the same public. They also have the same methods of use and are goods in competition.

The contested transmitters of electronic signals; transmitters of electronic signals for camcorders are electronic devices which turn electrical signals into radio waves and thus are used for broadcasting television and radio programmes. They are similar to an average degree to the applicant’s apparatus for transmission or reproduction of sound or image, which receive and decode the signals emitted by transmitters. Therefore, in addition to their common purpose, there is a highly complementary connection between them to the extent that the contested signal transmitters are inseparable and an essential part for the functioning and operation of the earlier apparatus for transmission or reproduction of sound and images.

The contested batteries, electric, for vehicles; battery chargers; chargers for electronic cigarettes; batteries, electric; accumulators, electric; solar batteries have points in common with the applicant’s goods electrical wires and cables in the sense that they have the same nature, are manufactured by the same companies, are addressed at the same relevant public and are distributed through the same channels. Therefore, the goods under comparison are similar.

The contested monitoring apparatus, electric are at least similar to the applicant’s apparatus for recording, transmission, processing and reproduction of sound, images or data since they are often offered by the same companies, they are sold through the same distribution channels and target the same public.

The contested remote control starters for vehicles are at least similar to an average degree to the applicant’s apparatus for processing of data as they are often offered by the same companies. Furthermore, they are sold through the same distribution channels and target the same public. They also have the same methods of use and are goods in competition.

The contested electric door bells; fire alarms; smoke detectors are all signalling devices and at least similar to the applicant’s apparatus for transmission and reproduction of sound in the sense that they have the same nature, are manufactured by the same companies, are addressed at the same relevant public and are distributed through the same channels.

The contested luminous pointers are similar to the applicant’s goods apparatus for transmission of images since they have the same purpose, are often offered by the same companies, they are sold through the same distribution channels and target the same public.

The contested cell phone straps are those cords which are attached to the phones. They share some commonalities with the applicant’s telecommunication apparatus since they can be distributed through the same channels, can target the same relevant pubic and can be produced by the same company. Therefore, they are similar to a low degree.

The contested encoded key cards are those cards which belong to the category of access control devices. They are all dissimilar to the applicant’s goods in Class 9. These goods have a different nature and different purposes, as well as different methods of use. They are not complementary nor in competition. They do not share the same distribution channels or target the same consumers, and they are produced by different companies, contrary to what was argued by the applicant.

Contested goods in Class 11

The contested goods in Class 11 lights for vehicles; Lamps; Searchlights; Autoclaves [electric pressure cookers]; Air conditioning installations; Air filtering installations; Gas scrubbing apparatus; Cooking apparatus and installations; Stoves; Kettles, electric; Refrigerating apparatus and machines; Refrigerators; Drying apparatus and installations; Electric fans for personal use; Bath installations; Disinfectant apparatus; Radiators, electric; Pocket warmers; Gas lighters; Lighters; Chinese lanterns consist of apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes. They involve mainly environmental control apparatus and installations, in particular, for the purposes of lighting, cooking, cooling and sanitizing.

They have no commonalities with the applicant’s goods in Classes 9. The contested goods are not manufactured by the same companies than the applicant’s goods, are not distributed through the same channels and do not target the same relevant public. They are neither in competition nor complementary. Therefore, the Cancellation Division’s considers that the goods under comparison are dissimilar, as argued by the proprietor.

Contested goods in Class 12

The contested reversing alarms for vehicles; Back-up warning alarms for vehicles; Anti-theft devices for vehicles; Anti-theft alarms are different devices for vehicles. They share some similarities with the applicant’s apparatus for the reproduction of sound in the sense that they can be manufactured by the same companies, are addressed at the same relevant public and can be distributed through the same channels. They are therefore similar.

The contested goods in this Class cigar lighters for automobiles; Remotely controlled land vehicle [for transport] are different to the applicant’s goods in Classes 9 in the sense that the goods under comparison are not manufactured by the same companies, are not distributed through the same channels and do not target the same relevant public. They are neither in competition nor complementary. Therefore, the goods under comparison are dissimilar, as argued by the proprietor.

In its observations, the applicant argues that all the contested goods are either identical or similar to the earlier goods and it refers to previous decisions of the Office.

However, the previous decisions from the Office it refers to do not either include at all the goods mentioned by the applicant or they are not the same exact pairs of goods and therefore, similarity cannot be found. The applicant’s arguments are dismissed as unfounded.

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 various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average (i.e. computers) to high (i.e. satellite navigational apparatus) depending on the nature, price and sophistication of the goods. 

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). This applies by analogy to international registrations designating the European Union. 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 earlier mark is a figurative mark which consists of the verbal underlined elements ‘WAZA CRAFT’ written in standard black letters. On the left hand side of the sign, Asian characters are represented. The contested mark is also a figurative mark which consists of the element ‘WAZA’ written in highly stylized orange letters. None of the marks has any element that could be considered more dominant (visually eye-catching) than other elements. 

The common element ‘WAZA’ has no relation to the relevant goods and it is, therefore, normally distinctive.

The term ‘CRAFT’ of the earlier mark is an English word which will be associated by the English-speaking part of the public with a skill or ability, with to make or fashion with skill, especially by hand or with a single vessel, aircraft, or spacecraft. For the remaining part of the public, it is meaningless.

In its observations, the applicant argues that the word ‘CRAFT’ is descriptive and non-distinctive for the goods at stake and, as such, it will not impact the overall impression of the signs. In support of the said claim, the applicant refers to earlier decisions from the Office.

In this case, as the meaning or the term ‘CRAFT’ might allude or directly inform the consumers about the intended purpose or any other characteristic of the relevant goods for the English-speaking part of the public, the Cancellation Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public for which the element ‘CRAFT’ included in the earlier mark has no meaning and it is therefore normally distinctive. The arguments regarding the distinctiveness of the element CRAFT are put aside as they concern the English-speaking part of the public, which it is not the relevant public.

Finally, although the consumers in the relevant territory will perceive the Asian characters, they will not attribute any meaning to them. Therefore, such element has an average degree of distinctive character.

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).

Visually, the signs coincide in the element ‘WAZA’ however, they differ in the element ‘CRAFT’ included in the earlier mark. The signs also differ in the Asian characters, the colours and in the graphical representation of the elements within both signs. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /waza/, present identically in both signs. The pronunciation differs in the sound of the letters /craft/ of the earlier mark, which have no counterpart in the contested mark and it is placed in the second position within the sign. It is not plausible that the relevant consumers will pronounce the Asian characters included in the earlier mark. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

Neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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. 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).

As it has been considered above, the goods are partly identical, partly similar to various degrees and partly dissimilar. The degree of attention of the relevant public varies from average to high and the earlier mark enjoys a normal distinctive character.

The signs are visually similar to a low degree because of the coincidence in the element ‘WAZA’. Although the signs contain different figurative elements and aspects, they have less impact for the relevant public, as explained above. The signs are aurally similar to an average degree.

Taking into account all the above, and especially the fact that the signs share the common distinctive element ‘WAZA’, it is considered that the additional elements included in both signs cannot counteract the similarities between the signs so as to exclude a likelihood of confusion, even for consumers with a higher degree of attention. The relevant consumers may think that the identical or similar goods come from the same or from economically-related companies. Those consumers are likely to notice the element ‘WAZA’ in both signs, when remembering the marks based on the imperfect recollection of them and might consequently not notice the difference between them, or they might associate the trade marks based on the common element ‘WAZA’ and therefore assume that the contested mark is a sub-brand of goods connected to the earlier mark.

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. It is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Indeed, the contested mark will be perceived as a variation of the applicant’s mark.

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).

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and, therefore, the application is partly well founded on the basis of the applicant’s international trade mark registration No 1 301 469 designating the European Union. 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.

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 application is also successful insofar as the goods that are similar to a low degree are concerned. As stated above and taking into account the interdependence principle, the similarity between the signs compensates the lesser degree of similarity of some of the contested goods.

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.

 
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

 

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

Michaela SIMANDLOVA

 

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.