CANCELLATION No 30 881 C (INVALIDITY)

3C Groups A/S, Østre Stationsvej 1 – 5, 5000 Odense C, Denmark, (applicant), represented by Zacco Denmark A/S, Arne Jacobsens Allé 15, 2300 Copenhagen S, Denmark (professional representative)

a g a i n s t

Sichuan Qianji Network Technology Co.,Ltd., No. 2-7, Floor 25, Unit 2, Building 1, No.1 Renmin South Road Four Segment, Wuhou District, Chengdu, People’s Republic of China (EUTM proprietor), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative).

On 04/08/2021, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 371 907 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 services of European Union trade mark No 17 371 907 ‘3C EASY’ (word mark) namely against the services in Classes 35 and 37. The application is based on Danish trade mark registration No VR 2016 02750 ‘3C’ (word mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the marks in conflict as the services are identical or highly similar and the marks are similar.

The EUTM proprietor argues that there is no likelihood of confusion because the earlier mark has a very low distinctive character and refers to previous decisions of the Office, trade marks in national and EUIPO registers containing ‘3C’ and websites defining the meaning of ‘3C’ and filed the respective documents.

The applicant replied that the meaning of ‘3C’ will not be understood by the relevant consumers with the meaning the EUTM proprietor mentioned. As regards the list of trade marks in the register it recalls that the relevant territory is Denmark and not EU and that in Denmark there are only ten applications and registrations containing the word element ‘3C’, three of them being under its ownership.

The applicant files evidence in this sense namely extracts from acronymfinder webpage regarding ‘3C’ and a list with the Danish trade marks it mentioned.

The EUTM proprietor replied that the aconymfinder extract is not the only website that may be trusted in order to see a meaning and the fact that one sole website indicates that said definition has two stars cannot overrule all the other websites provided, accessible from Denmark and not excluding said territory. It further referred to other EUIPO opposition decisions concerning trade marks that coincided in two letter words.

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 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 services on which the application is based are the following:

Class 35: Wholesale and retail trade in white goods, consumer electronics, home appliances, furniture, clothing, food, beverages, kitchenware; advertising; business management and business administration assistance; Assistance in carrying out office tasks.

Class 37: Construction; installation of electrical appliances and computer hardware; rental of washing machines, dishwashers, dryers.

The contested services are the following:

Class 35: On-line advertising on a computer network; presentation of goods on communication media, for retail purposes; publicity; advertising; provision of an on-line marketplace for buyers and sellers of goods and services; sponsorship search; sales promotion for others; import-export agency services; procurement services for others [purchasing goods and services for other businesses].

Class 37: Repair information; electric appliance installation and repair; installation, maintenance and repair of computer hardware; rebuilding machines that have been worn or partially destroyed; telephone installation and repair.

Contested services in Class 35

Advertising is identically included in the specifications of both signs.

The contested services on-line advertising on a computer network; presentation of goods on communication media, for retail purposes; publicity; provision of an on-line marketplace for buyers and sellers of goods and services; sales promotion for others are included in (or are synonymous to) the applicant’s services advertising. These services are identical.

Sponsorship search is similar to the applicant’s advertising as they usually coincide in producer, relevant public and distribution channels.

Import-export agency services is similar to the applicant’s business management assistance as they usually coincide in producer, relevant public and distribution channels.

Procurement services for others [purchasing goods and services for other businesses] are services that relate to the acquisition of goods, services or works from an external source. Issues in procurement include identifying the needs of customers and suppliers, choosing and preparing tools and processes to communicate with suppliers, preparing requests for proposals and requests for quotations, and setting policies for evaluating proposals, quotes and suppliers. In light of the above, the contested services and the applicant’s business management assistance services are similar, since these services have the same general purpose of contributing to the smooth running of a company, they may be provided by the same consultant companies, and the targeted public can also be the same.

Contested services in Class 37

Repair information services are lowly similar to the applicant’s installation of electrical appliances and computer hardware. These services target the same public, have the same distribution channels and the same companies that install electrical appliances and computer hardware are also invoked in providing information concerning their repair, if necessary.

Electric appliance installation is synonymous with (so identical to) installation of electrical appliances.

Electric appliance repair is similar to the applicant’s installation of electrical appliances as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary. The same criteria are applicable to maintenance and repair of computer hardware; telephone […] repair of the contested services which are similar to the applicant’s installation of computer hardware.

Rebuilding machines that have been worn or partially destroyed may have some points in common with installation of […] computer hardware of the applicant to the extent where they may originate from the same providers, target the same consumers and be distributed through the same channels in trade. Therefore, the Cancellation Division considers these services as being similar to a low degree.

Installation […] of computer hardware is identically contained in both specifications.

Telephone installation of the contested services overlaps with the applicant’s installation of computer hardware. These services are therefore identical.

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 services found to be identical or similar (including lowly similar) are directed at the public at large and at business customers with specific professional knowledge or expertise in the business, advertising, repair and installation field. The degree of attention may vary from average to high depending of the complexity and technicality of the respective services and their price.

c) The signs

3C	3C EASY
Earlier trade mark	Contested trade mark

The relevant territory is Denmark.

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 marks have no dominant elements as they are word marks.

As regards the distinctiveness of the elements composing the marks the EUTM proprietor claims that the term 3C stands for ‘computers, consumer electronics & communications’ and consequently it is not distinctive for the services at issue. The EUTM proprietor referred to the Office’s Guidelines stating that in cases where the marks coincide in non-distinctive elements there is no likelihood of confusion if the marks contain other distinctive elements capable of differentiating between the signs. The EUTM proprietor filed 3 print screens from www.allacronyms.com, www.alverm.com.tr (a Turkish website), www.dalutw.com (a company from Taiwan) regarding the meaning of 3C. It further claimed that the contested mark contains an additional word element that “gives more distinctiveness to the sign as a whole”. The applicant refutes this allegation as unfounded as the evidence provided by the EUTM proprietor does not reflect the meaning of 3C - in Denmark and since in its opinion EASY is non/distinctive and the most distinctive element of the contested mark is 3C. The Cancellation Division agrees with the applicant in this case for the reasons states underneath.

The term EASY is a basic English word which means ‘not requiring much labour or effort; not difficult; simple’ and which is likely to be perceived in its meaning in the relevant territory due to widespread knowledge of English in Denmark. This finding has been confirmed by the Boards of Appeal in case 21/02/2017, R 2048/2015-2, § 59 and § 60. As the word ‘EASY’ may laud the services concerned (13/05/2015, T-608/13, easy Air-airtours, EU:T:2015:282, § 38 and 57), it is considered to be non-distinctive.

The Cancellation Division does not agree with the EUTM proprietor’s arguments that the term 3C is descriptive or non-distinctive and finds the three print screens submitted in this sense as inconclusive (one of them is from what appears to be a Turkish web page). Abbreviations of descriptive terms are in themselves descriptive if they are used in that way, and the relevant public, whether general or specialised, recognises them as being identical to the full descriptive meaning. The mere fact that an abbreviation is derived from a descriptive term is not sufficient (13/06/2014, T-352/12, Flexi, EU:T:2014:519). There is no evidence that the public in Denmark would understand the term ‘3C’ with the meaning ‘computers, consumer electronics & communications’.

Therefore, it is considered that the combination of the numeral 3 with the letter C, common to both signs will not be associated with any immediate and perceptible meaning by the relevant public and consequently its distinctiveness for the relevant services is average.

Visually and aurally the signs coincide in 3C and differ in EASY. Taking into account the weight and distinctive character of this differing element the marks are considered to be highly similar.

Conceptually, while the public in the relevant territory will perceive the differing element EASY with the meaning mentioned above, the other sign lacks any meaning in that territory. The marks are not similar conceptually given that the earlier mark is meaningless whereas the contested mark evokes the concept of “services provided effortlessly or simple”. Because of its lack of distinctive character the word EASY will not have an impact as regards the conceptual comparison and the public will focus on the remaining meaningless elements.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

3. 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 services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

4. Global assessment, other arguments and conclusion

The services in conflict are partly identical and partly similar to a low or average degree.

The marks have been found visually and aurally highly similar. The marks actually differ in a non-distinctive element, ‘EASY’ and the Cancellation Division considers that the differences lying in this element are insufficient to safely differentiate the signs.

Furthermore, 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.

Indeed, because of the coinciding distinctive element ‘3C’, 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 services that it designates or vice versa (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Other claims

Coexistence in the register

In its observations, the EUTM proprietor argues that the earlier trade mark has a weak distinctive character since many trade marks include the element ‘3C’. In support of its argument the EUTM proprietor refers to several trade mark registrations in e.g. the EU, Denmark, France, Germany, Spain, the United Kingdom, etc.

The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Consequently, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the element ‘3C’. Under these circumstances, the EUTM proprietor’s claims must be set aside.

Res Judicata

The EUTM proprietor further refers to a previous decision in opposition proceedings against the same contested EUTM to support its arguments and claims that Article 63(3) EUTMR should be applied.

However, a prior decision by the Office in opposition proceedings does not preclude a later cancellation request based on the same earlier rights. The Cancellation Division is not bound by the previous findings in the opposition proceedings, since otherwise the provisions of the EUTMR regarding applications for invalidity based on relative grounds would be, in the event of a prior opposition, deprived of any practical effects (14/10/2009, T‑140/08, TiMiKinderjoghurt, EU:T:2009:400, § 36; appeal dismissed).

Previous decisions of the Office

The EUTM proprietor also referred in its first submissions to other decisions of EUIPO in support of its arguments of no likelihood of confusion. In its second submissions the EUTM proprietor referred to other decision issued by the Office.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In the opinion of the Cancellation Division the decisions filed in the EUTM’s proprietor’s first submissions are irrelevant. In contrast to the present case in some of those decisions the common element was weak or non distinctive and the additional element(s) was more distinctive than the common element.

As regards the decisions invoked in the second round even if some of them are to some extent factually similar to the present case, the outcome may not be the same. For example in case ZE against ZE LABEL the territory was France and ZE in combination to LABEL was considered to be the French version of THE LABEL whereas ZE simple in the other mark was considered meaningless.

Considering all the above, there is a likelihood of confusion on the part of the public. In the present case, even highly attentive consumers may legitimately believe that the contested trade mark is a new extension/continuation or a new brand line, provided under the applicant’s ‘3C’ mark. In other words, consumers may confuse the origins of the services at issue, assuming that they come from the same undertaking or from economically linked undertakings.

Consequently, it is considered that the high similarities between the signs are sufficient to lead to a likelihood of confusion between them for all the contested services found identical or similar, including those found to be similar to only a low degree, since the similarity between the signs, due to their distinctive coinciding element ‘3C’, outweighs the low degree of similarity between some of the services.

Therefore, the application is well founded on the basis of the applicant’s Danish trade mark registration. It follows that the contested trade mark must be declared invalid for all the contested 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

Oana-Alina STURZA

Ioana MOISESCU

Ana MUÑIZ RODRIGUEZ

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.