CANCELLATION No C 40 607 (INVALIDITY)

Shenzhen Yuangu Technology Co. Ltd., Room 805, 3/F, JinDa Tech Centre, No.8 Kefeng Rd, Nanshan Technology Park, Yuehai Sub-district, 518000 Nanshan District, Shenzhen, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative)

a g a i n s t

CBM Creative Brands Marken GmbH, Kalandergasse 4, 8045 Zürich, Switzerland (EUTM proprietor), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative).

On 18/05/2021, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 674 301 is declared invalid for some of the contested goods and services, namely:

Class 9: Optical instruments, in particular spectacles, sunglasses, skiing goggles, correction spectacles, spectacle frames, spectacle lenses, spectacle cases.

Class 14: Horological and chronometric instruments of precious metals or semi-precious metals or stones or imitations thereof, or coated therewith; horological and chronometric instruments.

Class 35: Retailing, including via websites and teleshopping, in relation to sunglasses, spectacles and sunglasses and accessories therefor, horological and chronometric instruments, sports equipment, games, toys, data storage apparatus.

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

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, namely statues and figurines, and statues and figurines consisting of precious stones, semi-precious stones, imitations thereof or imitations of precious metals and semi-precious metals, all of the aforesaid being coated with precious metals or their alloys; decorations and ornaments, jewellery of precious metals or semi-precious metals or stones or imitations thereof, or coated therewith; jewellery, precious stones.

Class 18: Luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather and imitations of leather, animal skins, hides and goods made of these materials, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather straps, leather laces, bandoliers, sheets of imitation leather for further processing.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions; retailing, including via websites and teleshopping, in relation to clothing, footwear, headgear, bleaching preparations and; other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, precious metals and their alloys, jewellery, precious stones, luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and; bandoliers, leather and imitations of leather, animal skins and hides and goods made therefrom, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather thongs, leather laces, bandoliers, sheets of imitation leather for further processing, clothing accessories, textile goods, haberdashery, bed and table linen, bags, forks, spoons, household or kitchen utensils and containers, glassware, porcelain and; earthware, products from the gastronomy sector (namely confectionery, coffee, smokers’ accessories, alcoholic beverages), drinks, fixtures, sound recordings, electric and electronic household goods, electric and electronic cosmetic goods, home appliances, electric utensils for; household, electrical cosmetic apparatus, lighting installations, heating apparatus, fans, tools, DIY products and gardening tools; arranging and conducting of advertising events and customer loyalty programmes.

4. Each party bears its own costs.

REASONS

On 14/01/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 17 674 301 ‘HOLY’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM. The application is based on EUTM registration No 16 924 102 ‘HolyHigh’. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion on the part of the public. It claimed that, in parallel opposition proceedings, the EUTM proprietor had considered that the goods and services were identical or similar and that the signs were highly similar.

The EUTM proprietor argued that, due to the dissimilarity between the goods and services, and between the conflicting signs, there was no likelihood of confusion. It considered that there was no contradiction with its arguments in the opposition proceedings, since the opposition was only directed against goods in Class 9.

Preliminary remark

According to the applicant, the EUTM proprietor cannot dispute that the cancellation proceedings are well-founded because the same EUTM proprietor initiated opposition proceedings, based on EUTM No 17 674 301 ‘HOLY’, against the applicant’s other trade mark No 17 986 530 ‘HolyHigh’ (figurative). It considered that the goods and services are identical or similar and that the signs are highly similar.

An admission by the EUTM proprietor of legal concepts is irrelevant. It does not discharge the Office from analysing and deciding on these concepts. This is not contrary to Article 95(1) EUTMR, which is binding on the Office only as regards the facts, evidence and arguments, and does not extend to the legal evaluation of the same. Therefore, the parties may agree as to which facts have been proved or not, but they may not determine whether or not these facts are sufficient to establish the respective legal concepts, such as similarity of goods/services, similarity of the signs, and likelihood of confusion.

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 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 on which the application is based are the following:

Class 9: Smartglasses; smartwatches; wearable activity trackers; pedometers; digital photo frames; flashlights [photography]; tripods for cameras; selfie sticks [hand-held monopods]; power banks; electronic collars to train animals; electric door bells; chronographs [time recording apparatus]; cameras [photography].

Class 28: Apparatus for games; spinning tops [toys]; balls for games; ornaments for Christmas trees, except illumination articles and confectionery; electronic toys; drones [toys].

The contested goods and services are the following:

Class 9: Optical instruments, in particular spectacles, sunglasses, skiing goggles, correction spectacles, spectacle frames, spectacle lenses, spectacle cases.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, namely statues and figurines, and statues and figurines consisting of precious stones, semi-precious stones, imitations thereof or imitations of precious metals and semi-precious metals, all of the aforesaid being coated with precious metals or their alloys; decorations and ornaments, horological and chronometric instruments, jewellery of precious metals or semi-precious metals or stones or imitations thereof, or coated therewith; jewellery, precious stones; horological and chronometric instruments.

Class 18: Luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather and imitations of leather, animal skins, hides and goods made of these materials, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather straps, leather laces, bandoliers, sheets of imitation leather for further processing.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions; retailing, including via websites and teleshopping, in relation to clothing, footwear, headgear, bleaching preparations and; other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, sunglasses, precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and; bandoliers, leather and imitations of leather, animal skins and hides and goods made therefrom, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather thongs, leather laces, bandoliers, sheets of imitation leather for further processing, clothing accessories, textile goods, haberdashery, bed and table linen, sports equipment, bags, forks, spoons, household or kitchen utensils and containers, glassware, porcelain and; earthware, products from the gastronomy sector (namely confectionery, coffee, smokers’ accessories, alcoholic beverages), drinks, spectacles and sunglasses and accessories therefor, games, toys, fixtures, sound recordings and data storage apparatus, electric and electronic household goods, electric and electronic cosmetic goods, home appliances, electric utensils for; household, electrical cosmetic apparatus, lighting installations, heating apparatus, fans, tools, DIY products and gardening tools; arranging and conducting of advertising events and customer loyalty programmes.

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

The term ‘in particular’, used in the EUTM proprietor’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’ see reference in 09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the EUTM proprietor’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

Contested goods in Class 9

Given the unrestrictive nature of the expression ‘in particular’, the contested optical instruments, in particular spectacles, sunglasses, skiing goggles, correction spectacles, spectacle frames, spectacle lenses, spectacle cases include, as a broader category the applicant’s smartglasses. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

Contested goods in Class 14

The contested horological and chronometric instruments of precious metals or semi-precious metals or stones or imitations thereof, or coated therewith; horological and chronometric instruments are similar to the applicant’s smartwatches because they have the same nature, are likely to be distributed through the same distribution channels, and target the same consumers. They can also be produced by the same manufacturers.

The rest of the contested goods in Class 14 are dissimilar to any of the applicant’s goods. They have different natures, purposes and methods of use. Moreover, they do not coincide in distribution channels, and are neither complementary nor in competition.

Contested goods in Classes 18 and 25

These contested goods are dissimilar to any of the applicant’s goods. They have different natures, purposes and methods of use. Moreover, they do not coincide in distribution channels, and are neither complementary nor in competition.

Contested services in Class 35

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. This line of argument also applies to arranging and conducting of advertising events and customer loyalty programmes.

Advertising; arranging and conducting of advertising events and customer loyalty programmes are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising; arranging and conducting of advertising events and customer loyalty programmes are dissimilar to the applicant’s goods being advertised.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Moreover, they target the same public. Furthermore, there is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from the consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Moreover, they are of interest to the same consumers.

Therefore, the contested retailing, including via websites and teleshopping, in relation to sunglasses, spectacles and sunglasses and accessories therefor, horological and chronometric instruments, sports equipment, games, toys, data storage apparatus are similar to at least a low degree to the applicant’s smartglasses, smartwatches; balls for games, electronic toys or cameras [photography].

The remaining services are dissimilar to the applicant’s goods. Their intended purposes and their natures are different, as are their distribution channels and prospective purchasers. None of the goods and services fulfils a similar function from the consumer’s standpoint. They are not substitutes for one another; nor are they in competition with one another. The relevant consumer will not regard the applicant’s goods and the contested services as originating from the same undertaking. Furthermore, they satisfy different needs.

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 and services found to be identical or similar to varying degrees are directed at both the general public and at professionals. The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

c) The signs

HolyHigh	HOLY
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). 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 elements constituting the signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, such as the public in Ireland and Malta.

Both marks are word marks. For the protection of word marks, it is irrelevant whether they are written in upper- or lower-case letters (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57; 25/11/2015, T‑763/14, SOPRAPUR / Sopro et al., EU:T:2015:883, § 56).

The Court has held that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). This is applicable to the earlier mark. Furthermore, the capital ‘H’ in ‘High’, following the lower case ‘-oly’ in ‘Holy’, reinforces the impression that, although the words have been joined together, they retain their separate identities. In light of the above, the Cancellation Division considers that the public will divide the earlier mark into the elements ‘Holy’ and ‘High’.

The common verbal element ‘Holy’ refers to something or someone ‘dedicated or consecrated to God’, having ‘a religious purpose’ or ‘sacred’ (information extracted from Oxford English Dictionary on 07/05/2021 at https://www.oed.com). This word does not have any meaning directly related to the goods and services at issue. Therefore, it is distinctive.

The verbal element ‘High’ has a relatively low degree of distinctiveness. This is because, in relation to the relevant goods in Classes 9 and 28, ‘High’ suggests, at least to some degree, ‘high quality’. Because of its laudatory character, this element is weak.

The marks have no element that could be considered more dominant (eye-catching) than other elements.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when encountering a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the distinctive element ‘Holy’, which constitutes the whole of the contested sign and the beginning of the earlier mark. However, the signs differ in the earlier mark’s element ‘High’, which has no counterpart in the contested sign. This results in the signs having different lengths, rhythms and intonations. The contested mark is entirely included at the beginning of the earlier sign, which is the part of trade marks to which consumers pay more attention. Bearing this in mind, along with the low degree of distinctiveness of the differing element ‘high’, the signs are visually and aurally similar to an above-average degree.

Conceptually, both signs will be perceived as conveying the concept of ‘Holy’, but will differ in the earlier sign’s additional concept of ‘High’. Owing to the low degree of distinctiveness of the differing element ‘High’, the signs are conceptually similar to an above-average degree.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

e) 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.

Account must be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The goods and services are partly identical and partly similar (to varying degrees). They target both the general public and professionals. The degree of attention may vary from average to high. The earlier mark, as a whole, has a normal degree of distinctiveness. The signs are visually, aurally and conceptually similar to an above-average degree because the contested mark is entirely included, as a clearly perceptible and distinctive element, at the beginning of the earlier sign; that is, in the position that first catches the consumer’s attention. Furthermore, the element ‘High’ has a relatively low degree of distinctiveness for the relevant goods. Consequently, based on the interdependence principle, the degree of similarity of the marks in conflict counteracts the low degree of similarity between some of the goods and services at issue.

Conclusion

Considering all the above, there is a likelihood of confusion (including a likelihood of association) on the part of the English-speaking public in Ireland and Malta. 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 reject the contested application.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods and services 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 and services 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(3) 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Frédérique SULPICE

Richard BIANCHI

Zuzanna STOJKOWICZ

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.