CANCELLATION No 39 280 C (INVALIDITY)

Fiorino Corp., P.O. Box 31119 Grand Pavillon, Hibiscus Way, 802 West Bay Road, Grand Cayman KY1-1205, Cayman Islands (applicant), represented by Florian Schwerbrock, Hagenauer Str. 1, 10435 Berlin, Germany (professional representative)

a g a i n s t

Glam srls, Riviera XX Settembre 12, 30171 Venezia Mestre, Italy (EUTM proprietor).

On 16/09/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 787 417 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 17 787 417 for the figurative mark . The application is based on, inter alia, European Union trade mark registration No 7 497 332 for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion since the goods were identical or highly similar and the signs were aurally and conceptually identical and visually similar to a high degree.

The EUTM proprietor argued that it was the owner of an earlier trade mark in Italy (registered prior to the applicant’s claimed trade marks) since 1986/87 and that, in any case, its trade mark enjoyed a local pre-use right since it had been effectively used and well-known from the date prior to the filing of the earlier marks invoked by the applicant.

In support of its observations, the EUTM proprietor submitted the following evidence:

 extract from the Chamber of Commerce of the company GLAM S.r.l.s. dated 16/01/2020;

 copy of the projects approved by the Municipality of Venice - Protocol n. 2000 / ME / 051103 of 04/04/2000 for the ‘BUSSOLA’ shop;

 photographs of the BUSSOLA shop in Venice-Mestre;

 copy of an invoice depicting the trade mark the ‘BUSSOLA’ on the header, dated 30/09/1991;

 copy of a room rental invoice for the Bussola Showroom dated 21/05/1991;

 copy of national judgments in Italian.

In reply, the applicant argued that part of the evidence submitted by the EUTM proprietor was not translated into the language of proceedings and that the EUTM proprietor did not prove that it was the owner of an earlier trade mark in Italy and, in any case, it did not challenge the applicant’s earlier marks. Furthermore, the applicant argued that the documents submitted by the EUTM proprietor did not prove the well-known character of the contested trade mark.

In its final observations, the EUTM proprietor reiterated that its trade mark ‘BUSSOLA’ was registered in Italy prior to the applicant’s earlier marks and that the documents submitted proved the existence of a pre-use of the ‘BUSSOLA’ trade mark in an ‘ultra-local’ context.

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 European Union trade mark registration No 7 497 332.

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: Eyeglass cases; eyeglass frames; sunglasses; eye glasses.

Class 18: Handbags; suitcase; travelling bags; travelling trunks; trunks [luggage]; walking sticks; umbrellas; umbrella sticks; purses; attaché cases; backpacks; wheeled shopping bags.

Class 25: Boots; shoes; sandals; ready-made clothing; belts [clothing]; caps [headwear]; girdles; hats; mittens; socks; suits; vests; coats; pants.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers.

Class 25: Footwear; clothing.

Contested goods in Class 18

The contested luggage includes, as a broader category, the applicant’s suitcase. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested bags include, as a broader category the applicant’s handbags. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested wallets are similar to a high degree to the applicant’s purses. A purse is a small bag or pouch, often made of soft leather, for carrying money, especially coins. Pocket wallets are used for money, cards and documents. Clearly, these goods serve the same purpose. Furthermore, they are often manufactured by the same undertakings, are directed at the same public which looks for them in the same specialised shops or departments in stores dealing in leather goods.

The contested other carriers does not provide a clear indication of what goods are covered. Since the EUTM proprietor has not clearly specified its goods, even without an express limitation, the contested goods and the applicant’s handbags may have some points of contact since their manufacturers, distribution channels and targeted consumers may be the same. It follows that these goods are similar.

Contested goods in Class 25

The contested footwear; clothing include respectively, as broader categories, the applicant’s boots; suits. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods.

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 varying degrees are directed at the public at large. The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested trade mark

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 earlier mark is composed of the word ‘bussola’ written in slightly stylised lower-case letters. The letter ‘o’ is replaced by a figurative element consisting of a stylised compass. For part of the consumers, the word ‘bussola’ is meaningless whereas for another part, such as Italian or Portuguese consumers, it means ‘compass’ (a compass is an instrument that you use for finding directions. It has a dial and a magnetic needle that always points to the north. Information extracted from Collins Dictionary on 09/09/2020 at https://www.collinsdictionary.com/dictionary/english/compass). Since the figurative and the verbal element of the sign (whether or not it is understood) have no meaning in relation to the goods, they are distinctive to an average degree.

The contested mark is composed of the word ‘BUSSOLA’ written in slightly stylised grey upper-case letters. A figurative ornamental grey element is depicted above this. The above considerations relating to the meaning and the distinctiveness of the verbal element of the earlier mark equally apply to the verbal element of the contested trade mark.

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). The figurative element of the contested mark performs an essentially decorative function. The public is used to perceive such depiction as ornamental element and will instantly attribute more trade mark significance to the verbal element of the sign.

Visually, the signs coincide in the letters ‘b-u-s-s-*-l-a’. They differ in the stylisation and the figurative elements of the signs as described above. Therefore, the signs are visually similar to an above average degree.

Aurally, since the figurative element of the earlier mark has the shape of the letter ‘o’, the earlier mark will be read as ‘bussola’. Therefore, the signs are aurally identical.

Conceptually, for part of the public, the verbal element of the signs has no meaning. The earlier mark reproduces a compass whereas the figurative element of the contested mark does not convey any meaning since it is a mere decorative element. Therefore, since one of the signs (the contested mark) will not be associated with any meaning, the signs are not conceptually similar.

For another part of the public, such as the Italian and Portuguese part, or even the Romanian or Polish public (the coinciding element ‘bussola’ being a misspelling of the Romanian word ‘busolӑ’ and of the Polish word ‘busola’), the signs are conceptually identical since they both convey the same concept of a ‘compass’. In the earlier mark, this concept is reinforced by the figurative element.

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, 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 goods are partly identical and partly similar to varying degrees. They target the public at large with an average degree of attention.

The signs are visually similar to an above average degree, aurally identical and, for part of the public, conceptually identical.

Account is 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).

The Cancellation Division considers that the differences between the signs are clearly insufficient to counterbalance the strong similarities and to differentiate the signs.

The EUTM proprietor argued that its EUTM is well-known and has submitted various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts related to the EUTM which happened before its filing date are irrelevant because the applicant’s rights, insofar as they predate the EUTM, are prior to the EUTM proprietor’s EUTM. The alleged use and notoriety of a contested mark is an issue which falls outside the assessment the Office makes when comparing an earlier mark and a subsequent trade mark registration. The rationale underlying Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR is to confer protection to the owner of an earlier mark against subsequent EUTMs when an assessment based on all the relevant factors leads to a finding of likelihood of confusion. In the EUTMR there is no provision whereby the Office should take into account the notoriety of a contested mark when making its assessment. Therefore, the documents submitted by the EUTM proprietor are irrelevant.

Furthermore, irrespective of the question whether the EUTM proprietor had adduced evidence of the existence of its earlier Italian mark, the existence of that mark alone would not in any event have been sufficient reason for rejecting the invalidity. The EUTM proprietor would still have had to prove that it had been successful in having the applicant’s earlier European Union trade marks cancelled. The same applies to the local use of non-registered rights mentioned by the EUTM proprietor prior to the filing of the earlier marks invoked by the applicant. In any case, they relate to another ground, namely Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

Finally, the reference to Article 14, paragraph 3, EEC Directive 16/12/2015, No 2015/243 is irrelevant since the present assessment concerns the validity of a registered EUTM vis-à-vis earlier registered trade marks according to Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

Therefore, the EUTM proprietor’s arguments have to be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 7 497 332. It follows that the contested trade mark must be declared invalid for all the contested goods.

As the above mentioned earlier right leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier right invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Marta Maria CHYLIŃSKA

Frédérique SULPICE

Pierluigi M. VILLANI

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.