CANCELLATION No 34 461 C (INVALIDITY)

Norwood Industries Inc., 2267 15/16 Side Road East, Oro-Medonte Ontario L0L 1T0,

Canada (applicant), represented by Heidenstam Legal Advokat Ab, Kaptensgatan 12, 114 57 Stockholm, Sweden (professional representative)

a g a i n s t

JM:s Plåt & Mek Aktiebolag, Flocktjärn 22, 931 97 Skellefteå, Sweden (EUTM proprietor), represented by Next Advokater KB, Biblioteksgatan 29, 114 35 Stockholm, Sweden (professional representative).

On 04/09/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 837 113 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 17 837 113 . The application is based on the following EUTMs.

 EUTM No 13 662 697 ‘LUMBERMAN’ (word) for portable sawmills in Class 7.

 EUTM No 11 622 727 ‘LUMBERPRO’ (word) for portable sawmills in Class 7.

 EUTM No 8 256 273 ‘LUMBERMATE’ (word) for portable sawmills in Class 7.

 EUTM No 8 873 143 ‘LumberLite’ (word) for sawmills in Class 7. This mark was cancelled on 29/03/2019 and will therefore be disregarded in this decision.

The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues in its various submissions that the contested trade mark ‘LUMBERLINE’ should be declared invalid since the requirements of Article 60(1)(a) and Article 8(1)(b) EUTMR are fulfilled. It also filed evidence of use of the earlier trade marks in Sweden and France and considers they have acquired enhanced distinctiveness. In addition the applicant mentions that it has a family of marks all prefixed with ‘LUMBER-’. The common denominator is the word ‘LUMBER-’, used as a prefix before another short, monosyllabic word. The applicant notes that this common denominator is identical to the proprietor’s trade mark. It forms the first and most significant portion in all the applicant’s marks, since it appears in the same initial position within each of the marks. In this regard, the applicant also stresses the fact that the proprietor has considered the word ‘LUMBER’ distinctive enough to have it registered as part of the trade mark ‘LUMBERLINE’.

The applicant considers that ‘LUMBER’ has a greater impact than each subsequent monosyllabic word (i.e. –MAN, –MATE, –PRO, and –LINE) in the overall impression of those signs. Therefore, the presence of ‘LUMBER’ in the proprietor’s trade mark allows for a direct association between all of the signs (16/06/2011, C‑317/10 P, Uniweb, EU:C:2011:405; 05/03/2009, R 31/2007‑1, uni-gateway / Uni STARTUP, UniSTRATEGIE, UniSECTOR; 11/09/2008, R 1514/2007‑1, ZENTRIFIX / FIX). The component ‘LUMBER’ of the disputed trade mark associates it with the applicant’s family of marks. This association leads the public to believe that the proprietor’s mark is also part of the applicant’s family of marks, and that the goods and services originate from the same source. The proprietor’s trade mark is confusingly similar to the applicant’s family of marks. Finally, the applicant considers there is a risk of association between its trade marks and the contested mark.

The observations filed by the proprietor do not address these arguments. The word ‘lumber’ is not used in Sweden, but rather ‘timber’. Furthermore, the ‘relevant public’ in this case is the Swedish-speaking public as the proprietor is a Swedish company which operates exclusively in Sweden. The applicant notes that there is only one use of the word ‘lumber’ in Swedish, which is when it is used in combination with ‘jacka’ ( ‘jacket’ in English). According to the Svenska Akademiens Ordbok, ‘lumberjacka’ is defined as a coarse, warm sports jacket or blouse (made of fabric, leather or similar), generally with an elasticated waist and sleeves. Therefore, it has neither connected with nor suggestion of sawmills and/or wood that has been processed into beams or planks. The existence of one tangentially-related example is not sufficient to establish that the word ‘lumber’ is sufficiently well-known in Sweden to render it non-distinctive within the marks. Since the applicant’s earlier trade marks as a whole have no meaning for the goods in question from the perspective of the relevant public, the distinctiveness of the earlier trade marks must be seen as normal.

While there may be colour and some minor decorative elements in the proprietor’s mark, the applicant insists that these figurative elements are merely embellishments of the letters, which cannot be dissociated from the word itself. It should also be stressed that consumers generally tend to focus on the beginning of a sign.

With regard to the case-law quoted by the EUTM proprietor, the applicant mentions that the judgment for proceeding PMT 7879‑19 found that ‘LUMBER’ ‘was to some extent descriptive’ but the judge did not comment on the descriptiveness of the marks as a whole. Moreover, this decision is not definitive.

In support of its observations, the applicant filed inter alia the following evidence.

Filed with observations of 28/03/2019:

1. Evidence of use in Sweden:

 Skog Supply articles, dated 07/11/2017, (translated ‘Forest Supply’) and newsletter. Skog Supply, is an industry network for suppliers, subcontractors and businesses in the forest industry.

 Extracts from Norwood Sawmill’s Swedish Website:

o Dated 2/014/2019:

- https://www.norwoodsawmills.com/sv_se/, https://www.norwoodsawmills.com/sv_se/lumberpro-hd36-transportabeltsagverk

- https://www.norwoodsawmills.com/sv_se/lumbermate-lm29-transportabelt-sagverk

- https://www.norwoodsawmills.com/sv_se/lumberman-mn26-transportabelt-sagverk

o Dated 12/01/2018:

- https://web.archive.org/web/20181201191333/https://www.norwoodsawmills.com/sv_se/lumberpro-hd36-transportabelt-sagverk

- https://web.archive.org/web/20181201174957/https://www.norwoodsawmills.com/sv_se/lumbermate-lm29-transportabelt-sagverk

- https://web.archive.org/web/20181201140532/https://www.norwoodsawmills.com/sv_se/lumberman-mn26-transportabelt-sagverk§

o Dated 08/17/2018

- https://web.archive.org/web/20180817141803/https://www.norwoodsawmills.com/sv_se

 Extracts from Skogma Website (current Norwood sawmill retailer) dated 02/14/2019

- https://skogma.se/norwood-lumberman-mn26-190200001001/?ftr=lumber__14_93.51_1_12_12__

- https://skogma.se/norwood-lumberpro-hd36-190011001001/?ftr=lumber__13_93.51_1_12_12__

 Logosol Website (Former Norwood sawmill retailer)

o Dated 06/21/2016

- https://web.archive.org/web/20160621074413/http://www.logosol.se/store/sagverk/bandsagverk/

o Dated 07/11/2016

- https://web.archive.org/web/20160711034943/dsagverk-lumberpro-hd36/

- https://web.archive.org/web/20160711034738/http://www.logosol.se/store/sagverk/bandsagverk/bandsagverk-lumbermate-lm29/

- https://web.archive.org/web/20160711034631/http://www.logosol.se/store/sagverk/bandsagverk/lumberman-mn26/

o Dated 03/23/2017

- https://web.archive.org/web/20170323215212/http://www.logosol.se:80/store/sagverk/bandsagverk/

- https://web.archive.org/web/20170323214323/http://www.logosol.se:80/store/sagverk/bandsagverk/bandsagverk-lumbermate-lm29/

- https://web.archive.org/web/20170323215230/http://www.logosol.se/store/sagverk/bandsagverk/lumberman-mn26/

o Dated 04/19/2017

- https://web.archive.org/web/20170419040211/http://www.logosol.se:80/store/sagverk/bandsagverk/bandsagverk-lumberpro-hd36/

 Nordanlids Rustik Website (frequent user of LumberPro to create the furniture it sells)

o Dated 06/21/2016

- https://www.nordanlidsrustik.se/var-tillverkningsprocess

 Social Media:

o YouTube: Norwood published at least 10 YouTube Videos on its Swedish Playlist, each which feature/use LumberPro, LumberMate and/or LumberMan, they include:

- https://www.youtube.com/watch?v=3efNavW1zBA&list=PLgoMm0-gtaCdaXR5OtAZEcnH9RSB7GmEt&t=0s&index=2 (Published on 20/04/2016 – 13,204 views as of 02/15/2019)

- https://www.youtube.com/watch?v=Opw4PPCzs08&list=PLgoMm0-gtaCdaXR5OtAZEcnH9RSB7GmEt&t=0s&index=3 (Published on 20/04/2016 – 2,639 views as of 2/15/2019)

- https://www.youtube.com/watch?v=lLqbcg25eqU (Published on 20/04/2016 – 10,096 views as of 02/15/2019)

- https://www.youtube.com/watch?v=lLqbcg25eqU (Published on 31/12/2016 – 2,256 views as of 2/15/2019)

 Facebook: Norwood’s Facebook page in Sweden, homepage features use of LumberPro mark. Skogma created an event on 06/12/2017 – ‘Premiärvisning Norwood LumberPro HD36bandsågverk!’ (translated ‘Premiere View Norwood LumberPro HD36 Band Sawmill!’)

- https://www.facebook.com/events/1172340652902292/?active_tab=about

 Instagram: posted by Skogma

- https://www.instagram.com/p/BbKFaG_Dkj5/

- https://www.instagram.com/p/BbBwz6pD-hy/

 Posted by Nordanlids Rustik

- https://www.instagram.com/p/Blne5pwAlqp/

- https://www.instagram.com/p/BjHO7VZgMGx/

2. Evidence of use in France amongst which is the Guide Forestier.com article (with English Translation), French Catalogue, French Website Screenshots, French Social Media, etc.

Evidence filed with observations of 16/10/2019:

 Appendix 1: copy of the webpage from www.swedishwood.com about timber wholesalers.

The EUTM proprietor argues in its various submissions that the trade marks under comparison only coincide in the mutual element ‘LUMBER’ and that the word ‘LINE’ is highlighted in the contested trade mark by using the colour red. It further claims that the element ‘LUMBER’ is the least distinctive element in the trade marks under comparison, as it is closely connected with the field of use of the trade marks, namely the forestry industry. The proprietor also disputes the applicant’s argument that European consumers would not use the word ‘lumber’, but would use ‘timber’ instead. The proprietor then notes that Swedish sawmill companies export products to India, a country outside the EU. The proprietor claims that the relevant assessment is in relation to the English-speaking public, rather than the Swedish-speaking public.

Earlier EUTM No 8 873 143, ‘LumberLite’, was cancelled by the Swedish Court in case No PMT 15176‑19 (revocation for non-use) and in proceeding PMT 7879‑19 for an alleged infringement. The Court found that ‘LUMBERPRO’, ‘LUMBERMATE’, ‘LUMBERMAN’ (and the now cancelled ‘LumberLite’) were not confusingly similar to EUTM No 17 837 113 ‘LUMBERLINE’, because ‘LUMBER-’ was descriptive and the relevant consumers were well informed. Finally, the ruling in the Swedish Patent- and Market Court of Appeal in the (joint) court proceedings PMT 5206‑20, between Norwood Industries Inc and JM:s Plåt & Mek AB, was made on 25/06/2020. The Court found that the figurative trade mark ‘LUMBERLINE’ was not infringing any of Norwood’s trade marks.

The proprietor further claims that it is not true that the word ‘LUMBER’ does not exist in Sweden and refers to an official glossary of the Swedish language – Svenska Akademiens Ordbok (the Swedish Academy Dictionary) – and the example of the word ‘lumberjacka’.

An assumption of a family of marks (as claimed by the applicant) on the part of the public requires that the common denominator of the contested mark and the earlier family of marks must have a distinctive character, either per se or acquired through use, to allow a direct association between the signs. Likewise, there can be no assumption of a family of marks where the non-coinciding components of the earlier signs have a greater impact in the overall impression of the signs – which is the case with the applicant’s marks (EUIPO Guidelines for Examination in the Office, Part C, Section 2 Family of marks). Therefore, since the applicant has not proved that its marks are a ‘family of marks’, and since there is no likelihood of confusion between the applicant’s marks and the proprietor’s trade mark, the presence of the prefix ‘LUMBER’ in the applicant’s marks should not prohibit the proprietor’s use of the prefix ‘LUMBER’ in its trade mark.

Furthermore, to be a part of a ‘family of marks’ the sign must contain the same distinctive element, and this element must play an independent role in the sign as a whole (EUIPO Guidelines for Examination in the Office, Part C, Section 2, Chapter 6, Family of marks). Since the prefix ‘LUMBER’ is descriptive it lacks distinctiveness and therefore the applicant’s marks cannot be considered a ‘family of marks’.

The descriptive word ‘LUMBER’ must unquestionably be free to use within the lumber/wood industry, and not monopolised by a solitary business.

In support of its last observations, the EUTM proprietor filed the following evidence.

 Decision of the Swedish Court of Appeal number PMT 5206‑20, dated 25/06/2020 (not translated). This decision has been forwarded to the applicant, for its information.

PROOF OF USE

On 02/04/2019 the Office invited the EUTM proprietor to submit its observations. Following an extension, the time limit expired on 07/08/2019.

On 07/08/2019, the EUTM proprietor requested that the applicant submit proof of use of three trade marks on which the application was based (namely ‘LUMBERMATE’, ‘LUMBERLITE’ now cancelled and ‘LUMBERPRO’) but did not submit the request for proof of use by way of a separate document as required by Article 19(2) EUTMDR. Therefore, this request for proof of use is inadmissible pursuant to Article 19(2) EUTMDR.

Following this, on 15/08/2019, the EUTM proprietor filed a second request for proof of use by way of a separate document. However, this was after the expiry of the time limit. Therefore, the new request for proof of use is not admissible pursuant to Article 19(2) EUTMDR.

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.

As the three earlier trade marks on which the application is based – EUTMs No 13 662 697, No 11 622 727 and No 8 256 273 – cover the same goods, the examination will continue in relation to these three earlier trade marks.

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 7: Portable sawmills.

The contested goods are the following:

Class 7: Woodworking machines; saws [machines]; band saws; abrading machines; drilling machines; lathes [machine tools]; milling machines; edging tools [machines]; sawmills; forestry machines.

The contested sawmills include, as a broader category, the applicant’s portable sawmills. 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 saws [machines]; band saws are highly similar to the applicant’s portable sawmills because they have the same purpose (sawing) and target the same public. Moreover, they can be sold via the same distribution channels and originate from the same manufacturers.

The contested woodworking machines; forestry machines are machines for processing wood, and machines for planting, managing and caring for forests. They include machines used to saw wood. Therefore, they are highly similar to the applicant’s portable sawmills, because they can have the same manufacturer, be in competition, and target the same public.

The contested abrading machines; drilling machines; lathes [machine tools]; milling machines; edging tools [machines] are machines and apparatus used for cutting, drilling, and abrading surfaces and materials. They are similar to a low degree to the applicant’s portable sawmills as they are machines that can have the same producers and target the same public.

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 may vary from average to high depending on the sophistication and price of the goods.

c) The signs

LUMBERMAN LUMBERPRO LUMBERMATE
Earlier trade marks	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 trade marks are the word marks ‘LUMBERMAN’, ‘LUMBERPRO’ and ‘LUMBERMATE’.

The contested sign is a figurative mark consisting of the verbal element ‘LUMBERLINE’ depicted in slightly stylised upper-case letters. The component ‘LUMBER’ is in dark grey and ‘LINE’ is in red. The verbal element is crossed horizontally by a double line.

The earlier marks’ components ‘MAN’, ‘PRO’ and ‘LINE’ are English terms ( ‘PRO’ is also French). They would be understood by the European public at large because they are very basic terms in trade.

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 known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

This is even more probable as regards the contested sign where the two components ‘LUMBER’ and ‘LINE’ are visually dissociated by the use of two different colours.

The words ‘LUMBER’ and ‘MAN’/‘PRO’/‘MATE’ are identifiable as components due to their meanings. For at least ‘MAN’ and ‘PRO’ this applies for the whole European public, and for ‘LUMBER’ and ‘MATE’, at least for the English-speaking part of the public.

The components ‘MAN’/‘PRO’/‘MATE’ in the earlier marks are English terms that allude to a person (‘PRO’ standing for professional and ‘MATE’ meaning a companion) while ‘LINE’ in the contested sign alludes to products (line of products). All these terms qualify the same element, ‘LUMBER’, which would be understood by the English-speaking part of the public to be synonymous to ‘TIMBER’ and therefore weak in respect of the relevant goods as they can all be used for wood work. For the remainder of the relevant public, ‘LUMBER’ is meaningless and therefore distinctive to an average degree.

There are no clearly dominant elements in the contested mark. Even though ‘LINE’ is in red, as its position is at the end of the mark, it is the same size as ‘LUMBER’ and both terms are crossed by a horizontal line.

Visually and aurally the signs coincide in ‘LUMBER’ which is weak for the English-speaking part of the public and part of the goods and distinctive for the rest. They differ in their endings – ‘MAN/PRO/MATE’ in the earlier marks and ‘LINE’ in the contested sign.

As correctly mentioned by the applicant, 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 because 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.

Therefore the signs are visually and aurally similar to a low degree.

Conceptually, the signs are meaningful for the English-speaking part of the public in the relevant territory. The common component ‘LUMBER’, included in all signs, will be associated with ‘TIMBER’. ‘LUMBER’ is weak for the goods. The endings ‘PRO’, ‘MATE’, ‘MAN’ and ‘LINE’ all have a meaning that qualifies ‘LUMBER’. To that extent, the signs are conceptually similar to a low degree for the English-speaking part of the public.

However, for the remaining part of the relevant public, the common component ‘LUMBER’ has no meaning, and the differing components are associated with different concepts. Therefore, the signs are not conceptually similar for this part of the public.

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 marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the applicant, the earlier trade marks enjoy a higher degree of distinctiveness as a result of their long-standing and intensive use in Sweden and France for all the goods for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier marks, the greater will be the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

The applicant submitted the evidence described above.

Having examined the material listed above, the Cancellation Division concludes that the evidence submitted by the applicant does not demonstrate that the earlier trade marks acquired a higher degree of distinctiveness through use. The evidence shows that the marks are used in France and Sweden but it does not give any qualitative indications as regards the perception of the public. The applicant did not file any other documents that support the finding of brand awareness (such as a survey on the recognition of the mark among the public) under the earlier trade marks, or that the company has used its resources to reach the threshold of enhanced distinctive character. Therefore, this claim is rejected as unfounded.

Consequently, assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what was stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for the goods for the English-speaking part of the public. The marks have a normal degree of distinctiveness for the remaining part of the public in the relevant territory.

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.

The contested goods are partly identical and partly similar to varying degrees and target the public at large and business customers. The degree of attention may vary from average to high.

The applicant’s argument that the earlier trade marks, all characterised by the same verbal component ‘LUMBER’, constitute a ‘family of marks’ or ‘marks in a series’ still needs to be considered. In the applicant’s view, this is likely to give rise to a likelihood of confusion insofar as consumers, when encountering the contested mark, which contains the same verbal component as the earlier marks, will be likely to believe that the goods identified by that mark also come from the applicant.

The concept of the family of marks was exhaustively analysed by the Court in the Bainbridge case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65).

When an invalidity application is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may arise because of the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must submit proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

The applicant has proven that it uses a family of ‘LUMBER’ marks, and, moreover, that it uses this family in the same field as that covered by the contested trade mark. The evidence filed by the applicant, as seen above, shows use of three trade marks starting with ‘LUMBER-’: LUMBERMAN, LUMBERPRO and LUMBERMATE. These three trade marks are sufficient to form a ‘family’ of marks.

Secondly, the contested trade mark must not only be similar to the marks belonging to the series, but it must also display characteristics capable of associating it with the series. This cannot be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content.

In the contested mark, ‘LUMBER’ is used in the same position as in the earlier marks, and it is followed by ‘LINE’, which is a rather short term, as are ‘MATE’ ‘MAN’ and ‘PRO’. The semantic content of the combinations is similar as all endings qualify the common element ‘LUMBER’.

The EUTM proprietor refers to a previous national decision in Sweden to support its arguments (decision of the Swedish Court of Appeal N° PMT 5206‑20, dated 25/06/2020, not translated, confirming, according to it, the judgment for proceeding N° PMT 7879‑19. According to the applicant, proceeding N° PMT 7879‑19 found ‘LUMBER’ ‘to some extent descriptive’). However, decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level have no binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

The previous Swedish cases referred to by the EUTM proprietor (the first case also being mentioned by the applicant) are not relevant. The Swedish part of the public, which is deemed to have a high level of English, has been fully considered in this decision. The Cancellation division considers that there is likelihood of confusion, including for this part of the public, because the applicant has proven it uses a family of marks. As mentioned by the applicant, the component ‘LUMBER-’ of the contested mark is shared with the applicant’s family of marks. This association leads the public to believe that the proprietor’s trade mark is also part of the applicant’s family series, and that the goods originate from the same source. In that regard, the proprietor’s trade mark is confusingly similar with the applicant’s family of trade marks.

Contrary to the EUTM proprietor’s argument, even if the common denominator of the contested application and the earlier family of marks has a low degree of distinctiveness for part of the public, the same element combined with similar endings can still allow a direct association between the signs. In addition, it cannot be argued that the different components of the marks, namely ‘MAN’, ‘PRO’, ‘MATE’ and ‘LINE’, have a greater impact than the common component as all the individual components have a meaning. The whole marks do not have meanings, but they are certainly allusive to the goods for part of the public. The common component ‘LUMBER’ certainly plays an independent role at the beginning of the signs and, combined with an allusive ending, it produces the same impression overall. Therefore, the contested mark would be perceived as part of the same ‘family of marks’.

Considering all the above, and in particular the existence of an earlier family of marks, there is a likelihood of confusion, including a likelihood of association, on the part of the public whose level of attention is average or even high, including for goods found similar to a low degree.

Therefore, the application is well founded on the basis of the applicant’s EUTM trade mark registrations No 13 662 697, No 11 622 727 and No 8 256 273. It follows that the contested trade mark must be declared invalid for all the contested goods.

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

Julie, Marie-Charlotte HAMEL

Jessica LEWIS

Carmen SÁNCHEZ PALOMARES

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.