CANCELLATION No 34 508 C (INVALIDITY)

Sreidistri-Distribuiçâo e Logística, Lda., Praça Aires de Ornelas, 3-D, 1170-007 Lisbon, Portugal (applicant), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

a g a i n s t

La-Cig-Arrete, Les Ateliers Lazer 68 Boulevard Lazer, 13010 Marseille, France (EUTM proprietor), represented by Christelle Grenier, 90, rue Edmond Rostand, 13006 Marseille, France (professional representative).

On 11/12/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 871 708 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 17 871 708, . The application is based on European Union trade mark No 7 262 538, MEDUSA. 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 the contested EUTM covers identical goods to those protected by the earlier mark, and the marks are highly similar because they share an identical dominant and distinctive element. Therefore, there is a likelihood of confusion for the relevant public.

The EUTM proprietor did not submit arguments in reply.

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 goods

The goods on which the application is based are, inter alia, the following:

Class 34: Tobacco, smokers’ articles, lighters, matches, cigarette paper.

The contested goods are the following:

Class 34: Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; chemical flavorings in liquid form used to refill electronic cigarette cartridges; flavourings, other than essential oils, for use in electronic cigarettes; electronic cigarette atomizers; electronic cigarette cartomizers; refill cartridges for electronic cigarettes; cartridges for electronic cigarettes; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; electronic cigars; electronic cigarettes.

Contested goods in Class 34

All the contested goods are included in the applicant’s broader category smoker’s articles and, therefore, they are 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 goods found to be identical are directed at the public at large with a higher than average degree of attention. Although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved.

3. The signs

MEDUSA
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 the word MEDUSA. The contested mark is a figurative mark composed of the word element MEDUSA, in bold, white, hand-written characters depicted in front of a cone-shaped figurative element depicting a head wearing a bandana with hair formed by snakes, bringing to mind the mythological Medusa and one of Caravaggio’s famous pictures.

The word MEDUSA will be perceived by part of the relevant public, for instance, the Czech-, French-, Italian-, Polish-, Slovak- or Spanish-speaking consumers, as referring to a jellyfish. Other consumers may associate it with a mythological character from ancient Greece, namely a monster with a female body and hair formed by snakes. For another part of the public, for instance part of the English-speaking public, this term lacks any meaning.

The figurative element of the contested sign depicts a head wearing a bandana with hair formed by snakes. Part of the public will perceive it as depicting the Greek mythological character Medusa.

Neither sign has elements which could be considered more distinctive or visually dominant than others.

Visually, the signs coincide in the word element MEDUSA, although the graphic configuration in the contested sign is different. They differ in the figurative elements of the contested sign. However, 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; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is identical.

Conceptually, for part of the public both signs will be associated with the same meaning and therefore, they are identical. For another part of the public, that may perceive the meaning of the word MEDUSA, but not associate the figurative element with the Greek mythological character, the signs are conceptually similar to a high degree since they only differ in the meaning of the figurative element of the contested sign. The rest of the relevant public will not understand the meaning of the word MEDUSA, and only the contested sign will have a meaning, in which case the signs are not conceptually similar.

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

4. 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.

5. Global assessment, other arguments and conclusion

The goods are identical and target the public at large with a higher than average degree of attention.

The signs are aurally identical, visually similar to an average degree and for part of the public, also conceptually similar to a high degree or even identical. The sole word element of the contested sign coincides with the earlier mark. The only differences between the signs are due to the figurative elements of the contested sign. However, for part of the public, the figurative element in the contested sign reinforces the meaning of the word MEDUSA.

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. In this case, due the presence in both sign of one identical word, there is a likelihood of confusion (including likelihood of association) on the part of the public.

Therefore, the application is well founded on the basis of the applicant’s EUTM trade mark registration No 7 262 538. 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

Ioana MOISESCU

Ana MUÑIZ RODRIGUEZ

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.