CANCELLATION No 39 042 C (INVALIDITY)

Bambuso Ltd, 18 Twisden Road, London, NW5 1DN, United Kingdom (applicant)

a g a i n s t

Bambusa, Kvitsøygata 30, 4014 Stavanger, Norway (EUTM proprietor), represented by Alina Tungland, Kvitsøygata 30, 4014 Stavanger, Norway (employee representative).

On 20/05/2021 the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 894 211 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 630.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 17 894 211, ‘Bambusa’ (word mark). The application is based on European Union trade mark registration No 17 784 208, ‘BAMBUSO’ (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 the contested trade mark should be declared invalid because the goods in comparison are identical and there is a risk that the public might believe that the goods in question come from the same undertaking, a circumstance that constitutes a likelihood of confusion. Also, the applicant underlines that there is only a single letter variation between the marks.

The EUTM proprietor did not file any argument 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 and services

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

Class 25: Socks; ankle socks; men's dress socks.

The contested goods are the following:

Class 25: Socks; ankle socks; men's dress socks.

The goods are identically contained in both lists.

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.

The goods at issue target the general public and an average degree of attention is to be taken into account.

3. The signs

BAMBUSO	Bambusa
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 contested trade mark is a word mark, ‘Bambusa’. The earlier trade mark is also a word mark, ‘BAMBUSO’.

Account must be taken of the fact that a word mark is a mark consisting exclusively of words or letters, numerals, other standard typographic characters or a combination thereof, represented in standard script and layout, without any graphic feature or colour (Article 3(3)(a) EUTMIR). The protection of a word mark concerns the word as such as long as the depiction does not depart from the usual way of writing (standard rules of capitalisation). As this is the case here, it is irrelevant, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in lower-case letters and the other in upper-case letters.

From a conceptual perspective, while the word ‘BAMBUSO’ is meaningless, the word ‘Bambusa’ is a scientific term that indicates a genus of clumping bamboos.

However, the Cancellation Division considers that the meaning of ‘Bambusa’ is not likely to be perceived by the average consumer due to its specialistic nature. This element is then distinctive in this case since it is meaningless for the relevant public. The same is valid for the meaningless earlier mark ‘BAMBUSO’. In any case, even if understood, the element ‘Bambusa’ must be regarded as distinctive.

Visually and aurally, the marks coincide in their first six letters ‘BAMBUS-‘. However, they differ in their last letters, namely ‘O’ in the earlier mark and ‘A’ in the contested mark.

Therefore, the marks are visually and aurally similar to a high degree.

Conceptually, as seen above, it is true that objectively the contested sign has a meaning. However, the Cancellation Division considers that the average consumer will tend not to attribute any meaning to both signs, in particular due to the specialistic nature of the word ‘Bambusa’. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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, 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 in question 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 in Class 25 covered by the trade marks in dispute are identical. The signs are visually and aurally similar to a high degree, sharing the vast majority of their letters. From a conceptual point of view, it is likely to expect that the average consumer will not attribute any meaning to them. The earlier mark is considered to enjoy an average degree of distinctiveness and the degree of attention of the relevant public is considered to be average.

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 only difference between the signs is confined to their last letter, so that the signs can be considered almost identical.

It is clear that the aforesaid difference is not enough to counteract the significant similarities proceeding from the almost fully coinciding words that constitute the signs. Bearing in mind the average distinctiveness of the earlier mark, the identity of the goods and the strong similarities between the marks, there exists a likelihood of confusion on behalf of the relevant public.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 17 784 208. 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and, therefore, did not incur representation costs.

The Cancellation Division

Boyana NAYDENOVA

Andrea VALISA

Ana María 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.