CANCELLATION No 34 041 C (INVALIDITY)

Nivea Polska Sp. z o.o., Gnieźnieńska 21, 61-021 Poznań, Poland (applicant), represented by Biuro Ochrony Własności Intelektualnej Patent-Service Paweł Górnicki, ul. Rybojadzka 16, 60-443 Poznań, Poland (professional representative)

a g a i n s t

Sinco Import spółka z ograniczoną odpowiedzialnością spółka komandytowo – akcyjna, ul. Krańcowa 65, 94-305 Łódź, Poland (EUTM proprietor), represented by Anna Maja Sokołowska-Ławniczak, ul. Twarda 4, 00-105 Warszawa, Poland (professional representative).

On 05/06/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 898 708 is declared invalid for all the contested goods, namely:

Class 3: All the registered goods in this class.

Class 24: Wash cloths.

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

Class 5: All the registered goods in this class.

Class 24: Napkin liners of textile; swaddling blankets; infants' bed linen; cot blankets; receiving blankets; children's blankets; cot covers; cot sheets; sleeping bags for babies; towels [textile] for use in connection with babies; children's towels.

4. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 17 898 708 ‘BAMBIBOO’ (word mark), namely against all the goods in Class 3 and some of the goods in Class 24. The application is based on, inter alia, Polish trade mark registration No R.043 450 ‘BAMBINO’ (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 goods are either identical or highly similar and the marks are visually and aurally similar (‘OO’ will be read as ‘O’ in Polish). Conceptually, the marks have either the same semantic content or have no meaning. Consequently, there is a likelihood of confusion.

In reply, the EUTM proprietor requested proof of use for all of the earlier trade marks. It admitted that the goods in Class 3 are either identical or similar but argued that the contested goods in Class 24 are dissimilar. As to the marks, they differ considerably and are not visually similar. Aurally, the marks are dissimilar because they have a different number of letters and the stress will be placed on a different syllable (‘BAM-’ v ‘-BOO’). Conceptually, ‘BAMBINO’ means ‘child’ in Italian and this word will be recognised as referring to a child in the whole European Union. ‘BAMBIBOO’ is a fanciful modification of the word ‘bamboo’ which is the type of plant used as an ingredient in the EUTM proprietor’s goods. Consequently, the marks have different concepts. Overall, the marks are not similar. The earlier trade mark’s distinctiveness is average but the word ‘BAMBINO’ is not original for goods in Classes 3 and 5. The beginning ‘BAMBI-‘ has a very low distinctiveness because there are many trade marks containing this beginning for goods in Class 3 and 5 in the European Union. In support of this claim, the EUTM proprietor submitted a list of ‘BAMBI-‘ marks obtained from the TMView database. The contested mark is original and distinctive and will be recognised by Polish consumers due to the EUTM proprietor’s use of the mark for ecological products containing bamboo as an ingredient. Consequently, there is no likelihood of confusion.

The applicant submitted evidence (namely invoices, labels and catalogues which will be listed in detail below) to prove genuine use of the earlier trade marks.

In reply, the EUTM proprietor criticised the evidence and claimed that no proof of use was established for any of the earlier trade marks. Some of the invoices do not refer to the marks. The invoices demonstrate supplies of goods to only six smaller Polish cities which is not enough territory-wise. The labels are irrelevant because they don’t prove a public and outward use. The catalogues are not sales catalogues but they are rather for internal training purposes. Moreover, there is no proof of their distribution. The EUTM proprietor essentially repeats its previous arguments claiming the lack of visual, aural and conceptual similarity between the marks. The contested mark stands out on the Polish market due to its eco-friendly products for children. The consumers of these goods, namely ecologically conscious parents, will pay enough attention and will not confuse the marks.

PROOF OF USE

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 earlier Polish trade mark registration No R.043 450 ‘BAMBINO’ (word mark) which has the most similarities with the contested mark.

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade marks on which the application is based, including the earlier Polish trade mark registration No R.043 450 ‘BAMBINO’ (word mark).

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 19/03/2019. The date of filing of the contested trade mark is 11/05/2018. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Poland from 19/03/2014 to 18/03/2019 inclusive. Since the earlier mark was registered more than five years prior to the date of filing of the contested mark, use of the earlier mark had to be shown also for the period from 11/05/2013 to 10/05/2018 inclusive. In total, use had to be demonstrated for the period from 11/05/2013 to 18/03/2019 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 3: Cosmetic, hygienic, toilet and make-up preparations, in particular hair and skin care preparations in the form of creams, ointments, plasters, powders, baby powders, lipsticks, lip liners, essences, tinctures, oils, cologne and flower scented waters, nourishing waters and after-shave waters, perfumes, soaps for washing and shaving and antiseptics.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 07/08/2019, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 12/10/2019 to submit evidence of use of the earlier trade mark.

On 11/10/2019, within the time limit, the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Invoices: sixteen invoices (documents 1.2-1.17) for the sale of more than 20,000 items of various cosmetic and toilet products (e.g. creams, soaps, oils, shampoos, washing gels or wipes) identified as ‘BAMBINO’ or ‘BAM or ‘BBO’ and addressed to various clients in Poland. They are dated from 15/05/2014 to 31/07/2019 and cover all the years between 2014 and 2019. The invoices are accompanied by a summary table (document 1.1) with explanatory information as to the content of the invoices.

• Labels: seventeen labels (documents 2.1-2.17) for various ‘BAMBINO’ cosmetic and toilet articles essentially for children (such as creams, oils, baths, shampoos or shower gels), dated between 2014-2019.

• Catalogues: excerpts from six catalogues showing various ‘BAMBINO’ cosmetic and toilet products essentially for children, dated between 2014-2019, and with translations into English (documents 3.1-3.9).

Preliminary remarks

The EUTM proprietor points out the individual deficiencies of the three types of evidence. However, this criticism is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

It is considered that the indications ‘BAMBINO’, ‘BAM‘ and ‘BBO’ in the invoices all refer to the trade mark ‘BAMBINO’. It is a known fact that there is usually little space on invoices and, therefore, various indications and words are shortened, which may refer also to the trade marks under which the goods are sold. The indications ‘BAM‘ and ‘BBO’ are considered to be sufficiently clear abbreviations of the mark ‘BAMBINO’. Furthermore, these indications from the invoices are corroborated by the catalogues. For example, the product indication ‘BAM OLIWKA 300ML’ from an invoice refers to the baby oil ‘BAMBINO’ shown in several catalogues. This product also bears the indication ‘OLIWKA’ and is shown in a 300 ml bottle. Consequently, the EUTM proprietor’s argument that some of the invoices do not refer to the mark must be dismissed.

It is true that the labels (being graphical designs of labels proposed for production) only concern internal preparatory use of the mark and do not prove any public and outward use. However, in connection with the invoices, the labels show examples of goods which were publicly sold to the customers. Moreover, the labels demonstrate that the applicant was constantly preparing new variants of packaging of the ‘BAMBINO’ goods over the whole relevant period.

Regarding the catalogues, it is true that the inscription ‘Training Materials’ on their cover suggests that they were used only for internal purposes of the applicant and that they were not publicly distributed on the market. However, the catalogues clearly show the line of goods whose sale was proven by the invoices.

Consequently, the EUTM proprietor’s arguments must be dismissed.

Place of use

All the documents show that the place of use is Poland. This can be inferred from the language of the documents (Polish), the currency mentioned (PLN – Polish złoty) and some addresses in Poland.

The EUTM proprietor claims that the invoices demonstrate supplies only to several smaller cities and do not cover a sufficiently wide territory. However, this claim must be dismissed because some of the addresses in the invoices show important Polish cities such as Radom (app. 200.000 inhabitants), Gliwice (app. 180.000 inhabitants) or Szczecin (app. 400.000 inhabitants) from different parts of Poland.

Therefore, the evidence relates to the relevant territory and proves use in a substantial part of the territory.

Time of use

Most of the evidence is dated within the relevant period. Moreover, it covers all the years between 2014 and 2019 and therefore covers both relevant time periods. Therefore, the evidence of use sufficiently indicates the time of use as regards both relevant periods.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices, provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices demonstrate that a large number of goods were sold in the years 2014-2016 and that the sales continued also in the years 2017 and 2018 and up to July 2019 (some four months after the relevant period), although the numbers of items sold were blackened on the invoices dated 2017-2019. The invoices are sufficient to demonstrate constant sales of the goods in various parts of Poland during most of the relevant periods.

Therefore, the Cancellation Division considers that the applicant has provided sufficient indications concerning the extent of the use of the earlier mark.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 64(2) and (3) EUTMR, Article 18 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the mark has been registered as the word mark ‘BAMBINO’.

The mark appears on the goods in the following form:

This use does not alter the distinctive character of the mark as registered because the word ‘bambino’ is only slightly stylised, the type of script is relatively common and clearly legible, and the colours used (blue, white, red) are quite common.

Moreover, the mark also appears in the invoices and in some of the catalogues simply as the word ‘BAMBINO’, which is exactly as registered.

Therefore, the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

The earlier mark is registered for the goods in Class 3 listed above. However, the evidence does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 64(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.’

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods 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).

Consequently, the earlier trade mark essentially covers cosmetic, hygienic, toilet and make-up preparations.

In the present case, the evidence demonstrates use for various cosmetic and toilet products (e.g. creams, soaps, oils, shampoos, washing gels or wipes), mostly for children. Although there are also some indications of use for cosmetic and toilet products for adults, these are quite scarce. No use has been demonstrated for make-up preparations. Consequently, it is considered that use has been proven only for the following subcategory of goods: cosmetic, hygienic and toilet preparations for children.

Therefore, the Cancellation Division considers that the applicant established genuine use for the following goods:

Class 3: Cosmetic, hygienic and toilet preparations for children.

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 Cancellation Division continues with the examination of the application only at present in relation to the earlier Polish trade mark registration No R.043 450 ‘BAMBINO’ (word mark).

1. 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 3: Cosmetic, hygienic and toilet preparations for children.

The contested goods are the following:

Class 3: Cosmetics for children; natural cosmetics; baby care products (non-medicated -); baby bubble bath; baby lotions; baby wipes; suncare lotions; babies' creams [non-medicated]; baby body milks; baby oils; baby powder; baby shampoo.

Class 24: Wash cloths.

Contested goods in Class 3

All the contested goods in this class are identical to the applicant’s cosmetic, hygienic and toilet preparations for children, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the contested goods.

Contested goods in Class 24

The contested wash cloths are textile items used for personal hygiene (of adults or children). Insofar as the contested goods include wash cloths for children, they are considered similar to the applicant’s cosmetic, hygienic and toilet preparations for children because they have a similar purpose (washing, body-care) and coincide in distribution channels and relevant public. They can also be considered complementary.

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 or similar are directed at the public at large. Although these goods are aimed at children which would suggest a high degree of attention of the public who buys them (i.e. parents), they are still relatively commonplace goods which are bought quite regularly and have a moderate price. Consequently, the degree of attention of the relevant public will be average.

The Cancellation Division cannot agree with the EUTM proprietor’s argument which seems to suggest a high degree of attention of ecologically conscious parents who buy the EUTM proprietor’s eco-friendly products. There is nothing in the wording of the contested list of goods that would indicate that the goods have some special characteristics that would cause a high degree of attention.

3. The signs

BAMBINO	BAMBIBOO
Earlier trade mark	Contested trade mark

The relevant territory is Poland.

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 average Polish consumer of the relevant goods in Classes 3 and 24 will not attribute any meaning to the words ‘BAMBINO’ and ‘BAMBIBOO’. Although some consumers could be acquainted with the meaning of the Italian word ‘bambino’ (‘child’ in English) in the earlier trade mark and could grasp the allusion to the English word ‘bamboo’ in the contested sign, still the majority of the Polish consumers will not perceive any meaning or allusion in either mark. The Cancellation Division finds it appropriate to focus further assessment of likelihood of confusion on this part of the public. Consequently, the marks are considered meaningless and, therefore, distinctive to an average degree.

In its observations, the EUTM proprietor argues that the common beginning ‘BAMBI-’ has a very low distinctiveness since many trade marks include this string of letters. In support of its argument the EUTM proprietor refers to number of trade mark registrations in the territory of the European Union.

The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used, and that they have been used in Poland. Consequently, the evidence does not demonstrate that Polish consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the beginning ‘BAMBI-’. Under these circumstances, the EUTM proprietor’s claims must be set aside.

Visually, the signs coincide in ‘BAMBI**O’ which is as many as six letters out of the total of seven and eight, respectively. The marks differ only in ‘-N-’ / ‘-BO-’ (where the ‘O’ is actually a repetition of the coinciding letter ‘O’). Furthermore, the marks have the same structure, namely one word, and a very similar length (seven v eight letters).

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BAMBI*O’, present identically in both signs. The average Polish consumer would pronounce the double ‘O’ at the end of the contested mark as a single letter ‘O’. The pronunciation differs only in the sound of the letter ‘-N-’ / ‘-B-’. The marks also coincide in their rhythm and intonation and have the same number of syllables, namely three. The EUTM proprietor argued that the consumers would place the stress in the marks on a different syllable, but did not provide any further explanation. It is considered that there is no clear reason why a consumer, following the rules of Polish pronunciation, would enunciate the stress differently.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the average consumer in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. As the marks have no meaning, they cannot have different concepts as asserted by the applicant.

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. As already mentioned above in section c), the earlier trade mark has no meaning for any of the goods from the perspective of the average consumer in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The marks are highly similar visually and aurally. Conceptually, the comparison of the marks is neutral. The goods are partly identical and partly similar.

The earlier trade mark’s degree of distinctiveness is average and the level of attention of the relevant public will be average as well.

Furthermore, 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).

Considering all the above, there is a clear likelihood of confusion on the part of the Polish public who will not perceive any meaning or allusion in either mark (which is a significant part of the whole relevant public).

Therefore, the application is well founded on the basis of the applicant’s Polish trade mark registration No R.043 450. It follows that the contested trade mark must be declared invalid for all the contested goods.

As the above 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 rights 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

Martin LENZ

Vít MAHELKA

Nicole CLARKE

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.