CANCELLATION No 34101 C (INVALIDITY)

ISM Heinrich Krämer GmbH Co. KG, Koggenweg 1, 59557 Lippstadt, Germany (applicant), represented by Göhmann Rechtsanwälte Abogados Advokat Steuerberater Partnerschaft mbB, Landschaftstraße 6, 30159 Hannover, Germany (professional representative)

a g a i n s t

Manuel Frances Navarro, Polig. Ind. El Rubial, calle 3- Parc.163 B, 03400 Villena, Spain (EUTM proprietor), represented by JTV Patentes & Marcas, Ortega y Gasset, 11-3°-D, 03600 Elda (Alicante), Spain (professional 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 17 901 618 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 17 901 618 . The application is based on, inter alia, European Union trade mark registration No 16 199 416 .

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 there is a likelihood of confusion due to the identity and/or similarity between the goods protected by both marks and the visual, aural and conceptually similarity of the signs on account of their initial elements ‘INNPULSE’ vs ‘IMPULSE’. It states that the word ‘INNPULSE’ of the contested mark is the dominant element as ‘by ComfortLight’ will be perceived as a secondary element and the graphical representation is merely decorative. In support of its arguments, the applicant refers to previous decisions of the Office.

The EUTM proprietor did not submit any 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.

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 16 199 416.

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, inter alia, the following:

Class 25: Footwear; Work shoes; Work boots; Footwear for women; Leisure shoes; Casual footwear; Rain boots; Half-boots; Leather shoes; Sandals; Lace boots; Shoes; Shoes with hook and pile fastening tapes; Mountaineering shoes; Footwear soles; Shoes soles for repair; Footwear [excluding orthopedic footwear]; Footwear for men; Footwear not for sports; Shoe soles; Boots; Hunting boots; Walking shoes; Waterproof shoes; Waterproof boots; Intermediate soles.

The contested goods are the following:

Class 10: Orthopaedic footwear; Orthopaedic soles.

Class 25: Footwear [excluding orthopedic footwear]; Soles for footwear; Inner soles.

Contested goods in Class 10

The contested orthopaedic footwear are worn by people of all ages who suffer from foot mechanics as they are specifically designed to support the structure and mechanics of the foot, ankle and leg. It has a certain similarity with the applicant’s footwear since they have the same nature, can have the same method of use and target the same relevant public. Therefore, the goods under comparison are similar to a low degree.

The same reasoning applies to the contested orthopaedic soles, they are similar to a low degree to footwear soles since they might have the same nature and method of use and could be addressed to the same end consumers.

Contested goods in Class 25

Footwear [excluding orthopedic footwear] are identically contained in both lists of goods.

In the same vein, soles for footwear are identical to footwear soles despite the difference in their wordings.

Finally, the contested inner soles are included in the broader category of the applicant’s footwear soles; they are therefore 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 its observations, the applicant states that the goods are aimed at the general public and the level of attention is average.

In the present case, the goods included in Class 10 found to be similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise in the relevant field. When purchasing certain goods as in this case, the consumer will generally exercise a higher degree of care and will buy the goods only after careful consideration. Non-specialised or non-professional consumers often seek professional assistance or advice when choosing or buying certain types of goods. Even professionals in the relevant field have a high degree of attentiveness due to the nature and sophistication of the goods concerned.

On the other hand, the Cancellation Division considers that the goods found to be identical in Class 25 are directed at the public at large and the degree of attention is considered to be average.

3. 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Both signs are figurative marks. The element ‘IMPULSE’ included in the earlier mark, written in upper case letter and in bold, is an English word which means a force or movement of energy that causes something else to react. Since it has no meaning in relation to the relevant goods, it has an average degree of distinctive character. The term ‘FOAM’ included in the earlier mark will be understood by the English speaking part of the public as a soft light rubber material, full of small holes. Bearing in mind that the relevant goods are footwear and soles, this element is descriptive and non-distinctive for these goods since it refers to one of the characteristics of the goods, namely, the material they are made of. The dot represented between both words is a decorative symbol with no trade mark significance and it will be not included in the comparison of the signs.

On the other hand, the contested mark consists of the element ‘I**PULSE’ written in black upper case letters in bold, except for the middle blue element. All the verbal elements of the contested mark are included in a rectangle which is a simple geometric form and thus merely decorative.

In its observations, the applicant argues that the middle letters NN are a single letter without any dividing line.

Although it cannot be denied that said element can be seen as a figurative element, the Cancellation Division considers that the majority of the relevant public will perceive the two letters NN, therefore, the first element of the contested mark will be seen as the term ‘INNPULSE’. This element, as such, has no meaning, however, it will be understood by the majority of the English speaking public as related to or a misspelling of the word ‘IMPULSE’ whose meaning was described above and it is normally distinctive in relation to the relevant goods.

Below it and in a smaller size, the element ‘by ComfortLight’ is represented in standard letters. The applicant observes that the element ‘by’ introduces a reference to an undertaking followed by an indication of the origin of the goods.

Indeed, the Cancellation Division considers that ‘by ComfortLight’ will be understood by the relevant public as a business name, i.e. indicating the company ‘behind’ the trade mark and it is distinctive. However, although each of the elements making up the sign might have their own independent distinctive role, consumers are likely to focus more on the element that would be seen as identifying the specific product line rather than on the element that would be perceived, because it is preceded by ‘by’, as identifying either the company who has control of the products concerned or the designer who created the product line (compare: 30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370, § 65 and 86).

As regards the dominance of the elements included in both marks, the Cancellation Division considers that, since the earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements, the term ‘INNPULSE’ included in the contested sign, which is represented in a slightly bigger size and in bold with the emphasis in the second letter represented in blue, is co-dominant with the element ‘by ComfortLight.

Taking into account all the above, since both marks are composed of elements which are meaningful or refer to meaningful terms in those countries where English is understood, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Visually, the signs coincide in the sequence of letters ‘I**PULSE’, which form their distinctive initial elements however they differ in their second letters ‘M’ vs ‘NN’ and in their remaining elements, which were found non-distinctive or merely decorative, and in the graphical representation of the elements included within the signs.

The first parts of the conflicting marks are almost identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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 Cancellation Division considers that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘I**PULSE’, present identically in both signs. Although the pronunciation differs in their second letters ‘M’ vs ‘NN’, such difference might be almost imperceptible when pronounced as they are both nasal letters followed by the same initial I. Therefore, their rhythm and intonation is almost identical as argued by the applicant. The signs also differ in their remaining elements which are placed in a second position within the signs. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of their distinctive elements ‘INNPULSE’ and ‘IMPULSE’, the signs are conceptually highly 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, despite the presence of a non‑distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The interdependence of those factors is expressly referred to in the preamble to the EUTMR, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (10/09/2008, T-325/06, Capio, EU:T:2008:338, § 72 and the case-law cited).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323).

The goods are partly identical and partly similar to a low degree and the distinctive character of the earlier mark as a whole is normal.

Taking into account all the above, and especially the fact that the contested mark almost reproduces the first element of the earlier mark, it is considered that the additional terms included in both marks respectively, which are non-distinctive or decorative, cannot counteract the visual, aural and conceptual similarities between the marks so as to exclude a likelihood of confusion even for the relevant public which shows a higher degree of attention.

The relevant consumers may think that the identical and similar goods come from the same or from economically-related companies. Those consumers are likely to notice the distinctive elements ‘IMPULSE/INNPULSE’ when remembering the marks and considering their imperfect recollection of them and might consequently not notice the difference between them, or they might associate the trade marks based on the common elements and therefore assume that the contested mark is a sub-brand of goods connected to the earlier mark, even for the goods found to be similar to a low degree to the goods protected by the earlier mark. According to the interdependence principle, the similarities between the signs offset the low degree of similarity between the goods.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 16 199 416. It follows that the contested trade mark must be declared invalid for all the contested goods.

As the earlier right No 16 199 416 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

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

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.