CANCELLATION No C 40 403 (INVALIDITY)
 

Pérez Torres Marítima, S.L., Muelle Comercial S/N, 36900 Marín (Pontevedra), Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

 

a g a i n s t

 

Trade Mark PTM Wyszyńscy Spółka Jawna, ul. Przemysłowa 5, 07-200 Wyszków, Poland (EUTM proprietor), represented by Krzysztof Święcicki, Al. Jerozolimskie 101/18, 02-011 Warsaw, Poland (professional representative).

On 25/11/2020, the Cancellation Division takes the following

 

 

DECISION

 

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

 

2.	European Union trade mark No 17 932 711 is declared invalid in its entirety.

 

3.	The EUTM proprietor bears the costs, fixed at EUR 1 080.

 

REASONS 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 17 932 711 (figurative mark) (the EUTM). The request is directed against all the services covered by the EUTM. The application is based on, inter alia, Spanish trade mark registration No M 3 102 486 ‘PTM’. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) and 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the marks are similar on account of their identical verbal element and that the contested services are included in the broader categories of the earlier marks. It concludes that there is a likelihood of confusion on the part of the public. The applicant also presents arguments relating to Article 8(5) EUTMR.

The EUTM proprietor did not file any observations in response to the application for invalidity, despite having been duly invited to do so by the Office.

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 Spanish trade mark registration No M 3 102 486.

 

a) The services

 

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 services on which the application is based are the following: 

Class 35: Representation services of commercial businesses of ship-owners; import and export agencies; advertising; business management; business administration; sales services wholesale, retail and through the internet of all kinds of naval items, naval machinery and products derived from the sea.

Class 36: Custom agencies; insurance services; financial services.

Class 39: Vessel cosignatory (transit services); consignment and dispatch of ships, loading and unloading and transshipment thereof; services related to the transport, warehousing and safekeeping of goods, marine towing, salvaging of ships and their cargo; those related to the operation of ports and springs and the loading and unloading of them, information concerning travels and transportations of goods; download port cranes; shipping of loads between maritime ports; supply of information on ports; boat rental and transportation; refloating of vessels (ships); ship loading services; ship rescue services; supply of vessel protection equipment. 

The contested services are the following: 

Class 35: Sale of vehicles.

Class 36: Leasing of vehicles.

Class 39: Transport, freight forwarding, transportation logistics, goods warehousing, packaging of goods, rental of means of transportation.

As a preliminary remark, according to Article 33(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification. On the other hand, the classification of certain goods or services in certain class may shed light on the particular nature of those goods or services, as each class contains certain specific categories of goods and services.

 

Contested services in Class 35

Retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

 

Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between retail of specific goods on the one hand and retail of other goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors.

In the present case, the contested services concern vehicles in general, whereas the services of the earlier mark relate to all kinds of naval items, naval machinery. Naval items and machinery are products that are designed to be used on boats and they are normally sold through the same channels as boats. Since boats are a type of vehicles, they are included in the general category to which the contested ‘sales’ relate. Consequently, certain type of vehicles can be sold together with naval items and naval machinery. Therefore, and bearing in mind what was mentioned above, the contested sale of vehicles is similar to the applicant’s sales services wholesale, retail and through the internet of all kinds of naval items, naval machinery.

Contested services in Class 36

Vehicle leasing is a type of service in which a car is financed by an entity who offers the vehicle for use to third parties for monthly fees for a certain time period, after which the vehicle must be purchased or returned. The contested services registered in this class, leasing of vehicles, must be interpreted as the financial aspect of these services, rather than as ‘rental of vehicles’, as those would be registered in Class 39 (where they in fact can also be found, among other contested services). Considering this, these contested services are included in the broad category financial services of the earlier mark and, therefore, they are identical.

Contested services in Class 39 

The contested transport, freight forwarding, transportation logistics and goods warehousing are services identical to the earlier mark’s services related to the transport and warehousing of goods, as these services are synonymous or their overlap.

One of the purposes, possibly even the main purpose, of packaging of products is to prevent damage caused to the products in transport or elsewhere. Therefore, the scope of the contested packaging of goods overlaps with the applicant’s services related to safekeeping of goods. Consequently, these services are identical.

Finally, the contested rental of means of transportation includes, as a broader category, the applicant’s boat rental. Since the Cancellation Division cannot dissect ex officio the broad category of the contested services, they are considered identical to those of the applicant.

 

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 services found to be identical or similar are directed at the public at large as well as at professional business customers (in particular the services in Classes 35 and 36) and mainly at business customers with specific professional knowledge or expertise (in particular the services in Class 39). The degree of attention will range from average to higher, the latter in particular for the services that may have important financial consequences for their users (Class 36) or in general for services with elevated costs. 

c) The signs

 

PTM
Earlier trade mark	Contested sign

 

The relevant territory is  Spain.  

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 mark is a word mark composed of three letters, ‘PTM’. This combination of letters does not have any meaning for the relevant public and this element, is therefore, normally distinctive. This mark has no elements that could be considered visually dominant or more distinctive than other elements. 

The contested mark also contains the string of letters ‘PTM’, in slightly stylized representation. In addition, it includes a figurative component representing three quarters of a circle around the letter ‘P’. All the elements of the mark are in blue with the exception of one quarter of the circle, which is in red.

The contested mark has no element that is visually dominating. On the other hand, the figurative element, being a simple and commonly used variant of a basic geometric shape, will be perceived as a rather banal decorative element and as such, it is less distinctive than the meaningless combination of letters ‘PTM’, which is normally distinctive.

Visually, the signs coincide in the string of letters ‘PTM’. Although these letters are somewhat stylized in the contested mark, their stylization is minimal and they are clearly legible. The marks differ in the additional figurative element of the contested mark and in the graphic representation of the contested mark. Since the marks coincide in their sole verbal elements, which form the entirety of the earlier mark and the most distinctive element of the contested one, they are visually similar to a high degree.

Aurally, the marks are identical.

Conceptually, except for the potential concept of an incomplete circle conveyed by the figurative element of the contested mark, which will hardly be registered as a concept with any trade mark significance by the relevant public, neither of the signs has a meaning for the public in the relevant territory. Therefore, a conceptual comparison is not possible and 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.

d) 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.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

All the contested services are identical or similar to those of the earlier mark, which has a normal degree of inherent distinctiveness. The earlier mark is entirely included in the contested one as an independent element, the mark’s most distinctive one and also the mark’s only verbal component. The differences between the marks, formed by the addition of a banal figurative decoration and the slight stylisation of the letters in the contested mark, cannot counteract the high degree of the visual similarity and the aural identity of the marks, even when the attention of some consumers may be heightened in relation to some of the relevant services.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the application is well founded on the basis of the applicant’s Spanish trade mark registration No M 3 102 486. It follows that the contested trade mark must be declared invalid for all the contested services.

 

Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its reputation as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Spanish trade mark No M 3 102 486 leads to the success of the application and the cancellation of the contested trade mark for all the services 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).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(5) EUTMR in conjunction with Article 60(1)(a) EUTMR.

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(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

 

Pierluigi M. VILLANI

Michaela SIMANDLOVA

Oana-Alina STURZA

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.