CANCELLATION No C 41 801 (INVALIDITY) 

 

Prefa Aluminiumprodukte Gesellschaft m.b.H., Werkstr. 1, 3182 Marktl im Traisental, Austria (applicant), represented by Johannes Klezl-Norberg, Gaadner Straße 80, 2371 Hinterbrühl, Austria (professional representative)

 

a g a i n s t

 

Marcin Witowski, ul. Komuny Paryskiej 6/1, 30-389 Kraków, Poland (EUTM proprietor), represented by Kancelaria Patentowa Dr Jerzy Lampart, ul. Wyzwolenia 1b, 42-624 Ossy, Poland (professional representative).

On 09/06/2021, the Cancellation Division takes the following

 

 

DECISION

 

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

2. European Union trade mark No 17 938 219 is declared invalid for some of the contested goods and services, namely:

Class 19: Modular units (non-metallic -) for constructing prefabricated buildings; flashing, not of metal, for building; structural frameworks (non-metallic -) for buildings; modular elements, not of metal, for construction.

Class 37: Building, construction and demolition in the area of modular buildings, prefabricated buildings, structures and rooms, excluding roof coverings, building façades, as well as solar and photo-voltaic installations; repair and installation services carried out inside buildings; construction of structures and building modules; erection of prefabricated buildings and structures; construction of interior accommodation; installation of prefabricated building elements; building consultancy; consultancy and information services relating to construction; construction management [supervision]; installation of fabricated construction units; custom construction of buildings; installation of sanitary, heating, water and sewage, and air-conditioning apparatus; electrical installation services; insulation services; installation of fixtures and fittings for buildings; repair of sanitary installations; plumbing.

Class 42: Design of prebuilt, prefabricated and finished rooms or buildings; development of prebuilt, prefabricated and finished rooms or buildings (research and development); design in the field of installation and building construction; engineering services; architectural and urban planning services; technical design services relating to sanitary apparatus and installations; planning [design] of bathrooms; interior architectural services; space planning [design] of interiors.

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

Class 11: Bathroom installations; bath fittings; prefabricated bathroom fittings sold as a unit; prefabricated sanitary units; prefabricated sanitary mounting elements for bathrooms and water closets.

Class 19: Prefabricated modular components, not of metal, for building and rebuilding of bathrooms, kitchens and other standard room types; finished rooms, including bathrooms, being prefabricated modular rooms (portable); prefabricated buildings; non-metallic transportable buildings; prefabricated rooms (transportable); prebuilt, prefabricated and finished rooms or buildings, including bathrooms, kitchens and offices and other rooms with connected media, in particular telecommunications cables, the internet, sound, television, lighting, power supply, alarms, and water and sanitary installations.

4. Each party bears its own costs.

REASONS

 

On 27/02/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 17 938 219 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM. The application is based on international registration No 910 159 ‘PREFA’ designating the European Union.

The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) and Article 8(5) EUTMR apply given that there is likelihood of confusion, and that the proprietor tries to take unfair advantage of the distinctive character and the repute of the earlier trademark.

 

The EUTM proprietor refutes that it tries to take unfair advantage of the distinctive character and the repute of the earlier trademark as it has never been its intention to exploit the resources and achievements of another enterprise. It outlines the history of the company and adds that the name Prefa Solutions (from French préfabriqué = prefabricated, and solutions, which is to mean “prefabricated solutions”) was chosen in view of its perfect suitability for the company’s activities in France and in francophone countries. Moreover, it is easy to pronounce and comprehensible to English-speaking entities. It also argues that the fields of trade of the companies are different as whereas the applicant is involved in exterior finishing of buildings, the proprietor is specialized in the production and assembly of ready, prefabricated rooms, mainly bathrooms – i.e. in indoor works. Therefore, the public is not the same, and the goods and services have different intended and manner of use, they are neither complementary nor in competition and the channels through which they are distributed also vary. Furthermore, as the signs must be assessed as a whole, the differences between them will not go unnoticed for the public; consequently, there is no likelihood of confusion.

The proprietor filed in Annex 1 the ‘Prefa Solutions brand identity concept book’.

REPUTATION – ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

 

The applicant claimed that the earlier international registration No 910 159 has a reputation in the European Union in relation to all the goods and services covered by the registration.

According to Article 60(1)(a) EUTMR, a European Union trade mark will be declared invalid on application to the Office where there is an earlier mark, as referred to in Article 8(2) EUTMR, and the conditions set out in Article 8(1) or (5) EUTMR are fulfilled.

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier registered trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which registration is sought are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds of refusal of Article 8(5) EUTMR are applicable in the context of invalidity proceedings only when the following conditions are met.

 

(a) The signs must be either identical or similar. 

 

(b) The earlier trade mark must have a reputation. The reputation must be prior to the filing of the contested trade mark and must still exist at the time of filing of the invalidity request; it must exist in the territory concerned and for the goods and/or services on which the application for a declaration of invalidity is based. 

 

(c) Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. 

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for declaration of invalidity under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

 

a) Reputation of the earlier trade mark

 

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

 

In invalidity proceedings, an invalidity applicant relying on reputation must prove that its earlier right has acquired reputation by the filing date of the contested EUTM, taking account, where appropriate, of any priority claimed (Article 60(1) EUTMR, second subparagraph).

 

In addition, the reputation of the earlier mark must still exist at the time when the decision on the invalidity request is taken, given that the conditions set out in the first subparagraph of Article 60(1) EUTMR are formulated in the present tense. Therefore, the applicant should also prove the reputation of the earlier mark at the time of filing of the invalidity request, in which case, and unless there is proof to the contrary, the Cancellation Division will assume that it continues to exist at the time when the decision on invalidity is taken.

 

The contested trade mark was filed on 01/08/2018. Therefore, the applicant was required to prove that the trade mark on which the application is based had acquired a reputation in the European Union prior to that date and that it continued to exist at the time of filing of the invalidity request, that is, on 27/02/2020. The evidence must also prove that the reputation was acquired for the goods and services for which the applicant has claimed reputation, namely:

Class 6: Coverings for roofs of metal, especially of aluminium, and sheet metal for the production of these as well as means of fastening for these, roof tiles of metal, especially of aluminium sheet metal, gutters and drain pipes of metal, especially of aluminium sheet metal and means of fastening for these, components of roofs of metal, like snow rakes and snow stoppers, ridge caps, vents, venting grids, chimney surrounds, roof windows and surrounds for these, cladding for buildings and cladding elements of metal, especially of aluminium as well as means of fastening for these.

Class 7: Machine tools and machines for producing, adapting, shaping, laying, connecting, fastening and sealing of widths of sheet metal or plastics, of gutters and drain pipes, roof tiles and cladding elements.

Class 11: Apparatus for heating purposes, especially solar installations and photo-voltaic installations.

Class 19: Non-metallic coverings for roofs, especially of plastics, and materials for the production of these as well as means of fastening for these, non-metallic roof tiles, especially of plastics, gutters and drain pipes, especially of plastics, and means of fastening for these, non-metallic components of roofs, especially of plastics, like snow rakes and snow stoppers, ridge caps, vents, venting grids, chimney surrounds, roof windows and surrounds for these, non-metallic cladding for buildings and cladding elements, especially of plastics, as well as means of fastening for these.

Class 37: Construction of cladding, roof coverings and rain water draining installations, construction and maintenance of heating, solar and photo-voltaic installations.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

 

The applicant states that it is one of the leading European manufacturers of aluminium roof and façade systems and it owns various trademarks. Roof tiles were at PREFA Group just the beginning of a broad range of aluminium products for roof and façade covering available in multiple colours today. Over the years, a single roof tile element has turned into 4000 different products, all manufactured exclusively at production locations in Austria and Germany. In the 1960s, besides roof tiles, the first gutters were produced; thanks to coil coating, in the 1970s the products of PREFA Group got their trademark look to go with their durability. With the development of roof shingles in the 1980s and the roof panels in the 1990s, a gradual shift from roof tiles to roof and façade systems occurred. When the new matt coating came on the market in 2010, there was a sudden increase in interest from architects and planners. Today, products from PREFA Group are not only used for the construction and renovation of conventional family homes, but also in the toughest environments such as mountain huts, and for landmarks and new architectural projects all over the world. The slogan “A roof as strong as a bull” was developed in 2001 and - for its constant broad use in TV, print and electronic media - makes the PREFA brand one of the best-known, most popular and strongest brands in Europe as well as worldwide.

The applicant states that it has been promoting its products on the European market as well as worldwide first under the name “PREFA” and, later, under the trademark, and its products enjoy widespread reputation amongst European market participants. On the other hand, the contested trademark was published only in the year 2019, when the trademark “PREFA” as registered by the applicant already enjoyed a good reputation and the proprietor could easily verify the registration of the trademarks owned by the applicant. Therefore, the proprietor tries to take unfair advantage of the distinctive character and the repute of the earlier trademark “PREFA” and such behaviour constitutes a valid reason to declare the registration of the contested trademark invalid.

With its notice of invalidity, on 27/02/2020 the applicant submitted in Annex 2 a summary of the trademarks currently registered in its name and Annexes 3 to 5 with screenshots of the EUTM proprietor’s webpage. With it observations of 09/07/2020 the applicant filed some further documents, also from the EUTM proprietor’s webpage (annexes 6 to 9); the remaining evidence (annexes 10 to 14) are merely extracts from the applicants website providing no relevant information of the degree for recognition of the earlier sign. 

It is obvious that the information relating to the company of the proprietor of the contested mark can in no way prove the reputation of the earlier registration. Furthermore, a mere list of the trademarks owned by the applicant does not attest the earlier registration having acquired a reputation, given that there is no indication of the degree of recognition of the earlier trade mark by the relevant public, no sales volumes have been discussed nor proved, nor is there any proof of the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not prove the degree of recognition of the earlier registration by the relevant public, and the applicant failed to prove that its trade mark has a reputation.

 

As seen above, for the application to be successful under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, the earlier trade mark must have a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the application must be rejected insofar as it is based on these grounds.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION 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. 

  

a) The goods and 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 goods and services on which the application is based are the following: 

Class 6: Coverings for roofs of metal, especially of aluminium, and sheet metal for the production of these as well as means of fastening for these, roof tiles of metal, especially of aluminium sheet metal, gutters and drain pipes of metal, especially of aluminium sheet metal and means of fastening for these, components of roofs of metal, like snow rakes and snow stoppers, ridge caps, vents, venting grids, chimney surrounds, roof windows and surrounds for these, cladding for buildings and cladding elements of metal, especially of aluminium as well as means of fastening for these.

Class 7: Machine tools and machines for producing, adapting, shaping, laying, connecting, fastening and sealing of widths of sheet metal or plastics, of gutters and drain pipes, roof tiles and cladding elements.

Class 11: Apparatus for heating purposes, especially solar installations and photo-voltaic installations.

Class 19: Non-metallic coverings for roofs, especially of plastics, and materials for the production of these as well as means of fastening for these, non-metallic roof tiles, especially of plastics, gutters and drain pipes, especially of plastics, and means of fastening for these, non-metallic components of roofs, especially of plastics, like snow rakes and snow stoppers, ridge caps, vents, venting grids, chimney surrounds, roof windows and surrounds for these, non-metallic cladding for buildings and cladding elements, especially of plastics, as well as means of fastening for these.

Class 37: Construction of cladding, roof coverings and rain water draining installations, construction and maintenance of heating, solar and photo-voltaic installations.

 

After a partial surrender requested on 08/05/2020 and registered on 13/05/2021, the contested goods and services are the following: 

 

Class 11: Bathroom installations; bath fittings; prefabricated bathroom fittings sold as a unit; prefabricated sanitary units; prefabricated sanitary mounting elements for bathrooms and water closets.

Class 19: Prefabricated modular components, not of metal, for building and rebuilding of bathrooms, kitchens and other standard room types; finished rooms, including bathrooms, being prefabricated modular rooms (portable); prefabricated buildings; non-metallic transportable buildings; prefabricated rooms (transportable); prebuilt, prefabricated and finished rooms or buildings, including bathrooms, kitchens and offices and other rooms with connected media, in particular telecommunications cables, the internet, sound, television, lighting, power supply, alarms, and water and sanitary installations; modular units (non-metallic -) for constructing prefabricated buildings; flashing, not of metal, for building; structural frameworks (non-metallic -) for buildings; modular elements, not of metal, for construction.

Class 37: Building, construction and demolition in the area of modular buildings, prefabricated buildings, structures and rooms, excluding roof coverings, building façades, as well as solar and photo-voltaic installations; repair and installation services carried out inside buildings; construction of structures and building modules; erection of prefabricated buildings and structures; construction of interior accommodation; installation of prefabricated building elements; building consultancy; consultancy and information services relating to construction; construction management [supervision]; installation of fabricated construction units; custom construction of buildings; installation of sanitary, heating, water and sewage, and air-conditioning apparatus; electrical installation services; insulation services; installation of fixtures and fittings for buildings; repair of sanitary installations; plumbing.

Class 42: Design of prebuilt, prefabricated and finished rooms or buildings; development of prebuilt, prefabricated and finished rooms or buildings (research and development); design in the field of installation and building construction; engineering services; architectural and urban planning services; technical design services relating to sanitary apparatus and installations; planning [design] of bathrooms; interior architectural services; space planning [design] of interiors.

The terms especially and like, used in the applicant’s list of goods and services, and the terms in particular and including, used in the list of goods and services of the contested mark indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce 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).

However, the term being, used in the EUTM proprietor’s Class 19 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 11

Although the apparatus covered by the earlier registration in Class 11 can sometimes be found in bathrooms, and these rooms are built with all the goods in Class 11 of the contested mark, this fact is obviously not enough to render the conflicted goods similar, given that their commercial origins are not the same, their channels of distribution differ and the goods are not in competition with each other, or complementary. These contested goods are also dissimilar in relation to the rest of the goods and services covered by the earlier international registration, because the same reasoning applies.

Contested goods in Class 19

The following goods: Prefabricated modular components, not of metal, for building and rebuilding of bathrooms, kitchens and other standard room types; finished rooms, including bathrooms, being prefabricated modular rooms (portable); prefabricated buildings; non-metallic transportable buildings; prefabricated rooms (transportable); prebuilt, prefabricated and finished rooms or buildings, including bathrooms, kitchens and offices and other rooms with connected media, in particular telecommunications cables, the internet, sound, television, lighting, power supply, alarms, and water and sanitary installations; are dissimilar to the covering for roofs and components of roofs, roof tiles and the cladding for buildings covered by the earlier registration in Class 19. The former are on the whole used in the construction of interior rooms (or the finished buildings or rooms) whereas the latter form part of building materials for the exterior of buildings; the goods are different in nature, they have different commercial origins and channels of trade, and they are neither in competition with each other nor complementary. The connection between these goods is not sufficiently close that consumers may think one is indispensable for the use of the other and/or that the responsibility for the production of those goods lies with the same undertaking. Furthermore, they are also dissimilar to all the rest of the goods and services covered by the earlier mark for the same reasons as stated above.

On the other hand, the goods: modular units (non-metallic -) for constructing prefabricated buildings; flashing, not of metal, for building; structural frameworks (non-metallic -) for buildings; modular elements, not of metal, for construction are building materials that can be used not only for interior rooms, but also for whole buildings and, as such, they might have the same purpose, share the commercial origins and channels of trade and be complementary to the materials used for roofs and protected by the earlier mark in Class 19. Therefore, these goods are similar.

Contested services in Class 37 

The services protected by the earlier registration in this Class are all construction services. The contested services are building, construction, demolition, fitting, repair and installation services (and building consultancy). These services are all similar given that they are provided by the same companies to the same clients through the same channels and they are complementary and/or in competition with each other.

Contested services in Class 42 

The services design of prebuilt, prefabricated and finished rooms or buildings; development of prebuilt, prefabricated and finished rooms or buildings (research and development); design in the field of installation and building construction; technical design services relating to sanitary apparatus and installations; planning [design] of bathrooms; space planning [design] of interiors are similar to the construction services in Class 37 covered by the earlier registration given that they usually coincide in producer, relevant public and distribution channels.

Architectural and urban planning services; interior architectural services are similar to construction services as they usually coincide in producers, relevant public and distribution channels. Furthermore they are complementary. On the other hand engineering services are lowly similar vis-à-vis the mentioned services given that they usually coincide in relevant public and distribution channels, and are complementary.

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 goods and services found to be similar (to various degrees) are very specific and directed at business customers with specific professional knowledge or expertise. The degree of attention is high given the fact that security plays a role in all the goods/services involved in construction, and others (such as design services, for example) are expensive and very sophisticated.

 

c) The signs

 

PREFA
Earlier international registration	Contested sign

 

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 registration, being a word mark consisting of a sole component, lacks elements that can be considered dominant (visually outstanding).

The term ‘PREFA’, present in both marks, will be linked to the public in the relevant territory, irrespective of their languages, to the term ‘prefabricated’ either because this word is quite basic for the professional public in the construction sector, or because the equivalent of the expression is very close in many languages, for example: Spanish ‘prefabricado’, Portuguese: ‘pré-fabricado’, Italian ‘prefabbricato’, Danish: ’præfabrikeret’, French: ‘préfabriqué’, Maltese: ‘prefabbrikati’. This term is weak as it alludes to the characteristics of the goods and services in the construction sector (‘prefabricated’ buildings, building materials for ‘prefabricated’ constructions, etc.).

As regards the plural term ‘solutions’ included in the contested mark, it belongs to both the English and French languages and can be understood in many other languages due to its common root (solución in Spanish, soluzione in Italian, etc.) as ‘A solution to a problem or difficult situation is a way of dealing with it so that the difficulty is removed; a specific answer to or a way of answering a problem; the act or process of solving a problem' (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/solution). In the context of the contested mark, it is therefore also weak for the goods and services at issue given that the most of the relevant consumers will perceive that the mark refers to ‘solutions’ for prefabricated buildings or building materials.

In relation to the figurative element contained in the contested mark it must be stated that it does not visually dominate the image given that the verbal element is not negligible and it appears on top of the image; also, 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).

The confronted marks share the term ‘PREFA’; even if this term is weak, the rest of the elements are also equally weak (‘solutions’) or less relevant (the figurative element); consequently, the signs must be deemed visually similar to an average degree, and aurally and conceptually similar to a high degree.  

 

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 trade mark has a high degree of distinctiveness/reputation in the European Union for all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442). 

 

As seen above, the applicant submitted some documents, but it has been concluded that they do not demonstrate that the earlier trade mark enjoys reputation, and the internet extracts provided by the applicant are also insufficient to prove that the mark has acquired enhanced distinctiveness through use.

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods and services in question.

 

e) 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, aural 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’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

It is true that the level of distinctiveness of the earlier mark is low; however, it has been stated that, as the rest of the elements are also weak or less relevant and that the marks share exactly the same word element PREFA, the signs are visually similar to an average degree and aurally and conceptually highly similar. Therefore, even in a case involving an earlier mark or a coinciding element with a low degree of distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70). Furthermore, account must be taken of the facts that (i) consumers seldom have the chance to compare the marks at the time of the purchase but must rely on their imperfect recollection of them and (ii) even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion and, therefore, the application is partly well founded on the basis of the applicant’s earlier international registration No 910 159 designating the European Union.

 

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to those of the earlier trade mark. The application is also successful insofar as the services that are similar to a low degree are concerned given the identity of the verbal element ‘PREFA’ of the marks.  

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed against these goods and services cannot be successful.

 

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Carmen SÁNCHEZ PALOMARES

María Belén IBARRA DE DIEGO

Jessica LEWIS

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.