CANCELLATION No 39 000 C (INVALIDITY)

Castelain Expansion S.A. à directoire et conseil de surveillance, 13 rue Pasteur, 62410 Benifontaine, France (applicant), represented by Bureau Duthoit Legros Associes, 31 Rue Des Poissonceaux, 59044 Lille Cedex, France (professional representative)

a g a i n s t

Ningxia Jade Vineyard Company Limited, Baiyangdun, Jinshan Village, Hongguang Town, Helan County, Yinchuan, Ningxia, People’s Republic of China (EUTM proprietor), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

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

DECISION

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

2. European Union trade mark No 17 957 815 is declared invalid for some of the contested goods, namely:

Class 33: Cider; cocktails; wine; spirits [beverages]; brandy; alcoholic beverages, except beer; alcoholic beverages containing fruit; baijiu [Chinese distilled alcoholic beverage].

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

Class 33: Fruit extracts, alcoholic; alcoholic essences.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 17 957 815 . The application is based on European Union trade mark registration No 1 431 840 ‘JADE’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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 32: Beers.

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Fruit extracts, alcoholic; cider; cocktails; wine; spirits [beverages]; brandy; alcoholic essences; alcoholic beverages, except beer; alcoholic beverages containing fruit; baijiu [Chinese distilled alcoholic beverage].

Contested goods in Class 33

The contested cider; cocktails; wine; spirits [beverages]; brandy; alcoholic beverages, except beer; alcoholic beverages containing fruit; baijiu [Chinese distilled alcoholic beverage] are included in the applicant’s broader category of alcoholic beverages (except beers) and, therefore, they are identical.

The contested fruit extracts, alcoholic; alcoholic essences are concentrated alcohols for use in the production of alcoholic beverages. They are not drinks per se but are used for making them and are normally not drinkable on their own. Therefore, the relevant public, distribution channels and producers are not usually the same as those of the applicant’s goods. By definition, goods intended for different public sectors cannot be complementary (22/06/2011, T‑76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T‑361/11, Dolphin, EU:T:2012:377, § 48). Furthermore, there is no complementarity when one ingredient is needed for the production/preparation of another foodstuff. Complementarity applies only to the use of goods and not to their production process (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 11/12/2012, R 2571/2011‑2, FRUITINI, § 18). Therefore, contrary to the applicant’s arguments, the contested fruit extracts, alcoholic; alcoholic essences are dissimilar to the applicant’s goods.

The applicant argued that, among other goods, fruit extracts, alcoholic; alcoholic essences are similar to beers and referred to a previous decision of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous case referred to by the applicant is not relevant to the present proceedings since in that case, alcoholic essences and alcoholic extracts are not compared to beers. Therefore, these applicant’s arguments are set aside.

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 are directed at the public at large who have an average degree of attention.

3. The signs

JADE
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.

The differing element ‘VINEYARD’ is meaningful in certain territories, for example in those countries where English is understood, as it will be perceived as a ‘piece of ground in which grape-vines are cultivated; a plantation of vines’ (information extracted from Oxford English Dictionary online on 30/04/2020 at https://www.oed.com/view/Entry/223558). Bearing in mind that the relevant goods are various types of alcoholic beverages, this element is descriptive and non-distinctive, since it refers to the geographical place where the contested goods are/or may grow.

Consequently, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The word ‘JADE’, included in both signs, will be understood as ‘a name given to two distinct minerals which from their hardness have been used for implements and ornaments’ (information extracted from Oxford English Dictionary online on 30/04/2020 at https://www.oed.com/view/Entry/100607). Since its meaning has no relation to the relevant goods, it has a normal degree of distinctiveness.

Visually and aurally, the signs coincide in the distinctive element ‘JADE’. They differ in the second verbal element ‘VINEYARD’ of the contested mark, which is descriptive for the relevant public. Visually, the signs also differ in the slight stylisation (typeface) of the contested mark. Therefore, the signs are visually and aurally highly similar.

Conceptually, the public in the relevant territory will associate both signs with the same meaning as described above. The signs only differ in the meaning of the additional word ‘VINEYARD’ of the contested mark. However, due to the non-distinctive character of this element, its impact in the comparison of the signs is limited. Therefore, as the signs will be associated with a similar meaning, 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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The contested goods are partly identical and partly dissimilar to the applicant’s goods. The relevant public is the public at large who have an average degree of attention when purchasing them. The earlier mark has a normal degree of distinctiveness.

The signs are similar to a high degree since the earlier mark is fully incorporated in the contested mark and the only differing element is descriptive for the relevant goods.

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).

Therefore, the Cancellation Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration. 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.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 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(2) 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, 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

Ana MUÑIZ RODRIGUEZ

María Belén IBARRA DE DIEGO

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.