CANCELLATION No 43 283 C (INVALIDITY)

Ibrahim Dabes, Neuburger Str. 109, 86167 Augsburg, Germany (applicant), represented by Prinz & Partner mbB Patent- und Rechtsanwälte, Rundfunkplatz 2, 80335 Munich, Germany (professional representative)

a g a i n s t

Zimo Yang, Rm. 104, No.142, Building 43, South of Shuxiangjingyuan, Yinzhou Dist., Ningbo, Zhejiang, People’s Republic of China (EUTM proprietor) represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 30/11/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all of the goods of European Union trade mark No 18 004 306 (figurative mark), namely against all the goods in Class 34. The application is based on European Union trade mark registration No 13 363 304 ‘AMY’. 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 contested mark gives rise to a likelihood of confusion with the earlier mark. According to the applicant the goods under comparison show a very high degree of similarity. Although there are some visual differences between the marks, aurally the two signs are highly similar as they only differ in one letter ‘D’. Both signs consist of two syllables (A-MY and AD-MY). Moreover, the sign ‘AMY’ has no descriptive connotation for the goods concerned and it is therefore inherently distinctive. Moreover, since ‘AMY Group’ is one of the leading manufacturers and distributors of oriental waterpipes (hookahs) and accessories, the earlier mark also enjoys an enhanced distinctiveness. Against this background, there is a clear likelihood of confusion between the conflicting signs and the contested mark must be declared invalid.

The EUTM proprietor did not submit any observations 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.

a) 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 34: Tobacco, in particular waterpipe tobacco; smokers' articles; liquids for electronic cigars and cigarettes; matches; pipes, in particular waterpipes.

The contested goods are the following:

Class 34: Mouthpieces for cigarettes; hookahs; electronic hookahs; electronic cigarettes; tobacco pouches; pipes; cigar cases; cigarette boxes; electronic cigarette boxes; cigar holders; mouthpieces for cigarette holders; ashtrays.

The term ‘in particular’ used in the applicant’s lists of goods, 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, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The contested pipes are identically included in the list of the earlier goods.

The contested hookahs; electronic hookahs are included in the broad category of the applicant’s pipes, in particular waterpipes. The goods are identical.

The contested electronic cigarettes are at least similar to the applicant’s liquids for electronic cigarettes. These goods are complementary and share the same target public, producers and also distribution channels

The contested tobacco pouches are articles used for preparing cigarettes. These goods are in close connection with the applicant’s tobacco. The goods under comparison are sold in the same type of retail outlets, such as tobacconists’ shops, and target the same consumers. Furthermore, they are complementary, as the contested goods are used together with tobacco for making cigarettes and cigars. Therefore, the goods under comparison are similar.

The contested mouthpieces for cigarettes; cigar cases; cigarette boxes; electronic cigarette boxes; cigar holders; mouthpieces for cigarette holders; ashtrays are all items that are used in connection or association with tobacco products and included in the applicant’s smokers’ articles. Therefore, they are identical.

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 found to be identical or similar are directed at the public at large.

Although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved. This has been confirmed by several Board of Appeal decisions (e.g. 26/02/2010, R 1562/2008‑2, victory Slims (fig.) / VICTORIA et al., where it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal; 25/04/2006, R 61/2005‑2, GRANDUCATO / DUCADOS et al.). Nevertheless, for some other contested smokers’ articles such as cigar holders this degree of attention can be established as average because any brand loyalty involving an increased degree of attention does not exist. Therefore, the degree of attention varies from average to high.

c) The signs

AMY
Earlier trade mark	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 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, § 23).

The earlier mark is a word mark consisting of a single verbal element ‘AMY’ which will most likely be perceived as a female name by a major part of the relevant public. Another part of the public will see no specific meaning in this verbal element. Whether understood or not, since the verbal element ‘AMY’ has no descriptive, allusive or otherwise weak meaning in relation to the relevant goods, its inherent distinctive character is normal.

The contested mark is a figurative mark consisting of the verbal element ‘ADMY’ and above it a figurative element resembling a cartoon image of a horse head. The element ‘ADMY’ has no meaning in the relevant territory and it is distinctive to an average degree. Furthermore, since the figurative element has no meaning in relation to the relevant goods at hand, they are considered to be distinctive to an average degree.

Neither of the marks has an element that could be considered clearly more dominant (visually eye-catching) than other elements.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. The Cancellation Division points out that the similarity of short signs must be assessed in accordance with well-established case-law, in particular, taking into consideration that the public’s attention focuses on all the letters of short signs; the central elements are as important as the beginnings and endings; consumers tend to notice even small/single differences, which may suffice to exclude similarity; even a difference in one letter may be sufficient to distinguish signs.

Visually, the signs coincide in their first letter ‘A’. Moreover, they both end with the letters ‘M’ and ‘Y’. However, the signs differ in the additional second letter ‘D’ and in the figurative element of the contested mark.

Considering the effect of the length of the signs under comparison (four and three letters respectively), the additional letter ‘D’ of the contested sign has an important impact on the overall impression of the signs; also, the contested sign has a very striking figurative element that is visually very much eye-catching; all this renders the signs similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in their first sound ‘A’ and in the sound of the sequence of letters ‘MY’. The pronunciation differs in the additional sound ‘D’ of the contested mark which has no counterpart in the earlier mark. Contrary to the applicant’s statement, the presence of this additional sound markedly alters their aural and vocal structure. Therefore, taking into account the difference in length of pronunciation, in particular the fact that the earlier mark is very short, it is considered that the degree of aural similarity is average.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the contested mark’s verbal element ‘ADMY’ has no meaning in the relevant territory, at least a part of the relevant public will perceive the meaning of the word ‘AMY’ as explained above. Moreover, the signs also differ in the concept found in the device element of the contested mark. Consequently, bearing in mind the above, it may be concluded that the signs are not conceptually similar for this part of the public.

For the other part of the public, that will not perceive any meaning in the verbal element ‘AMY’, since one of the signs will not be associated with any meaning, the signs are also not conceptually similar.

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.

The applicant claimed that the earlier trade mark enjoys an above-average degree of distinctiveness, especially in Germany. However, besides a reference to a website www.amydeluxe.de it did not file any evidence in order to prove such a claim.

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 goods 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 that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

As seen above, the goods concerned are identical or similar. The signs are visually similar to a low degree, aurally similar to an average degree, and conceptually not similar. The public’s degree of attention varies from average to high and the earlier sign has a normal degree of distinctiveness.

The signs have three and four letters, respectively and they are, consequently short marks. As previously mentioned, the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. Also, the contested mark contains a very striking figurative elements in the shape of a horse head, which is important in this case, where the goods will be purchased after a visual inspection.

Therefore, even considering that the goods are partly identical and partly similar, and that an average or higher degree of attention will be displayed by the relevant public when purchasing the goods, the striking differences between the signs are sufficient to counteract these factors, making consumers able to safely distinguish between them.

The applicant did not prove that its earlier mark enjoys a higher-than-average degree of distinctiveness on account of its extensive use on the market. Under the principle of interdependence the low degree of visual similarity of the marks would require some degree of enhanced distinctiveness, even for identical goods, otherwise there would be no room for the factor of enhanced distinctiveness (17/04/2008, C‑108/07 P, Ferro, EU:C:2008:234, § 58). There can be no automatism for finding a likelihood of confusion in instances where the similarity is only low (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 69; 26/09/2018, R 2284/2017-2, Reeflowers (fig.) / flower (fig.))

Considering all the above there is no likelihood of confusion on the part of the public (even with an average level of attention). Therefore, the application must be rejected.

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 applicant is the losing party, he must bear the costs incurred by the EUTM proprietor 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 EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

María Belén IBARRA DE DIEGO

Janja FELC

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.