CANCELLATION No C 43 903 (INVALIDITY)

 

Amazon Europe Core S.À R.L., 38 avenue John F. Kennedy, 1855 Luxembourg, Luxembourg (applicant), represented by Morgan, Lewis & Bockius UK LLP, Condor House, 5-10 St. Paul's Churchyard, EC4M 8AL London, United Kingdom (professional representative)

 

a g a i n s t

 

Goddly S.R.L., Via Armando Diaz II Traversa n.2, 80070 Monte di Procida, Italy (EUTM proprietor), represented by Daniela Pasquali, Via Riviera di Chiaia 105, 80121 Napoli, Italy (professional representative).

On 10/12/2020, 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 a request for a declaration of invalidity against European Union trade mark No 18 064 715   (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM. The application is based on EUTM registration (EU) No 13 606 331  . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) and Article 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed an invalidity request on 13/05/2020 claiming that the identity and similarity between the goods and services combined with the similarity between the signs under comparison, is likely to lead to a likelihood of confusion, including a likelihood of association, on the part of the consumers of these goods and services. It points out that the marks under comparison are visually and conceptually similar on account of the near identical figurative element of a smile device. The applicant also claims that it has been using its sign extensively within the European Union and has developed a substantial reputation in this sign in connection with the goods and services protected by the earlier mark. It considers that the use of the contested EUTM takes unfair advantage of, or be detrimental to, the distinctive character and the reputation of the applicant’s trade mark without due cause.

The EUTM proprietor did not submit any observations in reply to the applicant, although invited to, and provided with a time limit in which 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. 

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 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; software; portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks and electronic and mechanical parts and fittings therefor; tablet computers, electronic book readers, audio and video players, electronic personal organizers, personal digital assistants, and global positioning system devices and electronic and mechanical parts and fittings therefor; computer peripheral devices; monitors, displays, wires, cables, modems, printers, disk drives, adapters, adapter cards, cable connectors, plug-in connectors, electrical power connectors, docking stations, and drivers; battery chargers; battery packs; memory cards and memory card readers; speakers, microphones, and headsets; cases, covers, and stands for computers; cases, covers, and stands for portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, sound, audio, video and data, including via global computer networks, tablet computers, electronic book readers, audio and video players, electronic personal organizers, personal digital assistants, and global positioning system devices and devices for the display of electronically published materials, namely, books, journals, newspapers, magazines, multimedia presentations; remote controls for portable and handheld electronic devices and computers; power adapters; USB cables; electronic docking stations; battery chargers; electrical connectors, wires, cables, and adaptors; wireless remote controls for portable electronic devices and computers; headphones and earphones;

data synchronization programs, and application development tool programs for personal and handheld computers; computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; downloadable pre-recorded audio and audiovisual content, information, and commentary; downloadable electronic books, magazines, periodicals, newsletters, newspapers, journals, and other publications; downloadable electronic publications in the nature of fiction, non-fiction, comics and screenplays via computer and communications networks; downloadable films and movies featuring fiction and non-fiction stories provided via computer and communications networks; downloadable templates for designing books, short stories, storyboards, screenplays, comics, audio and video files; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; downloadable audiobooks and digital audio files; software in the field of text, image and sound transmission and display; database management software; character recognition software; voice recognition software; electronic mail and messaging software; computer software for accessing, browsing and searching online databases; electronic bulletin boards; data synchronization software; application development software; parts and fittings for all the aforesaid goods; a software program, namely an interactive software development tool and run-time environment used to create and develop software applications to provide access to corporate, business, leisure, local and central government, intergovernmental organisations, education, information, non-profit making organisations data and systems using internet and using other network technologies; apparatus and instruments for reproducing sound, images or data; television apparatus and instruments; interactive electronic apparatus in the nature of cameras, video cameras, televisions, mobile phones, tablet computers, laptop computers, computers, global positioning system devices, electronic book readers; remote control units for any of the aforesaid goods; cleaning apparatus for magnetic or optical data media; cleaning apparatus for use with apparatus for recording or reproducing audio, video or data; electrical power supplies; transformers; battery chargers; batteries; cases and cabinets adapted for the storage of magnetic or optical data media; magnetic or optical data media, recording discs; sound recordings; video recordings; cinematographic films; exposed photographic films or slides; pre-recorded computer software; pre-recorded software for use with interactive electronic apparatus, game apparatus or amusement apparatus; parts and fittings for all the aforesaid goods; software, computer software, software products, software operating systems and computer programs, except an interactive software development tool and run-time environment used to create and develop software applications to provide access to corporate, business, leisure, local and central government, intergovernmental organisations, education, information, non-profit making organisations data and systems using internet and using other network technologies; computers, computer hardware, computer firmware, computer software, microcomputers; computer peripheral devices, printers, terminals, monitors, visual display units, keyboards; data storage apparatus, magnetic and optical discs and drives, tape drives; apparatus, products, programs and software for word, data and image processing, information collection, management, presentation and control, databases, database management, computer aided design, work management, telecommunication, datacommunication, radio, television, network communication and management, messaging, multimedia applications management, presentation and control; power cords, power chargers; battery charging devices for portable and handheld electronic devices; electrical, audio, and wires, printers, and connectors; Cases, covers, stands, skins, speakers, accessories, monitors, printers, displays, and keyboards for portable electronic devices; blank computer discs; blank digital storage media; blank electronic storage media; blank smart cards; computer cables; calculators; camera cases; camera tripods; computer mice; computer network routers and hubs; computer accessories, namely, computer leads for external computer cabling in the nature of firewire leads, USB leads; USB-HUBS; flash card readers; projectors, namely, sound projectors and amplifiers; DVD burners; DVD drives; computer peripherals in the nature of wireless cards; media players; media player components and accessories, namely, protective covers and cases for portable media players, chargers, electrical and power cables; video electronics components and accessories, namely, electrical and power cables and chargers; digital electronic components and accessories, namely, holsters, carrying cases, and fitted plastic films known as skins for covering and providing a scratch proof barrier or protection specifically designed for computers, digital audio and media players, MP3 players, mobile phones, personal digital assistants; video electronics and components and accessories therefore in the nature of cords, adapters, battery chargers, peripherals, and styluses; USB cables; video cables; extension cables; electrical and power cables; converters; USB hardware; computer and memory storage devices, namely, blank flash drives, USB drives, digital USB storage cards and card readers; printer components and accessories, namely, cables; electronic books; Computer software for accessing movies, TV shows, videos and music; downloadable audio, video and audiovisual content provided via computer and communications networks featuring movies, TV shows, videos and music; downloadable digital audio files featuring music, news, voice and spoken word; Computer game programs; Computer game software; Game software; Interactive game software; Interactive game programs; Computer application software for mobile devices, internet browsers, set-top boxes, electronic readers, and tablet computers, namely, software for video games and general interest software applications for shopping, product comparison, entertainment, news, task management, personal management, music and videos; Computer-software development tools; parts and fittings for all the aforesaid goods; telephones, mobile phones, videophones, cameras; monitors for television receiver; television receivers [TV sets] and television transmitters; remote controllers for television receiver [TV set]; electronic notepads; magnetic data carriers; radio receivers; radio transmitters; video cameras; computer hardware and software; computer software and firmware, namely, operating system programs, data synchronization programs, in the nature of application development tool programs for personal and handheld computers and mobile digital electronic devices; telephony management software, mobile telephone, smartphone and tablet software; telephone-based information retrieval software and hardware; software for the redirection of messages; computer application software for mobile phones, smart phones and tablet devices featuring mobile phone functionality; computer application software and embedded computer application software for mobile phones, smart phones and tablet devices namely, software that enables photos and videos from cameras found on mobile phones, smart phones and tablet devices to be shared in social media for social networking purposes; computer programs for accessing, browsing and searching online databases; computer hardware and software for providing integrated telephone communication with computerized global information networks; parts and accessories for handheld and mobile digital electronic devices; parts and accessories for mobile telephones, smartphones and tablets in the nature of covers, cases, cases made of leather or imitations of leather, covers made of cloth or textile materials, batteries, rechargeable batteries, chargers, chargers for electric batteries, data cables, power cables, headphones, stereo headphones, inear headphones, stereo speakers, audio speakers, audio speakers for home, headsets for wireless communication apparatus; personal stereo speaker apparatus; microphones; car audio apparatus; apparatus for connecting and charging portable and handheld digital electronic devices; user

manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; parts and fittings for all the aforesaid goods; downloadable software for accessing and managing of computer applications over a global computer network; character recognition software; electronic mail and messaging software; set-top boxes.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 16: Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; fiction and non-fiction books on a variety of topics; series of fiction and non-fiction books; comic books; graphic novels; stories in illustrated form and comic book stories, storyboards, and artwork; periodicals in the field of comic book stories, storyboards, and artwork; paper, cardboard; printed matter and books; bookbinding material; photographs; stationery; stickers and adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; printed matter in the field of computers; printed matter in the field of tablet computers; printed matter in the field of multi-media products, interactive products and online services; printed publications; books; magazines; newsletters; periodicals; brochures; booklets; pamphlets; manuals; journals; leaflets; greeting cards; advertising and promotional material; catalogues; catalogues relating to computer software; computer brochures; computer handbooks; computer hardware publications; computer hardware reference manuals; computer hardware users guide; computer instruction manuals; computer manuals; publications relating to technology, digital technology and gadgets; catalogues relating to musical apparatus and instruments; catalogues relating to telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; music books; music instruction manuals; music magazines; desk accessories, telephone and address books, agendas, diaries, calendars, posters, mounted and unmounted photographs, printed patterns for T-shirts and sweatshirts, display materials, decals and bumper stickers; booklets for sale with audio tapes; parts and fittings for the aforesaid goods.

Class 17: Rubber, gutta-percha, gum, asbestos, mica; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 20: Furniture, mirrors, picture frames; goods of wood, cork, cane, wicker, horn, bone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics namely furniture, mirrors, picture frames, baskets, book rests, bottle racks, chopping blocks, coat hooks, containers for storage, corks for bottles, hampers, high chairs for babies, decorative mobiles, placards, trays, pillows, shower curtain hooks.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paintbrushes); brushmaking materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers.

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; electronic games apparatus for use with television receivers or with video monitors.

Class 35: Advertising; business management; business administration; office functions; computerised data management; administrative processing of purchase orders; updating of advertising material; compiling of cost analyses; direct mail advertising; advertising by mail order; employment agencies; auctioning; auctioneering services; direct mail advertising; business management assistance services; industrial management assistance; commercial management assistance; assistance with purchasing goods and services, for others, assistance with the management of hotels; bookkeeping; searching for data in computer files, for others; shopwindow dressing; demonstration of goods; distribution of samples; invoicing services; television advertising; business assistance for artists and performers; commercial information agency services; business investigations; photocopying; import and export agencies; business inquiries; assistance with the procurement of goods and services, for others; business information services; commercial administration of the licensing of the goods and services of others; compiling statistics; Compilation and systemisation of data into computer databases; copying of documents; layout services for advertising purposes; online advertising on the Internet and other global computer network systems; market analysis; marketing research; typing; modelling for advertising or sales promotion; cost analysis; relocation services for businesses; online advertising on computer networks; opinion polling; organization of exhibitions for commercial or advertising purposes; organisation of trade fairs for commercial or advertising purposes; personnel recruitment; Comparison services (Price -); professional business consultancy services; public relations services; presentation of goods on communication media, for retail purposes; psychological tests in connection with selection of personnel; public relations; publication of publicity texts; radio advertising; efficiency expert services; accounting; publicity agencies; dissemination of advertising matter; advertising management; personnel recruitment consultancy; transcription; document reproduction; audit services; business management consultancy; business organisation consultancy; sales promotion for others; sales promotion (for others); price comparison; secretarial services; publicity texts (writing of -); sorting and editing of information in computer databases; shorthand; research for sponsorship; searching for data in computer databases, for others; arranging newspaper subscriptions (for others); arranging telecommunications subscriptions, for others; word processing; telephone answering for unavailable subscribers; transcription; television advertising; drawing up of statements of account; preparation of payrolls; development of advertising articles; distribution of samples; outdoor advertising; preparation of tax returns; rental of copiers; rental of publicity material; rental of advertising space; renting out of advertising time in communication media; rental of vending machines; business appraisals; economic forecasting; online retail of music-related products, namely musical recordings, musical tapes, musical cassettes, musical composition software, laser discs, musical automata (coin operated) (jukes boxes), musical CDs, musical DVDs, musical digital optical storage discs, musical 3D discs, musical audio recordings, musical audiovisual recordings, musical video recordings, musical dual discs, musical minidisks, musical SACDs, vinyl records, MP3 downloads, digital music recordings, digital audiovisual recording; advertising services, namely the dissemination of advertising matter for others via an online electronic communications network; retail advertising services, namely the dissemination of advertising matter for others via an online electronic communications network; providing a searchable on-line commercial database featuring screenplays, music, movies, television shows, multimedia presentations, computer software, audio files, comic books, and publications; market research and information services; compiling of information into computer databases; market research and business marketing information services, namely, facilitating person-to-person, person-tobusiness, business-to-person, and business-tobusiness sharing of relevant information about entertainment and the entertainment industry; computerised online retail services, automated and computerized trading services, automated and computerized trading of goods for others provided over a global communication information network, on-line trading services, on-line retail and wholesale distributorship services, retail store services, mail order sales, retail sale services provided by means of a global computer network, retail online services, retail convenience stores, retail on-line convenience stores, retail department stores, online retail department stores, all in relation to paints, varnishes, lacquers, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring preparations, pharmaceutical and sanitary preparations, disinfectants, fungicides, herbicides, hand tool and implements, cutlery, razors, computers, DVDs and other blank digital recording media, pre-recorded DVDs and other digital prerecorded media, computer software, fireworks, jewellery, horological and chronometric instruments, musical instruments, books, printed matter, stationery, photographs, adhesives for stationery or household purposes, paint brushes, packaging materials, leather and imitations of leather and goods made of these materials, namely animal skins, hides, trunks, travelling bags, umbrellas and parasols, walking sticks, furniture, mirrors, picture frames, household and kitchen utensils and containers, combs and sponges, brushes, articles for cleaning purposes, glassware, porcelain and earthenware, pots and pans for use in the kitchen, yarns and threads, textiles and textile goods, bed covers, table covers, clothing, footwear, headgear, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, carpet, rugs, mats and matting, linoleum, wall hangings, games and playthings, decorations for Christmas trees, candles, lights, bulbs, matches; computerised online ordering of services for others of general goods and general consumer goods; retail store services featuring electronic games, computer games, video games, electronic game software, computer game software, and video game software; Online retail store services featuring streamed and downloadable pre-recorded electronic games; computerized processing of on-line purchase orders; compilation of business information into a searchable databases available via a global computer network; compilation of advertising information featuring the goods and services of other on-line vendors, into an on-line advertising guide; providing an on-line commercial information directory; computerized database management services; on-line ordering services; customer loyalty program services featuring rewards in the form of discounted shipping services; retail services, namely, administration of a discount program for enabling participants to obtain discounts on shipping services through use of a discount membership program and variable rate shipping program; Business intermediary services for the sale and purchase of goods and services; Auction services; Classified advertising services; Computerized on-line ordering of services featuring general merchandise and general consumer goods; Providing an on-line commercial information directory; database services to enable others to conveniently view and select services from a website; Compilation of computer databases for transmitting, displaying and storing transaction, identification and financial information; Information services, namely, providing information about retail products to customers, featuring the availability of specific products of interest to them; Online business information services, namely analyzing an individual's preferences and providing product reviews and recommendations; computerized processing of on-line purchase orders; providing an on-line commercial information directory; Advertising services, namely, dissemination of advertising for others via an on-line electronic communications network and providing an on-line commercial information directory for electronic game enthusiasts; department stores, online retail department stores and computerised online ordering services featuring scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs, high density optical discs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, computers, computer software, software, portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks, tablet computers, electronic book readers, audio and video players, electronic personal organizers, personal digital assistants, and global positioning system devices, computer peripheral devices, monitors, displays, wires, cables, modems, printers, disk drives, adapters, adapter cards, cable connectors, plug-in connectors, electrical power connectors, docking stations, and drivers, battery chargers, battery packs, memory cards and memory card readers, speakers, microphones, and headsets, cases, covers, and stands for computers, cases, covers, and stands for portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, sound, audio, video and data, including via global computer networks, tablet computers, electronic book readers, audio and video players, electronic personal organizers, personal digital assistants, and global positioning system devices and devices for the display of electronically published materials, namely, books, journals, newspapers, magazines, multimedia presentations, remote controls for portable and handheld electronic devices and computers, power adapters, USB cables, electronic docking stations, battery chargers, electrical connectors, wires, cables, and adaptors, wireless remote controls for portable electronic devices, headphones and earphones, data synchronization programs, and application development tool programs for personal and handheld computers, computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications, downloadable pre-recorded audio and audiovisual content, information, and commentary, downloadable electronic books, magazines, periodicals, newsletters, newspapers, journals, and other publications, downloadable electronic publications in the nature of fiction, nonfiction, comics and screenplays via computer and communications networks, downloadable films and movies featuring fiction and non-fiction stories provided via computer and communications networks, downloadable templates for designing books, short stories, storyboards, screenplays, comics, audio and video files, computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, downloadable audiobooks and digital audio files, software in the field of text, image and sound transmission and display, database management software, character recognition software, voice recognition software, electronic mail and messaging software, computer software for accessing, browsing and searching online databases and electronic bulletin boards, data synchronization software, application development software, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, common metals and their alloys, goods of common metal, namely metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, ores, hand tools and implements (hand-operated), cutlery, side arms, razors, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopedic articles, suture materials, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, apparatus for locomotion by land, air or water, precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, musical instruments, fiction and non-fiction books on a variety of topics, series of fiction and non-fiction books, comic books, graphic novels, stories in illustrated form and comic book stories, storyboards, and artwork, periodicals in the field of comic book stories, storyboards, and artwork, paper, cardboard, printed matter and books, bookbinding material, photographs, stationery, stickers and adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites, instructional and teaching material, plastic materials for packaging, printers' type, printing blocks, printed matter in the field of computers, printed matter in the field of tablet computers, printed matter in the field of multi-media products, interactive products and online services, printed publications, books, magazines, newsletters, periodicals, brochures, booklets, pamphlets, manuals, journals, leaflets, greeting cards, advertising and promotional material, catalogues, catalogues relating to computer software, computer brochures, computer handbooks, computer hardware publications, computer hardware reference manuals, computer hardware users guide, computer instruction manuals, computer manuals, publications relating to technology, digital technology and gadgets, catalogues relating to musical apparatus and instruments, catalogues relating to telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data, music books, music instruction manuals, music magazines, desk accessories, telephone and address books, agendas, diaries, calendars, posters, mounted and unmounted photographs, printed patterns for T-shirts and sweatshirts, display materials, decals and bumper stickers, booklets for sale with audio tapes, parts and fittings for the aforesaid goods, leather and imitations of leather, and goods made of these materials, namely animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, furniture, mirrors, picture frames, goods of wood, cork, cane, wicker, horn, bone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely furniture, mirrors, picture frames, baskets, book rests, bottle racks, chopping blocks, coat hooks, containers for storage, cork for bottles, hampers, high chairs for babies, decorative mobiles, placards, trays, pillows, shower curtain hooks, household or kitchen utensils and containers, combs and sponges, brushes, brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass, glassware, porcelain and earthenware, textiles and textile goods, bed and table covers, clothing, footwear, headgear, games and playthings, gymnastic and sporting article, decorations for Christmas trees, meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, agricultural, horticultural and forestry products and grains, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages and alcoholic beverages, telephones, mobile phones, videophones, cameras, monitors for television receiver, television receivers [TV sets] and television transmitters, remote controllers for television receiver [TV set], electronic notepads, magnetic data carriers, radio receivers, radio transmitters, video cameras, computer hardware and software, computer software and firmware, namely, operating system programs, data synchronization programs, in the nature of application development tool programs for personal and handheld computers and mobile digital electronic devices, telephony management software, mobile telephone, smartphone and tablet software, telephone-based information retrieval software and hardware, software for the redirection of messages, computer application software for mobile phones, smart phones and tablet devices featuring mobile phone functionality, computer application software and embedded computer application software for mobile phones, smart phones and tablet devices namely, software that enables photos and videos from cameras found on mobile phones, smart phones and tablet devices to be shared in social media for social networking purposes, computer programs for accessing, browsing and searching online databases, computer hardware and software for providing integrated telephone communication with computerized global information networks, parts and accessories for handheld and mobile digital electronic devices, parts and accessories for mobile telephones, smartphones and tablets in the nature of covers, cases, cases made of leather or imitations of leather, covers made of cloth or textile materials, batteries, rechargeable batteries, chargers, chargers for electric batteries, data cables, power cables, headphones, stereo headphones, in-ear headphones, stereo speakers, audio speakers, audio speakers for home, headsets for wireless communication apparatus, personal stereo speaker apparatus, microphones, car audio apparatus, apparatus for connecting and charging portable and handheld digital electronic devices, user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods, parts and fittings for all the aforesaid goods, downloadable software for accessing and managing of computer applications over a global computer network, character recognition software, electronic mail and messaging software, set-top boxes; providing consumer product information via the Internet or other communications networks; computerized online ordering services featuring bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, common metals and their alloys, goods of common metal, namely metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, ores, hand tools and implements (hand-operated), cutlery, side arms, razors, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, CDs, DVDs and high density optical discs, laptop computers, tablet computers, handheld electronic devices, personal digital assistants, digital music players, mobile telephone, smartphones, digital cameras and digital video cameras, ebook readers, wireless communications devices, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopedic articles, suture materials, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, apparatus for locomotion by land, air or water, precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, musical instruments, fiction and non-fiction books on a variety of topics, series of fiction and non-fiction books, comic books, graphic novels, stories in illustrated form and comic book stories, storyboards, and artwork, periodicals in the field of comic book stories, storyboards, and artwork, paper, cardboard, printed matter and books, bookbinding material, photographs, stationery, stickers and adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites, instructional and teaching material, plastic materials for packaging, printers' type, printing blocks, printed matter in the field of computers, printed matter in the field of tablet computers, printed matter in the field of multi-media products, interactive products and online services, printed publications, books, magazines, newsletters, periodicals, brochures, booklets, pamphlets, manuals, journals, leaflets, greeting cards, advertising and promotional material, catalogues, catalogues relating to computer software, computer brochures, computer handbooks, computer hardware publications, computer hardware reference manuals, computer hardware users guides, computer instruction manuals, computer manuals, publications relating to technology, digital technology and gadgets, catalogues relating to musical apparatus and instruments, catalogues relating to telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data, music books, music instruction manuals, music magazines, desk accessories, telephone and address books, agendas, diaries, calendars, posters, mounted and unmounted photographs, printed patterns for T-shirts and sweatshirts, display materials, decals and bumper stickers, booklets for sale with audio tapes, parts and fittings for the aforesaid goods, leather and imitations of leather, and goods made of these materials, namely animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, furniture, mirrors, picture frames, goods of wood, cork, cane, wicker, horn, bone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely furniture, mirrors, picture frames, baskets, book rests, bottle racks, chopping blocks, coat hooks, containers for storage, cork for bottles, hampers, high chairs for babies, decorative mobiles, placards, trays, pillows, shower curtain hooks, household or kitchen utensils and containers, combs and sponges, brushes, brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass, glassware, porcelain and earthenware, textiles and textile goods, bed and table covers, clothing, footwear, headgear, games and playthings, gymnastic and sporting article, decorations for Christmas trees, meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, agricultural, horticultural and forestry products and grains, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages and alcoholic beverages; providing a searchable database in the field of business information available via a global computer network; providing a searchable on-line advertising guide featuring the goods and services of other on-line vendors; dissemination of advertising for others via an on-line electronic communications network; product merchandising; promoting the goods and services of others through limited availability discount offers via an on-line electronic communications network; the collection of a selection service providers within the field of telecommunications, financial services (consumer credit), travel and accommodation, computer consultancy/e-commerce services, website hosting, sales and auction services relating to a wide range of consumer goods, and product maintenance/extended guarantee services, to enable others to conveniently view and select these services from a website; the collection of a selection service providers within the field of telecommunications, financial services (consumer credit), travel and accommodation, computer consultancy/e-commerce services, website hosting, sales and auction services relating to a wide range of consumer goods, and product maintenance/extended guarantee services, to enable others to conveniently view and select these services from a website; subscriptions to books, reviews, or comic books; advertising services, namely, promoting the goods and services of others; providing a searchable database in the field of business information available via a global computer network; providing a searchable on-line advertising guide featuring the goods and services of others; database management services; computerized on-line searching and ordering service featuring movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, and other audiovisual works in the form of videocassettes, compact disks, DVDs, high density optical discs, digital downloads and direct digital transmission apparatus.

Class 38: Telecommunications; telecommunications services, namely, electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; providing on-line electronic bulletin boards for the transmission of messages among computer users in the field of consumer product information; web casting services; delivery of messages by electronic transmission; telecommunication services, namely, electronic transmission of streamed and downloadable audio and video and multimedia content files via computer and other communications networks; audio broadcasting of spoken word, music, concerts and radio programs; wireless broadband communications services; text and numeric digital wireless messaging services; communication via wireless electronic book reader; providing access to an interactive database for transmission of messages among computer users and subscribers concerning music, books, movies, motion pictures, television programs, games, toys, sporting goods, electronics, multimedia presentations, videos and DVDs, and other household and consumer goods, product reviews and purchase information on the internet; electronic transmission of information and data; audio broadcasting and transmission of educational and entertainment digital media; communication services for transmitting, caching, accessing, receiving, downloading, streaming, broadcasting, sharing, displaying, formatting, mirroring and transferring text, images, audio, video and data via telecommunications networks, wireless communications networks, and the internet; providing an internet forum, online chat rooms and online communities for the transmission of messages among computer users; providing access to online directories, databases, current events websites and blogs, and on-line reference materials; providing access to auxiliary devices or electronic devices in the nature of providing telecommunication connectivity services for the transfer of images, messages, audio, visual, audiovisual and multimedia works among e-readers, mobile phones, smartphones, portable electronic devices, portable digital devices, tablets or computers; streaming of audio, visual and audiovisual material via the Internet or other computer or communications network; providing online chat rooms, internet forums and online communities for the transmission of photos, videos, text, data, images and other electronic works; transmission of podcasts; transmission of webcasts; providing an online network that enables users to access and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works; providing on-line network services that enable users to share content, photos, videos, text, data, images and other electronic works relating to entertainment, including, movies, television, audiovisual works, music, audio works, books, theatre, literary works, sporting events, recreational activities, leisure activities, tournaments, art, dance, musicals, exhibitions, sports instruction, clubs, radio, comedy, contests, visual works, games, gaming, festivals, museums, parks, cultural events, concerts, publishing, animation, current events, fashion, multimedia presentations, history, language, liberal arts, math, business, science, technology, hobbies, culture, sports, arts, psychology, and philosophy; providing a web site that gives computer users the ability to transmit, cache, receive, download, stream, broadcast, display, format, transfer and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works; providing a web site that gives computer users the ability to transmit, cache, receive, download, stream, broadcast, display, format, transfer and share photos, videos, text, data, images and other electronic works; providing on-line portals for entertainment in the field of movies, television, audiovisual works, music, audio works, books, theatre, literary works, sporting events, recreational activities, leisure activities, tournaments, art, dance, musicals, exhibitions, sports instruction, clubs, radio, comedy, contests, visual works, games, gaming, festivals, museums, parks, cultural events, concerts, publishing, animation, current events, fashion shows, and multimedia presentations; telecommunications services, namely, providing online electronic bulletin boards for the transmission of messages among computer users concerning entertainment; providing interactive chat rooms for transmission of messages among computer users and subscribers concerning a wide variety of topics; electronic transmission of entertainment reviews and information through computer and communications networks; providing electronic communication of blogs Providing online chat rooms and electronic bulletin boards; Providing online forums for communication in the field of electronic games; Providing video on-demand transmission of computer games; providing users with telecommunication access time to electronic communications networks with means of identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and computer users; providing directories for telephone numbers, business addresses, electronic mail addresses, network home page addresses, addresses and telephone number of people, places, and organizations; providing an online interactive electronic bulletin board in the field of comic book publishing, entertainment and the entertainment industry; information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; transmission of data and of information by electronic means in the nature of computer, cable, radio, teleprinter, teleletter, telephone, mobile phone, electronic mail, microwave, laser beam, communications satellite or electronic communication means; electronic transmission of voice, data and images through a global communications network.

The contested goods are the following: 

Class 3: Essential oils and aromatic extracts; Cleaning and fragrancing preparations; Animal grooming preparations; Perfumes; Cosmetics.

Class 8: Hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance; Edged and blunt weapons; Cutlery, and food preparation implements being kitchen knives, cutting and grinding implements; Lifting tools; Hand-operated hygienic and beauty implements for humans and animals; Emergency and rescue hand tools; Manicure and pedicure tools; Hair styling appliances; Hair cutting and removal implements; Body art tools.

Class 9: Apparatus, instruments and cables for electricity; Recorded content; Navigation, guidance, tracking, targeting and map making devices; Safety, security, protection and signalling devices; Diving equipment; Scientific and laboratory devices for treatment using electricity; Optical devices, enhancers and correctors; Measuring, detecting and monitoring instruments, indicators and controllers; Magnets, magnetizers and demagnetizers; Scientific research and laboratory apparatus, educational apparatus and simulators; Information technology and audio-visual, multimedia and photographic devices.

Class 11: Regulating and safety accessories for water and gas installations; Cooking, heating, cooling and preservation equipment, for food and beverages; Fireplaces; Burners, boilers and heaters; Refrigerating and freezing equipment; Heating, ventilating, and air conditioning and purification equipment (ambient); Sun tanning appliances; Nuclear installations; Drying installations; Lighting and lighting reflectors; Igniters; Flues and installations for conveying exhaust gases; Sanitary installations, water supply and sanitation equipment; Personal heating and drying implements; Industrial treatment installations; Filters for industrial and household use; Lighting apparatus and installations.

Class 16: Gums [adhesives] for stationery or household purposes; Paper and cardboard; Stationery and educational supplies; Decoration and art materials and media; Filtering materials of paper; Works of art and figurines of paper and cardboard, and architects' models; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Printed matter.

Class 18: Saddlery, whips and apparel for animals; Walking staffs; Umbrellas and parasols; Luggage, bags, wallets and other carriers.

Class 20: Animal housing and beds; Containers, and closures and holders therefor, non-metallic; Furniture and furnishings; Ladders and movable steps, non-metallic; Displays, stands and signage, non-metallic; Statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; Clothes hangers, clothes stands [furniture] and clothes hooks; Frames; Beds, bedding, mattresses, pillows and cushions; Mirrors (silvered glass); Indoor blinds, and fittings for curtains and indoor blinds.

Class 21: Articles for the care of clothing and footwear; Statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; Household utensils for cleaning, brushes and brush-making materials; Cosmetic and toilet utensils; Tableware, cookware and containers; Unworked and semi-worked glass, not specified for use; Flower syringes; Pot plant support sticks; Holders for flowers; Flower bowls; Watering cans; Sprinklers; Window-boxes; Lawn sprinklers; Vases; Flower pots; Flower pot holders; Bowls for plants; Lawn brushes; Holders for flowers and plants [flower arranging]; Watering devices; Air fragrancing apparatus; Glasses, drinking vessels and barware; Coin banks (Piggy banks); Cruets; Cake trays; Coffee stirrers.

Class 24: Textile goods, and substitutes for textile goods; Filters made of textile materials; Textiles; Linens; Coverings for furniture; Labels of textile; Wall hangings; Textiles made of linen; Textiles made of synthetic materials; Non-woven textile articles; Woven fabrics.

Class 25: Clothing; Footwear; Headgear.

Class 28: Sporting articles and equipment; Fairground and playground apparatus; Festive decorations and artificial Christmas trees; Toys, games, playthings and novelties; Hunting and fishing equipment; Swimming equipment; Golf training aids; Video game apparatus; Doll accessories; Toy traffic control apparatus; Stuffed toy animals; Swings [playthings]; Toy household apparatus; Toy weapons; Dolls; Toys.

Some of the contested goods are identical to goods on which the application is based. For reasons of procedural economy, the Cancellation Division will not undertake a full comparison of the goods listed above. The examination of the application will proceed as if all the contested goods were identical to those of the earlier mark. 

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 assumed to be to be identical are directed at the public at large (e.g. perfumes, cosmetics) or at business customers with specific professional knowledge or expertise (e.g. nuclear installations, industrial treatment installations). The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of a stylised representation of an orange arrow curving downwards and then pointing back upwards on the right hand side. However, it cannot be excluded that a part of the public will perceive the earlier sign as a smile device as claimed by the applicant. In both cases, this device, in relation to the goods and services at issue, is distinctive.

The contested sign is a figurative mark consisting of the verbal element ‘GODDLY’ in bold navy-blue upper-case letters against a light green shaded background. The letter ‘O’ represents a stylised depiction of a trolley full of items and contains an orange arrow curving downwards and then pointing back upwards on the right hand side. At the bottom right of this element there is the expression 'THE BEST FOR ALL' depicted in small light grey upper case letters.

The verbal element ‘GODDLY’, although misspelled, is meaningful in certain parts of the relevant territory, namely in those countries where English is understood. It will be understood as referring to the word ‘GODLY’ which means ‘Of or relating to God; coming from God; divine; spiritual’ (information extracted from Oxford English Dictionary on 23/11/2020 at https://oed.com/search?searchType=dictionary&q=godly&_searchBtn=Search). It cannot be excluded that a part of the public understands it, inter alia, as a laudatory adjective (meaning very pleasing or delightful) that expresses the characteristics or qualities of a product. To this extent, the ability of this word to indicate the commercial origin of the relevant goods must be deemed as below average for this part of the public. This term is meaningless for the rest of the public and thus distinctive to an average degree.

Most of the relevant public will attribute a meaning to the English expression ‘THE BEST FOR ALL’ of the contested mark since it is made of very basic English words commonly understood. This expression conveys a positive connotation, as it may be perceived as an allusion to the quality of the relevant goods and cannot serve as identifier of commercial origin. Therefore, when understood, this expression, in relation to the relevant goods, is considered to be non-distinctive. In any case, whether it is understood or not, due to its significantly smaller size and light grey colour, which is not particularly striking, the expression will hardly be noticed by the relevant consumers and for this reason will play a limited role in the overall perception of the sign.

The contested sign includes, in place of the letter ‘O’, a stylized representation of a shopping trolley. Shopping trolley symbols are commonly used in online shops to indicate, (like in a presential shop) that the goods have been placed in your (virtual) shopping cart and it will bring them to the checkout to be paid for. Bearing in mind the relevant goods, this figurative element is weak as it refers to the means used when buying goods, in particular, when purchasing them online. However, as seen above the stylised representation of an orange arrow is distinctive for the relevant goods. Finally, the light green shaded background of the contested sign is of a purely decorative nature.

The contested sign contains figurative and verbal elements. 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).

The element ‘GODDLY’, including the shopping trolley depicted in its letter ‘O’ is the dominant element in the contested sign as it is the most eye-catching.

Visually, the marks are similar to the extent that they both include an orange arrow curving downwards and then pointing back upwards / a smile device. However, this device plays a secondary role in the contested mark because it is depicted in a much smaller size. The signs differ in the word elements of the contested sign, and in all of the other figurative elements and colours which have no counterpart in the earlier mark. Taking into account the degree of distinctiveness of the verbal elements in the contested sign and their impact on the consumers and the considerable differences in the depictions of the signs which create quite a distinct overall impression, the signs are visually similar to a low degree.

Aurally, since purely figurative signs are not subject to a phonetic assessment and as the earlier mark is purely figurative, it is not possible to compare the signs aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with a similar meaning due to the coinciding figurative device that conveys the concept of an arrow/ a smile. However, as seen above, the arrow/smile plays a secondary role in the contested sign. The contested sign differs in its additional concepts conveyed by the element ‘GODDLY’ for the English part of the public, and by the elements ‘THE BEST FOR ALL’ and the picture of a shopping trolley for most of the public. Therefore, taking into account the distinctiveness and the dominance of the elements of the signs, and the fact that figurative elements have less impact than verbal elements, the signs are considered conceptually similar to a low degree.

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 enhanced distinctiveness but did not file any evidence to prove this claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the depiction of an arrow/smile constituting the earlier trade mark has no meaning for any of the goods and services in question 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 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

All the contested goods have been assumed to be identical to the applicant’s goods and services. They target both the public at large and business customers with specific professional knowledge or expertise, who display an average to high degree of attentiveness. The distinctiveness of the earlier mark is normal.

The signs are visually and conceptually similar to a low degree. They are not subject to a phonetic assessment. However, examined as a whole the signs show significant differences. The signs at issue are similar only insofar as they both contain the graphic representation of an orange arrow/smile which is secondary in the contested sign. They differ in all other aspects, namely the additional verbal and figurative elements in the contested sign as seen in detail above.

It will not remain unnoticed by the relevant public that the earlier mark is purely figurative, while the contested sign contains the additional verbal element ‘GODDLY’, despite its below average distinctive character for a part of the public, it is the dominant element of the contested sign and the public will most likely refer to this sign. Also, the degree of conceptual similarity between the marks is mitigated by the additional verbal and figurative elements of the contested sign.

Therefore, the differences between the representation of the signs suffice for consumers to safely distinguish between the signs in the market and to exclude a likelihood of confusion. This is all the more true for consumers displaying a higher degree of attention.

There is also no reason to conclude that consumers would, even if they did not confuse the marks directly, assume that the goods bearing the marks in question originate from the same undertakings, even in the case of identical goods. The differences in the depictions of the signs and the secondary role of the arrow/smile device in the contested sign outweigh their similarities and the additional verbal element ‘GODDLY’ in the contested sign plays an important role and differentiates it from the earlier mark. Therefore, consumers have no reason to assume that the marks are variants of each other designating different lines of goods.

For the sake of completeness it should be noted that the Court of Justice has held that a conceptual similarity between signs with analogous semantic content may give rise to a likelihood of confusion where the earlier mark is particularly distinctive (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24 and 25). In the present case, the applicant did not demonstrate that the earlier trade mark’s distinctiveness is enhanced.

According to the principle of interdependence, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Cancellation Division took this principle into account when assessing the likelihood of confusion. However, in this case, the fact that the goods were assumed to be identical cannot compensate for the differences between the signs.

Conclusion

Considering all the above, even assuming that the goods are identical, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the cancellation application must be rejected insofar it is based on Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

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

 

The applicant claimed that the earlier EUTM registration (EU) No 13 606 331 has a reputation in the European Union in relation to part of the goods and services (see the list of goods and services on which the application is based, indicated above under paragraph a).

 

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

 

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it. However, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

 

Therefore, the Office cannot take any alleged rights into account for which the applicant does not submit appropriate evidence.

 

The applicant did not file any evidence to support its claim of reputation of the earlier mark.

 

As seen above, for the invalidity 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, at the time of filing of the contested mark, the earlier trade mark had a reputation, one of the necessary conditions contained in Article 8(5) EUTMR has not been fulfilled, and the application must be rejected also insofar as it was based on this ground.

Consequently, the opposition is rejected in its entirety.

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, it 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

 

Nicole CLARKE

Richard BIANCHI

Julie, Marie-Charlotte HAMEL

 

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.