CANCELLATION No C 43 363 (INVALIDITY) 

 

Ooo Hansa, Osenniy Boulevard 23 Office 1307, 121609 Moskva, Russian Federation (applicant), represented by Biuro Ochrony Własności Intelektualnej Patent-Service Paweł Górnicki, ul. Rybojadzka 16, 60-443 Poznań, Poland (professional representative)

 

a g a i n s t

 

Hans Peter Heimbuch, Zum Bierkeller 11, 53567 Asbach, Germany (EUTM proprietor), represented by Jan Heidicker, Beethovenstr. 3, 59174 Kamen, Germany (professional representative).

On 21/01/2021, the Cancellation Division takes the following

 

 

DECISION

 

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

 

2.	European Union trade mark No 18 088 222 is declared invalid for all the contested goods, namely: Class 11: Gas grills; barbecues; electric rotisseries; electric broilers; charcoal grills; charcoal roasters for household purposes; gas fired broilers.

3.

The European Union trade mark remains registered for all the uncontested goods, namely: Class 7: Motor driven tools; power operated tools; hand-held tools, other than hand-operated; lawnmowers [machines]; electric lawnmowers; gasoline lawn mowers; riding lawn mowers; rechargeable hedge cutters; edgers [machines]; line trimmers for garden use; string trimmers [power lawn and garden tools]; mechanical lawn mowers; hedge trimmers [machines]. Class 8: Lawn clippers [hand instruments]; border shears; hedge trimmers [hand-operated tools]; hand tools and implements [hand-operated]. Class 18: Parasols. Class 20: Lawn furniture; garden furniture made of metal; garden furniture manufactured from wood; plastic furniture for gardens; garden furniture made of aluminium; convertible chairs; seats; tables for use in gardens; easy chairs; parasol stands; indoor window blinds [furniture]; cushions (upholstery); cushions. Class 24: Bed blankets; duvet covers; comforters; pillow shams; cushion covering materials; covers for cushions; towels of textile; towelling [textile]; hand towels of textile; hand towels.

 

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

 

REASONS

 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 18 088 222 (figurative mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the goods in Class 11. The application is based on, inter alia, European Union trade mark registration No 8 613 201 . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant merely states that there exists a likelihood of confusion on the part of the public.

The EUTM proprietor submitted arguments in reply within the time limit set by the Office on 18/08/2020. However, since they were not filed in the language of proceedings and no translation into English has been submitted, they will not be taken into account in accordance with Article 146(9) EUTMR as it was communicated to the parties during the proceedings.

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

 

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

 

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s European Union trade mark registration No 8 613 201.

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 11: Gas cookers; microwave ovens; electric cooking ovens; extractor hoods for kitchens; electric ceramic heating plates; refrigerators; freezers; lighters for gas cookers; automatic drip coffee makers; electric deep fryers; air purifying apparatus; bread toasters; refrigerating containers; rotisseries; electric pressure cookers; electric water purifying apparatus and machines; electric air conditioning apparatus; ice producing machines and apparatus; electric laundry dryers.

The contested goods are the following:

Class 11: Gas grills; barbecues; electric rotisseries; electric broilers; charcoal grills; charcoal roasters for household purposes; gas fired broilers.

The contested goods gas grills are included in the broader category of the applicant’s gas cookers, therefore, they are identical. In the same vein, the contested electric rotisseries are included in the broader category of the applicant’s rotisseries and thus they are identical.

The contested barbecues; charcoal grills; charcoal roasters for household purposes are goods used out of doors with a power source that is fueled by gas or charcoal to accomplish the cooking function. These appliances have the purpose of cooking all kinds of foodstuffs. They are similar to the applicant’s gas cookers since they have the same purpose, they are manufactured by the same companies and are addressed at the same relevant public. The same reasoning applies to the contested gas fired broilers, electric broilers they are similar to the applicant’s gas cookers for the same reasons as stated above.

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 and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high depending on the nature, price and sophistication of the goods. 

 

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 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 earlier mark consists of the word ‘Hansa’, written in standard black characters. On the left hand side of this element, an unfinished circle is represented, the upper part in black and the bottom in stripes. The contested mark consists of characters written in grey and orange. Although the fourth character is slightly bigger than the others and it is represented in orange, the majority of the consumers will perceive this character as the letter ‘S’, therefore, the contested mark will be read as ‘hanse’. In this case, none of the marks has any element that could be considered more dominant (visually eye-catching) than other elements. 

A part of the relevant public will perceive the word ‘hanse’ of the contested mark as a medieval guild of merchants or a fee paid by the new members of a medieval trading guild whereas for another part of the public it has no meaning. This term is also another name for the Hanseatic League which is a commercial association of towns in North Germany formed in the mid-14th century to protect and control trade. The element ‘Hansa’ of the earlier mark is a synonym of ‘Hanse’ conveying the same meaning. Be that as it may, since neither ‘Hansa’ nor ‘Hanse’ has any relation to the relevant goods, they are normally distinctive.

As regards the figurative element included in the earlier mark, the applicant, in its observations, states that this element resembles a sunset. However, the Cancellation Division is of the opinion that it is very unlikely that the majority of the relevant consumers will perceive the concept of the sunset on the said figurative element. Therefore, this argument is dismissed as unfounded. This element is a simple geometric form and it will be perceived as a mere decorative element. The colours and the graphical representation of the verbal elements of the marks are also decorative.

Since the verbal elements ‘Hansa/Hanse’ are meaningful in certain territories, for example in those countries where German and English is understood, the Cancellation Division finds it appropriate to focus the comparison of the signs on the German and the English-speaking parts of the relevant public.

  

Visually, the signs coincide in the string of letters ‘HANS*’ however, they differ in their last letters ‘a’ vs ‘e’.

The signs also differ in the figurative form of the earlier mark as well as in the colours and the graphical representation of the elements within both marks which were found to be merely decorative. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the signs are, at least, visually similar to an average degree.

  

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛hans*’, present identically in both signs. The pronunciation differs in the sound of their last letters /a/ vs /e/. Therefore, the signs are aurally highly similar.

   

Conceptually, reference is made as regards the semantic content of the words included within both signs. As the signs will be associated with the same meaning on account of their common distinctive elements ‘Hansa/Hanse’, the signs are conceptually identical.

 

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

 

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 Court has set out the essential principle that 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 and services 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323).

The goods are identical or similar and the earlier mark is normally distinctive.

Taking into account all the above, and especially the fact that the signs share the same string of letters ‘hans*’ which form their distinctive elements ‘Hansa/Hanse’, it is considered that the additional decorative elements and their last letters ‘a’ vs ’e’ cannot counteract the similarities between the signs so as to exclude a likelihood of confusion, even for consumers with a higher degree of attention. The relevant consumers may think that the identical or similar goods come from the same or from economically-related companies.

Considering all the above, there is a likelihood of confusion on the part of the German-and English speaking parts of the public. 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. Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 8 613 201. It follows that the contested trade mark must be declared invalid for all the contested goods.

   

As the earlier mark No 8 613 201 leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier right invoked by the applicant (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Cancellation Division

 

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

Michaela SIMANDLOVA

 

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.