CANCELLATION No C 46 969 (INVALIDITY) 

 

Spectrum Cannabis Canada Ltd., 1 Hershey Drive, K7A 0A8 Smiths Falls, Canada (applicant), represented by Plougmann Vingtoft A/s, Strandvejen 70, 2900 Hellerup, Denmark (professional representative)

 

a g a i n s t

 

Spectrum TBC LLC, Ulitsa Pugacheva 5-7, 195027 St. Petersburg, Russian Federation (EUTM proprietor), represented by Gernot T.M. Hennig, Fischhausstr. 15 b, 01099 Dresden, Germany (professional representative).

On 15/06/2021, the Cancellation Division takes the following

 

 

 

 DECISION

 

 

1.	The application for a declaration of invalidity is upheld.
2.	European Union trade mark No 18 153 110 is declared invalid in its entirety.
3.	The EUTM proprietor bears the costs, fixed at EUR 1 080.

 

REASONS

 

On 29/10/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 18 153 110 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely against all the goods and services in Classes 34 and 35. The application is based on, inter alia, EUTM registration No 18 028 880 SPECTRUM THERAPEUTICS. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

Apart from ticking the box in the invalidity form to indicate that it relied on the ground of likelihood of confusion, the applicant did not submit other arguments to support its claims.

 

The EUTM proprietor replied on 01/03/2021 (after the deadline set by the Office for it to submit observations, 18/01/2021). It requested the Office to ‘postpone the decision’ for at least one month, for negotiation purposes, and considered the goods under the marks in conflict to be different. The request was forwarded for information purpose to the applicant and the adversarial stage was closed.

PRELIMINARY REMARK

The proprietor’s request to postpone the decision for at least one month could be interpreted as a request for suspension of the proceedings due to ongoing negotiation. However, firstly, such a request for suspension based on ongoing negotiations must be jointly requested by both parties and in this case it was requested only by the proprietor and, secondly, the request was made after the deadline set by the Office to submit observations as detailed above. Therefore, such a request was rejected 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. 

 

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 EUTM registration No 18 028 880.

 

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 on which the application is based are, amongst others, the following: 

 

EUTM registration No 18 028 880

Class 34: Dried cannabis; fresh cannabis; cannabis extracts; cannabis concentrates; cannabis for smoking purposes; cannabis derivatives; terpenes, terpenoids, cannabidiol and cannabinoids in the following presentations: concentrates, hashes, resins, shatter, oils; hemp, hemp extracts and hemp derivatives for smoking and ingestion.

 

The contested goods are the following: 

 

Class 34: Tobacco; Leaf tobacco; Tobacco products; Tobacco substitutes; Tobacco and tobacco substitutes; Tobacco and tobacco products (including substitutes); Raw tobacco; Flavored tobacco; Manufactured tobacco; Tobacco products for the purpose of being heated; Flavourings, other than essential oils, for tobacco; Hookah tobacco; Hookahs; Steam stones for hookahs; Substances for inhalation using water pipes, in particular aromatic substances; Inhalable aerosols and carrier substances therefor, for use in water pipes.

Class 35: Retail services in relation to tobacco; Wholesale services in relation to tobacco; Retail services in relation to articles for use with tobacco; Wholesale services in relation to articles for use with tobacco.

The contested goods in Class 34

The contested tobacco; leaf tobacco; tobacco products; tobacco substitutes; tobacco and tobacco substitutes; tobacco and tobacco products (including substitutes); raw tobacco; flavored tobacco; manufactured tobacco; tobacco products for the purpose of being heated; hookah tobacco are similar to the applicant’s hemp, hemp extracts and hemp derivatives for smoking as they have the same purpose of smoking, they can coincide in relevant public, distribution channels and method of use. Furthermore, they can be in competition.

The contested goods flavourings, other than essential oils, for tobacco; substances for inhalation using water pipes, in particular aromatic substances; inhalable aerosols and carrier substances therefor, for use in water pipes overlap with (thus they are identical to) the following earlier goods: cannabis concentrates; cannabis for smoking purposes; hemp, hemp extracts and hemp derivatives for smoking.

Hookahs; steam stones for hookahs are similar to the applicant’s cannabis extracts; cannabis concentrates; hemp extracts and hemp derivatives for smoking. Such goods have a certain degree of complementarity. The applicant’s goods could be inhaled in hookahs. The steam stones for hookahs could be ‘marinated’ in some of the applicant’s substances. The goods can target the same public and are available through the same sales outlets, in particular hookah or tobacco stores.

The contested services in Class 35

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

 

The contested retail services in relation to tobacco and articles for use with tobacco on one hand and the applicant’s hemp, hemp extracts and hemp derivatives for smoking are closely connected from the consumers’ perspective, e.g. they belong to the same market sector, they are commonly sold in the same specialised shops. Therefore, the contested services are similar to a low degree to the applicant’s hemp, hemp extracts and hemp derivatives for smoking.

 

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, wholesale services in relation to tobacco and articles for use with tobacco in Class 35.

Consequently, all the contested services are considered similar to a low degree with the applicant’s goods hemp, hemp extracts and hemp derivatives for smoking.

 

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question. 

 

In the present case, the goods and services found to be identical or similar (to various degrees) are directed at the public at large or at business customers with specific professional knowledge or expertise.

 

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. 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.). The same can apply to the earlier relevant goods in Class 34.

Furthermore, the contested services involve the retail and wholesale of goods connected to smoking/vaping/inhaling. The above reasoning concerning the relevant goods in Class 34 is considered to extend, by analogy, to all the relevant services which are related to smoking/vaping/inhaling.

c) The signs

 

SPECTRUM THERAPEUTICS
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.  

As regards the second term of the earlier mark, ‘THERAPEUTICS’, it is the plural form of ‘THERAPEUTIC’ which is meaningful in English¹ as an adjective ‘relating to the healing of disease (administered or applied for reasons of health or having a good effect on the body or mind; contributing to a sense of well-being)’ or, as a noun, (1) the branch of medicine concerned with the treatment of disease and the action of remedial agents or (2) ‘a treatment, therapy, or drug’. Similar words exist in Romanian (‘terapeutic’), French (‘thérapeutique’), Portuguese (‘terapêutico’), Italian (’terapeutico’), Spanish (terapéutico), Danish and Swedish (terapeutisk), German (‘Therapeutische’) etc. with the same meaning as in English. The word is non-distinctive in relation to the earlier goods found similar or lowly similar to the contested goods and services since such goods as cannabis concentrates; cannabis for smoking purposes; cannabis extracts; hemp, hemp extracts and hemp derivatives for smoking could be used for therapeutic purposes.

  

In the same vein, the second word of the contested sign, ‘TOBACCO’, is a term that exists as such in English meaning a preparation of the nicotine-rich leaves of an American plant, which are cured by a process of drying and fermentation for smoking or chewing or the plant of the nightshade family which yields tobacco, native to tropical America. It is widely cultivated in warm regions, especially in the US and China. Similar words exists in Italian (‘tabacco’), Portuguese and Spanish (‘tabaco’), French and Romanian (‘tabac’), German and Slovak (‘Tabak’), Swedish and Slovenian (‘tobak’). This word is also non-distinctive or at most weak in relation to the goods and services at issue which relate to such goods.

The common term ‘SPECTRUM’ is an English word meaning, among others, the distribution of colours produced when white light is dispersed by a prism or diffraction grating; any range or scale, as of capabilities, emotions, or moods. Indeed, since close variations thereof exist in other languages of the European territory (‘espectro’ in Spanish and Portuguese, ‘spectre’ in French, ‘spettro’ in Italian, ‘spektrum’ in German, Czech, Danish and Swedish, ‘spektri’ in Finnish and ‘spectru’ in Romanian), it is reasonable to assume that the majority of the consumers in those countries will perceive the meaning of the word ‘SPECTRUM’ as equivalent to their words in their respective languages. It is true that the element ‘SPECTRUM’ might be used in the health field to explain the effects of medicines. In relation to the relevant goods and services it may convey a subtle message that the range of products and services allow customers to relate them with tobacco and cannabis and hemp products. However, such message is non-specific and unclearly linkable to the relevant goods and services, at most being merely allusive. Its degree of distinctiveness is, therefore, average.

As regards the figurative element of the contested sign, the leaf like rainbow-coloured device, it merely reinforces the meaning of SPECTRUM so its distinctiveness is of an average degree as well, whereas the black background has no trade mark value. Additionally, 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).

  

Taking into account the above meanings in certain common territories, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English, French, Portuguese, Italian, Spanish, Swedish and German-speaking part of the relevant public.

The earlier mark, being a verbal mark, has no element that could be considered more dominant (visually eye-catching) than other elements. 

 

The element ‘SPECTRUM’, together with the leaf like rainbow-coloured device, in the contested sign can be considered as its dominant elements, being the most eye-catching, whereas ‘Tobacco’ is written in a secondary position and in smaller script. 

 

Visually, the signs coincide in ‘SPECTRUM’ and differ in the other verbal elements of both marks ‘THERAPEUTICS’ and ‘TOBACCO’ as well as in the figurative elements of the contested sign.

The first words of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Taking into account that the additional words are non-distinctive or at most weak in connection to the relevant goods and services and the fact that in both marks ‘SPECTRUM’ is the most distinctive word and taking also into account the fact that the contested sign’s device is reinforcing the meaning of ‘SPECTRUM’, the marks are considered 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 word ‘SPECTRUM’, present identically in both signs which is also the most distinctive word in both signs. The pronunciation differs in the additional words of both marks ‘THERAPEUTICS’ and ‘TOBACCO’. Taking into account that the common word in both marks is the most distinctive element, the signs are similar at least to an average degree.

 

Conceptually, reference is  made to the meaning and weight of the words and of the device specified above. As the signs will be associated with a similar meaning, the signs are conceptually similar at least to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

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 specific meaning for the goods and services from the perspective of the public in the relevant territory, being, as specified above merely allusive. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion 

 

The goods and services are partly identical and partly similar to various degrees. The marks are similar overall and coincide in their most distinctive word element, which is also the first word in both marks on which the public will focus their attention.

 

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 

 

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). In this case the degree of similarity between the marks overtakes the low degree of similarity between the contested services in Class 35 and the earlier goods.

Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54). Therefore, a likelihood of confusion exists even in relation to the relevant goods and services for which a higher degree of attention will be paid.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. This is such a case as the contested sign could be seen as indicating a special line of goods and services related to tobacco or smoking and originating from the applicant.

Considering all the above, the Cancellation Division considers that the similarities outweigh the differences and that there is a likelihood of confusion on the part of the English, French, Portuguese, Italian, Spanish, Swedish and German-speaking part of the relevant public, even when it displays a high degree of attention. 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 EUTM registration No 18 028 880 . It follows that the contested trade mark must be declared invalid for all the contested goods and services, including those similar to a low degree given the relevant similarities between the signs.

 

As the above mentioned earlier mark leads to the success of the application and the cancellation of the contested trade mark for all the goods and services against which the application was directed, there is no need to examine the other earlier rights 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

 

Pierluigi M. VILLANI

Ioana MOISESCU

Nicole CLARKE

 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.