CANCELLATION No 12 300 C (INVALIDITY)

La Nordica S.p.A., Via Summano, 104, 36030 Montecchio Precalcino (VI), Italy (applicant), represented by Barzanò & Zanardo Roma S.P.A., Via del Commercio, 56, 36100 Vicenza, Italy (professional representative)

a g a i n s t

Firma Handlowa EKKOM Sp. z o.o., Mikołaja Kopernika 2C, 43-400 Cieszyn, Poland (EUTM proprietor), represented by Kancelaria Rzecznika Patentowego Andrzej Rygiel, ul. Bohaterów Warszawy 26. Lok. F, 43-300 Bielsko-Biała, Poland (professional representative).

On 11/10/2018, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 9 101 221 is declared invalid for some of the contested goods, namely:

Class 3: Cleaning preparations for fireplaces; cleaning preparations for fireplace insert windows.

Class 11: Enclosed (glass-fronted) room-heaters; stoves; extractors for chimneys; ash pans; barbecue grills and grates for stoves and fireplace inserts; fittings for stoves and fireplace inserts; appliances for stoves and fireplace inserts; chamotte lining for stoves and fireplace inserts; extractor hoods for kitchens.

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

Class 3: Rust removers; cleaning preparations for tiles, natural and artificial stone; shining preparations (polish) for metal surfaces.

Class 4: Firelighters for fireplaces and barbecues; pellets; biomass briquettes; fuel briquettes; lignite; charcoal; wood spills for lighting; firewood.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 9 101 221 (figurative mark). The application is based on European Union trade mark registration No 7 436 553  (figurative mark), European Union trade mark registration No 958 595  (figurative mark), Italian trade mark registration No 1 268 044  (figurative mark) and European Union trade mark registration No 11 001 708 (figurative mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the contested EUTM and the earlier registered trade marks. The contested trade mark is visually, aurally and conceptually very similar to the earlier trade marks of the applicant and it has been registered for identical and similar goods to those claimed by the earlier trade marks. The applicant is an Italian company that has been operating successfully in about 20 countries of the world, for almost 50 years, in the field of heating apparatuses. The earlier sign “NORDICA EXTRAFLAME” has a normal degree of inherent distinctiveness. In addition, it has been used in commerce for a very long time, and thus, has acquired a high level of distinctiveness. Considering the similarity between the signs and the fact that the contested goods are either identical/similar or complementary to each other, the contested trade mark could be perceived as the abbreviation of the earlier trade mark. The applicant concludes that there is a high degree of likelihood of confusion between the trade marks.

The EUTM proprietor argues that the application for invalidity is unfounded and should be rejected. It requested that the applicant submit proof of use of the earlier EUTM No 7 436 553. It argues that the marks do not coincide in any separately identifiable element. The earlier mark consists of 17 letters and the contested mark of only 8 letters. Also, they are graphically different. The term ‘flame’ in the earlier mark refers to ‘part of burning gas or fume’ and describes the goods and services connected with heating, heat emitting equipment, or in other words, stoves and fireplaces. As to the word ‘nord’, even if it is not a directly descriptive element in relation to goods such as fireplaces, or complementary accessories (such as kindling, pellets, etc.), it is at least allusive, bringing to mind a certain style, equipment, features, associated to “Nordic heat in the hut in front of the fireplace, despite of cold winter”. The EUTM proprietor filed some evidence and argues that there are many trade mark registrations containing the elements ‘flam’ and ‘nord’ and that many companies use these on the market. Customers have had for many years a wide contact with trade marks containing said elements and are used to this. In other words, it should be considered, that both elements “nord” (“Nordic(a)”) and a “flam(e)” have very low distinctive character. In this context, even small differences count and a likelihood of confusion does not occur. In addition, the level of attention of the relevant public is much higher than average, as goods such as stoves and fireplaces are not bought on a daily basis and are normally purchased with the help of experienced advisers. The EUTM proprietor furthermore claims that the applicant directs its goods to the wealthier recipients as compared to the manufacturer of the contested ‘NORDflam’ brand and that the differences in prices are significant, which can affect the levelling of any likelihood of confusion.

The applicant submitted evidence as proof of use and refutes the arguments of the EUTM proprietor. In particular, the graphical elements do not represent ‘a unique noticeable difference’ and the overall impression created by the signs is similar. There is a high degree of conceptual similarity between the signs, as they both refer to the concept of ‘Nordic flame’. The applicant concurs with the EUTM proprietor that the term ‘nord’ is not directly descriptive in relation to the goods but denies its allegations that ‘nord’ is an allusive element that reminds of Nordic heat referred to a typical Scandinavian house, its decoration and furnishings. The screenshots and printouts of pages provided by the proprietor are vague and inconsistent and do not allow to verify the distinctiveness of the earlier sign. The applicant reaffirms that its earlier mark has been used in commerce and has acquired a high level of distinctiveness. As to the difference in price between the respective goods, mentioned by the proprietor, it increases the likelihood of association between the signs, as the public may believe that the proprietor’s goods are the ‘cheap version’ of the same line of ‘NORDICA Extraflame’. The application for a declaration of invalidity is justified and the contested EUTM should be rejected in its entirety.

In its final observations, the EUTM proprietor refutes the arguments of the applicant and argues that the signs differ in many aspects including their shapes, colours, layout, contours and style of the letters, their format and number. The number of syllables of the signs and their layout is absolutely different. As to the semantic content and distinctiveness of the elements, the proprietor elaborates on and in essence reiterates its initial arguments. The examples of marks in the registry and of use on the market provided by the EUTM proprietor are real and up-to-date examples of over twenty manufacturers from various EU countries. In addition, in support of its observations, the proprietor provided Google search results in relation to ‘Nordflam’ and ‘nord flame’.

Preliminary remark

In the present case, the applicant indicated in the application for a declaration of invalidity that the application is based on several rights, including EUTM No 11 001 708 for the figurative mark , filed on 28/06/2012. In this regard, it must be mentioned that this trade mark is not earlier than the contested European Union trade mark No 9 101 221, filed on 12/05/2010.

Consequently, since EUTM No 11 001 708 is not an earlier right, it cannot succeed when invoked as basis for invalidity pursuant Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR. Therefore, the application must be rejected as unfounded, as far as it is based on this right.

PROOF OF USE

Proof of use of the earlier mark EUTM No 7 436 553 was requested by the EUTM proprietor.

According to Article 64(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The request for proof of use has been filed in due time and is admissible given that the earlier trade mark EUTM No 7 436 553 was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 28/12/2015. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 28/12/2010 to 27/12/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the application is based, namely:

Class 9: CDs, CD ROMs; vision and soundcarriers, among videotapes, audio cd's, cd-rom's, interactive cd's (cd-i's), laserdisks, optical disks and photo cd's; data processing equipment and computers, in particular computer monitors, computer software, computer programs, computers, operating programs, peripheral devices for computers, computer programs; Apparatus for converting infrared, ultraviolet, or visible radiation to electrical energy, namely photovoltaic solar modules, photovoltaic solar panels, photovoltaic solar cells, photovoltaic cell strings, photovoltaic roofing members, photovoltaic building material, photovoltaic cladding panels, photovoltaic solar-thermal hybrid modules, photovoltaic systems; solar cells; electric collectors; solar collectors; boiler control instruments.

Class 11: Heating apparatus and installations, stoves, fuel-powered and electric heating stoves, gas stoves, paraffin stoves, coal stoves, kerosene stoves, wood-burning stoves, cooking stoves, barbecues, kitchen ranges; Heating boilers; Boiler pipes [tubes] for heating installations; Toasters; Electric grills for cooking food and deep fat fryers, air heating ovens, furnaces, standard and ventilated fireplaces, domestic fireplaces, chimney blowers; Heaters for baths, electric radiators; Apparatus for ventilating and air conditioning, air reheaters; Chimney pots, ovens (except for experimental purposes), gas cookers (cooking rings); Solar collectors, solar photovoltaic systems with solar radiation concentrators; Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Air valves for steam heating installations; Ash pits for furnaces; Ash conveyor installations, automatic; Lava rocks for use in barbecue grills; Hot air bath fittings; Boiler pipes [tubes] for heating installations; Chimney blowers; Chimney flues; Coils [parts of distilling, heating or cooling installations]; Gas condensers, other than parts of machines; Dampers [heating]; Fuel economisers; Expansion tanks for central heating installations; Feeding apparatus for heating boilers; Filters [parts of household or industrial installations]; Filters for air conditioning; Fire bars; Fittings, shaped, for ovens; Flues for heating boilers; Framework of metal for ovens; Friction lighters for igniting gas; Regulating and safety accessories for gas apparatus; Generators (gas- ) [installations]; Humidifiers for central heating radiators; Igniters; Oven fittings made of fireclay; Ovens (Shaped fittings for -); Valves (Thermostatic -) [parts of heating installations]; Gas lighters.

Class 19: Chimneys (not of metal); mantlepieces; chimney pots, not of metal, chimney cowls, not of metal.

Class 35: Advertising; Business management in particular retailing and wholesaling of the following goods: CDs, CD-ROMs, audio and video data carriers, including videotapes, audio CDs, CD-ROMs, interactive CDs, laser discs, optical discs and photo CDs; Data processing equipment and computers, in particular computer screens, software, computer programs, computers, computer operating programs, peripheral devices for computers, computer programs, apparatus for converting infrared radiation, ultraviolet radiation or visible radiation into electrical energy, namely photovoltaic solar modules, photovoltaic solar panels, photovoltaic solar batteries, strings of photovoltaic batteries, photovoltaic roof elements, photovoltaic building materials, photovoltaic cladding panels, hybrid photovoltaic solar-thermal modules, photovoltaic systems, solar cells, electric collectors, solar collectors, boiler control instruments, apparatus and installations for heating, stoves, fuel-burning and electric stoves for heating, gas stoves, petrol stoves, coal stoves, kerosene stoves, wood-burning stoves, cooking stoves, barbecues, cookers, heating boilers, boiler pipes (tubes) for heating installations, toasters, electric grills for cooking food and deep fryers, air heating furnaces, kilns, standard and ventilated fireplaces, domestic fireplaces, chimney blowers, heaters for baths, electric radiators, ventilation and air conditioning apparatus, air reheaters, chimney fans, furnaces, other than for experimental purposes, gas cookers (cooking rings), solar collectors, photovoltaic solar systems with solar radiation concentrators, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary installations, fireplaces, not of metal, mantelpieces, chimney pots, not of metal, chimney cowls (not of metal); Management and organisation of franchising activities; Business administration; Office functions; Rental of advertising space; Consumers (Commercial information and advice for -) [consumer advice shop]; Auctioneering services; Commercial information agencies; Presentation of goods on communication media, for retail purposes; Price comparison services; Economic forecasting; Evaluation of standing timber; Organization of exhibitions for commercial or advertising purposes; Import-export agency services; Market research; Marketing studies; News clipping services; Opinion polling; Organisation of trade fairs for commercial or advertising purposes; Presentation of goods on communication media, for retail purposes; Procurement services for third parties (acquisition of goods and services for other companies); Public relations services; Business research; Shop window dressing; Evaluation of standing timber.

Class 37: Building construction, installation and maintenance; Boiler cleaning and repair; Burner maintenance and repair; Chimney sweeping; Quarrying services.

Class 42: Design in particular testing and design of the following goods: CDs, CD-ROMs, audio and video data carriers, including videotapes, audio CDs, CD-ROMs, interactive CDs, laser discs, optical discs and photo CDs, data processing equipment and computers, in particular computer monitors, computer software, computer programs, computers, operating programs, peripheral devices for computers, computer programs, apparatus to transform infrared, ultraviolet or visible radiation into electricity, namely photovoltaic solar modules, photovoltaic solar panels, photovoltaic solar batteries, photovoltaic battery strings, components for photovoltaic roofs, photovoltaic building materials, photovoltaic covering panels, hybrid photovoltaic solar-thermal modules, photovoltaic systems, solar cells, electric collectors, solar collectors, boiler control instruments, heating apparatus and installations, stoves, fuel-powered and electric heating stoves, gas stoves, paraffin stoves, coal stoves, kerosene stoves, wood-burning stoves, cooking stoves, barbecues, kitchen ranges, heating boilers, boiler pipes (tubes) for heating installations, toasters, electric grills for cooking food and deep fat fryers, air heating ovens, furnaces, standard and ventilated fireplaces, domestic fireplaces, chimney blowers, heaters for baths, electric radiators, apparatus for ventilating and air conditioning, air reheaters, chimney pots, ovens (except for experimental purposes), gas cookers (cooking rings), solar collectors, solar photovoltaic systems with solar radiation concentrators, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, chimneys, not of metal, mantlepieces, chimney pots, not of metal, chimney cowls, not of metal, signboards and architectural designs provided to franchisees; Consultancy related to the using of computer programs/software, creating of computer programs for data processes, development of application solutions for computer programs, modification of computer programs, design of computer programs, graphic design.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

In accordance with Article 19(2) EUTMDR, the Office gave the applicant until 17/09/2017 to submit evidence of use of the earlier trade mark.

The applicant submitted evidence as proof of use on 26/08/2016. The evidence consists of the following:

• Enclosure 1: Participation in the Italian trade fair “MCE EXPOCOMFORT 2010” held in Milan, Italy between 23-27 March 2010. The enclosure consists of the following documents:

Enclosure 1A: Picture used during the event referring to “NORDICA Extraflame” (fig.), and containing information regarding the number of the pavilion and exhibition stand;

Enclosure 1B: Planimetry of the stand reserved for La Nordica S.p.a.;

Enclosure 1C: Invoice issued by the organizers of the event for the participation of La Nordica S.p.A. in the fair accompanied by a translation in English (Enclosure 1D).

• Enclosure 2: Participation in the trade fair “PROGETTO FUOCO” held in Verona, Italy on 24-28 February 2010. The enclosure consists of the following documents:

Enclosure 2A: Event sticker;

Enclosure 2B: Pictures of the fair stand of La Nordica S.p.A. showing its products and the sign “NORDICA Extraflame” (fig.);

Enclosure 2C: Participation form in relation to the event (duly filled-in, signed and sealed), issued by the organizer of the event “PROGETTO FUOCO” to the participant in the event La Nordica S.p.A.

• Enclosure 3: Product brochures/catalogues 2010, in particular:

Enclosure 3A: General product catalogue No.2 of 2010 in relation to wood heating;

Enclosure 3B: Catalogue plus No.2/News of 2010 Wood and Pellet heating;

Enclosure 3C: Catalogue plus No.2 of 2010 Monoblocks Line;

Enclosure 3D: Pocket catalogue dated No.2 of 2010.

• Enclosure 4: Participation in the German trade fair “ISH” held in Frankfurt, Germany on 15-19 March, 2011. The enclosure consists of the following documents:

Exhibit 4A: Offer by “ISH” made to La Nordica S.p.A. to join the “Messe Frankfurt Exhibition”;

Exhibit 4B: Document showing a plan of exhibition stands and referring to the stand proposed by the trade organizers to La Nordica S.p.A. for said event.

Exhibit 4C: Stand plan of the exhibition stand used by La Nordica S.p.A.

• Enclosure 5: Participation in the trade fair “SALONICCO” held in Thessaloniki, Greece in December 2012 containing:

Enclosure 5A: Plan of the stand of La Nordica S.p.A. on the exhibition;

Enclosure 5B: Photographs (seven) of the stand of La Nordica S.p.A. showing its products and the sign “NORDICA Extraflame” (fig.).

• Enclosure 6: Participation in the trade fair “INFACOMA” held in Thessaloniki, Greece in January 2012. The enclosure shows an invitation (in Greek and English) issued by La Nordica S.p.A. to its Greek customers to visit the exhibition stand 17 during the event.

• Enclosure 7: Product brochures/catalogues 2012, in particular:

Enclosure 7A: General product catalogue No.1 of 2012 referring to the sign “NORDICA Extraflame” (fig.) and thermo products and thermic solar goods such as thermo heating stoves, thermo kitchen, thermo-fireplaces, thermic solar system, central heating and solar tanks, etc.

Enclosure 7B: Pocket catalogue dated 01.2012.

• Enclosure 8: Participation in the trade fair “INFACOMA” held in Thessaloniki, Greece in 2013 consisting of:

Enclosure 8A: Planimetry of the exhibition stand of La Nordica S.p.a.;

Enclosure 8B: Photographs (six) of the stand of La Nordica S.p.A. showing various products and the sign “NORDICA Extraflame” (fig.);

Enclosure 8C: Detailed technical data sheets of the series of products presented on the exhibition (bilingual, in Greek and English). The products shown are, for example, pellet burning thermoproducts, wood burning thermoproducts, pellet stoves, wood stoves series, wood cookers, pellet burning fireplaces, wood burning fireplaces.

• Enclosure 9: Photographs of the stand of the La Nordica S.p.A. from the participation in the trade fair “BUDMA” (International Construction and Architecture Fair) held in Poland in 2014 various products and the sign “NORDICA Extraflame” (fig.);

• Enclosure 10: Participation to the trade fair “ECOBUILD” held in London, United Kingdom in 2014 consisting of:

Enclosure 10A: Contract between La Nordica S.p.A. and the organizers of the event regarding an offer for a stand space, including a quote of the fees for Stand Audit and On-Space site;

• Enclosure 10B: Nine photographs of the stand of La Nordica S.p.A. showing various products and the sign “NORDICA Extraflame” (fig.);

• Enclosure 11: Participation to the trade fair “INFACOMA” held in Thessaloniki, Greece in 2014 consisting of:

Enclosure 11A: Confirmation of the participation sent by the organizers of the event to La Nordica S.p.A.;

Enclosure 11B: Proforma invoice for the event participation fees sent by the organizers to La Nordica S.p.A,;

Enclosure 11C: Five photographs of the La Nordica S.p.A. stand and products.

• Enclosure 12: Participation in the Italian trade fair “PROGETTO FUOCO” held in Verona, Italy on 19-23 February 2014 containing a short description of the event, planimetry of the stand of La Nordica S.p.A. and showing a legend of the products, namely: wood and pellet thermoproducts, wood stoves, wood-fuelled kitchen, pellet stoves and wood fireplaces.

• Enclosure 13: Four photographs of the La Nordica S.p.A. stand from the participation in the trade fair “ETO” held in Germany in 2015.

• Enclosure 14: Five photographs of the stand of La Nordica S.p.A. from the participation in the trade fair “FLAM EXPO” held in France in 2015.

• Enclosure 15: Three photographs of the stand of La Nordica S.p.A. from the participation in the trade fair “ISH” held in Germany in 2015.

• Enclosure 16: Detailed general product catalogue dated 01.2015. The catalogue is in several languages (Italian, English, French, German and Spanish) and consists of more than 170 pages. It shows, inter alia, company profile, history, certifications, technology, products, including detailed technical sheets, products series and pictures.

• Enclosure 17: Youtube videos in relation to advertisement spots for La NORDICA - Extraflame as follows:

Enclosure 17A : Screenshot of the homepage of “La Nordica - Extraflame” Youtube channel showing links to several promotional and advertising videos.

Enclosure 17B: Screenshot from “Green Energy, presentation video of the wood and pellet heating systems. Comparing Ecology, Economy and Technology”, published on 19/04/2012.

Enclosure 17C: Screenshot from “House system, a new eco-friendly, cheap and reliable means to warm up your home”, published on 19/04/2012.

Enclosure 17D: Video demonstrating an advertisement entitled “La Nordica Extraflame. Best Christmas Wishes from La Nordica Group”, published on 21 December 2015.

• Enclosure 18: Product catalogues 2011, in particular:

Enclosure 18A: General product catalogue No. 2 - 2011 (cover page) in relation to pellet stoves, thermoproducts and pellet inserts.

Enclosure 18B: Cover page of General product catalogue No. 2 - 2011, in relation to wood heating products.

Enclosure 18C: Pocket catalogue dated 01.2011 (cover page, in German and English).

• Enclosure 19: Product catalogues 2013, in particular:

Enclosure 19A: General product catalogue No.2.2013 (multilingual) in relation to Pellet Products (stoves, inserts and pellet and heating products and accessories), including information about wood products lines, fireplaces and thermo-products.

Enclosure 19B: Pocket catalogue titled ‘Pocket, Wood and Pellet’ dated 03/2013 (multilingual, cover page).

• Enclosure 20: Product catalogues 2014, in particular:

Enclosure 20A: General product catalogue No 3.2014 (multilingual, extract).

Enclosure 20B: News catalogue 2014 (No. 1 - 2014, multilingual, extract) in relation to stoves, cookers and thermoproducts.

Most of the evidence of use is dated within the relevant period. The product catalogues and the documents showing participation in trade fairs show that the place of use is at least several EU countries such as Italy, Germany, Greece, Spain, the United Kingdom, Poland, etc. This can be inferred from the language of the documents and from the places where the events took place, including some addresses mentioned in the participation offers and invoices. Therefore, the evidence relates to the relevant territory.

As to the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In the present case, although there are no direct sales or turnover figures indicated, the Cancellation Division is of the opinion that the evidence (especially the product catalogues as well as the evidence for participation in trade fairs and events) shows that part of the goods (see below for further details and explanation) were regularly marketed and were available and accessible in several member states and throughout the relevant period. Therefore, the evidence gives sufficient information regarding the extent of use of the mark.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 64(2) and (3) EUTMR, Article 18 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the registered mark is and the evidence shows the sign . The Cancellation Division considers that this is an acceptable variation and complies with Article 18(1) EUTMR. This is because the form used differs in elements that do not alter the distinctive character of the mark in the form in which it was registered. In particular, the additional device element and the small and secondarily positioned wording in Italian do not materially affect the distinctiveness of the sign. All the elements of the registered trade mark are identically reproduced, clearly discernible and in no way overshadowed by the mentioned additional elements. Furthermore, the evidence shows that the sign was used as a trade mark.

The earlier mark is registered for a number of goods and services in Classes 9, 11, 19, 35, 37 and 42. However, the evidence does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 64(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.’

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

In the present case, the evidence shows use for goods such as thermo heating stoves, thermo kitchen products, thermo-fireplaces, thermic solar system, central heating and solar tanks, wood burning thermo heating stoves, insert fireplaces, pellet burning thermo heating stoves, thermo cookers, such as wood burning thermo heating cookers, systems for the production of hot sanitary water, hydro fireplaces (wood burning and pellet); accessories and parts such as ignitors, valves, coils, digital controllers for thermos products, etc.; central heating systems, central heating and storage tanks; remote control and system expansion motherboard kits; thermic solar system; solar panels, solar controllers, solar expansion vessels, glass domestic hot water cylinders; wood-fuelled kitchen, pellet stoves and wood fireplaces, etc. These goods belong to Classes 9 and 11.

Consequently, bearing in mind the principles reflected in the above-cited Aladin judgement, including that the applicant is not required to prove use of all the conceivable variations of the categories of goods for which it is registered, the Cancellation Division considered that use has been shown for the following goods, including some broader categories: Heating apparatus and installations, stoves, fuel-powered heating stoves, wood-burning stoves, cooking stoves, kitchen ranges; heating boilers; boiler pipes [tubes] for heating installations; air heating ovens, furnaces, standard and ventilated fireplaces, domestic fireplaces; heaters for baths; apparatus for ventilating and air conditioning, air reheaters; ovens (except for experimental purposes); solar collectors; apparatus for heating, cooking, ventilating, water supply and sanitary purposes; Coils [parts of distilling, heating or cooling installations]; Dampers [heating]; Expansion tanks for central heating installations; Igniters; Valves (Thermostatic -) [parts of heating installations]; Gas lighters in Class 11 and boiler control instruments in Class 9.

In relation to the remaining goods and services in Classes 9, 11, 19, 35, 37 and 42, the applicant did not submit any (conclusive or direct) evidence of use. For example, although the evidence shows that the applicant is using the mark in relation to, for example, ‘water heating systems’ and ‘fireplaces’, no specific and direct evidence of use was found in relation to goods such as chimney blowers, chimney pots, ash pits for furnaces, etc. in Class 11 or chimneys, mantelpieces; chimney pots, etc. in Class 19. It has to be reminded that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22). Furthermore, as to the solar systems, it is hereby specified that the solar-related goods classified in Class 9 refer to photovoltaic energy whereas the evidence on file shows that the mark is used in relation to thermic/thermo solar systems for heating and related thermic solar panels (belonging to Class 11). This is why it is considered that the applicant failed to submit evidence for any of the various solar photovoltaic systems, accessories and collectors, etc. in Class 9.

Therefore, as regards EUTM No 7 436 553, the Cancellation Division will only consider the abovementioned goods, for which use is considered to have been proven.

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 No 7 436 553.

1. The goods

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The goods on which the application is based are the following:

Class 9: Boiler control instruments.

Class 11: Heating apparatus and installations, stoves, fuel-powered heating stoves, wood-burning stoves, cooking stoves, kitchen ranges; heating boilers; boiler pipes [tubes] for heating installations; air heating ovens, furnaces, standard and ventilated fireplaces, domestic fireplaces; heaters for baths; apparatus for ventilating and air conditioning, air reheaters; ovens (except for experimental purposes); solar collectors; apparatus for heating, cooking, ventilating, water supply and sanitary purposes; Coils [parts of distilling, heating or cooling installations]; Dampers [heating]; Expansion tanks for central heating installations; Igniters; Valves (Thermostatic -) [parts of heating installations]; Gas lighters.

The contested goods are the following:

Class 3: Cleaning preparations for fireplaces; cleaning preparations for fireplace insert windows; rust removers; cleaning preparations for tiles, natural and artificial stone; shining preparations (polish) for metal surfaces.

Class 4: Firelighters for fireplaces and barbecues; pellets; biomass briquettes; fuel briquettes; lignite; charcoal; wood spills for lighting; firewood.

Class 11: Enclosed (glass-fronted) room-heaters; stoves; extractors for chimneys; ash pans; barbecue grills and grates for stoves and fireplace inserts; fittings for stoves and fireplace inserts; appliances for stoves and fireplace inserts; chamotte lining for stoves and fireplace inserts; extractor hoods for kitchens.

As a preliminary remark, according to Article 33(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 3

The contested Cleaning preparations for fireplaces; cleaning preparations for fireplace insert windows are specifically meant for use with fireplaces. These goods are considered similar to a low degree to the applicant’s heating apparatus and installations; standard and ventilated fireplaces, domestic fireplaces. Although these sets of goods differ in nature and also in their usual producer, these goods are complementary and used in combination. Furthermore, they can be offered side by side through the same distribution channels and coincide in relevant public.

However, no such link exists with the remaining contested rust removers; cleaning preparations for tiles, natural and artificial stone; shining preparations (polish) for metal surfaces. These goods are dissimilar to all the applicant’s goods in Classes 9 and 11. Their nature, purpose and method of use are different and they are neither in competition, nor complementary. The goods at issue are usually not manufactured or provided by the same undertaking or economically-linked undertakings and do not have the same distribution channels.

Contested goods in Class 4

The contested Firelighters for fireplaces and barbecues; pellets; biomass briquettes; fuel briquettes; lignite; charcoal; wood spills for lighting; firewood are dissimilar to all the applicant’s goods.

The contested goods in Class 4 are, in general, fuels and illuminants, including wood, pellets, etc. and are used to light and/or maintain fires. They have a completely different nature, purpose, origin and technical characteristics as compared to the applicant’s goods in Classes 9 and 11, which are used mostly for (domestic) heating and/or cooking purposes. Indeed, and as argued by the applicant, the point of contact between the contested goods and applicant’s is that may be complementary to each other. However, this is not enough to justify a finding of similarity. Their nature and method of use is completely different. Furthermore, they originate and belong to entirely different industries and do not coincide in manufacturer and are not in competition. When a consumer seeks consumables for its fireplace or stove, it is unlikely that he/she would contact a manufacturer of heating appliances, as these do not come from the same source and the relevant public will not expect the fuels to be produced by, or under the control of, the ‘original’ manufacturer of the appliances for which those are used.

Contested goods in Class 11

The contested stoves are identically contained in both lists of goods.

The contested Enclosed (glass-fronted) room-heaters are included in the broad category of the applicant’s heating apparatus and installations. Therefore, they are identical.

The contested extractors for chimneys; ash pans; barbecue grills and grates for stoves and fireplace inserts; fittings for stoves and fireplace inserts; appliances for stoves and fireplace inserts; chamotte lining for stoves and fireplace inserts; extractor hoods for kitchens are various fittings and accessories for the applicant’s fireplaces, stoves, kitchen ranges. These sets of goods are similar to at least an average degree, as they usually coincide in producer, relevant public and distribution channels. Furthermore, some of them are complementary.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar to varying degrees are directed both at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention displayed by the relevant consumers may vary from average to high, depending on the specific nature, sophistication, frequency of purchase and cost of the respective goods concerned.

The EUTM proprietor argues that the degree of attention of the relevant public is much higher than average, as the goods are potentially dangerous devices associated with fire, gasses, high temperature, the risk of fire or carbon monoxide poisoning, etc. In this regard, it is noted that some of the relevant goods (such as fireplaces or stoves) are indeed relatively expensive household items that are not bought on an everyday basis, and the degree of attention would tend to be higher. As regards other goods, however, such as cleaning preparations for fireplaces and barbecue grills and grates, the degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both marks are figurative. The earlier mark consists of the verbal elements ‘NORDICA Extraflame’, written one above the other, wherein ‘NORDICA’ is in white uppercase stylised letters with black contours and ‘Extraflame’ is in red stylised letters in title case. The contested sign consists of the verbal element ‘NORDflam’, written in white stylized letters, wherein ‘NORD’ is in uppercase and ‘flam’ is written in lowercase italicized letters, thus making their perception as two distinct elements. The element ‘NORDflam’ appears within a rather standard black rectangular frame.

The verbal elements ‘NORD’ and ‘NORDICA’ exist in Spanish and Italian and convey the concept of the north and Nordic, the North part of Europe, i.e. Scandinavia. This concept will be perceived by a substantial section of the European public due to identical or similar linguistic equivalents, as for example nórdico in Portuguese, nord and nordique in French, north in English, nordisch, Nord-, norden in German and noord in Dutch. However, it is likely that another part of the relevant European Union public will not understand the meaning of the words ‘Nordica’ or ‘nord’. This is the case, for instance, of the average consumer in some Eastern European countries, such as Latvia, Lithuania and Estonia, where the local equivalents for ‘nordic’ are ‘ziemelnieks’, ‘siaures, skandinavu’ and ‘pohjatougu’. Nonetheless, whether understood or not, neither ‘Nordica’ nor ‘nord’ have any specific, straightforward, descriptive or otherwise weak meaning in relation to the relevant goods and therefore, their inherent distinctive character is normal.

The term ‘Extraflame’ will be understood by the English-speaking part of the public as referring to an additional source (extra) of light or combustion (flame), whereas other speakers may not understand it as such, or may only grasp a meaning in ‘Extra’ (which exists in most of the EU languages, for example German, English, Spanish, Italian, Dutch, Slovak, etc.). As regards the terms ‘Flame’ and ‘Flam’ present in the signs, they will be associated with the same concept of light or combustion (flame) by other members of the public (apart from the English-speaking) due to the existence of similar counterparts in some EU languages, for example ‘flamme’ in French, German and Danish, ‘flamma’ in Swedish; and ‘fiamma’ in Italian. However, this meaning will not be understood by the average consumer in most Eastern European countries, such as Latvia, Lithuania and Estonia. Bearing in mind these findings in relation to the possible semantic content of EXTRAFLAME, EXTRA, FLAME and/or FLAM by at least part of the relevant consumers, a certain descriptive/weak link exists in relation to part of the relevant goods, in particular the goods in Class 11 that are connected with combustion/flame. Therefore, the distinctive character of this/these terms is deemed to be low for most of the goods in Class 11 as regards part of the relevant public.

The EUTM proprietor argues that the word ‘nord’, even if it is not a directly descriptive element in relation to goods such as fireplaces, or complementary accessories (kindling, pellets, etc.), it is at least allusive, bringing to mind a certain style, equipment and features associated to ’Nordic heat in the hut in front of the fireplace, despite of cold winter’. Furthermore, the proprietor claims that both elements ’nord’ (’Nordic(a)’) and ’flam(e)’ have very low distinctive character.

In this regard, the Cancellation Division refers to the concepts of ‘nord’ and ‘nordica’ defined above. As seen above, none of them contains a descriptive or weak connotation in relation to the goods. The association with the north or Scandinavian countries in general is too distant and vague and does not describe in itself any particular feature of the goods. As to the claims of the proprietor that ‘nord’ and ‘nordica’ will be associated with a certain Scandinavian style, equipment or ’Nordic heat in the hut in front of the fireplace’, these claims are merely suppositions of the proprietor and have not been backed up by any dictionary references or indeed any other reliable documents. The proprietor filed several extracts from the Internet, namely: two printouts in Polish; one printout from www.houzz.com showing home design pictures with no reference to the goods; a printout from nordpeis.com referring a company’s products in the fireplace industry. None of these documents demonstrates that ‘nord’ and ‘nordica’ are descriptive or weak in relation to any particular characteristics of the goods. Nor is it clear what does a Scandinavian style describe in relation to the goods. As to the element ‘flam(e)’, the Cancellation Division already described above in which territories and for which goods the term is of low distinctiveness.

The EUTM proprietor also submitted printouts from EUIPO’s database eSearchPlus and argues that that there are many trade mark registrations containing ‘nord(ic)’ and ‘flam’ in Class 11. The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Consequently, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the elements ‘nord’ and ‘flam’. Under these circumstances, the EUTM proprietor’s claims must be set aside.

The EUTM proprietor also filed several extracts from the Internet in order to show and support its argument that many companies use marks that contain the elements ’nord’, ’Nordica’ and/or ’flam(e)’ on the market and that customers have had for many years a wide contact with trade marks containing said elements. The proprietor filed some printouts from the internet (e.g. of Moda Flame® Fireplaces at http://modaflame.com/, of Flame International goods at http://www.flameintl.com/, of Flametech Oy products, of HS Flamingo s.r.o. stoves at http://www.hsflamingo.cz/en/, of Flamen Fireplaces, of Astroflamm goods at http://www.austroflamm.com, of Flam goods at www.flam.be/en/aboutflam, of Norpeis at http://nordpeis.com/, of Real Flame® Gel Fireplaces, of Teraflam goods at teraflam.com, etc.) and claims that these are examples of over twenty manufacturers from various EU countries. In addition, in support of its observations, the proprietor provided Google search results in relation to ‘Nordflam’ and ‘nord flame’. However, the Cancellation Division notes that nearly all the printouts/screenshots refer to ‘flam(e)’ and as already stated above, this term is of low distinctive character for most of the goods in Class 11 in relation to part of the relevant territory. As to the printout from http://nordpeis.com/ (the only one showing the term ‘nord’), it cannot be taken as solid evidence reflecting the situation on the market, let alone proving that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the element ‘nord’. In relation to the Google search results for ‘Nord flame’ and ‘nord flam’ and images thereof, the Cancellation Division notes that these printouts are not reliable evidence demonstrating use on the market in relation to the relevant goods and in fact it is not very clear from the explanation of the EUTM proprietor what is it exactly that it wanted to demonstrate by providing the hits with these search results.

Going back to the comparison of the signs, in relation to the figurative elements of the signs (the stylisation of the letters, colours and the black rectangular frame of the contested sign), none of these elements is particularly imaginative, unusual or fanciful. Therefore, these elements do not contribute much to the distinctive character of the signs.

The marks have no element(s) that could be considered clearly more dominant (visually eye-catching) than other elements.

At this point and for economy of proceedings, the Cancellation Division finds it appropriate to focus the comparison of the signs on the territories where the common element(s) in the signs are meaningful, such as the English- and German-speaking part of the public.

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.

Visually, the signs coincide in the string of letters ‘NORD-’, which represent the first four letters of the first/upper element ‘NORDICA’ of the earlier mark and the first and visually identifiable verbal element of the contested mark. This coincidence is particularly relevant, as it appears in the beginning of both signs and in their normally distinctive verbal elements. 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 (and top to bottom), which makes the part placed at the left of the sign (the initial/upper part) the one that first catches the attention of the reader. Although ‘NORDICA’ and ‘NORD’ do not fully coincide, they both refer to the same general concept and are written in quite similarly stylized white letters.

Furthermore, the signs coincide in the string ‘flam-’, which comprises the second verbal element of the contested sign and the second part of ‘Extraflame’ of the earlier mark. Although this coincidence is less noticeable, as it appears in different positions within the signs, it does not mean it will go unnoticed due to the underlying common concept and the fact that ‘Extraflame’ will be broken down into two elements. In spite of the reduced distinctiveness of ‘flam(e)’, this coincidence is there and has a certain, albeit reduced visual, aural and conceptual impact.

The signs differ in ‘-ICA’, ‘Extra’ and ‘e’ of the earlier mark, which have no counterparts in the contested sign. In addition, the signs also differ in all the figurative elements. However, as mentioned above, these differences are of limited impact, since they occur in less important and less distinctive elements.

Therefore, taking into account the mentioned coincidences and the fact that the main coincidences are in a normally distinctive element in the beginning of the signs, as well as the further coincidence but also accounting for the differences and their impact, it is considered that the signs are visually similar to a lower than average degree.

Aurally, the coincidences in the pronunciation of the signs are found in the beginning of the signs, namely in the sound of the letter sequence ‘NORD’. Furthermore, the elements ‘FLAME’ and ‘flam’ in the signs are pronounced in a highly similar way: /flame/ vs. /flam/ by the German-speaking part of the public and /fleim/ vs. /flam/ by the English-speaking part of the public. The pronunciation differs in the weakly distinctive element ‘extra’ of the earlier mark, which has no aural counterpart in the contested sign. Therefore, taking into account the mentioned coincidences and differences as well as the distinctive character of the respective elements, it is considered that the signs are aurally similar to an average degree.

Conceptually, as indicated above, the most important and distinctive verbal elements in the signs ‘NORDICA’ and ‘NORD’ will be associated with the same or highly similar meaning. Similar findings apply to the elements ‘flame’ and ‘flam’. Although the elements in both signs are a mixture of different languages, the relevant consumers, when faced with two trade marks at different times, will in all likelihood tend to recall the presence of a term close to the equivalent of the term ‘Nordica/Nord’ and ‘flame/flam’ in their own language, rather than grasp the differences in the foreign language spelling. As to the word ‘Extra’ of the earlier mark, in spite of introducing a semantic difference, it will be attributed reduced distinctiveness. Therefore, although the conceptual similarity on the basis of the elements ‘flame/flam’ is due to elements with weaker distinctiveness and its impact is reduced, the signs further share the same or highly similar meaning due to their normally distinctive and beginning elements. Consequently, it is considered that the signs are conceptually similar to a high degree.

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

4. Distinctiveness of the earlier mark

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

According to the applicant, the earlier trade mark enjoys a high degree of distinctiveness as result of its long-standing and intensive use in the European Union for all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

The applicant submitted the same evidence as the proof of use listed above. Having examined the material listed above, the Cancellation Division concludes that the evidence submitted by the applicant does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through use.

Despite showing use of the trade mark, the evidence provides no information on the degree of recognition of the mark on the relevant market as a result of such use. The material that has been submitted provides information that the respective goods designated with the trade mark have been regularly advertised and have been offered for sale. However, the Cancellation Division is unable to extract any indication as regards the degree of knowledge or recognition of the trade mark among the relevant public. There are no indications concerning the recognition or market share of the trade mark.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some element(s) of reduced distinctiveness in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical and similar to various degrees and partly dissimilar to the applicant’s goods. The relevant goods are directed both at the public at large and at professional consumers and the degree of attention may vary from average to high.

The signs are visually similar to a lower than average degree and aurally similar to an average degree. Conceptually, they are similar to a high degree.

Consequently, and notwithstanding the fact that the distinctiveness of the elements ‘flame’ and ‘flam’ in the signs is low in relation to part of the goods, the signs have important coincidences in a further distinctive element occupying an initial position. In this regard, it should be noted that even in cases involving an earlier mark of weak distinctive character (which is not the case at issue, as the earlier mark has normal distinctiveness), there may be a likelihood of confusion on account, in particular of similarity between the signs and between the goods and services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the case at hand, it should also be taken into account that the average consumer only rarely has the chance to make a direct comparison between the different marks but must trust in the imperfect picture of them that s/he has kept in his/her mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). It is likely that the relevant public being exposed to the use of both signs in relation to identical and similar goods (even to a low degree) and having an imperfect recollection of the earlier mark, might think that the goods on which the later mark appears are produced by the same or an economically-linked undertaking as the goods sold under the mark of which it has only an imperfect recollection.

In a global assessment of all the relevant factors and considering all the above findings, the Cancellation Division finds that there is a likelihood of confusion on the part of the German- and English-speaking part of the public and, therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration No 7 436 553. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to various degrees to those of the earlier trade mark. Although some of the goods are similar only to a low degree, the application is also successful for them, because the degree of similarity between the signs is sufficient to outweigh the low degree of similarity of the goods. The rest of the contested goods (namely part of the goods in Class 3 and all the goods in Class 4) are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed against these goods cannot be successful.

The applicant has also based its cancellation application on the following earlier trade marks: European Union trade mark registration No 958 595  (figurative mark) and Italian trade mark registration No 1 268 044  (figurative mark).

These earlier rights invoked by the applicant cover the following goods:

EUTM No 958 595:

Class 9: Electrical irons.

Class 11: Electrical and fuel stoves for civil heating; electrical heaters; kitchen-ranges; ventilation and air-conditioning installations and apparatus; toasters; electric grills for food and electric deep fryers; little boilers to produce steam for irons and for cleaning purposes; hair driers.

IT No 1 268 044:

Class 11: Stoves and fireplaces for domestic use.

The remaining contested goods are part of the goods in Class 3 and all the contested goods in Class 4. They cover in general, cleaning and polishing preparations, fuels and illuminants, including wood, pellets, etc. and are used to clean/polish and to light and/or maintain fires. These goods have a completely different nature, purpose, origin and technical characteristics as compared to the applicant’s goods in Classes 9 and 11, which are apparatus, devices and accessories used mostly for domestic heating, ironing, ventilation, air-conditioning, etc. and/or cooking purposes. The nature and method of use of these sets of goods are completely different. Furthermore, they originate and belong to entirely different industries and do not coincide in manufacturer and are not in competition.

Consequently, the goods covered in Classes 9 and 11 by the mentioned earlier marks of the applicant are dissimilar to all the remaining contested goods in Classes 3 and 4. A fortiori, there is no likelihood of confusion for those earlier rights. Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of these earlier marks for dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Judit NEMETH

Liliya YORDANOVA

Denitza STOYANOVA-VALCHANOVA

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.