CANCELLATION No 11887 C (INVALIDITY)

Medi GmbH & Co. KG, Medicusstr. 1, 95448 Bayreuth, Germany (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft MBB - Patentanwälte Rechtsanwälte, Postfach 10 71 27, 28071 Bremen, Germany (professional representative)

a g a i n s t

IT Jeans, INC., 5251 S. Santa Fe Avenue, Vernon, California 90058, United States of America (EUTM proprietor) represented by Nlo Shieldmark B.V., Postbus 29720, 2502 LS Den Haag, The Netherlands (professional representative).

On 29/09/2016, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 10 128 809 is declared invalid for some of the contested goods, namely:

Class 18 Handbags, women's handbags, sports bags, wallets, carrying cases; The aforesaid goods made of leather and imitations of leather.

Class 25 Clothes, namely jeans, shorts, trousers, T-shirts, shirts, coats, footwear; Nightwear, underwear, loungewear, stockings, socks and belts.

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

Class 18 Straps; The aforesaid goods made of leather and imitations of leather and key rings of leather.

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 10 128 809. The application is based on German trade mark registration No 30 2011 005 103 and international trade mark registration (IR) No 1 086 394, designating the European Union, both for the expression ‘ITEM M6’ (word marks). The applicant invoked Article 53(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 since the marks are similar and the goods are identical or similar.

In support of its observations, the applicant filed the following evidence: extract from the German trade marks database and the translation thereof in English as regards the German trade mark, an extract from EUIPO’s eSearch database with information about the earlier IR and two extracts from dictionaries regarding the term ‘item’: copies from DUDEN Die deutsche Rechtschreibung, 21. edition, 1996 and from Langenscheidts Großes Schulwörterbuch Englisch – Deutsch, 9. Edition.

The EUTM proprietor did not file any observations.

SUBSTANTIATION OF IR NO 1 086 394 DESIGNATING THE EUROPEAN UNION

According to Rule 37(b)(ii) CTMIR, an application for a declaration of invalidity pursuant to Article 56 CTMR shall contain, as regards the grounds on which the application is based, in the case of an application pursuant to Article 53(1) CTMR, particulars of the right on which the application for a declaration of invalidity is based and if necessary particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity.

According to Rule 39(3) CTMIR, if the Office finds that the application does not comply with Rule 37, it shall invite the applicant to remedy the deficiencies found within such period as it may specify. If the deficiencies are not remedied before expiry of the time limit, the Office shall reject the application as inadmissible.

Nevertheless, an important distinction should be drawn between admissibility and substantiation requirements. Even though in invalidity proceedings based on relative grounds there is no time limit for the substantiation of the earlier rights, and the proof of the existence, validity and scope of protection of all the earlier rights and the evidence proving the applicant´s entitlement to them have to be submitted together with the application, this does not mean that there is no distinction between admissibility and substantiation requirements. If, for instance, an application clearly identifies the earlier mark on which the application is based (Rule 37(b)(ii)CTMIR) and indicates the evidence in support of those grounds (Rule 37(b)(iv)CTMIR), the application will be admissible. If the evidence submitted is later found to be insufficient to substantiate the earlier right (e.g. the certificate is not from an official source or not translated into the language of the proceedings), the application will be rejected as unfounded (see, by analogy, Rule 20(1) CTMIR), and not as inadmissible (see decision of 12/07/2013, R 1306/2012-4, ‘URB EUROPE’, paragraph 21; decision of 12/07/2013, R 1310/2012-4, ‘URB Bearings’, paragraph 21; and decision of 12/07/2013, R 1309/2012-4, ‘URB’, paragraph 20).

According to Article 76(1) CTMR, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

In order to prove the existence and validity of the earlier IR on which the application is based, the applicant submitted on 05/10/2015 (together with the application for invalidity), an extract of the EUIPO’s database ‘eSearch’ regarding the respective IR.

This evidence is not sufficient to substantiate the applicant’s earlier IR designating the European Union. International registrations are processed by WIPO, which is the administration that registers these trade marks. Therefore, WIPO is the sole body responsible for keeping official records of any international registration regardless of designation, be it the European Union or another territory.

Therefore, a certificate of registration or other equivalent evidence, such as an extract from the ROMARIN database, emanating from WIPO, is needed to substantiate an IR designating the EU. The Cancellation Division would also accept an extract from the ‘TMview’ database for the same purpose, as long as it contains all the necessary information, and as long as this evidence was provided by the applicant (see EUIPO’s Guidelines). Rule 19(2)(a) EUTMIR (by analogy) specifically allows an exception to the rule with regard only to EUTMs; this exception is not deemed to extend to any other type of trade mark, and therefore not to IRs designating the EU.

According to Rule 20(1) EUTMIR (by analogy), if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The application for invalidity must therefore be rejected as unfounded, as far as it is based on this earlier mark.

LIKELIHOOD OF CONFUSION — ARTICLE 53(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.

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 25: Clothing, stockings, fine stockings, tights, hosiery; footwear; headgear.

The contested goods are the following:

Class 18 Handbags, women's handbags, sports bags, wallets, carrying cases, straps; The aforesaid goods made of leather and imitations of leather and key rings of leather.

Class 25 Clothes, namely jeans, shorts, trousers, T-shirts, shirts, coats, footwear; Nightwear, underwear, loungewear, stockings, socks and belts.

Contested goods in Class 18

Handbags, women's handbags, sports bags, wallets, carrying cases; The aforesaid goods made of leather and imitations of leather are related to clothing to the extent that consumers will probably consider them closely linked. The public is likely to consider these goods complementary accessories to articles of clothing, as the former are closely coordinated with the latter. Furthermore, these kinds of goods may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market the abovementioned goods in Class 18. Moreover, these kinds of goods can be found in the same retail outlets. Therefore, these goods are considered similar.

The contested straps are a length of leather used to suspend an item, often of some weight, from the shoulder(s). The strap may be worn slung over one shoulder or across the body. Shoulder straps may also be used in pairs on such items as a backpack or a baby carrier. However, the mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts (see judgment of 27/10/2005, T-336/03, ‘Mobilix’, paragraph 61). Key rings of leather are rings meant to keep the keys together. The nature of all these contested goods is different from that of the applicant’s goods in Class 25. They serve very different purposes (carrier supporters, key holders versus covering/protecting the human body). They do not usually have the same retail outlets and they are usually not made by the same manufacturers. These goods are considered dissimilar.

Contested goods in Class 25

Clothes, namely jeans, shorts, trousers, T-shirts, shirts, coats; nightwear, underwear, loungewear, socks and belts are included in the broad category of clothing of the earlier German trade mark. The goods are identical.

Footwear and stockings are identically included in the list of goods of the earlier German trade mark.

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 are directed at the public at large. The degree of attention is average.

3. The signs

ITEM M6	!ITEM
Earlier trade mark	Contested trade mark

The relevant territory is Germany.

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

Visually, the signs coincide in ‘ITEM’ and differ in ‘M6’ of the earlier mark and the symbol ‘!’ of the EUTM. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the word ‘ITEM’ present identically in both signs. The symbol ‘!’ will not be pronounced but it will probably give the expression it accompanies a special intonation. Nevertheless, this does not change the fact that the term ‘ITEM’ will be identically pronounced in both marks. The pronunciation differs in the sound of the letter ‘M’ and the pronunciation of the digit 6, ‘sechs’ in German) of the earlier sign, which have no counterpart in the contested mark. Therefore, the signs are aurally similar to an average degree.

Conceptually, the applicant stated that the term ‘ITEM’ is an antiquated German word meaning ‘likewise; further, also’ and submitted a copy of the DUDEN Dies deutsche Rechtschreibung, 21 edition, 1996. It also stated that the German younger public will perceive also the English meaning of the term ‘ITEM’ (object; article; piece; detail; note).

The Cancellation Division considers that the majority of the German public will not attribute a meaning to the term ‘ITEM’. The exclamation mark ‘!’ will be perceived as such; however, the Cancellation Division considers that its presence will not influence the concept of the contested sign. ‘M’ accompanied by the number ‘6’ is, as such, meaningless. Therefore, conceptually, despite the presence of the sign ‘!’ or of the number ‘6’ neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

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.

5. Global assessment, other arguments and conclusion

Part of the goods is identical, part is similar and part is dissimilar. The marks are visually similar to a high degree and aurally to an average degree and the earlier mark has an average degree of distinctiveness.

‘Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion’ (06/10/2004, T 117/03 - T 119/03 & T 171/03, NL, EU:T:2004:293, §50).

The Cancellation Division considers that in the present case the contested mark could be perceived as a new version of the earlier German trade mark, maybe indicating a particular line of fashion articles in Classes 18 and 25.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the German public; therefore, the application is partly well founded on the basis of the applicant’s German trade mark registration.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods 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 at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(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

José Antonio GARRIDO OTAOLA

Ioana MOISESCU

María Belén IBARRA DE DIEGO

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.