OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
CANCELLATION No 11695 C (INVALIDITY)
WWF-World Wide Fund for Nature (Formerly World Wildlife Fund), Avenue du Mont-Blanc, 1196 Gland, Czech Republic (applicant), represented by Harmsen Utescher, Postfach 11 34 44, 20434 Hamburg, Germany (professional representative)
a g a i n s t
Oü Karl Effort, Humala 14, 10617 Tallinn, Estonia (CTM proprietor), represented by Urmas Murd, Humala 14, 10617 Tallinn, Estonia (employee representative).
1. The application for a declaration of invalidity is partially upheld.
2. Community trade mark No 10 375 806 is declared invalid for some of the contested goods and services, namely for the following goods:
Class 29: Alginates for food; edible birds’ nests; protein for human consumption; rennet; weed extracts for food.
Class 43: Catering services.
3. The Community trade mark remains registered for the remaining services, namely:
Class 43: Temporary accommodation.
4. Each party bears its own costs.
The applicant filed an application for a declaration of invalidity against all the goods and services of Community trade mark No 10 375 806. The application is based on German trade mark registration No 302 014 052 634, international trade mark registration No 629 538 designating Bulgaria, the Benelux countries, the Czech Republic, Germany, Spain, France, Croatia, Italy, Hungary, Austria, Poland, Portugal, Romania, Slovenia and Slovakia and international trade mark registration No 574 594 designating the European Union. The applicant invoked Article 53(1)(a) CTMR in connection with Article 8(1)(b) CTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the earlier figurative marks and the contested mark are highly similar on account of their figurative elements, depicting panda bears in the same particular manner. It states that the words ‘Asian Fusion Gourmet Kitchen’ of the contested sign are not eye-catching and are purely descriptive elements and adds that the word ‘International’ is also devoid of distinctive character, while the word ‘Panda’ simply emphasises the concept of the figurative element. It argues that the third earlier word mark ‘PANDA’ coincides with the only distinctive word of the contested mark.
According to the applicant, it is a well-known fact that the earlier marks enjoy a high degree of recognition and reputation in Europe. It claims that all the goods and services of the marks are highly similar.
Therefore, it believes that all these factors lead to a likelihood of confusion, which includes the likelihood of association, on the part of the average consumer.
The CTM proprietor, despite having been duly notified of the invalidity application by the Office and invited to comment on it, did not file any observations in response.
LIKELIHOOD OF CONFUSION – ARTICLE 53(1)(a) CTMR IN CONNECTION WITH ARTICLE 8(1)(b) CTMR
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. For reasons of procedural economy, the Cancellation Division will first examine the application in relation to earlier international trade mark registration No 629 538 designating Italy.
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 the following:
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and canned fruits and vegetables; jellies, jam, compotes, eggs, milk and milk products; substitutes of milk and milk products; edible oils and fats.
The contested goods and services are the following:
Class 29: Alginates for food; edible birds’ nests; protein for human consumption; rennet; weed extracts for food.
Class 43: Catering services; temporary accommodation.
As a preliminary comment, the Cancellation Division notes that the original version in French of the goods in the database extract provided by the proprietor of earlier International registration No 629 538 is the class heading of Class 29 of the sixth edition of the Nice Classification, which was in force at the time of filing of the earlier mark. Although the English translation provided does not correspond entirely to the English wording of the class heading of Class 29 because of inaccurate translations (‘cuits’ are translated by the applicant as ‘canned’ instead of ‘cooked’, and ‘compotes’ are translated as ‘compotes’ instead of ‘fruit sauces’), it is considered that the earlier mark is registered for the class heading of Class 29 in the sixth edition of the Nice Classification.
Consequently, earlier International trade mark registration No 629 538 designating Italy is registered for the entire class heading of Class 29 of the Nice Classification. It was filed on 30/12/1994. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the sixth edition.
Contested goods in Class 29
The contested alginates for food; edible birds’ nests; protein for human consumption; rennet; weed extracts for food are included in the alphabetical list of goods of Class 29 of the sixth edition of the Nice Classification, for which the earlier mark is considered to be registered. Therefore, they are identical.
Contested services in Class 43
The contested catering services are related to the applicant’s preserved fruits and vegetables in Class 29. Notwithstanding their different natures, from the point of view of the consumer the abovementioned contested services and the applicant’s goods in Class 29 are complementary, in the sense that the applicant’s goods are at the heart of the provision of catering services. Consequently, the relevant public would expect that in some cases the commercial origin and distribution channels of these goods and services coincide. Therefore, the goods and services under comparison are similar to a low degree (see also 12/12/2014, T-405/13, Da Rosa, EU:T:2014:1072, § 96-98)
The contested temporary accommodation does not have points in common with the applicant’s goods in Class 29, either those expressly mentioned in the list of goods or those included in the alphabetical list of Class 29, for which the earlier mark is considered to be registered. Apart from their different natures (goods being tangible while services intangible), they serve different purposes (providing temporary accommodation versus foodstuffs and additives for foods) and have different methods of use. Moreover, they are not in competition with each other and they do not usually share the same commercial origin. Therefore, they are dissimilar.
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.
The goods and services found to be identical and similar to a low degree are directed partly at the public at large (e.g. edible birds’ nests in Class 29 and catering services in Class 43), with an average degree of attention, and partly at consumers with specific professional knowledge or expertise in the food industry, such as producers of foodstuffs (e.g. rennet, used in the making of cheese) with higher degrees of attention, because these goods are important ingredients for the production of the final foodstuff.
Earlier trade mark
Contested trade mark
The relevant territory is Italy.
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 marks. The earlier mark consists of a stylised silhouette of a panda, below which the capital letters ‘WWF’ are depicted in a rather standard typeface. The contested sign is composed of a stylised silhouette of a panda bear, which is encircled by the expression ‘Asian Fusion Gourmet Kitchen’, depicted in rather standard title case letters. Between this expression and the bear there is an Asian verbal element. To the right of these elements, and in a bigger font, the words ‘Panda International’ are written over two lines in rather standard italic title case letters. The word ‘International’ is followed by the symbol for a registered trade mark, namely ‘®’.
As a preliminary comment, it should be noted that the symbol ‘®’ at the end of the verbal elements of the contested sign will be understood as a symbol indicating that the sign preceding it is a registered trade mark. Due to its meaning and diminutive size, this symbol is not considered to be a material element in the comparison below.
The figurative elements of the marks under comparison will be perceived as stylised pandas.
The letters ‘WWF’ in the earlier mark will be associated by a part of the public with the abbreviation for the World Wildlife Fund, now renamed the World Wide Fund for Nature, an international non-governmental organisation, working in the field of biodiversity conservation, and the reduction of humanity’s footprint on the environment. For another part of the public, the letters ‘WWF’ of the earlier mark will not be associated with a meaning.
The word ‘Panda’ of the contested mark will be understood by the relevant public as referring to a large black-and-white herbivorous bear-like mammal.
The word ‘International’ of that mark will be understood as ‘of, concerning, or involving two or more nations or nationalities; established by, controlling, or legislating for several nations; available for use by all nations’ because it is very similar to its Italian equivalent, ‘internazionale’. This element is considered non-distinctive for all the goods and services at issue because it will be perceived as a mere indication that describes the geographical extent of a business, namely that its goods or services are available in several countries and/or that the producer or provider is involved in business activities across or transcending national boundaries.
The expression ‘Asian Fusion Gourmet Kitchen’ in the contested mark has no meaning as a whole for the relevant public. However, the word ‘Asian’ may be perceived by the relevant public as an adjective meaning ‘of or relating to Asia or to any of its peoples or languages’, because the English word ‘Asian’ and its Italian equivalent ‘asiatico’ have the same root, namely the noun ‘Asia’, which is also meaningful in Italian. This element is considered non-distinctive for the goods and services at issue since it indicates their geographical extent.
The word ‘Fusion’ will be understood with its meaning as ‘the act or process of fusing or melting together; union’ or, in relation to the relevant goods and services, as ‘relating to a style of cooking which combines traditional Western techniques and ingredients with those used in Eastern cuisine’ because it is very similar to its Italian equivalent, ‘fusione’. Bearing in mind that the relevant goods and services are related to the food industry, it is considered that this element is weak for these goods and services, since it may be perceived as related to a combination of traditional Western kitchen and Oriental cuisine.
The word ‘Gourmet’ in the contested sign is a French word which has been incorporated into Italian and will be perceived as referring to ‘buongustaio’, meaning a connoisseur of good food and drink, by the relevant Italian public (see, for example, Treccani Italian Dictionary online at http://www.treccani.it/vocabolario/gourmet/). Furthermore, the meaning of this expression is nowadays broader, as this word is commonly used in the food and drink industry to describe refined or elegant properties in foodstuffs and drinks. It can also relate to high-class restaurants (‘haute cuisine’) or food stores providing refined ingredients and elaborate meal preparations of a higher class. Bearing in mind that the relevant goods and services are related to the food industry, it is considered that this element is weak for these goods and services, since it is an indication of their exquisite quality.
The word ‘Kitchen’ is an English word which will not be associated with a meaning by the relevant Italian consumers.
The Asian verbal element in the contested sign, if noticed by the consumers, will be perceived as an element written in a foreign language and will not be associated with a meaning.
Consequently, the relevant public will not pay as much attention to the weak and non-distinctive elements of the mark (the words ‘International’, ‘Asian’, ‘Fusion’ and ‘Gourmet’) as to the other, more distinctive, elements. As a result, the impact of these elements is limited when assessing the similarity between the marks at issue.
The earlier mark has no elements that could be considered more dominant (visually eye-catching) than other elements.
The figurative element, namely the silhouette of a panda, and the verbal elements ‘Panda International’ are the co-dominant elements of the contested sign due to their size in relation to the other, smaller verbal elements.
Visually, the signs are similar on account of the highly similar, almost identical, silhouette of a panda. They differ in the verbal elements and the overall structure of the marks.
Although in principle when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, this cannot be automatically assumed in each case, as the overall impression of the signs has to be assessed on a case-by-case basis and depends on all the relevant circumstances. In the present case, the silhouette of a panda is a distinctive and co-dominant element in both signs. On the other hand, the verbal element ‘Asian Fusion Gourmet Kitchen’ in the contested mark has less visual impact than the rest of the elements in the contested mark due to its size.
Furthermore, as seen above, some of the differing verbal elements of the contested sign have a limited impact when assessing the similarity between the marks, as the words ‘International’, ‘Asian’, ‘Fusion’ and ‘Gourmet’ are weak or non-distinctive for the goods and services at issue.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs does not coincide in any verbal element. The figurative elements will not be pronounced so they do not influence the aural comparison of the signs. Therefore, the signs are not aurally similar.
Conceptually, the relevant public will perceive the figurative elements of the marks under comparison as pandas. Furthermore, the distinctive and co-dominant word ‘Panda’ of the contested mark will also be understood by the relevant public, and it, therefore, reinforces the conceptual meaning conveyed by the figurative element of the sign.
The meaning of the other verbal elements of the marks, namely ‘WWF’ in the earlier mark, and ‘International’, ‘Asian’, ‘Fusion’ and ‘Gourmet’ in the contested sign (considering that the element ‘Kitchen’ will not be associated with a meaning), has already been defined above.
Owing to their descriptive meanings, the word ‘International’ and the words ‘Asian’, ‘Fusion’ and ‘Gourmet’ in the contested sign will receive less attention from consumers in the overall impressions conveyed by the marks.
Consequently, to the extent that both marks refer to the concept of a panda, conveyed by the distinctive figurative elements of the marks and reinforced by the word ‘Panda’ in the contested sign, the marks 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.
Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The applicant claimed that it is a well-known fact that the earlier mark enjoys a high degree of recognition and reputation in Europe. According to Article 76(1) CTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. It follows that the onus of providing evidence of higher distinctive character of the earlier mark is on the applicant. However, it did not file any evidence to prove this claim.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the 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.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa.
The marks in dispute have been found visually and conceptually similar on account of the highly similar, almost identical, figurative element, depicting a panda, which is an independent and distinctive element in both signs. Therefore, the marks under comparison convey similar overall impressions. The marks display differences mainly as a result of their additional verbal elements.
The contested services that are similar to a low degree will attract an average degree of attention on the part of the public. The contested goods are identical and the degree of attention, as far as they are concerned, may vary from average to higher than average. The earlier mark has normal distinctive character.
As seen above, the non-dominant verbal elements of the contested sign, namely the words ‘Asian Fusion Gourmet Kitchen’, have a limited impact in the overall impression conveyed by the contested sign due to their smaller size, in particular as some of these words (i.e. ‘Asian’, ‘Fusion’ and ‘Gourmet’) are weak or non-distinctive in relation to the goods and services at issue. Furthermore, the word ‘International’ in the contested sign will also be perceived as a non-distinctive term. Therefore, the chief identifiers of the contested sign are the figurative element, depicting a panda, and the word ‘Panda’, conveying the same concept as the figurative element.
Consequently, given the reproduction of the distinctive figurative element of the earlier mark almost identically in the contested sign, it is very likely that the relevant public will at least associate the contested sign with the earlier mark.
Therefore, considering that average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them, the Cancellation Division considers that the similarities between the signs are sufficient to lead to a likelihood of confusion. The likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers, even when showing a higher than average degree of attention, may legitimately believe that the contested mark is a new version or a brand variation of the earlier trade mark and, consequently, that the contested goods and services originate from the same undertaking that provides goods identified by the earlier mark.
This finding is valid also for the services similar to only a low degree, for which the similarities between the signs outweigh the low degree of similarity between those goods and services.
Therefore, the application is partially well founded on the basis of the applicant’s international trade mark registration No 629 538 designating Italy.
Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark. The application is not successful insofar as the remaining dissimilar services are concerned.
The applicant has also based its cancellation application on the following earlier trade marks:
German trade mark registration No 302 014 052 634 for the figurative mark , registered for goods in Class 29.
International trade mark registration No 629 538 designating Bulgaria, the Benelux countries, the Czech Republic, Germany, Spain, France, Croatia, Hungary, Austria, Poland, Portugal, Romania, Slovenia and Slovakia for the figurative mark , registered for goods in Class 29.
International trade mark registration No 574 594 designating the European Union for the word mark ‘PANDA’, registered for goods in Class 29.
Since these marks cover the same or a narrower scope of goods in Class 29, the outcome cannot be different for the temporary accommodation services in Class 43 for which the cancellation application has already been rejected due to the fact that these services are dissimilar to the goods of the opponent. Therefore, there is no likelihood of confusion for those services.
According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Cancellation Division
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.