CANCELLATION No 9 660 C (INVALIDITY)

William Joseph Norris Gonzalez, C. La Fuente, 4, 03610 Petrel (Alicante), Spain (applicant), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Metalube Limited, 4 Huntsman Drive, Irlam, Manchester M44 5EG, United Kingdom (EUTM proprietor), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, Leeds LS2 8PA, United Kingdom (professional representative).

On 24/07/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 11 319 407 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 11 319 407 for the figurative trade mark . The application is based on International trade mark registration No 636 473 designating Germany, France, Italy and Portugal, on Spanish trade mark registration No 1 669 603(4) and on UK trade mark registration No 2 017 243, all for the figurative trade mark . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant requests that the contested trade mark be declared invalid in its entirety as there is a likelihood of confusion with the earlier marks arising from the high similarity between the signs and from the identity or similarity between the goods and services. He submits evidence of genuine use of the earlier marks, which will be listed and analysed below, in reply to the Office’s notification to that effect based on the EUTM proprietor’s request received on 19/01/2015.

The EUTM proprietor criticises the evidence of use submitted and, in particular, puts forward that the evidence does not prove ‘a commercial exploitation of the earlier marks that is real’, namely for the purposes of maintaining or creating a share in the European Union market for the goods protected by the earlier marks. It points out to the deficiencies of the documents such as the fact that some are not dated or dated outside the relevant period, that only one of the distributors mentioned by the application is based in the European Union and that the invoices are not issued by the applicant but by another company. It also indicates that the signs which are used in those documents differ from the earlier marks as registered and do not constitute an acceptable variation of them.

Furthermore, the EUTM proprietor claims that there is no likelihood of confusion despite the fact that the goods in Class 4 are identical, and the services in Classes 40 and 42 similar, to the goods for which the earlier marks are registered. It alleges that the low degree of visual similarity and the average degree of phonetic and conceptual similarity which can be established between the signs are triggered by commonalities in the descriptive verbal elements of the earlier marks. It considers that the distinctive character of the earlier marks lies in their stylisation rather than in their verbal elements. In support of its contentions, it submits definitions of the words ‘metal’ and ‘lube’ as available at https://en.oxforddictionaries.com. Moreover, it argues that the professionals for whom the goods and services at issue are intended will pay a higher than average degree of attention on purchasing these goods and services

PROOF OF USE

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 application is based on several earlier trade marks which are all subject to proof of use requirement. For reasons of economy of proceedings, the Cancellation Division will first examine the application on the basis of the applicant’s Spanish trade mark registration.

The EUTM proprietor requested the applicant to submit proof of use of Spanish trade mark registration No 1 669 603(4) for the figurative sign .

The request has been filed in due time and is admissible given that the earlier trade mark 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 05/08/2014 and the contested trade mark was published on 03/01/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the Spain from 05/08/2009 to 04/08/2014 inclusive. Since the earlier mark was registered more than five years prior to the date of publication of the contested mark, use of the earlier mark had to be shown also for the period from 03/01/2008 to 02/01/2013 inclusive.

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

Class 4: Lubricating oils

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.

On 04/02/2015, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 09/05/2015 to submit evidence of use of the earlier trade mark. This time limit was extended until 09/06/2015 at the applicant’s request.

On 09/06/2015, within the time limit, the applicant submitted evidence as proof of use.

The applicant explains in its observations that, in 1985, a group of researchers in the field of tribology (the science of interacting surfaces in motion) created an antifriction formula, intended for the automobile and the industrial markets, capable of reducing friction dramatically and that this was the birth of a new generation of high tech antifriction lubricants. He explains that the ‘METAL LUBE’ product ‘made in USA by METAL LUBE INTERNATIONAL’, a division of FUTURE PRODUCTS, CORP., has warehouse distributors, inter alia METAL LUBE EUROPE, and that since its creation METAL LUBE has continued to bring innovative products onto the market.

The evidence is, inter alia, the following:

Document No 1: Extract from an undated catalogue in English entitled ‘METAL LUBE ANTI-FRICTION LUBRICANTS – Automotive and Industrial Applications’. The cover page features the sign . The document contains a list of ‘warehouse distributors’ namely METAL LUBE USA, INC., METAL LUBE EUROPE with an address in Alicante (Spain) and METAL LUBE COLOMBIA with an address in Bogota, Colombia, above which the following is indicated ‘Made in USA by METAL LUBE INTERNATIONAL A DIVISION OF FUTURE PRODUCTS, CORP. (with an address in the USA).

Document No 2: Catalogue, undated, in Spanish, partially translated into English entitled ‘METAL LUBE LA LUBRICACION MÁS AVANZADA DEL MUNDO A SU ALCANCE’ (Metal Lube, the most advanced lubrication in the world within your scope). The trade mark is visible on the first page. The text indicates that the METAL LUBE anti-friction formula drastically reduces frictions between metallic parts of motors and machinery (bearings, gears), a problem which leads to the wear of the parts in question and, as a consequence, to high energy consumption, expensive repairs and loss of time. The catalogue includes photographs of several products on which the trade mark ‘METAL LUBE’ is visible. These products are called ‘Fórmula Motores’ (engine formula), ‘Fórmula Alta Potencia’ (high-performance engine formula), ‘fórmula transmisiones manuales, diferenciales, y engranajes’ (Manual transmission formula), ‘Fórmula Transmisiones automáticas’ (Automatic transmission formula), ‘Fórmula Dirección Asistida y Aire Aconditionado’ (Power steering and air conditioning formula), ‘Tratamiento Sistema Combustible Gasolina’ (Gasoline fuel treament), ‘Tratamiento Sistema combustible Diésel’ (Diesel fuel treatment), ‘fórmula Motos 4 tiempos’ (4-stroke motorcycle formula), ‘Fórmula Engranaje y Cardán’ (gear and cardan formula) ‘fórmula Sistemas Hidraulicos’ (Hydraulic system formula)(for use in vacuum systems, vacuum pumps, injection machinery, any system of equipment incorporating hydraulic oil), Fórmula Bicycle’, ‘Fórmula penetrante’, ‘Fórmula Super Lubricante’. The goods are intended for lubrication of metallic parts of motors of cars and motorbikes, but also of industrial machinery, of bicycles or even of train/airplane/ship models in the case of the product called ‘Lubricante Técnico’.

Document No 3: Document in English about which the applicant explains that it is intended for its customers as additional information about the products, undated. The document explains that METAL LUBE drastically reduces frictions between parts, up to 95%, which results in lower fuel and oil consumption and that it can be used in all types of engines.

Document No 5: 98 invoices dated between 2003 and 2015, which, in the applicant’s own words are dated not only ‘within the relevant period but before and after this period in order to prove the continuous use in the market of the “METAL LUBE” products’.

The logo is placed in the upper left corner of each invoice. The invoices also indicate the company name ‘METAL LUBE España, S.L.’ (which becomes ‘METALUBE ESPAÑA S.L.’ as of the invoices dated January 2012, with the same address in Alicante, Spain.)

There are 44 invoices issued to customers in Spain and dated in the overlap of the two relevant periods namely between 05/08/2009 and 02/01/2013, to which must be added several invoices dated in either one or the other relevant period, also to customers in Spain. The addresses of the customers are in several towns/provinces of Spain such as Vizcaya, Navarra, Jaén, Granada, Valencia, Murcia, Madrid, Barcelona, etc.

The goods are described as: ‘Formula Motores’, ‘Form. Motos 4 tiempos’, ‘Fórmula Sistema diesel’, ‘Fórmula sistema gasolina’, ‘Form. Engranajes’, ‘Form. Super Lubricante’, etc.

The amounts of the invoices range from approx. EUR 1 200 to approx. EUR 5 800.

As supplementary evidence, the applicant files photographs of the products mentioned in the invoices, such as ‘fórmula motores (engine formula), ‘’fórmula engranajes’ (gear and cardan formula), ‘form. Motos 4T’ (4-stroke motorcycles formula), ‘fórmula sistemas gasolina’ (gasoline treatment formula), etc. on which the trade marks or can be seen.

Document No 9: Extract from the webpage http://store.metallube.es printed on 03/06/2015 showing T-shirts, accessories, tents and cyclist equipment on which the trade mark ‘METAL LUBE’ is visible such as as well as extract concerning the METAL LUBE anti-friction engine treatment and other METAL LUBE products (high-performance anti-friction engine treatment, technic lubricant, super grease formula). On some the trade mark displayed is , or , .

Document No 10: Among other documents, two invoices dated 22/09/2008 and 04/08/2015 issued by FUTURE PRODUCTS CORP. (in the USA) to the attention of ‘METAL LUBE ESPAÑA’ with an address in Alicante, Spain for high quantities of goods designated as ‘engine formula’, ‘manual transmission formula’, ‘hydraulic formula’, ‘diesel formula’.

Preliminary remarks

• The EUTM proprietor argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the earlier mark is registered. In particular, it claims that the catalogues are undated.

The EUTM proprietor’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

• The EUTM proprietor contests the evidence of use filed by the applicant on the grounds that it does not originate from the applicant itself (William Joseph Norris Gonzalez) but from another company (‘Metal Lube España S.L.’).

According to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor will be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the applicant submitted evidence of use of its marks made by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the applicant is an implicit indication that the use was made with its consent, the EUTM proprietor’s claim is unfounded.

To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use made by those other companies was made with the applicant’s consent and thus is equivalent to use made by the applicant.

Assessment of the proof of use

Time/Place/Extent of use

The invoices show that the use has taken place regularly within the two relevant periods and in the relevant territory, namely Spain. They provide sufficient information concerning the commercial volume, length of period and frequency of use as well as concerning the geographical extent of the use (the customers are in several provinces of Spain). Therefore, the evidence proves the time, the place and the extent of use in a satisfactory manner.

Nature of use

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.

Use as a trade mark

The catalogues and the photographs of products show use of the sign as a trade mark, directly in relation to the goods in question.

Use as 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.

The EUTM proprietor argues that the earlier mark is not used as registered, namely as . It submits that the verbal elements of the trade mark have very low distinctive character in relation to the goods for which the mark is registered. It explains that ‘lube’ is a noun which means ‘lubricant’ in English (in an informal language) and that the word ‘metal’ refers to the material out of which the parts of motors/machines to be lubricated are made. Therefore, in its opinion, the distinctiveness of the earlier mark as registered proceeds mainly from the stylisation of the words, especially the extended arms of the initial letter ‘m’ and of the last letter ‘E’. According to the EUTM proprietor, the sign as used in the evidence does not reproduce these features.

The Cancellation Division does not share the EUTM proprietor’s views. First, the word ‘lube’ is not meaningful is Spanish and is, therefore, a distinctive element of the sign as registered. The verbal element of the registered sign ‘metal lube’ is, as a whole, distinctive to a normal degree and will no doubt be perceived by the relevant Spanish public as having more trade mark significance than the stylisation, which has essentially decorative value.

The principle that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59) is fully applicable as regards the earlier mark as registered.

The instances of the sign as used in the evidence always reproduce the two verbal elements ‘metal’ and ‘lube’. Furthermore, the stylisation/layout of the mark as registered is also at least partially reproduced since the elements are always placed on top of each other, and the right stem of the letter ‘m’ of ‘metal’ extends downwards and merges with the stem of the letter ‘l’ of ‘lube’.

The omission of the extended strokes of the letters ‘m’ and ‘E’ in the sign as used does not alter the distinctive character of the mark as registered.

Therefore, the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

Use for the relevant goods

The earlier mark is registered for lubricating oils in Class 4. The evidence shows that the mark has been used for these goods. Therefore, the applicant has shown use for all the goods for which the mark is registered.

Conclusion

In view of the above, the evidence of use in its entirety sufficiently indicates the time, place, extent and nature of use of the applicant’s trade mark for the goods for which it is registered and on which the application is based.

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.

1. 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 4: Lubricating oils.

The contested goods and services are the following:

Class 4: Industrial oils and greases; lubricants.

Class 40: Bespoke mixing and blending of lubricants for third parties; bespoke mixing and blending of additives for lubricants for third parties.

Class 42: Diagnostic testing for industrial lubricants; condition monitoring relating to lubricants; analysis of industrial lubricants; surveying of industrial plants to assess lubrication needs; lubrication surveys; advice and consultancy relating to the aforesaid services.

Contested goods in Class 4

The contested industrial oils and greases; lubricants are identical to the applicant’s lubricating oils, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the contested goods.

Contested services in Class 40

According to the explanatory note to the Nice Classification, services in Class 40 involve a treatment of materials which entails a transformation of their properties, such as chemical or mechanical processing. The note also explicitly indicates that the processing or transformation is effected for the account of a third party.

In the present case, the contested services of mixing and blending lubricants/additives for third parties require the same expertise and machinery/technology as the production of lubricants. These services may be offered by producers of lubricants, independently from the actual manufacture/provision of lubricants, to other producers of lubricants which do not own the equipment required for the mix/blending, or to companies which have bought lubricants from other suppliers and require specific mixes for specific applications. Therefore, the goods and services share the same producers and may be intended for the same customers and distributed through the same channels. Furthermore, they are complementary. It follows that they are similar to, at least, a low degree.

Contested services in Class 42

The contested services of diagnostic testing for industrial lubricants; condition monitoring relating to lubricants; analysis of industrial lubricants; surveying of industrial plants to assess lubrication needs; lubrication surveys; advice and consultancy relating to the aforesaid services in Class 42 are closely related to the applicant’s lubricants. These services may be offered to industrial customers by manufacturers of lubricants as independent services from the manufacture of the lubricants themselves, based on their expertise in the field and using the testing and monitoring apparatus which they already use in the production of lubricants. Therefore the goods and services at issue have the same producers and target the same customers. Their distribution channels are also the same and there is a link of complementarity between them. It follows that they are similar to, at least, a low degree.

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 at issue are directed at the public at large such as owners of vehicles or at professionals such as industrial customers or vehicle repair shops.

The degree of attention may vary from average to high depending on the price and the intended purpose of the goods. Lubricating oils include inexpensive products for bicycle chains (01/10/2018, R 2499/2017-5, BRUNO (fig.) / BRUNOX, § 18; 43) but they also include oils for engines of machines/vehicles which may damage the latter if the wrong lubricant is chosen, thus entailing malfunctioning and costly repair.

The public for the contested services is made up of professionals. The services in question have a direct impact on the operation and efficiency of the machinery used by those industrials. Therefore, the degree of attention is considered to be high.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is Spain.

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 word ‘metal’ of the earlier mark will be perceived by the Spanish public as referring to the materials out of which the parts to be lubricated are made, hence as indicating the purpose of the relevant goods. The word ‘lube’ has no meaning in Spanish. As previously mentioned, the EUTM proprietor submits a definition of the word from an English dictionary, according to which ‘lube’ is an informal manner of saying ‘lubricant’. However, this is irrelevant as regards the Spanish public at issue. Not even professionals are likely to know the informal English word in question. The verbal element ‘LUBE’ will be perceived as an invented, fanciful element of the sign. It follows that the verbal element ‘lube’ of the earlier mark is distinctive to a normal degree whereas the verbal element ‘metal’ placed above is descriptive of the goods at issue.

The relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, Spanish consumers will identify the word ‘METAL’ at the beginning of the verbal element of the contested sign notwithstanding the fact that it is conjoined with the letters ‘UBE’. The element ‘METAL’ of the contested sign indicates that the services at issue concern lubricants for parts of metal and is, therefore, descriptive. However, the verbal element as a whole is meaningless, hence distinctive to a normal degree.

Furthermore, as previously mentioned when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). The principle applies in the present case as regards both signs. In particular, contrary to the EUTM proprietor’s arguments, the stylisation and layout of the verbal elements of the earlier mark will be perceived by the public as having less trade mark significance than the verbal sequence ‘METAL LUBE’ considered in its entirety.

Neither sign has elements with more visual impact than others.

Visually, the signs coincide not only in the descriptive verbal element ‘METAL’ but also in the letter sequence ‘UBE’. They differ mainly in the fact that the letters are distributed over two words placed on top of each other in the earlier mark whereas they form one word in the contested sign, and in the figurative element of the contested sign.

Those differences are not enough to counteract the fact that the verbal elements include eight letters in the same order and differ only in an additional letter ‘L’ in the earlier mark. Furthermore, the verbal elements in both signs are depicted in thick, black, upper case letters and, albeit not ‘conjoined’ the verbal elements of the earlier mark are closely linked together as their initial letters ‘m’ and ‘l’ are merged and as they are particularly close to each other, which gives the impression of a compact unit.

In view of the above the signs are visually similar to an above average degree.

Aurally, the split into two verbal elements and the additional letter ‘L’, in the earlier mark hardly trigger any difference when the signs are pronounced (/me-tal-lu-be/ v /me-ta-lu-be/. The signs have the same number of syllables; the same rhythm and the same intonation. Therefore, they are similar to a high degree, even virtually identical.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding word ‘METAL’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin.

As neither signs conveys a relevant concept, a conceptual comparison is not possible. It follows that 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.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for 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 a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the signs.

In the present case, the contested goods are identical, and the contested services similar, at least to a low degree, to the applicant’s goods. The signs are visually similar to a higher than average degree, aurally at the very least highly similar, and the conceptual aspect does not influence the assessment. The earlier mark enjoys normal distinctive character as a whole which affords it normal protection in the assessment.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering the above factors cumulatively, and the principles mentioned, it is concluded that a significant part of the relevant public, even showing a higher than average level of attention, is likely to confuse the signs or to believe mistakenly that the goods and services marketed under those signs come from the same undertaking or from economically linked undertakings.

Therefore, the application is well founded on the basis of the applicant’s Spanish trade mark registration. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

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

COSTS

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

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

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

The Cancellation Division

Frédérique SULPICE

Catherine MEDINA

Jessica LEWIS

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.L