of the Second Board of Appeal
of 6 July 2016
In Case R 1463/2015-2
Procter & Gamble Manufacturing Cologne GmbH
represented by Birgitte Grab, Sulzbacher Str. 40, 65824 Schwalbach am Taunus, Germany
RBI Franchise Services Limited
Darlington Suffolk DL1 5HG
represented by Ward Hadaway Solicitors, Sandgate House, 102 Quayside, Newcastle Upon Tyne NE1 3DX, United Kingdom
APPEAL relating to Cancellation Proceedings No 10 298 C (European Union trade mark registration No 11 345 923)
The Second Board of Appeal
composed of T. de las Heras (Chairperson), C. Negro (Rapporteur) and R. Ocquet (Member)
Registrar: H. Dijkema
gives the following
By an application filed on 14 November 2012, RBI Franchise Services Limited (‘the EUTM proprietor’) sought to register the word mark
for the following list of goods and services:
Class 3 − Perfumes; essential oils; bath soap; toilet soap; hand soap; cosmetics; eye-shadows; lipsticks; foundations, skin cleansers; skin toners; moisturisers; non medicated toilet preparations; preparations for the hair and scalp; shampoos; hair colouring preparations; hair lotions; hair conditioners; hair styling products; hair gels, hair mousse; hairsprays, dentifrices;
Class 35 − The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a retail outlet, catalogue or internet website, all relating to hair, beauty and cosmetic products and hairdressing and beautician services;
Class 41 − Provision of training and instruction in hairdressing; educational services relating to hair and hairdressing; arranging and conducting of conferences and exhibitions relating to hair and hairdressing; educational demonstrations of hairdressing; production of shows, films and videos relating to hair and hairdressing;
Class 44 − Hairdressing services; hairdressing salon services; beauty salon services; information services relating to hair and hairdressing, professional consultancy services relating to hair and hairdressing; rental of apparatus and instruments for beauty salons and hairdressers.
The application was published on 9 January 2013 and the mark was registered on 18 January 2014.
On 17 November 2011, Procter & Gamble Manufacturing Cologne GmbH (the ‘cancellation applicant’) filed a request for a declaration of invalidity in respect of all of the goods in Class 3 covered by the EUTM under Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR on the basis of the following earlier right:
International trade mark registration No 323 422 for the mark
dated 19 October 1966 and designating the European Union as from 2012 for the following goods on which the request is based:
Class 3 – Perfumery, cosmetics, essential oils, toilet soaps.
On 15 June 2015, the Cancellation Division adopted its decision (‘the contested decision’) whereby it rejected the request for a declaration of invalidity as unfounded as the cancellation applicant had failed to substantiate its earlier mark. The Cancellation Division ordered the cancellation applicant to bear the costs.
The contested decision may be summarized as follows:
The cancellation applicant filed along with the application for declaration of invalidity two letters issued by WIPO and sent to Procter & Gamble Manufacturing GmbH c/o Procter & Gamble Service GmbH, Berliner Straβe 65, 64274 Darmstadt, Germany (the letters are in French, accompanied with a translation into the language of the proceedings).
The letter dated 28 June 2012 is sent to the addressee for the purposes of informing it on details regarding the subsequent designation of, inter alia, the European Union of earlier international trade mark registration No 323 422 (including relevant dates and list of goods). The second letter is dated 10 June 2013 and refers to the recording of a limitation of the list of goods of earlier international trade mark registration No 323 422.
The letters issued by WIPO do not indicate the owner of the earlier mark. The company indicated in the letters is the addressee but there is no evidence or information whatsoever that the addressee and the owner of the earlier mark are one and the same legal entity.
Even if it were to be assumed that the addressee of the WIPO letters was to be accepted as owner of the earlier IR registration No 323 422, it should be taken into account that the cancellation applicant indicated in the application for a declaration of invalidity is Procter & Gamble Manufacturing Cologne GmbH. However, the WIPO letters are addressed to a different legal entity, namely to Procter & Gamble Manufacturing GmbH.
The cancellation applicant did not inform the Office that the proprietor had changed its name to Procter & Gamble Manufacturing Cologne GmbH or that the earlier mark had been transferred, nor did it file any evidence thereof; nor has it claimed and shown that it acts as a licensee or a person authorised by the company named in the evidence, Procter & Gamble Manufacturing GmbH. Consequently, the evidence filed by the cancellation applicant is not sufficient to substantiate the earlier mark, because it does not verify the cancellation applicant’s ownership of the earlier mark invoked and its entitlement to file the request.
Furthermore, the WIPO letters contain no indication of the type of earlier mark.
Therefore, the submitted documents are insufficient to prove the existence, validity and the scope of protection of the earlier IR registration No 323 422 designating the European Union or the cancellation applicant’s entitlement to file the request.
On 23 July 2015, the cancellation applicant filed a notice of appeal against the contested decision. On 17 September 2015, it submitted its statement of grounds together with additional documents.
On 20 October 2015 the EUTM proprietor was invited to file observations on the appeal within two months. The EUTM proprietor did not reply.
The cancellation applicant requests the Board of Appeal to review the matter and to admit the invalidity request taking into account the evidence submitted. The rejection of the request for a declaration of invalidity is unjustified, since the addressee in the letter from WIPO—Procter & Gamble Manufacturing GmbH—is wrong and is not the proprietor. The correct proprietor is Procter & Gamble Manufacturing Cologne GmbH which is evident from the OHIM and WIPO register (print outs from EUIPO and WIPO registers are attached).
Preliminary remark on the applicable regulations
The request for a declaration of invalidity was filed before the entering into force (on 23 March 2016) of the new European Trade Mark Regulation (EUTMR) which was introduced by Amending Regulation (EU) No 2015/2424. Therefore, the former Community Trade Mark Regulation (EC) No 207/2009 (CTMR) is applicable to this appeal. However, for ease of reference the Board will refer to ‘EUTMR’ and the new terminology introduced by the amending Regulation, bearing in mind that the material changes introduced by the latter Regulation will not apply to the case at hand.
On the other hand, since the new European Union Trade Mark Implementing Regulation (EUTMIR) will not enter into force until 1 October 2017, the Board will continue referring to the current Community Trade Mark Implementing Regulation (EC) No 2868/95 (CTMIR).
The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR. It is, therefore, admissible.
Rule 37(b)(ii) and (c)(i) CTMIR provide that an application to the Office for a declaration of invalidity shall contain particulars of the right on which the application is based and if necessary particulars showing that the cancellation applicant is entitled to adduce the earlier right as grounds for invalidity, and the name and address of the cancellation applicant.
In order to prove the above, the cancellation applicant submitted two letters issued by WIPO, addressed to Procter & Gamble Manufacturing GmbH, c/o Procter & Gamble Service GmbH, concerning the earlier international trade mark registration No 323 422. The first letter contains details regarding the subsequent designation of, inter alia, the European Union (including relevant dates and list of goods). The second letter refers to the recording of a limitation of the list of goods as regards the EU designation.
Pursuant to Rule 39(3) CTMIR, if the Office finds that the application for invalidity does not comply with Rule 37, it shall invite the cancellation 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.
The Cancellation Division, interpreting Rule 39(3) CTMIR as only applying to deficiencies concerning admissibility requirements, and not to deficiencies concerning substantiation requirements—which the cancellation applicant must remedy on its own motion (according to the Office’s practice: see Guidelines for Examination in the Office, Part D, Cancellation)—rejected the invalidity request as not duly substantiated on the ground that the documents submitted do not indicate the owner of the earlier mark but only the addressee (Procter & Gamble Manufacturing GmbH), whose name moreover does not coincide with the cancellation applicant’s (Procter & Gamble Manufacturing Cologne GmbH). The Cancellation Division also pointed out that the WIPO letters contain no indication of the type of the earlier mark.
However, before the Board of Appeal, the cancellation applicant submitted printouts from both the OHIM (rectius: EUIPO) and WIPO registers duly showing that the earlier mark’s proprietor is indeed Procter & Gamble Manufacturing Cologne GmbH (the cancellation applicant). The information about the type of mark (figurative) is also contained in the submitted printout from EUIPO database.
Even if, following the interpretation of Rule 39(3) CTMIR made by the Cancellation Division, the additional evidence filed before the Board were to be considered as belated, the Boards of Appeal enjoy the discretion deriving from Article 76(2) EUTMR (possibly read in combination with the third paragraph of Rule 50(1) CTMIR, applicable to cancellation proceedings by analogy) to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time-limits set or specified by the department whose decision was appealed (by analogy, 03/10/2013, C−120/12 P, Proti Snack, EU:C:2013:638, § 32).
In view of the powers conferred upon it by Article 76(2) EUTMR, the Board considers the documents filed on appeal as admissible evidence, as they are supplementary documents which are relevant to the proceedings and serve to clarify the issues raised by the first instance department. Given that the deficiencies of the evidence as pointed out by the Cancellation Division have been remedied on appeal, it is considered that the earlier trade mark No 323 422 has been duly substantiated.
Pursuant to Article 64(1), second sentence, EUTMR, the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. In the present case, the Board decides to opt for the first alternative, that is, not to remit the case to the Cancellation Division for the assessment of the likelihood of confusion between the marks in dispute, but to exercise that power itself, for the following reasons. First, both the cancellation applicant and the EUTM proprietor have had an opportunity (irrespective of whether they availed themselves of it) to submit their observations, before the Cancellation Division, concerning the comparison of the goods and the signs as well as on the likelihood of confusion between the latter. Therefore, compliance with Article 75, second sentence EUTMR is ensured. Second, the Board considers that, in the present case, the decision not to remit the case to the Cancellation Division (for the assessment of the likelihood of confusion) avoids unnecessary delay in the proceedings.
Pursuant to Article 53(1)(a) EUTMR, an EU trade mark shall be declared invalid on request to the Office where there is an earlier trade mark as referred to in Article 8(2) EUTMR and the conditions set out in paragraph 1 or 5 of that Article are fulfilled.
It follows from Article 8(1)(b) EUTMR that upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C−39/97, Canon, EU:C:1998:442, § 30).
The likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18), in particular the similarity of the marks and the similarity of the goods and services, which are interdependent criteria in the sense that a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. In that perspective, 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, § 22-24).
In the present case, the earlier right is an international registration designating the European Union. Therefore, the relevant territory in which to analyse the risk of confusion for the purposes of the application of the above provisions includes the European Union as a whole.
As for the relevant public, the conflicting goods in Class 3 are directed at the public at large, whose average consumer is deemed to be reasonably informed, observant and circumspect (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
It should also be noted that the average consumer’s level of attention may vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In the present case, the targeted public is likely to pay an average level of attention in the purchase of the relevant goods.
Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but has to place his/her trust in the imperfect image of them that he/she has retained in his/her mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
The likelihood of confusion must be determined by means of a global appraisal of the visual, aural and conceptual similarity of the marks, on the basis of the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C−251/95, Sabèl, EU:C:1997:528, § 23).
Two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, phonetic and conceptual aspects (02/12/2009, T−434/07, Solvo, EU:T:2009:480, § 31 and the case-law cited therein).
As regards the visual comparison, first of all, the Board notes that, despite being classified as ‘figurative’, the earlier sign is very close to being a word mark, given that it consists of a word written in a rather commonplace typeface with the first letter capitalised. Therefore, it can be safely concluded that the graphic representation of the cancellation applicant’s mark does not have any relevant impact in the comparison.
Bearing in mind the above, the earlier sign and the contested sign ‘Be Premiere’ are both composed of the word ‘Premiere’, the only difference between them being the presence of the word ‘Be’ at the beginning of the contested sign. In the Board’s view, despite its position at the beginning, the two-letter term ‘Be’ of the contested sign is clearly unlikely to divert the consumer’s attention away from the eight-letter term ‘Premiere’, which on account of its length is particularly eye-catching. Given that the only word of which the earlier mark consists is fully included in the contested sign as a standalone term which is by far the longest and most eye-catching element of the contested mark, the Board of Appeal considers that the signs at issue are visually very similar.
Likewise, aurally, given the total coincidence in the pronunciation of the common word ‘Premiere’, whose long sound is clearly not counteracted by the short sound of the term ‘Be’ at the beginning of the contested sign, the signs display a high degree of phonetic similarity.
Conceptually, the common word ‘Premiere’ in English is a borrowed term from the French ‘Première’, also used without accent, which means, as an adjective, ‘first in time; earliest, opening, initial’ and ‘first in importance or position; foremost, leading; outstanding’ (Oxford English Dictionary). It is a word which is widely known and used worldwide in order to indicate the debut (first public presentation) of a play, film, dance, or musical composition (see also, for the word ‘premiere’ as a noun, Oxford English Dictionary). The English word ‘Be’ of the contested sign is a basic English word which refers, as such, to the imperative form of the verb ‘(to) be’. Insofar as the public of the European Union understands the meaning of these words, which are, as observed, rather common and/or basic English words, both signs will refer to the same, somewhat laudatory concept of ‘Premiere’, reinforced by the exhortative value introduced by the verb ‘Be’ in the contested sign. Hence, providing that the public will grasp the sign’s meanings, there is a conceptual similarity between the marks.
According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant factors pertaining to the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 37 and the case-law cited).
The contested ‘Perfumes; essential oils; toilet soap; cosmetics’ are evidently identical to the corresponding goods of the earlier mark ‘Perfumery, cosmetics, essential oils, toilet soaps’.
The contested ‘bath soap’ and ‘hand soap’ are included in the earlier mark’s broader category of ‘toilet soap’ and are thus identical thereto.
Likewise, the contested ‘eye-shadows; lipsticks; foundations, skin cleansers; skin toners; moisturisers; non medicated toilet preparations; preparations for the hair and scalp; shampoos; hair colouring preparations; hair lotions; hair conditioners; hair styling products; hair gels, hair mousse; hairsprays’ are included in the general category of ‘cosmetics’ covered by the earlier mark. Thus, there is identity between those goods as well.
The remaining contested goods, namely ‘dentifrices’ are similar to the cancellation applicant’s ‘cosmetics’ in so far as they are intended for daily bodily care (10/03/2016, T-53/15, Curodont, ECLI:EU:T:2016:136, § 28).
The level of inherent distinctiveness of the earlier mark with respect to the goods in question can be considered as average at best. In fact, despite not being commonplace for the goods in question and being rather well-known for its meaning as a noun (indicating a first performance or showing of a play, film, etc.), the term ‘Premiere’ has a generic laudatory character in its adjectival form, as previously observed, which may reduce its distinctive force.
The contested goods in Class 3 are partly (mostly) identical and partly similar to the earlier mark’s goods. The marks are visually and aurally very similar and are also conceptually similar for at least a substantial part of the consumers.
In view of the above, bearing in mind the imperfect recollection of trade marks in the mind of the relevant consumers, whose degree of attentiveness is not likely to be higher than average, and taking into account the interdependence of all the relevant factors, the Board considers that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR with respect to all the contested goods, insofar as the targeted consumers are likely to believe that the identical and similar goods covered by the marks at issue and ‘Be Premiere’ come from the same undertaking or from economically-linked ones (see, by analogy, decision of 30/03/2015, R 1440/2014-5, true SPIRIT (fig.) / Spirit).
In light of all the foregoing considerations, the appeal is upheld and the contested registration must be declared invalid for all the contested goods, namely all goods in Class 3.
In accordance with Article 85(2) EUTMR, for reasons of equity, the Board decides that each party shall bear its own fees and costs in the cancellation and appeal proceedings in view of the particular circumstances leading to the annulment of the contested decision, which include the taking into account of additional evidence filed for the first time before the Board.
On those grounds,
Annuls the contested decision;
Declares the invalidity of the contested EUTM registration for all the contested goods, namely all goods in Class 3;
Orders that each party shall bear its own fees and costs in the cancellation and appeal proceedings.
T. de las Heras
06/07/2016, R 1463/2015-2, Be Premiere / Premiere (fig.)