CANCELLATION No 9953 C (INVALIDITY)
Prolyte Products B.V., Industriepark 31, 9351 PA Leek, the Netherlands (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, the Netherlands (professional representative)
a g a i n s t
Wenger Corporation, 555 Park Drive, Owatonna, MN 55060, the United States of America (proprietor), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, the United Kingdom (professional representative)
On 01/04/2016, the Cancellation Division takes the following
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 11 441 318 is declared invalid in its entirety.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 11 441 318. The application is based on, inter alia, international trade mark registration No 1 053 685 designating the European Union. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1) (b) and 8(5) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that there is a likelihood of confusion between its earlier international trade mark registrations and the contested mark, in respect of the goods in Classes 6, 19 and 20. The goods of both trade marks are identical or highly similar. The trade marks are visually, aurally and conceptually similar. Furthermore, we note that the trade mark Stage DEX was introduced in 2003 by the opponent and has been used intensively throughout the world, including the European Union, for more than a decade.
In support of its observations, the applicant filed the following evidence:
-Annex IV: A list that shows that the opponent has one or more distributors in almost all
European Union countries.
- Annex V: Copies from the websites of various distributors in the European Union and outside the European Union showing use of the Stage DEX mark.
-Annex VI: Articles published about, amongst others, the opponent’s Stage DEX products in the online and digital magazine of Lightning and Sound International (over 10.000 subscribers). The articles show use of the mark Stage DEX in various European
Union Countries and during the leading international trade shows such as PLASA (with more than 11.000 international and United Kingdom visitors) and Prolight+Sound (with almost43.000 visitors, around 50% international and 50% German) from 2003 to 2013.
-Annex VII: Copies of the opponent’s brochures for the Stage DEX product range (amongst others 2007) showing use of the Stage DEX products in various European Union countries.
Annex VllI: Articles and press cuts published.
- Annex IX: A sworn Affidavit of Klaas Meijer, as CFO and statutory director of Prolyte Group , that was recently filed in an opposition against the applicant’s mark in Canada. The Affidavit shows, amongst others, that in the preceding three years the opponent has expended in excess of € 500.000 per year globally on advertising and marketing and attracts 14.000 visitors to its website per month.
- Annex X: A certificate showing that the well-known TÜV quality marking can be used for Stage DEX products.
- Annex XI: In this attachment you can find a decision in an opposition procedure concerning the exact same trademarks between parties in South Korea. This opposition mentions that both marks are similar and that the mark of our client is quite well known.
The CTM proprietor argues that it is clear from the evidence which has been filed by Prolyte Products SV., that both signs are used in respect of ‘stages’ or ‘staging’. The marks share a component with low distinctiveness, the assessment of the likelihood of confusion must focus on the similarities or differences and distinctiveness of the non-common elements. The overall impression of the marks is only similar because of the identical non-distinctive prefix. In principle, the coincidence of a low distinctive element should not normally lead to there being a likelihood of confusion unless the other elements have a lower or the same low distinctiveness, or they have an insignificant visual impact and the overall impression of the marks are similar, or the overall impression of the marks is highly similar or identical. The lack of similarity leading to there being no likelihood of confusion is supported by the factual situation in the marketplace.
The likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods in question, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the goods designated. In this case, account needs to be taken of the identity of the average consumer of the category of goods. This is a consumer who will be purchasing a specialised line of products for erecting a stage and would need to have specific knowledge of the same, and is a consumer who is far more knowledgeable than the average consumer who is merely reasonably well informed and reasonably observant and circumspect.
The products under the marks STAGE DEX and STAGETEK have been selling side by side in the European Union for the last three years, with no single instance of confusion being reported to the owners of the registration. Moreover, from the evidence being provided on behalf of Prolyte Products B.V., there is a similar failure to show any single consumer, trade source or other body or individual who has experienced any confusion in the marketplace.
The proprietor filed evidence of use of its trade mark.
As regards the claim under Article 8(5) EUTMR. The Proprietor argues that evidence Prolyte Products B.V. filed does not focus on the existence of the requisite reputation in the European Union. There is no breakdown as to its advertising or sales focusing on the Member States. There is no indication of the percentage of the European Union market enjoyed by Prolyte Products BN nor any survey indicating any level of European Union consumer knowledge of the STAGE DEX product. The evidence falls at the first hurdle to prove the level of reputation required within the only relevant countries.
The CTM proprietor requests that the application for Invalidity is dismissed and that an award of costs is made in favour of the Registered Proprietor.
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 1 053 685 designating the European Union.
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 6: Building materials of metal; transportable buildings of metal; floors of metal; framework of metal for building; tubes of metal and steel; pipework of metal; prefabricated platforms of metal; staircases of metal; rails of metal.
Class 19: Building materials, not of metal; rigid pipes, not of metal [building]; transportable buildings, not of metal; floors, not of metal; framework, not of metal, for building; prefabricated platforms, not of metal; staircases not of metal.
The contested goods are the following:
Class 6: Portable and mobile staging, platforms, and seated risers comprising aluminum frames and legs.
Class 19: Portable and mobile staging, platforms, and seated risers comprising plywood core decks.
Class 20: Portable and mobile staging, platforms, and seated risers.
As a preliminary remark, according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.
Contested goods in Class 6
The contested portable and mobile staging, platforms, and seated risers comprising aluminum frames and legs are included in the broad category of the applicant’s transportable buildings of metal. Therefore, these goods are considered identical.
Contested goods in Class 19
The contested portable and mobile staging, platforms, and seated risers comprising plywood core decks are included in the broad category of the applicant’s transportable buildings, not of metal. Therefore, these goods are considered identical.
Contested goods in Class 20
The contested portable and mobile staging, platforms, and seated risers are included in the broad categories of the applicant’s transportable buildings of metal or transportable buildings, not of metal. Therefore, these goods are considered at least highly similar.
Earlier trade mark
Contested trade mark
The relevant territory is the European Union.
For reasons of procedural economy, the Cancellation Division will focus the comparison of the signs on the French speaking part of the relevant public.
Visually, the signs are similar to the extent that they coincide in the sequence ‘STAGE*E*’. On the other hand, they differ in the letters ‘D*X’ of the earlier sign and ‘T*K’ of the contested one.
Aurally, the pronunciation of the marks coincides in the syllables /sta-ge/ and in the sound of the letter /e/ in seventh position present identically in both signs, and to that extent the marks are aurally similar. The pronunciation differs in the syllable in the sound of the letters /d-x/ of the earlier mark and /t-k/ of the contested one placed in fifth and eighth positions.However, the different consonants “D”/“T” and “X”/”K” which are in the same position are dental sounds and ejective sounds respectively in both cases. Consequently, the rhythm and the intonation are highly similar.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘STAGE’ included in both signs will be associated with ‘professional training’. To that extent, the signs are conceptually similar.
Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks have no elements which could be considered clearly dominant (visually eye‑catching) or more distinctive than other elements.
Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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.
Relevant public – level of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, the average consumer’s level 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 at least highly similar are specialised goods that target business consumers with specific professional knowledge or expertise which level of attention is considered to be high.
Global assessment, other arguments and conclusion
All the goods have been considered to be identical or at least highly similar.
The comparison of the signs has shown that the conflicting marks are of the same length and that they share six out of eight letters of the earlier mark in the same positions. the sequence ‘STAGE*E*’. In addition, the structure of the marks is similar. Moreover, Furthermore, the different consonants “D”/“T” and “X”/”K” which are in the same position are dental sounds and ejective sounds respectively in both cases. Consequently, the rhythm and the intonation are highly similar.
Thus, they can be easily confused. The above assessment results in high degree of aural similarity which is corroborated by a visual similarity of a medium degree.
The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when they encounter a trade mark since they read from left to right, which means that the (initial) left-hand part of the sign catches their attention first. Consequently, the fact that the initial elements of the marks are identical has to be taken into account when assessing the likelihood of confusion between the marks.
In its observations, the proprietor argues that the element STAGE in both signs is a descriptive term for the goods, however, this statement is only valid in relation to the English-speaking public.
Neither of the marks as a whole has a specific meaning, in connection to the goods for the French speaking public, which could distinguish one sign from the other by a clear and particular semantic reference.
The signs are similar and the contested goods are identical or at least highly similar. Therefore there is a likelihood of confusion within the meaning of Article 8(1)(b) in conjunction with Article 53(1)(a) EUTMR and the cancellation application is upheld.
Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its reputation as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier international trade mark registration No 1 053 685 designating the European Union leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (judgment of 16/09/2004, T‑342/02, ‘Moser Grupo Media’).
Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(5) EUTMR in conjunction with Article 53(1)(a) EUTMR.
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the CTM 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 Rule 94(3) and (6) and Rule 94(7)(d)(iii) 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
Victoria DAFAUCE MENÉNDEZ
Agueda MAS PASTOR
According to Article 59 CTMR, 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. 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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Article 2(30) CTMFR).