CANCELLATION No 21 964 C (INVALIDITY)

VQ Limited, 325 Fulham Road, London SW10 9QL, United Kingdom (applicant), represented by Bird & Bird LLP, 12 New Fetter Lane, London EC4A 1JP, United Kingdom (professional representative)

a g a i n s t

Beijing Pinyuan Fruits Co. Ltd, Room 312, No 2 Shaoyaoju, Taiyanggong, Chaoyang District, Beijing, People’s Republic of China (EUTM proprietor), represented by Colbert Innovation Toulouse, 2Ter Rue Gustave de Clausade BP 30, 81800 Rabastens, France (professional representative).

On 26/03/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 11 760 311 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark registration No 11 760 311  . The application is based on European Union trade mark registration No 9 114 059 ‘VQ’ and a non-registered word mark ‘VQ’, used in the course of trade in the United Kingdom. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the signs in dispute are visually, aurally and conceptually highly similar, while the goods and services covered by the proprietor’s registration, also share a direct link with the applicant’s core use of its VQ brand, in relation to its restaurants. Therefore, there is a clear risk that the relevant public would believe that the services in question come from the same undertaking, or from economically-linked undertakings. The applicant also filed observations in relation to the applicability of Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR which do not need to be mentioned here as the case will be successful under Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR. The EUTM proprietor did not submit observations in spite of having been set a deadline for them.

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 and services on which the application is based are the following:

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 43: Services for providing food and drink; temporary accommodation; all aforementioned services only on land.

The contested goods and services are the following:

Class 30: Biscuits; confectionery; pastries; cereal-based snack food; sandwiches; pizzas; sushi; farinaceous foods; ice cream; coffee-based beverages.

Class 32: Beer; non-alcoholic fruit juice beverages; fruit juices; waters (beverages); lemonades; vegetable juices (beverages); milk of almonds (beverage); fruit nectars, non-alcoholic; non-alcoholic beverages; preparations for making beverages.

Class 43: Mobile catering services; canteens; restaurants; bar services; tea rooms; rental of furnishings; cafeterias; cafés; accommodation bureaux (hotels, boarding houses); rental of chairs, tables, table linen, glassware.

Contested goods in Classes 30 and 32

All the contested goods are similar to a low degree to the applicant’s services for providing food and drink. These goods and services can have the same producer/provider and use the same distribution channels. The goods in Classes 30 and 32 are complementary to gastronomic services and such goods are often required on menus in restaurants, bars and cafes. From the consumer’s point of view, these goods and services are, therefore, complementary. Numerous business models not only provide for the sale of foodstuffs produced by them as goods, but also for the provision of catering services, be it within their own business establishments or in the field of outside catering, and vice versa, with providers of catering services diversifying their offer with ready-to-serve meals.

Contested services in Class 43

The services of mobile catering; canteens; restaurants; bar services; tea rooms; cafeterias; cafés; accommodation bureaux (hotels, boarding houses) are included either in the general category of services for providing food and drink or in the general category of temporary accommodation; therefore, these services are identical.

The services of rental of furnishings; rental of chairs, tables, table linen, glassware are similar to services for providing food and drink. It is common nowadays, that the companies providing catering services also provide customers with tables, chairs and many other pieces of furniture that might be necessary for large gatherings such as weddings and other celebrations. It is also customary that these companies not only provide food and furniture, but also glasses, table linen, cutlery and alike; therefore, the commercial origin of the goods and services is the same, as are the channels of trade, and the services are complementary.

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 and services found to be identical or similar to a low degree are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention might vary depending on the specific goods or services and, therefore, their nature and price

3. The signs

VQ
Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

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).

Visually, the marks are similar to an average degree, given that the consumers will immediately perceive the letters ‘VQ’ in the contested trade mark. Though it is true that the letters are represented in different typescripts it is no less true that the figurative elements are usually less relevant than the verbal elements themselves.

Aurally the marks are identical, as the letters they contain will be pronounced in the same way. Conceptually, however, the combination of letters means, nothing, and therefore, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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 services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on 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, § 22 et seq.).

For the purposes of the global assessment, the average consumer of the category of products and services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

The public is composed of average consumers and professionals, with a degree of attention that can vary from average to high. The goods and services have been found either identical or similar to various degrees. The signs are visually similar to an average degree, and aurally identical. Under the circumstances, it is feasible to assume that the relevant consumers will be confused as to the origin of the goods and services that have been found identical.

A global assessment of the likelihood of confusion implies some interdependence between the relevant factors and in particular a similarity between the marks and between these goods or services. A lesser degree of similarity between the goods may be offset by a greater degree of similarities between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the case at issue, given the identity of the signs from an aural point of view, and seeing that the visual similarity is of an average degree, it is likely that the consumers will also confuse the commercial origin of the services that have been found similar to a low degree.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 9 114 059. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

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 extensive use 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 European Union trade mark registration No 9 114 059 leads to the success of the application and 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 right invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 (4) EUTMR in conjunction with Article 60(1)(c) EUTMR.

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

Ana MUÑIZ RODRIGUEZ

María Belén IBARRA DE DIEGO

Pierluigi M. VILLANI

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.