CANCELLATION No 28 124 C (INVALIDITY)
Maria Nila Holding AB Joint stock company, Box 24, SE 250 53 Helsingborg, Sweden (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative)
a g a i n s t
Saponia d.d., Matije Gupca 2, 31000 Osijek, Croatia (EUTM proprietor), represented by Albina Dlačić, Kneza Mislava 10, 10 000 Zagreb, Croatia (professional representative).
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 11 815 024 is declared invalid in its entirety.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 11 815 024 ‘NILA’ namely against all the goods in Class 3. The application is based on European Union trade mark registration No 7 600 877 . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.
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.
The goods on which the application is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; preparations for the hair and scalp; shampoos; rinses; hair conditioners; hair styling products; hair gel; hair mousse; hair dyes, hair colorants; hair tints; hair waving preparations; neutralisers for permanent waving; hair spray.
The contested goods are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
All the contested goods are identically contained in the applicant’s list of goods.
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 found to be identical are directed at the public at large. The degree of attention is considered to be average.
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).
The earlier mark is a figurative mark composed of the two verbal elements ‘maria nila’ depicted in slightly stylised lower-case letters.
The contested mark is the word mark ‘NILA’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the contested sign is depicted in upper-case letters whereas the verbal elements of the earlier mark are depicted in lower-case letters.
The depiction of the earlier mark is not particularly stylised, fanciful or original. Considering that the stylisation is of a purely decorative nature and barely noticeable, it has hardly any impact in the visual comparison of the signs.
Both the elements ‘Nila’ (or ‘nila’) and ‘maria’ are likely to be perceived by a significant part of the public as two female first names of Hebrew origin, ‘Nila’ being notably used in Italy, and ‘Maria’ (and its equivalents such as ‘Mary’ (English) and ‘Marie’ (French)) is common in all the European Union. Consequently, the elements ‘NILA’ and ‘maria nila’ are distinctive for the relevant goods.
The earlier figurative mark has no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the element ‘NILA’, which constitutes the entirety of the contested sign and the second element within the earlier mark. They differ in the additional word ‘maria’ and in the slight stylisation of the earlier mark.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛NI‑LA’, present identically in both signs and differs in the sounds of the letters ‘MA-RIA’ of the earlier mark which have no counterparts in the contested mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the signs are similar to the extent that as they convey the concept of the same female name ‘Nila’. However, they differ in the additional female name ‘Maria’ in the earlier mark.
As a consequence, the signs are conceptually similar to an average 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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, 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
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 marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
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).
The relevant goods are identical and they target the public at large. The degree of attention is average. The distinctiveness of the earlier mark is normal.
The contested sign reproduces one of the two verbal elements of the earlier mark, ‘NILA’. Moreover, the verbal element ‘nila’ plays an independent and distinctive role in the earlier mark where it is clearly separated from the other verbal element ‘maria’. It follows that the signs are visually, aurally and conceptually similar to an average degree and therefore the differing elements are insufficient to counteract the similarities between the signs.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 7 600 877. It follows that the contested trade mark must be declared invalid for all the contested goods.
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
Carmen SÁNCHEZ PALOMARES
Julie, Marie-Charlotte HAMEL
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.