CANCELLATION No 11 129 C (INVALIDITY)

C&C Group Irish Holdings Limited, Annerville, Clonmel, Co. Tipperary, Ireland and C&C Group Plc., Bulmers House, Keeper Road, Crumlin, Dublin 12, Ireland (applicants), represented by FRKelly, 27 Clyde Road, Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

Dominique Demortier, 1, Clos de la Grande Calandre, 7520 Ramegnies-Chin, Belgium (CTM proprietor).

On 28/01/2016, the Cancellation Division takes the following

DECISION

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

2. Community trade mark No 12 195 021 is declared invalid for all the contested goods, namely:

Class 5: Dietetic beverages.

Class 29: Milk beverages.

Class 30: Coffee, tea, cocoa and artificial coffee.

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

3. The Community trade mark remains registered for all the uncontested goods, namely:

Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides; except for dietetic beverages.

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats; except for milk beverages.

Class 30: Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.

4. The CTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicants filed an application for a declaration of invalidity against some of the goods of Community trade mark No 12 195 021, namely against some of the goods in Classes 5, 29 and 30, and against all of the goods in Class 32. The application is based on Irish trade mark registration No 52 267, Irish trade names and company names ‘C&C Group Plc.’ and ‘C&C’. The applicants invoked Article 53(1)(a) CTMR in connection with Articles 8(1)(b) and 8(5) CTMR, and Article 53(1)(c) CTMR in connection with Article 8(4) CTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicants argue that CTM No 12 195 021 which is registered for the word mark ‘c and c’ is similar to earlier Irish trade mark registration No 52 267 protected for the word mark ‘C&C’, and that there is an identity or similarity between the goods covered by the respective trade mark registrations. Therefore, there is a likelihood of confusion which includes a likelihood of association on the part of the public in Ireland.

With regard to the comparison of the goods, the applicants argue that the contested CTM is registered for, inter alia, dietetic food and substances adapted for medical or veterinary use in Class 5 and that these goods can include (dietetic) beverages. Similarly, the contested CTM is registered for, inter alia, milk products in Class 29 and that these goods can include milk beverages. Aside from listing the rest of the contested goods in Classes 30 and 32, the applicants do not put forward any reason as to why the goods are identical or what factors render them similar to the goods covered by the earlier registered trade mark.

In relation to the comparison of the signs, the applicants claim that they are highly similar, as the pronunciation and the meaning of the word ‘and’ in the contested sign is identical to the ampersand (symbol ‘&’) in the earlier trade mark. Phonetically and conceptually the signs are identical. The applicants argue that the visual differences are insignificant and that they do not enable the average consumer to make a distinction between the signs.

The applicants state that the earlier trade mark has no meaning for the goods at issue and, therefore, it has a high degree of inherent distinctiveness. In addition, the applicants claim that their trade mark, ‘C&C’, has acquired a reputation in Ireland through long-standing use in relation to ‘beverages’. For the sake of completeness, it is noted that, in the application for a declaration of invalidity, the applicants indicated that the earlier registered trade mark has a reputation in Ireland for ‘all the goods covered by the registration’ which are the following: mineral and aerated waters, natural and artificial, including ginger beer in Class 32. In support of the reputation claims, the applicants filed the following evidence:

Annex 1: Printout, dated 01/07/2015, of the online website www.Top1000.ie of the Irish newspaper The Irish Times, featuring a list of Top 1000 companies in terms of turnover, employees, assets and profit. ‘C&C Group plc’ ranks 75 and is described as ‘an Ireland and UK based manufacturer, marketer and distributor of branded long alcoholic drinks, including the internationally-marketed Magners cider brand. C&C’s principal brands are Bulmers and Magners. C&C also manufactures the Tennent’s beer brand […]’. The evidence further includes a dedicated company profile on ‘C&C Group plc’ and the list of auditors and the methodology used for creating the Top 1000 ranking.

Annex 2: Extracts from 2014 Annual Report of ‘C&C Group plc’.

The applicants also submit that they own sufficient goodwill in the trade name and company name in relation to ‘beverages’ and that the use of the contested CTM misrepresents their goods and those of the applicants who will as a result suffer damage. The applicants state that the three prerequisite requirements for a passing off action are established. The submissions contain a quotation from the relevant legislation in Ireland, namely the Trade Marks Act 1996, Section 10(4) and a reference to relevant case law.

Annex 3: Extract from the Companies Office in Ireland showing details of ‘C&C Group Public Limited Company’ registration.

The CTM proprietor did not submit any observations in reply.

The invalidity application is based on more than one right and ground. The Cancellation Division finds it appropriate to begin the examination under Article 53(1)(a) CTMR in connection with Article 8(1)(b) CTMR in relation to earlier Irish trade mark registration No 52 267.

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.

1. The goods

The goods on which the application is based are the following:

Class 32: Mineral and aerated waters, natural and artificial, including ginger beer.

The contested goods are the following:

Class 5: Dietetic beverages.

Class 29: Milk beverages.

Class 30: Coffee, tea, cocoa and artificial coffee.

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

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.

Contested goods in Class 5

As a preliminary remark, it is clarified that the applicants contest dietetic beverages which are not expressly contained in the list of goods covered by the contested CTM. However, the contested CTM is registered for, inter alia, dietetic food and substances adapted for medical or veterinary use which is a broad category encompassing dietetic beverages.

The earlier mark covers, inter alia, natural and artificial mineral and aerated waters. Waters can contain essential salts and minerals intended to replace those lost as a result of sweating during vigorous exercise for example. In addition, waters are required for a balanced diet and can help users to keep hydrated. Although the contested goods are adapted for medical purposes, the applicants’ mineral and aerated waters, natural and artificial potentially have the same purpose as the contested dietetic beverages. In addition, these goods have the same method of use, they can be commercialised through the same channels (for example health shops, drugs stores) and target the same consumer circles including the general public and nutrition and health-care specialists. Therefore, the contested goods in Class 5 are similar to a low degree to the applicants’ mineral and aerated waters, natural and artificial in Class 32.

Contested goods in Class 29

As a preliminary remark, it is clarified that the applicants contest milk beverages which are not expressly contained in the list of goods covered by the contested CTM. However, the contested CTM is registered for, inter alia, milk and milk products, which is a broad category encompassing milk beverages.

The earlier mark covers ginger beer, which is a non-alcoholic drink that quenches thirst and is distributed along with other soft drinks through for example supermarkets to the general public, or through bar and restaurant supplies stores when directed at business customers in the food and catering industries. The contested milk beverages can have the same purpose. Furthermore, milk-based beverages are found in the same sales outlets and they target the same consumers. Therefore, the contested goods in Class 29 are similar to a low degree to the applicants’ ginger beer in Class 32.

Contested goods in Class 30

The contested coffee, tea, cocoa and artificial coffee are similar to the applicants’ ginger beer in Class 32. Coffee, artificial coffee, tea and cocoa can be used to prepare drinks which can be in competition with ginger beer. These goods can be offered by the same producers. Furthermore, the goods at issue move through the same commercial channels and are directed at the same consumers which may be the general public or business customers in the food and catering industries.

Contested goods in Class 32

Despite differences in the wordings, mineral and aerated waters are contained in both lists of goods. They are identical.

The contested other non-alcoholic beverages include, as broader category the applicants’ ginger beer. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicants’ goods.

The contested beers; fruit beverages and fruit juices are highly similar to the applicants’ ginger beer, as these beverages quench thirst and they can be in competition for consumers (the general public) who want to choose between an alcoholic drink (beer) or fruit-based beverage vis-à-vis a soft drink with ginger flavour. Moreover, these goods can be directed at business customers who purchase them to stock up their bar, restaurant or cafeteria to cater for the varying preferences of their customers. The goods are offered by the same producers and they commonly move through the same commercial channels.

The contested syrups and other preparations for making beverages are similar to the applicants’ ginger beer. To the extent that the contested goods are purchased to prepare a beverage for quenching thirst or fixing a mixed drink, the goods at issue have the same purpose with ginger beer which is a common soft drink and cocktail ingredient. These goods are directed at the same consumers, including the general public and business customers, and move through the same commercial channels. Furthermore, consumers may expect that these goods are manufactured by the same undertakings.

2. The signs

C&C	c and c
Earlier trade mark	Contested trade mark

The relevant territory is Ireland.

Visually, the signs are similar as they both comprise two letters ‘C’. However, the signs differ in the element appearing in between the two ‘C’s, namely the symbol ‘&’ in the earlier mark and the word ‘and’ in the contested sign. In addition, there is a visual difference resulting from the fact that the three elements in the contested sign are represented with spaces in between them, whilst, in the earlier mark, there are no spaces between the graphemes and the symbol, ‘&’.

Aurally, as the symbol ‘&’ is pronounced like the word ‘and’ in English, the pronunciation of the earlier mark is identical to the pronunciation of the contested sign.

Conceptually, neither ‘C&C’ nor ‘c and c’ exist as such in the language used in the relevant territory. The element ‘C’ which will be recognised, in double, in both signs is not likely to convey any semantic content that would go beyond the letter that it represents. The ‘&’ symbol of the earlier mark will be perceived as, inter alia, the conjunction denoting something ‘in addition’. That is the same concept conveyed by the word ‘and’ in the contested sign. To the extent that both signs convey the concept of the two letters ‘C’ linked by a positive conjunction, they are conceptually identical.

Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs are similar to a high degree.

3. 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.

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 applicants, 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 applicants 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 clear meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 similar to varying degrees target the public at large and business consumers with specific professional knowledge or expertise in the fields of health-care and nutrition, as well as the food and catering industries.

It is considered that the relevant public’s level of attention at the moment of choosing the goods will be, on the whole, average. Nevertheless, as some of the goods at issue can be inexpensive goods purchased on a daily basis (e.g. plain waters, cheap soft drinks) the habitual buying behaviour associated with those goods can result in a lower degree of attention on the part of the general public.

6. Global assessment, other arguments and conclusion

The Court has set out the essential principle that 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 the goods and services may be offset by a greater degree of similarity between the signs and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). This principle of interdependence is crucial to the analysis of likelihood of confusion, particularly as, in the present case, the signs under comparison are highly similar and some of the goods are identical, highly similar or similar to an average degree, whereas other relevant goods are only remotely similar.

The fact that both signs are composed of two letters ‘C’ in between which there is the same conjunction, albeit represented in a different form, namely the ampersand, ‘&’, in the earlier mark and the word ‘and’ in the contested sign, gives them an identical pronunciation and produces the same conceptual impression. The visual differences as described in section b) of this decision are clearly insufficient in themselves to remove the overall impressions of the signs sufficiently far as to enable the relevant public, be it the general public or business customers, to safely exclude any likelihood of confusion. Moreover, account must be taken of the fact that the average consumer only rarely has the chance to compare two trade marks side by side and must rely on the imperfect recollection of the signs they have retained in their memory.

On an overall assessment, based on the average degree of inherent distinctiveness of the earlier mark and in view of the aural and conceptual identity of the signs, the Cancellation Division concludes that there is likelihood of confusion on the part of the relevant public for the goods found to be identical, highly similar or similar to an average degree. In addition, taking into consideration the interdependence principle, there is likelihood of confusion in relation to the goods that are similar to a low degree only, as the overwhelming similarities between the signs outweigh the moderate similarity between the respective goods.

Therefore, the invalidity application is well founded on the basis of earlier Irish trade mark registration No 52 267. It follows that the contested trade mark must be cancelled for all the contested goods.

Since the application is fully successful on the grounds of Article 8(1)(b) CTMR in connection with Article 53(1)(a), there is no need to further examine the other grounds of the application, namely Article 8(5) CTMR in connection with Article 53(1)(a), and Article 8(4) CTMR in connection with Article 53(1)(c) CTMR.

Since the invalidity 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 and reputation as claimed by the applicants. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier Irish trade mark registration No 52 267 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 applicants (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) CTMR, 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 applicants in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) CTMIR, the costs to be paid to the applicants 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 SANCHEZ PALOMARES

Solveiga BIEZA

Natascha GALPERIN

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, 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) CTMIR, 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).