CANCELLATION No 10 022 C (INVALIDITY)

E-Switch, Inc., 7153 Northland Drive North, Brooklyn Park, Minneapolis, MN 55428, United States of America (applicant), represented by Fish & Richardson P.C., Highlight Business Towers, Mies-van-der-Rohe-Str. 8, 80807 Munich, Germany, (professional representative)

a g a i n s t

Yi Fang Technology Co., Unit 04, 7/F, Bright Way Tower, Nº 33, Mong Kok Road, Kowloon, Hong Kong, Hong Kong Special Administrative Region of the People's Republic of China (CTM proprietor), represented by Cabinet Armengaud Ainé, 3 avenue Bugeaud, 75116 Paris, France (professional representative).

On 21/10/2015, the Cancellation Division takes the following

DECISION

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

2. Community trade mark No 12 262 812 is declared invalid for some of the contested goods and services, namely:

Class 9: Anodes; anode batteries; high tension batteries; chargers for electric batteries; galvanic cells; chargers for electric batteries; primary battery; batteries, electric; batteries, electric, for vehicles; anticathodes; cathodes; solar batteries.

3. The Community trade mark remains registered for all the remaining goods and services, namely:

Class 9: Computers; Headphones; Ear plugs for divers.

Class 11: Pocket searchlights; flashlights [torches]; searchlights; lighters; gas lighters; pocket torches, electric; arc lamps; lamp glasses; luminous tubes for lighting; diffusers (light --- ); sockets for electric lights; filaments for electric lamps; lamp globes; safety lamps; footwarmers, electric or nonelectric.

Class 35: Advertising agencies; advertising by mail order; on-line advertising on a computer network; presentation of goods on communication media, for retail purposes; texts (writing of publicity --- ); layout services for advertising purposes; production of advertising films; advertising planning; advertising; radio advertising; radio commercials; television advertising; television commercials.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of Community trade mark No 12 262 812. The application is based on international trade mark registration No 937 609 designating the European Union. The applicant invoked Article 53(1)(a) CTMR in conjunction with Article 8(1) (b) CTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested goods and services and those of the earlier mark are similar. The marks are visually similar and aurally identical. Consequently, for the relevant consumer there is a risk of confusion between the marks.

The CTM proprietor requests the applicant to submit proof of use.

PROOF OF USE

According to Article 57(2) and (3) CTMR, if the CTM proprietor so requests, the applicant must submit proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been genuinely used in the territories in which it is protected and for the goods or services for which it is registered and which it cites as justification for its application, or that there are proper reasons for non-use. If, at the date on which the contested CTM was published, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions contained in Article 42(2) CTMR were satisfied at that date.

According to the same provision, in the absence of such proof the application for a declaration of invalidity will be rejected.

The CTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

On 10/03/2015 the applicant was given two months to submit proof of use.

The application for a declaration of invalidity was filed on 07/11/2014. The contested CTM was published on 16/12/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 07/11/2009 to 06/11/2014 inclusive, as well as from 16/12/2008 to 15/12/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 9: Electromechanical components, namely switches and switch assemblies.

According to Rule 40(6) in conjunction with Rule 22(3) CTMIR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 08/05/2015 the applicant submitted evidence as proof of use. The evidence consists of, inter alia, the following documents:

• Catalogue of the applicant’s goods dated August 2014.

• An affidavit dated 07/05/2015, from Mark Hoaglund, Director of Material, stating that the applicant mark has been continuously used for switches and switch assemblies from 07/11/2009 to 06/11/2014.

• 72 invoices from 07/01/2009 to 23/12/2014 to customers in all major European Union Member States.

Most of the evidence of use is dated within the relevant period. The invoices show that the place of use is the European Union. This can be inferred from the addresses in various European Union countries. The documents provide sufficient information concerning commercial volume, length of period and frequency of use. Finally, the evidence shows that the mark has been used as such for switches and switch assemblies.

The sign is used either embossed, silk screened or pad printed on the goods. It is also used in red on some printed material but in all of these cases the sign does not display differing elements which could alter the distinctive character of the mark in the form in which it was registered.

Consequently, the examined evidence of use sufficiently indicates the time, place, extent and nature of use of the applicant’s trade mark for the goods for which it is registered and on which the application is based.

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 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 on which the application is based are the following:

Class 9: Electromechanical components, namely switches and switch assemblies.

The contested goods and services are the following:

Class 9: Anodes; Anode batteries; High tension batteries; Chargers for electric batteries; Galvanic cells; Chargers for electric batteries; primary battery; Batteries, electric; Batteries, electric, for vehicles; Anticathodes; Cathodes; Solar batteries; Computers; Headphones; Ear plugs for divers.

Class 11: Pocket searchlights; Flashlights [torches]; Searchlights; Lighters; Gas lighters; Pocket torches, electric; Arc lamps; Lamp glasses; Luminous tubes for lighting; Diffusers (Light --- ); Sockets for electric lights; Filaments for electric lamps; Lamp globes; Safety lamps; Footwarmers, electric or nonelectric.

Class 35: Advertising agencies; Advertising by mail order; On-line advertising on a computer Network; Presentation of goods on communication media, for retail purposes; Texts (Writing of publicity --- ); Layout services for advertising purposes; Production of advertising films; Advertising planning; advertising; Radio advertising; Radio commercials; Television advertising; Television commercials.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term namely, used in the IR holder’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 9

The contested anodes; anode batteries; high tension batteries; chargers for electric batteries; galvanic cells; chargers for electric batteries; primary battery; batteries, electric; batteries, electric, for vehicles; anticathodes; cathodes; solar batteries and the applicant’s electromechanical components, namely switches and switch assemblies are included in the general category of apparatus, instruments and cables for electricity. All these contested goods have the same nature as the opponent’s switches and switch assemblies. Their producers, distribution channels and points of sale are the same and they target the same public. These goods are similar.

Computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Headphones are devices consisting of a pair of earphones joined by a band placed over the head, for listening to audio signals such as music or speech. Ear plugs for divers are pieces of solid material that fit tightly into divers’ ears to impede the entry of water.

These contested goods are final products which may include switches and switch assemblies but their producers, distribution channels and targeted public are different. The public purchasing computers; headphones; ear plugs for divers will not expect each of their components to be produced by, or under the control of, the ‘original’ manufacturer. The mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts (see judgment of 27/10/2005, T-336/03, ‘Mobilix’, para. 61). Consequently, given that the goods do not coincide in any relevant factors and are neither complementary nor in competition, they are dissimilar.

Contested goods in Class 11

The applicant’s electromechanical components, namely switches and switch assemblies are apparatus and instruments for switching electricity.

The contested pocket searchlights; flashlights [torches]; searchlights; lighters; gas lighters; pocket torches, electric; arc lamps; lamp glasses; luminous tubes for lighting; diffusers (light --- ); sockets for electric lights; filaments for electric lamps; lamp globes; safety lamps; footwarmers, electric or nonelectric are apparatus for lighting and heating.

These contested goods are final products which may include switches and switch assemblies but their producers, distribution channels and targeted public are different. The public purchasing the aforementioned contested goods will not expect each of their components to be produced by, or under the control of, the ‘original’ manufacturer. The mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts (see judgment of 27/10/2005, T-336/03, ‘Mobilix’, para. 61). Consequently, given that the goods do not coincide in any relevant factors and are neither complementary nor in competition, they are dissimilar.

Contested services in Class 35

The contested services in this class are advertising services that consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods such as the applicant’s electromechanical components, namely switches and switch assemblies.

By their nature services are generally dissimilar to goods. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist of the provision of intangible activities. These goods and services have a different nature, intended purpose and method of use. Their producers or providers, distribution channels and relevant public are also different. Furthermore, they are neither complementary nor in competition. Consequently, they are dissimilar.

2. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

The earlier mark consists of a white capital letter ‘E’ inside a black square. The contested mark consists of a white capital letter ‘E’ inside a grey and black square. In both signs the corners of the letter ‘E’ are lost in the frame of the square. Part of the public will perceived in both signs a schematic representation of a switch in right to left direction.

Visually, the signs are similar to the extent that they coincide in their square shape, the white capital letter ‘E’ inside the square which is in both cases rotated and in the representation of a switch in the same position. On the other hand, they differ in that the contested sign’s depiction shows slightly thinner lines and its middle line is shorter than the upper and lower lines while in the earlier trade mark, the three lines are of the same length.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the marks is identical because they will be both pronounced as ‘E’.

Conceptually, the public in the relevant territory will perceive both marks as the letter ‘E’. Part of the public will also perceive in both signs a schematic representation of a switch. Consequently, the signs are conceptually identical.

Taking into account the abovementioned visual coincidences and aural and conceptual identity, it is considered that the signs are similar.

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.

For the part of the public which also perceives a schematic representation of a switch, this common element of the marks will be associated with ‘electricity’. Bearing in mind that the relevant goods are apparatus, instruments and cables for electricity, this element is considered weak. The part of the relevant public who perceives this element will not pay as much attention to it as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks.

For a part of the public, the letter ‘E’ in both marks might be seen as the dominant element, while for others there is no dominant element.

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.

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 despite the inclusion of a weaker element as stated above.

5. 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. Furthermore, 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 similar target the public at large and business consumers with specific professional knowledge or expertise.

The degree of attention will vary from average to high, considering the specific nature and specialisation of some of the relevant goods.

6. 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’ (judgment of 11/11/1997, C 251/95, ‘Sabèl’, paragraph 22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgment of 20/09/1998, C 39/97, ‘Canon’, paragraph 17 et seq.).

The contested goods and services are similar and dissimilar.

The marks are phonetically and conceptually identical and visually very similar. This results from the quite similar overall impression of the marks which is based on an identical letter, in an identical position, set against an identical shape, in a similar color combination and a similar representation of a switch in the same position.

As both the earlier and the contested mark concern goods targeted at both the general public and professionals, the likelihood of confusion has to be assessed in relation to the general public only, because it is the part of the relevant public displaying the lower degree of attention (judgment of 15/07/2011, T‑220/09, ‘ERGO’, paragraph 21).

Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. In addition, consumers tend to remember the similarities rather than the dissimilarities between signs.

Furthermore, consumers normally perceive a mark as a whole and do not analyse its details. Therefore, the individual minor differences do not detract from the overall visual similarity of the marks.

Even bearing in mind that for part of the public the letter may be perceived as a schematic representation of a switch, the overall impression generated by the signs is that they are similar to a point that consumers may err at the time of making a purchase. Further, despite the presence of a weak element the distinctive character of the earlier mark is only one factor among others involved in the assessment of likelihood of confusion and there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 16/03/2005, T-12/03, ‘FLEX’, paragraph 61). Moreover, as seen previously, for another part of the public neither of the signs have any association with the goods.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partially well founded on the basis of the applicant’s international trade mark registration.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be similar to those of the earlier trade mark. The application is not successful insofar as the remaining dissimilar goods and services are concerned.

COSTS

According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Vanessa PAGE

Loreto URRACA LUQUE

Cristina CRESPO MOLTÓ

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.