CANCELLATION No 33 807 C (INVALIDITY)

Mirage Granito Ceramico S.P.A., Via Giardini Nord, 225, 41026 Pavullo nel Frignano (MO), Italy (applicant), represented by Luppi Intellectual Property SRL, Viale Corassori, 54, 41124 Modena, Italy (professional representative)

a g a i n s t

Marlux, Albertkade 3, 3980 Tessenderlo, Belgium (EUTM proprietor), represented by LC Patents, Kempische Steenweg 542 A, 3500 Hasselt, Belgium (professional representative).

On 03/04/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 282 621 is declared invalid for some of the contested goods and services, namely:

Class 19: Building materials, not of metal; Cover stones; Coating or fabrics for erosion control for use in construction; Coverings (Non- metals -) Fronts; coverings, not of metal , for building; Concrete , Concrete paving slabs , concrete blocks , concrete slabs , Concrete floors , Planters of concrete , blocks , not of metal , for the construction of floors , blocks , not of metal , for building; Aggregate (Non- metals - ); building Components not of metal, for building and construction purposes; building components ( Preformed - ) , not of metal; Components ( Prefabricated - ) , not of metal; Components ( Preformed - ) of concrete , screeds ( not of metal ); Prefabricated building components (Non- metals - ) Textured concrete finishing layers; siding ( non-metal ); Facade Construction elements , not of metal; Facade elements , not of metal , for building; Facade elements , not of metal; Wall cladding , not of metal; Industrial concrete for use in civil engineering , materials ( non-metallic ) for the repair of roads; Materials for floors (not of metal); Masonry blocks , mosaics for building; Walls of concrete products for construction , Wall coverings , not of metal , for building; Wall Panels (Non- metals - ) Brick , non -metallic building materials with acoustic properties , non -metallic building materials with sound insulating properties , non- metal ornament tiles for use in buildings; non- metal grating , non- metal floor panels , not of metal wall panels; Surface structures for walls; Surface structures for ceilings Ceiling tiles ( not of metal); Paving Blocks; paving Blocks of concrete; Prefabricated Components ( not of metal) for assembly on site, Sculptures of stone, dry stone walls , stone for building; Setts , stone for diking to promote plant growth; Tiles , Tiles , not of metal , for floors , tiles , not of metal , for building; Tiles for paving , tiles for ceiling coverings , not of metal; Tiling, not of metal; Decking , not of metal; Sidewalk Tiles , Flooring, not of metal; Floor materials , not of metal; Decking ( not of metal); Flooring of non -metallic materials, molds for concrete ( not of metal); Road cover material; Surface Elements of concrete; Roads material ( non-Metals - ); Modular shelters (not of metal); Modular components (not of metal) for the construction of prefabricated structures, modular components for spatial frames, not of metal; Fences, not of metal; Parts for stairs (not of metal); Composite structures, not of metal, for paving surfaces; Piling for planting non-metallic materials; Stone for monuments; Movable partitions [walls] of non-metallic materials; Movable constructions (not of metal); Graf Tiles, not of metal.

Class 37: Building, construction, construction of sports grounds, construction of streets, construction of paved areas, Road Construction, paving sidewalks, paving and tiling; Tiling, Building and construction work; stone laying [masonry]; Street makers Services, Hardening of roads, floor surfaces for coating and cover (Preparing -).

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

Class 19: Transportable buildings, not of metal.

Class 37: Demolition; Consultancy in the field of construction, general contracting services for the construction; Supervision of engineering structures; Supervision of building work; Renovation of buildings (Consultancy with regard to the -).

Class 44: Land, water, horticulture and forestry services, Landscape Design, Design with respect to flowers and plants, Horticulture, landscape services.

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 European Union trade mark No 12 282 621 ‘virage’. The application is based on European Union trade mark registration No 589 267 ‘MIRAGE’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the goods and services claimed by the contested EUTM are to be considered similar to those protected by the earlier EUTM. In support of this argument the applicant refers to a decision of the EUIPO’s First Board of Appeal in Case R1496/2017-1 of 23/08/2018. In view of the striking visual and phonetic similarity the signs should be considered very similar. The applicant concludes that based on the above findings there is a risk that the public might believe that the goods and services claimed by the contested EUTM, if bearing said contested mark, come from the applicant’s undertaking and therefore that a significant part of the relevant public of the goods or services at issue may be confused as to their origin.

The EUTM proprietor argues that it is using the mark solely in conjunction with a particular product in its product line, and consisting of a concrete paving element for which a corresponding EC Design has been filed and registered.

The EUTM proprietor then proceeds with revealing information regarding the relationship between the parties preceding the filing of the application for a declaration for invalidity. In particular, the EUTM proprietor informs about a cease and desist letter sent by the applicant requesting the EUTM proprietor to stop using the EUTM and to withdraw the registration. There were attempts between the parties to reach a settlement and sign a co-existence agreement. However, no such agreement has been reached. In support of its observations regarding the attempts of the parties to reach a mutual agreement on the co-existence of the marks, the EUTM proprietor filed evidence.

The EUTM proprietor explains that both companies are active in different fields, namely the production and commercialization of concrete paving elements (EUTM proprietor) and ceramic and glazed stoneware floor tiles (applicant). Based on the above and taking into account that these goods have been co-existing in the market for the past five years, the EUTM proprietor considers that there is no risk of confusion rendering the present opposition obsolete.

The EUTM proprietor also declares that it is, has ever been and will only continue using the trade name ‘VIRAGE’ as the ‘name’ for a ‘specific’ product, i.e. a water permeable concrete paving with a specific shape. The EUTM proprietor also declares that it is still willing to limit the classes of the current trade mark.

The EUTM proprietor argues that the conflicting marks are visually and aurally dissimilar since they ‘only’ coincide in the last five letters, but differ in their first letter. Conceptually, both marks do not have a particular meaning and, therefore, they are not conceptually comparable. The EUTM proprietor finds also the goods and services under comparison to be different. Based on the above the EUTM proprietor concludes that there is no likelihood of confusion.

In its observations in reply the applicant claims that by submitting documents related to past negotiations between the parties the EUTM proprietor disclosed confidential information without the authorisation of the applicant and without asking the Office to treat such documents as confidential, which is contrary to the general principles of professional conduct. The applicant requests the Cancellation Division not to take into account the arguments and documents submitted by the EUTM proprietor regarding the failed negotiations between the parties and requested the Office to apply the confidential status to the observations and documents submitted by the EUTM proprietor. The applicant claims also that EUTM proprietor disclosed personal data without legal basis.

With regard to the EUTM proprietor’s claims and declarations that the EUTM is only used for a specific product the applicant underlines that the likelihood of confusion between the mark under comparison has to be assessed on the basis of the list of goods and services claimed; the actual commercialization is irrelevant.

With regard to the likelihood of confusion the applicant reiterates that there is a risk that the public might believe that the goods and services claimed by the contested EUTM, if bearing said contested mark, come from the applicant’s undertaking and therefore that a significant part of the relevant public of the goods or services at issue may be confused as to their origin.

In the second round of observations the EUTM proprietor justifies the disclosure of information and documents concerning the negotiations between the parties preceding the filing of the application for a declaration of invalidity with the necessity for the Office to have a good idea of the permissibility that the EUTM proprietor has taken in this file to date.

With regard to the similarity of the signs and the similarity of the goods and services and the likelihood of confusion the EUTM proprietor reiterates its arguments raised in the first round of observations.

PRELIMINARY REMARKS

The Cancellation Division finds it appropriate to address the arguments of the parties right after the section where they have been summarised. Such approach will also facilitate later on the analysis of likelihood of confusion.

1. Grounds of the application, scope of the task, relevance of the relationship between the parties before the filing of the application for a declaration of invalidity

The application for declaration of invalidity is based on Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR. The Cancellation Division notes the following. This article regulates the scope of examination tasks exhaustively (namely whether there is a likelihood of confusion on behalf of the relevant public) and does not leave any scope to take account of the motives, earlier conduct of the parties, unsuccessful attempts to reach a co-existence agreement and/or even alleged bad faith on behalf of the parties. Such circumstances do not affect the scope of the tasks performed under Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR. Therefore, the history of the parties’ relationship and the documents supporting them will not be examined since they are irrelevant for the assessment of likelihood of confusion.

At the same time the EUTM proprietor does not claim that the applicant consented expressly to the registration of the contested EUTM according to Article 60(3) EUTMR and no such conclusion can be drawn based on the information and documents provided. Just to the contrary, the documents reveal that the applicant took actions against the registered EUTM and requested the suspension of use and the withdrawal of the sign soon after its registration.

(ii) Co-existence

The implied ‘co-existence’ of the goods in the market covered by the marks in conflict cannot be interpreted as a defense according to Article 61(1) EUTMR. Even if it is interpreted as a claim of acquiescence the conditions for the applications of the said article are not fulfilled. The applicant opposed the use of the contested EUTM at a very early stage, almost immediately after it was registered and continued occasionally demonstrating that the use of the EUTM with this specification of goods and services is unacceptable.

In case the EUTM proprietor raised the ‘co-existence of the goods’ argument in support of its claim that there is no actual likelihood of confusion between the marks the Cancellation Division notes the following. Likelihood of confusion means a probability of confusion on the part of the relevant consumer and does not require actual confusion. As expressly confirmed by the Court: ‘… it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69).

Therefore, the ‘co-existence’ argument of the EUTM proprietor in each of its possible interpretations is to be set aside.

3. Comparison of goods and services as registered versus actual or intended use

The EUTM proprietor claims that it only uses the contested EUTM in relation to a particular good which is different from the goods in relation to which the earlier mark is actually used. The Cancellation Division notes that the particular circumstances in which the goods or services covered by the mark at issue are or are intended to be marketed may vary in time and according to the wishes of its proprietor. The prospective analysis of the likelihood of confusion between two marks, which pursues an aim in the general interest, that is, the aim that the relevant public may not be exposed to the risk of being misled as to the commercial origin of the goods or services in question, cannot be dependent on the commercial intentions, whether carried out or not, and naturally subjective, of the trade mark proprietors (16/09/2009, T-400/06, zerorh+, EU:T:2009:331, § 38 and the case-law cited).

The above principles reasoned by the Court with the subjective will of the EUTM proprietor proved to be true also in this case, where despite the declarations of the EUTM proprietor that the EUTM has been, is and will be used only in relation to a particular good the specification of the EUTM has never been limited accordingly.

In any case, the comparison of the goods and services will proceed based on the goods and services indicated in the specifications of both marks.

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 goods on which the application is based are the following:

Class 19: Ceramic materials, ceramic tiles, tiles of glazed stoneware, ceramic floor tiles, glazed stoneware floor tiles, building materials (non metallic), wall tiles, not of metal; excluding glass, coated glass, silvered glass, glass carrying a reflective layer, glass for mirrors and articles made wholly or principally of glass, as far as belonging to class 19.

The contested goods and services are the following:

Class 19: Building materials, not of metal; Cover stones; Coating or fabrics for erosion control for use in construction; Coverings (Non- metals -) Fronts; coverings, not of metal , for building; Concrete , Concrete paving slabs , concrete blocks , concrete slabs , Concrete floors , Planters of concrete , blocks , not of metal , for the construction of floors , blocks , not of metal , for building; Aggregate (Non- metals - ); building Components not of metal, for building and construction purposes; building components ( Preformed - ) , not of metal; Components ( Prefabricated - ) , not of metal; Components ( Preformed - ) of concrete , screeds ( not of metal ); Prefabricated building components (Non- metals - ) Textured concrete finishing layers; siding ( non-metal ); Facade Construction elements , not of metal; Facade elements , not of metal , for building; Facade elements , not of metal; Wall cladding , not of metal; Industrial concrete for use in civil engineering , materials ( non-metallic ) for the repair of roads; Materials for floors (not of metal); Masonry blocks , mosaics for building; Walls of concrete products for construction , Wall coverings , not of metal , for building; Wall Panels (Non- metals - ) Brick , non -metallic building materials with acoustic properties , non -metallic building materials with sound insulating properties , non- metal ornament tiles for use in buildings; non- metal grating , non- metal floor panels , not of metal wall panels; Surface structures for walls; Surface structures for ceilings Ceiling tiles ( not of metal); Paving Blocks; paving Blocks of concrete; Prefabricated Components ( not of metal) for assembly on site, Sculptures of stone, dry stone walls , stone for building; Setts , stone for diking to promote plant growth; Tiles , Tiles , not of metal , for floors , tiles , not of metal , for building; Tiles for paving , tiles for ceiling coverings , not of metal; Tiling, not of metal; Decking , not of metal; Sidewalk Tiles , Flooring, not of metal; Floor materials , not of metal; Decking ( not of metal); Flooring of non -metallic materials, molds for concrete ( not of metal); Road cover material; Surface Elements of concrete; Roads material ( non-Metals - )\ Transportable buildings, not of metal; Modular shelters (not of metal); Modular components (not of metal) for the construction of prefabricated structures, modular components for spatial frames, not of metal; Fences, not of metal; Parts for stairs (not of metal); Composite structures, not of metal, for paving surfaces; Piling for planting non-metallic materials; Stone for monuments; Movable partitions [walls] of non-metallic materials; Movable constructions (not of metal); Graf Tiles, not of metal.

Class 37: Building, construction and demolition, construction of sports grounds, construction of streets, construction of paved areas, Road Construction, Consultancy in the field of construction, general contracting services for the construction, paving sidewalks, paving and tiling; Tiling, Building and construction work; stone laying [masonry]; Street makers Services, Supervision of engineering structures; Supervision of building work; Renovation of buildings (Consultancy with regard to the -) Hardening of roads, floor surfaces for coating and cover (Preparing -).

Class 44: Land, water, horticulture and forestry services, Landscape Design, Design with respect to flowers and plants, Horticulture, landscape 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.

As a preliminary remark, according to Article 33(7) EUTMR, 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 19

The contested building materials, not of metal include as a broader category the applicant’s building materials (non metallic), excluding glass, coated glass, silvered glass, glass carrying a reflective layer, glass for mirrors and articles made wholly or principally of glass, as far as belonging to class 19. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested Cover stones; Coating or fabrics for erosion control for use in construction; Coverings (Non- metals -) Fronts; coverings, not of metal , for building; Concrete , Concrete paving slabs , concrete blocks , concrete slabs , Concrete floors , Planters of concrete , blocks , not of metal , for the construction of floors , blocks , not of metal , for building; Aggregate (Non- metals - ); building Components not of metal, for building and construction purposes; building components ( Preformed - ) , not of metal; Components ( Prefabricated - ) , not of metal; Components ( Preformed - ) of concrete , screeds ( not of metal ); Prefabricated building components (Non- metals - ) Textured concrete finishing layers; siding ( non-metal ); Facade Construction elements , not of metal; Facade elements , not of metal , for building; Facade elements , not of metal; Wall cladding , not of metal; Industrial concrete for use in civil engineering , materials ( non-metallic ) for the repair of roads; Materials for floors (not of metal); Masonry blocks , mosaics for building; Walls of concrete products for construction , Wall coverings , not of metal , for building; Wall Panels (Non- metals - ) Brick , non -metallic building materials with acoustic properties , non -metallic building materials with sound insulating properties , non- metal ornament tiles for use in buildings; non- metal grating , non- metal floor panels , not of metal wall panels; Surface structures for walls; Surface structures for ceilings Ceiling tiles ( not of metal); Paving Blocks; paving Blocks of concrete; Prefabricated Components ( not of metal) for assembly on site, Sculptures of stone, dry stone walls , stone for building; Setts , stone for diking to promote plant growth; Tiles , Tiles , not of metal , for floors , tiles , not of metal , for building; Tiles for paving , tiles for ceiling coverings , not of metal; Tiling, not of metal; Decking , not of metal; Sidewalk Tiles , Flooring, not of metal; Floor materials , not of metal; Decking ( not of metal); Flooring of non -metallic materials, molds for concrete ( not of metal); Road cover material; Surface Elements of concrete; Roads material ( non-Metals - )\ Modular components (not of metal) for the construction of prefabricated structures, modular components for spatial frames, not of metal; Fences, not of metal; Parts for stairs (not of metal); Composite structures, not of metal, for paving surfaces; Piling for planting non-metallic materials; Stone for monuments; Movable partitions [walls] of non-metallic materials; Movable constructions (not of metal); Graf Tiles, not of metal are identical to the applicant’s building materials (non metallic), excluding glass, coated glass, silvered glass, glass carrying a reflective layer, glass for mirrors and articles made wholly or principally of glass, as far as belonging to class 19 either because they are included in or overlap with the applicant’s goods.

The contested modular shelters (not of metal) include warehouse shelters, car shelters, playground and pitches shelters, patio and terrace shelters, etc. Many of these structures are just assembled by adjoining different or the same kind of building materials (which are goods covered by the earlier mark) such as modular components, frames, roof tiles, etc. without any further major processing. Therefore, there is at least a certain degree of similarity between these goods. They can coincide in producer, distribution channels and end users.

The contested transportable buildings, not of metal; are finished products whose nature, purpose and method of use are strictly defined and different than the nature, purpose and method of use of building materials in general. Moreover, these contested goods and the goods of the applicant do not share the same distribution channels and rarely coincide in end user. Finally, they are neither complementary, nor in competition. Therefore, they are dissimilar.

Contested services in Class 37

The applicant claims that the services in Class 37 covered by the contested EUTM are similar to a low degree to the earlier goods and refers to a recent decision of the First Board of Appeal in Case R1496/2017-1 of 23/08/2018.

However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Cancellation Division are to some extent factually similar to the present case, the outcome may not be the same.

In paragraph 55 of the cited Decision the Board of Appeal found that the services Construction and repair of buildings; Consultancy relating to building construction and to the use of materials for building construction (consultancy or information relating to building construction); Road paving, Installation of floors and benches; Demolition and bricklaying, plastering; Remodelling of buildings are similar to a low degree to the earlier goods in Classes 17 and 19 (various types of building materials).

The reasoning for finding a similarity provided by the Board relies very broadly on the fact that ‘the construction or repair of a building, road, or the installation or repair of a floor or bench cannot be carried out without the use of the type of the goods in Classes 17 and 19. The services in the application in Class 37 are provided by building contractors, architects, designers, civil engineers, demolition experts, bricklayers or plasterers, who even if they do not produce or market buildings materials, nevertheless

cannot provide their services without the use of the materials in Classes 17 and 19 protected by the earlier mark’.

In the opinion of the Cancellation Division this reasoning is too broad and encompasses services which are not similar to the earlier goods. The reasoning applied by the Board, namely - that the contested services and the earlier goods are complementary (that is indispensable for the use/provision of each other) does not take account of certain specifics of these services and the earlier goods, the market reality in which they are provided and the relevant public at which they are directed. An argument in support of the Cancellation Division that the reasoning of the Board is too general and does not take into account the specifics of the particular goods and services is the blatantly wrong statement that demolition experts cannot provide their services without using the goods in Classes 17 and 19. Demolition experts use demolition tools and not building materials for the provision of their services.

For the above reasons and also taking into account that the goods and services to be compared in the current case are not exactly the same as the goods and services in the cited decision of the Board the Cancellation Division will not follow automatically the too general approach followed by the Board but will instead apply a more detailed approach taking into account the specifics of the particular goods and services and the market reality.

The Cancellation Division finds that the contested services construction of paved areas, paving sidewalks, paving and tiling; tiling, stone laying [masonry] are similar to a low degree to the applicant’s ceramic tiles, tiles of glazed stoneware, excluding glass, coated glass, silvered glass, glass carrying a reflective layer, glass for mirrors and articles made wholly or principally of glass, as far as belonging to class 19, as it is common for tiles manufacturers to provide services of tiling, paving and stone laying. Furthermore, they target the same relevant public and the services are provided often together with the purchase of the goods or vice versa.

The same logic has to be applied to the remaining building and construction services which are broad categories including also the services compared in the previous paragraph - services as construction of paved areas, paving sidewalks, paving and tiling; tiling, stone laying [masonry]. Since the Cancellation Division cannot dissect ex officio these broader categories of the applicant, which include the above services which have already been found similar to the opponent’s goods, it is considered that these broad categories of services are also similar to a low degree to the applicant’s goods. These are the services: Building, construction, construction of sports grounds, construction of streets, Road Construction, Building and construction work; Street makers Services, Hardening of roads, floor surfaces for coating and cover (Preparing-).

The remaining services in Class 37, namely Demolition; Consultancy in the field of construction, general contracting services for the construction, Supervision of engineering structures; Supervision of building work; Renovation of buildings (Consultancy with regard to the -) are not construction and building services per se even though they relate to construction. Demolition as a service has already been discussed above and does not need further explanation since it is a self explanatory term. Consultancy services require an expertise related to the construction and building services, administrative procedures, design and engineering, expertise, technical know-how, etc. A general contractor is a natural person or a legal entity responsible for the day-to-day oversight of a construction site, management of vendors and trades and the communication of information to all involved parties throughout the course of a building project. Supervision of building work and supervision of engineering structures are construction engineering services often regulated by legislature or stipulated in contracts between the parties. They are related to making sure the processes or structures comply with standards, regulatory framework and/or agreements between the investors and the construction company, where these services are provided by an independent company. These services and the earlier goods do not show any relevant criteria in common that could possibly render them similar. Therefore, these services are dissimilar to the applicant’s goods in Class 19.

Contested services in Class 44

The contested land, water, horticulture and forestry services, landscape design, design with respect to flowers and plants, horticulture, landscape services are dissimilar to any and all of the applicant’s goods. This is because by their nature goods are dissimilar to services. 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 in the provision of intangible activities. From this divergent nature it follows that the method of use of goods and services is inherently dissimilar. The goods and the services are manufactured/provided by different companies and distributed by different distribution channels. Moreover, the goods and services under comparison do not coincide in their purpose. It follows that they cannot substitute each other, i.e. they are not in competition. Furthermore, they are not complementary since the provision of the services is not indispensable for the use of the goods and vice versa. Even if the goods and services may occasionally coincide in end user this is not a strong factor for a finding of similarity.

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 as well as at building and construction professionals. The degree of attention may vary from average to high depending on the qualities and other characteristics of the goods, as well as at the price of a construction services assignment.

3. The signs

MIRAGE	virage
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).

Both marks consist of single indivisible verbal elements and have, therefore, no elements that can be considered more distinctive or visually more eye-catching than others.

The earlier mark is a meaningful word in several of the languages spoken in the relevant territory and appears either in the same (English) or in orthographically similar form (‘miraj’ in Romanian, ‘miraggio’ in Italian, ‘miraaz’ in Estonian, ‘miraz’ in Polish, etc.). It will be perceived with the meaning of something that is not real or true, although it may seem to be, in particular something which one sees when it is extremely hot, for example in the desert, and which appears to be quite near but is actually a long way away or does not really exist. In other languages, however, such as Spanish and Hungarian the word does not exist and will not be perceived as meaningful.

The contested sign is also a meaningful word but in certain languages only, for instance in French and Spanish and will be perceived with the meaning of a curve. It does not exist in English and German though.

For some parts of the public both signs may be meaningful, however the Cancellation Division finds it appropriate to limit the assessment of the similarity of signs to these parts of the public for which only one of the two signs has a meaning and the other one is meaningless such as the English, German and Spanish speaking part of the public.

Such an approach is perfectly legal since the unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

In the case of word marks, the use of upper or lower case letters is not relevant, since it is the word as such which is protected and not its written form.

Visually and aurally, the signs coincide in five out of six letters placed at the same place and in the same sequence and differ in their first letter ‘M’ versus ‘v’. Yet, there are also some visual similarities between the first letters ‘M’ and ‘v’ to the extent that the letter ‘v’ represents actually the middle part of the letter ‘M’. In any case the degree of visual and aural similarity is high. The argument of the EUTM proprietor that the signs ‘only’ coincide in five out of six letters and therefore they are dissimilar cannot be followed.

Conceptually, while the public on which the assessment is focused will perceive one of the signs with the respective meaning as explained above, the other sign lacks any meaning for that part of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

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.

5. Global assessment, other arguments and conclusion

Some of the contested goods are identical and others are dissimilar to the applicant’s goods. Some of the services are similar to a low degree and others are dissimilar. The degree of attention of the relevant public may vary from average to high. The distinctiveness of the earlier mark is average. The signs are visually and aurally similar to a high degree and they are not conceptually similar.

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).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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).

Bearing in mind the findings of the Cancellation Division summarised in the first paragraph of this section evaluated in the light of the above cited principles developed by the Case Law there exists a likelihood of confusion on the part of the English, German and Spanish speaking part of the public. This finding applies also to the services found at least similar to a low degree only as the high level of similarity between the signs offsets the possible low level of similarity between the goods and services. 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 declare the contested trade mark invalid.

Therefore, the application is partially well founded on the basis of the applicant’s European Union trade mark registration No 589 267 ‘MIRAGE’. Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar (to a low degree) to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed against these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, 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

Liliya YORDANOVA

Plamen IVANOV

María Belén IBARRA DE DIEGO

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.