CANCELLATION No 15 644 C (INVALIDITY)

Udon franchising, S.L., Avenida Ramón Ciurans, 2, 08530 La Garriga (Barcelona), Spain (applicant), represented by Bellavista Legal, S.L., Av. Diagonal 463 bis 3r 4ª, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Juon Limited Liablity Company, 3-9-3, Kita-Aoyama, Minato-ku, Tokyo 107-0061, Japan (EUTM proprietor), represented by Hamlins LLP, Roxburghe House 273-287 Regent Street, London W1B 2AD, United Kingdom (professional representative).

On 12/09/2018, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 321 006 is declared invalid for some of the contested goods, namely:

Class 29: Meat, fish and poultry and game; dairy products.

Class 30: Tea and other infusions; honey; coffee and coffee substitutes; iced coffee; ready made tea and coffee beverages.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; prepared products made wholly or principally of any of the above.

3. The European Union trade mark remains registered for all the remaining contested services, as well as for the non-contested goods, namely:

Class 25: Clothing; footwear, headgear; leisurewear; caps; sweatsuits; scarves; sweatshirts and t-shits.

Class 39: Packaging and delivery of food and drink products.

4. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 12 321 006 ‘SANUKI UDON’, namely against all the goods and services in Classes 29, 30, 32 and 39. The application is based on European Union trade mark registration No 7 435 357 and national Spanish trade mark registration No 2 516 981 ‘UDON’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS. FACTS AND PROCEDURE

The applicant claims that due to the identity/high similarity of goods and services and the similarity of signs, bearing in mind the principle of interdependence there is a likelihood of confusion.

Based on the above the applicant requests the Office to cancel the contested EUTM for the contested goods and services and order the EUTM proprietor to bear the fees and costs incurred by the applicant.

The EUTM proprietor did not file observations in reply.

On 07/03/2018 the Office informed the parties that it will rule on the application on the basis of the evidence before it.

SUBSTANTIATION

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the applicant does not submit appropriate evidence.

According to Article 16(1) EUTMDR, the applicant will present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of the proceedings.

According to Article 16(1)(b) EUTMDR in conjunction with Article 7(2) EUTMDR, within the period referred to above, the applicant must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the application.

In particular, if the application is based on a registered trade mark that is not a European Union trade mark, the applicant must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, or equivalent documents emanating from the administration by which the trade mark was registered — Article 16(1)(b) in conjunction with Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the applicant may provide such evidence by making reference to that source — Article 16(1)(b) in conjunction with Article 7(3) EUTMDR.

In the present case, the invalidity application is based on, inter alia, Spanish trade mark registration No 2 516 981 ‘UDON’.

The invalidity application was not accompanied by any evidence as regards this earlier mark.

The adversarial part of the proceedings was closed on 07/03/2018.

The applicant submitted an extract from the Spanish trade mark database in Spanish. According to Article 16(2) EUTMDR evidence concerning the filing, registration or renewal certificates or equivalent documents including evidence accessible online, must be in the language of the proceedings or accompanied by a translation into that language which must be submitted of the applicant’s own motion within one month of filing of the original document.

In the present case, the evidence filed by the applicant is not in the language of the proceedings. The applicant did not submit the necessary translation. It is also to be noted that the extract of the database is incomplete. In only shows the first page out of two, while the second one is missing.

According to Article 17(3) EUTMDR, if the applicant has not submitted the facts, arguments or evidence required to substantiate the application, the application will be rejected as unfounded.

The application must therefore be rejected as unfounded, as far as it is based on the abovementioned earlier mark.

The examination proceeds with the European Union trade mark registration No 7 435 357.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

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

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking - powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 35: Business management; assistance services for the working of a business company in a franchising system; retailing in shops and/or via global computer networks of foodstuffs.

Class 43: Services for providing food and drink and/or temporary accommodation.

The contested goods and services are the following:

Class 29: Meat, fish and poultry and game; dairy products.

Class 30: Tea and other infusions; honey; coffee and coffee substitutes; iced coffee; ready made tea and coffee beverages.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; prepared products made wholly or principally of any of the above.

Class 39: Packaging and delivery of food and drink products.

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 29

The contested dairy products are similar to a high degree to the applicant’s ices (which are to be understood as edible ices such as ice creams), as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested meat, fish and poultry and game are similar to a low degree to the applicant’s services for providing food and drink. Some butchers or charcuteries may roast chickens or other types of meat. Although those goods are not necessarily consumed on the premises, there is an overlap with the services of a fast food restaurant or take away. The same is true with regard to some fishmongers who offer their customers a selection of fish and seafood to take away or to be cooked and eaten on the premises (in an adjoining restaurant). Even though the comparison is between services on the one hand and goods on the other, the different nature and objectives of those goods and services cannot counteract the similarity which exists in terms of basic goods, customers and points of sale. There is therefore a certain degree of similarity between those goods and services.

Contested goods in Class 30

Tea, coffee and honey are listed in both specifications in exactly the same terms. They are identical.

The contested other infusions (tea and-) overlap with the applicant’s tea. The goods are identical.

The contested coffee substitutes overlap with the applicant’s artificial coffee. The goods are identical.

The contested iced coffee and ready made coffee beverages are included in the applicant’s coffee. The goods are identical.

The contested ready made tea beverages are included in the applicant’s tea. The goods are identical.

Contested goods in Class 32

The contested non-alcoholic drinks are similar to the applicant’s tea as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested beers; mineral and aerated waters; fruit drinks and fruit juices; syrups and other preparations for making beverages; are similar to a low degree to the applicant’s services for providing food and drink as they usually coincide in producer and distribution channels. Furthermore, they are complementary.

The contested prepared products made wholly or principally of any of the above (Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages) as long as they are classified in Class 32 should be interpreted as drinks derived from or predominantly containing one or more of the products to which they refer. These could be drinks made of syrup by mixing it with water or kind of mixtures such as beer and lemonade mixtures (radler), etc. They are also to be found similar to a low degree to the applicant’s services for providing food and drink since the same reasoning applies to these goods and services, namely: they usually coincide in producer and distribution channels and are complementary.

Contested services in Class 39

The contested packaging and delivery of food and drink products are dissimilar to any and all of the applicant’s goods and services, as they do not coincide in any of the relevant criteria which taken alone or in combination with others may result in a finding of a level of similarity.

It may seem at the outset that there is a certain level of similarity between these services and the applicant’s retailing in shops and/or via global computer networks of foodstuffs in Class 35 and/or services for providing food and drink in Class 43. However, retail companies and restaurants do not normally provide transportation services independently, but exclusively for the goods purchased at their premises. Packaging and delivery of goods remains purely ancillary to their core activity of selling. A retailer and/or a restaurant services provider cannot be asked to satisfy one's own private packaging and delivery needs. Vice versa, packaging and delivery companies do not sell goods at retail and do not provide restaurant services.

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 identical or similar to various degrees are directed at the public at large. The degree of attention is likely to vary from lower than average to average.

3. The signs

	SANUKI UDON
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 letters ‘UD’ and ‘N’ presented in a rather standard, slightly bold typescript and a big red dot of the same size as the letters. It is highly likely that in the sequence of letters, placed between consonants and taking into account the resemblance between the shape of a dot of this size and the shape of the letter ‘O’ the red dot is perceived and accordingly pronounced as the letter ‘O’. This is because trade mark owners often distort letters or replace them with figurative elements with a shape similar to that of a letter intentionally looking for effect or impact.

Bearing in mind the above, the signs are visually and aurally similar to an average degree on behalf of the coinciding element ‘UDON’ taking into account also the differences/similarities established between the big red dot of the earlier mark and the letter ‘O’ in the contested sign. The signs differ in the verbal element ‘SANUKI’ of the contested sign which has no counterpart in the earlier mark.

Conceptually, a minor part of the relevant public may perceive the verbal element ‘UDON’ as referring to (in Japanese cookery) large noodles made of wheat flour (information extracted from the online Collins Dictionary on 07/09/2018). However, the majority of the relevant public in the European Union is not likely to perceive this verbal element with a particular meaning. No such references are to be found in other dictionaries, for instance in the German Duden online dictionary, the French Larousse online dictionary, etc. Moreover, the mere fact that a specific word is to be found in a particular language dictionary does not necessarily mean that the public having command of this respective language is aware of the meaning of the word. This observation is particularly true for words coming from other languages (as is the case at hand).

All in all, the Cancellation Division finds that the average consumer will not attribute any meaning to the verbal elements ‘UDON’ and ‘SANUKI’ and therefore both signs will not be linked on a conceptual level. The concept of the red dot does not change this finding since the contested sign will not be associated with a meaning. Since one of the signs will not be associated with a particular 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 and services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to various degrees and partly dissimilar. The degree of attention varies from below average to average. The earlier mark enjoys an average degree of distinctiveness.

The signs have been found visually and aurally similar on behalf of the element ‘UDON’ representing the entire earlier sign (this finding subject to the explanations provided in section c) above) and included in the contested sign as an independent distinctive element. The differences are confined to the verbal element ‘SANUKI’ of the contested sign.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The fact that the entire earlier mark is included in the contested sign and has an independent distinctive role in its composition may lead the public to believe that the goods and services at issue derive at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established. In this situation, the fact that the coinciding element (the entire earlier mark) is neither dominant nor placed at first/top position in the composition of the contested sign, does not play a decisive role. The relevant consumer may easily be misled as to the commercial origin of the goods and services in question, thinking that the contested sign designates a new product line of the ‘UDON’ series. It is also for this reason that this situation is likely to occur even in relation to the goods and services which have been found similar to a low degree.

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

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.

The rest of the contested goods and services, namely the services in Class 39 are dissimilar to the applicant’s goods and services. 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 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

Natascha GALPERIN

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.