CANCELLATION No 11 900 C (INVALIDITY)

Konrad Hornschuch AG, 74679 Weißbach, Germany (applicant), represented by Prinz & Partner Mbb Patent- Und Rechtsanwälte, Rundfunkplatz 2, 80335 München, Germany (professional representative)

a g a i n s t

Adolmar-Fábrica de Calçado, LDA, Arrancada-Rande, 4650-312 Rande, Felgueiras, Portugal (EUTM proprietor), represented by Abel Dário Pinto de Oliveira, Rua Nossa Senhora de Fátima, n° 419 - 3º.Frente, 4050-428 Porto, Portugal (professional representative).

On 30/05/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 431 706 for the figurative mark . The application is based on German trade mark registrations No 723 760 for the word mark ‘laif’ and No 976 980 for the figurative mark . The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there exists a likelihood of confusion on the part of the public between the contested mark and the earlier marks on account of the similarity between the signs and between the goods at issue. More particularly, the applicant considers that nowadays manufacturers of the contested goods tend to expand their product range to goods such as covered under the earlier marks. The applicant cites examples of such companies providing pictures of their goods.

The EUTM proprietor submits that the goods at issue are dissimilar and, therefore, there is no likelihood of confusion.

LIKELIHOOD OF CONFUSION — ARTICLE 53(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

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:

German trade mark registration No 723 760, ‘laif’

Classes 16, 17, 18, 19 and 27: Imitation leather, plastic films and sheets, in particular decorative films and sheets printed on both sides; plastic sheets for covering table surfaces and other furniture surfaces, for use as floor coverings, as roof covering and for shoe soles and heels

German trade mark registration No 976 980,

Class 18: Imitation leather; table coverings made from plastic material and leather substitute materials; upper materials for summer walking shoes, sandals, boots and slip-on shoes, all aforesaid goods included in Class 18.

Class 24: Fabric wall coverings; woven and knitted fabrics; decorative fabrics, including flame-retardant ones; quilting fabrics; upholstery fabrics; roller blind fabrics; textile table coverings; ready-made tablecloths and table coverings sold by the meter; convertible top fabrics; raincoat fabrics; shoe outer fabrics; upper materials for summer walking shoes, sandals, boots and slip-on shoes; shoe linings; covering strips for shoes, all aforesaid goods included in Class 24.

The contested goods are the following:

Class 25: Footwear; headgear; clothing.

Contested goods in Class 25

Some of the applicant’s goods in Class 18, such as imitation leather, plastic sheets for shoe soles and heels; upper materials for summer walking shoes, sandals, boots and slip-on shoes, all aforesaid goods included in Class 18, and woven and knitted fabrics; raincoat fabrics; shoe outer fabrics; upper materials for summer walking shoes, sandals, boots and slip-on shoes; shoe linings; covering strips for shoes, all aforesaid goods included in Class 24 are raw materials that are intended for use in industry for the production of other goods such as the contested goods which, in turn, are finished goods that satisfy the needs of the end consumer. The mere fact that one good is used for the manufacture of another is not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (see judgment of 13/04/2011, T-98/09, ‘T Tumesa Tubos del Mediterráneo S.A.’, paragraph 49-51). In the present case it is clear that the purpose and intended consumers of these goods are different as the applicant’s raw materials are intended for use in industry for the production other goods whereas the contested goods in Class 25 satisfy the needs of the end consumer.

The remaining goods of the applicant in Classes 16, 17, 18, 19 and 27 are plastic films and sheets, in particular decorative films and sheets printed on both sides; plastic sheets for covering table surfaces and other furniture surfaces, for use as floor coverings, as roof covering and, in Class 24, table coverings made from plastic material and leather substitute materials; fabric wall coverings; decorative fabrics, including flame-retardant ones; quilting fabrics; upholstery fabrics; roller blind fabrics; textile table coverings; ready-made tablecloths and table coverings sold by the meter; convertible top fabrics. None of these goods have anything in common with the contested goods in terms of nature, purpose, method of use, distribution channels and consumers. Moreover, they are neither complementary nor in competition. The applicant contends that in particular manufacturers of the contested goods more and more expand their product range to interior design, launching ‘home collections’ including some of the above mentioned goods and cites examples providing pictures of goods produced by other companies. The applicant draws from this that the goods at issue coincide in producer and therefore, that the goods are similar. However, the Cancellation Division considers that while some fashion designers nowadays also sell all sorts of goods such as perfumes, fashion accessories (such as glasses and jewellery), travel accessories, bedding, and wall or floor coverings under their marks, this is not the rule; it tends to apply only to (commercially) successful designers. The applicant has not claimed or proved reputation for its goods and the Cancellation Division considers that the applicant’s goods do not coincide in manufacturers either.

In view of the foregoing, the contested footwear, headgear, clothing and the applicant’s goods covered under both earlier German trade mark registrations are not similar.

Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Begoña URIARTE VALIENTE

Martina GALLE

Solveiga BIEZA

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

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) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.