CANCELLATION No 16 141 C (INVALIDITY)

Schneider (Société par Actions Simplifiée), 10, rue de l’Energie, 67720 Hoerdt, France (applicant), represented by Cabinet Nuss, 10, rue Jacques Kablé, 67080 Strasbourg Cedex, France (professional representative)

a g a i n s t

Baltic Wild Ltd., “Pupoli”‑17, Slampes pag., Tukuma nov., Slampe, LV‑3119, Latvia (EUTM proprietor).

On 05/03/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 481 222 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 481 222 for the figurative mark . The application is based on, inter alia, French trade mark registration No 93 462 326 for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion since the signs are similar on account of the coinciding and distinctive element ‘BALTIC’ and the goods are identical or similar.

The EUTM proprietor did not submit any observations in reply.

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.

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s French trade mark registration No 93 462 326.

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, inter alia, the following:

Class 29: Lumpfish roe, salmon roe, trout roe and more generally fish eggs for consumption; caviar; eggs, quail eggs, snails eggs; mussels (molluscs) for human consumption; preparations (mousses, butters, salads) made from, crustaceans, fish, cured meat, poultry, meat, molluscs, vegetables; fresh, preserved, dried, smoked, cooked, prepared or frozen fish, crustaceans and molluscs.

The contested goods are the following:

Class 29: Meats; meat spreads; processed meat products; meat, fish, poultry and game; meat, preserved; quenelles [meat]; liver pâté.

Contested goods in Class 29

The contested fish includes, as a broader category, the applicant’s frozen fish. 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 meat spreads; quenelles [meat]; liver pâté are at least similar to the applicant’s preparations (mousses, butters, salads) made from meat. They are all preparations made from meat and they coincide in their purposes, manufacturers and distribution channels. They target the same public and can be in competition.

The contested meats; meat, poultry and game are similar to the applicant’s fresh fish. These goods are in competition, they have the same method of use and target the same public. For the same reasons, the contested meat, preserved; processed meat products are similar to the applicant’s preserved fish, prepared fish, respectively.

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 found to be identical or similar are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is France.

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 consisting of the word element ‘BALTIC’ written in stylised yellow letters, with a blue wave shape depicted below and partially covering the lower part of some letters.

The contested mark is a figurative mark consisting of the words ‘Baltic Wild’ written in slightly stylised dark green letters in title case. A figurative element is depicted above the words, consisting of a green circular device with the letter ‘B’ above the stylised letter ‘W’ with horns, both depicted in white. The letters ‘B’ and ‘W’ will be perceived as the initial letters of the words ‘Baltic Wild’ below.

Given its similarity with the French equivalent ‘baltique’ (same pronunciation), the element ‘BALTIC’ present in both signs will be perceived by the public as referring to the Baltic Sea (not to the Baltic states as would occur with other publics, since in French these are named ‘Etats baltes’ or ‘pays baltes’ and not ‘baltiques’). In the earlier mark, this concept is reinforced by the figurative element, which depicts a wave. In relation to fish products, the coinciding element ‘BALTIC’ is weak since it indicates that the goods originate from the Baltic Sea (the Baltic Sea is known for its traditional commercial fishing), whereas in relation to meat products, it is distinctive to an average degree.

The word ‘WILD’ of the contested sign is meaningless for the relevant public, and, therefore, it is distinctive to an average degree.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the consumers will pay less attention to the figurative elements of the signs (including the colours and the graphic depiction of the letters) and perceive them as a secondary element, essentially decorative. Furthermore, the depiction of the wave in the earlier mark is weak in relation to fish products, and the depiction of the horns in the contested sign may allude to the fact that the relevant meat products originate from horned animals.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘BALTIC’ and differ in the additional element ‘WILD’ of the contested sign. The coinciding word forms the entire verbal element of the earlier mark and the initial verbal element of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The signs also differ in their figurative elements, including the colours and the stylisation of the letters, all of which have reduced impact for the reasons explained above. Taking into account the above considerations about the distinctiveness of the coinciding element ‘BALTIC’, the degree of visual similarity between the signs varies from below average to average.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BALTIC’, present identically in both signs and forming the entire earlier mark. They differ in the sound of the additional element ‘WILD’ of the contested sign. Given that the letters ‘B’ and ‘W’ depicted in the circular figurative device will be perceived by the public as the initial letters of the verbal elements ‘Baltic Wild’ written below, they will not be pronounced. Taking into account the above considerations about the distinctiveness of the coinciding element ‘BALTIC’, the degree of aural similarity between the signs varies from average to higher than average.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the concept of the ‘Baltic Sea’ (this concept is reinforced in the earlier mark by the figurative element). The contested sign’s element ‘WILD’ has no meaning in French and the figurative element including the letters ‘B’ and ‘W’ does not convey any particular concept, except for the horns. Taking into account the above considerations about the distinctiveness of the coinciding element ‘BALTIC’, the degree of conceptual similarity between the signs varies from average to higher than average.

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. Considering what was stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for part of the goods, namely fish products, whereas the earlier mark has a normal degree of distinctiveness for the remaining goods (meat products).

5. Global assessment, other arguments and conclusion

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).

The goods are identical or similar. Aurally and conceptually, the degree of similarity between the signs varies from average to higher than average and, visually, the degree of similarity varies from below average to average, depending on the distinctiveness of the coinciding element ‘BALTIC’ in relation to the goods.

The distinctiveness of the earlier mark is average for some goods and below average for others.

Although the coinciding element ‘BALTIC’ is weak for part of the goods, this fact does not necessarily prevent a finding that there is a likelihood of confusion since the distinctiveness of the components of the trade marks (and the trade marks) is only one factor among others involved in the assessment of likelihood of confusion. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

Furthermore, 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).

The Cancellation Division considers that the differences between the signs, consisting of secondary elements and the additional word ‘Wild’ in the contested sign, are insufficient to outweigh the similarities and safely differentiate the signs.

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 coinciding element ‘BALTIC’ may lead the public to perceive the contested sign as a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public, including a likelihood of association.

Therefore, the application is well founded on the basis of the applicant’s French trade mark registration No 93 462 326. It follows that the contested trade mark must be declared invalid for all the contested goods.

As the abovementioned earlier right leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier right invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(1)(a) in conjunction with Article 60(1)(a) EUTMR.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Ana MUÑIZ RODRÍGUEZ

Frédérique SULPICE

Julie, Marie-Charlotte HAMEL

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.