CANCELLATION No 11 769 C (INVALIDITY)

Total Deutschland GmbH, Jean-Monnet-Str. 2, 10557 Berlin, Germany (applicant), represented by Preu Bohlig & Partner, Tesdorpfstrasse 8, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Lubra S.p.A., Via Edison, 4, 20010 Cornaredo, Italy (EUTM proprietor), represented by Barzano’ & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative).

On 08/06/2017, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 540 522 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 540 522 . The application is based on German trade mark registration No 813 062 . 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 the signs are similar, that the goods are identical and that there exists a likelihood of confusion. In particular, it argues that the signs coincide in the distinctive element ‘LUBRA’ and that the element ‘metallschmiermittel’ of the earlier mark is descriptive of the claimed goods (lubricants for metal).

The EUTM proprietor requested the applicant to submit evidence of use of the earlier mark. Regarding the signs, the EUTM proprietor argues that the coinciding element ‘LUBRA’ is weak since it clearly evokes the goods (lubricants). Therefore, it considers that there is no likelihood of confusion for the relevant public.

The applicant filed evidence of use (listed below) and argues that the earlier mark has been continuously used for lubricants in a modernized form of use that does not alter the distinctive character of the mark registered according to Article 15(1) EUTMR. It reiterates its arguments concerning the likelihood of confusion and argues that the word ‘LUBRA’ is a fanciful word which is distinctive unlike the remaining elements ‘METALLIC’ and ‘METALLSCHMIERMITTEL’ which are descriptive in relation to the goods.

In its final observations, the EUTM proprietor puts forward that the earlier mark was not used in the same form as that in which it was registered and that this use does not constitute an acceptable variation of its registered form. In particular, it claims that the omission of the figurative elements (the drop and the rectangular frame) alters the distinctive character of the mark. To supports its arguments, it refers to a decision of the Boards of Appeal, 09/09/2011, R 2066/2010-4, Lloyd’s, where the actual use of the mark ( ) was considered as an unacceptable alteration of the mark as registered ( ).

PROOF OF USE

According to Article 57(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 42(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the earlier German trade mark No 813 062 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.

The application for a declaration of invalidity was filed on 10/09/2015. The contested trade mark was published on 14/03/2014. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Germany from 10/09/2010 to 09/09/2015 inclusive. Since the earlier mark was registered more than five years prior to the date of publication of the contested mark, use of the earlier mark had to be shown also for the period from 14/03/2009 to 13/03/2014 inclusive.

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

Class 4: Mineral lubricating oils and greases; lubricants.

According to Rule 40(6) EUTMIR in conjunction with Rule 22(3) EUTMIR, 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 30/11/2016 the parties were informed that due to an oversight, in its letter dated 29/01/2016, the Cancellation Division did not expressly invite the applicant to submit proof of use of its earlier mark following the EUTM proprietor’s request. The applicant was then given until 05/03/2017 to submit proof of use. It was also informed that any evidence submitted previously would be taken into account and did not have to be submitted again.

The applicant did not send further evidence. Therefore, on 05/04/2017, the Cancellation Division sent to the EUTM proprietor the applicant’s evidence of use sent of its own accord on 31/05/2016.

The evidence is the following:

• Annex 1: Product information. It shows that the product ‘LUBRA metallic’ is available in different packaging forms and sizes (can 300 ml, can 100 ml and pen 12,2 ml). The trade mark displayed on the products is the following: .

• Annex 2: Product information dated March 2014.

• Annex 3: Flyer undated. According to the applicant, it was distributed since 2014. The product ‘LUBRA METALLIC’ is described as ‘a high-quality and efficient multifunction oil. It can be used multi-purposely as lubricant, rust remover, cleaning agent, contact oil, penetrating oil, maintenance oil or as an anti-corrosion agent’. The products (can, pen) display the sign .

• Annex 4: Original product (pen 12,2 ml) together with its packaging. It displays the figurative sign as shown in annex 3.

• Annex 5: Original product (pen 12,2 ml) together with its packaging. It displays the figurative sign .

• Annex 6: Invoices issued by the applicant and sent to clients in Germany from July 2010 to December 2015. The products are identified as ‘LUBRA-MET. pflegeoel’ (abbreviation for ‘LUBRA METALLIC’ maintenance oil). The quantities of products sold are significant all over the relevant periods, as the amounts (for instance invoice dated 13/12/2010, 20 cartons sold for EUR 2150,09).

• Annexes 7-12: Lists of retailers in Germany dated 2010-2015 to which the applicant has sold ‘LUBRA METALLIC’ products (multifunctional oil).

Most of the evidence of use is dated within the relevant periods.

The documents clearly show that the place of use is Germany. This can be inferred from the language of the documents and the addresses in Germany.

The invoices provide sufficient information concerning commercial volume, length of period and frequency of use since they show that the products have been sold regularly over the relevant periods, to clients located in Germany and the quantities and amounts are significant.

Regarding the nature of use, in the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence clearly shows that the sign has been used as a trade mark.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 57(2) and (3) EUTMR, Article 15 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, EU:T:2006:65, § 50).

The General Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

With regard to omissions, if the omitted element is in a secondary position and not distinctive, its omission does not alter the distinctive character of the trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37).

In the present case, the earlier mark is the figurative mark . The evidence submitted shows use of the followings signs: and .

The EUTM proprietor puts forward that these alterations do not constitute acceptable variations of the registered form. In particular, it claims that the omission of the figurative elements (the drop and the rectangular frame) alters the distinctive character of the mark.

Firstly, the omission of the word element ‘METALLSCHMIERMITTEL’ (which means lubricant for metal) is not relevant since it concerns an element which is visually secondary (written in very small letters at the bottom of the sign and almost illegible) and descriptive of the characteristics of the goods.

Secondly, concerning the omission of the figurative elements, the omission of the rectangular frame is not significant since it is a banal geometric element, merely decorative, devoid of any distinctive character. Furthermore, the grey drop is not clearly perceivable due to its depiction on the background of the sign and it is essentially decorative. Furthermore, it could be perceived as a weak element which alludes to the method of use of the goods (product used in small quantity (usually one drop needed) to lubricate for instance super precision bearings).

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, since the omissions concern non-dominant and non-distinctive/weak elements and since the signs used reproduce the dominant elements ‘LUBRA-METALLIC’ and in particular the distinctive element ‘LUBRA’, the Cancellation Division considers that the alterations of the sign do not alter the distinctive character of the sign in the form in which it was registered. In addition, the earlier mark was registered in 1965 and the variations of the sign can legitimately constitute a modernisation of the sign.

Therefore, it is considered that the evidence shows use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Concerning the decision of the Boards of Appeal quoted by the EUTM proprietor, it must 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. In the present case, the previous case referred to by the EUTM proprietor is not comparable to the present case since it concerns the omission of a figurative element which was replaced by another distinctive figurative element.

Finally, the earlier mark is registered for mineral lubricating oils and greases; lubricants in Class 4. The evidence shows that the mark has been used for a multifunctional oil, essentially used as lubricant. Considering that lubricants include substances such as oils and greases and that the applicant is not required to prove use of all the conceivable variations of the category of goods for which the earlier mark is registered and considering the need to reconcile the legitimate interest of the applicant to extend its range of goods in the future, the Cancellation Division considers that the applicant has shown use for all the goods for which the mark is registered.

Consequently, the evidence of use in its entirety 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) 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 and for which use has been proved are the following:

Class 4: Mineral lubricating oils and greases; lubricants.

The contested goods are the following:

Class 4: Lubricants; Industrial and technical oils and greases.

Lubricants are identically contained in both lists of goods.

The contested industrial and technical oils and greases overlap with the applicant’s mineral lubricating oils and greases. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. Contrary to the EUTM proprietor’s point of view, the Cancellation Divisions considers that the degree of attention is considered to be average since the relevant products are not particularly highly specialised or expensive. In addition, the fact that the goods target specialists does not necessarily mean that the degree of attention is high.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is Germany.

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 containing the word elements ‘LUBRA-METALLIC’ written in two lines in bold letters. A grey drop is depicted on the background of the sign. The word ‘METALLSCHMIERMITTEL’ is written in very small letters at the bottom of the sign. These elements are surrounded by a rectangular frame.

The word ‘LUBRA’ is meaningless (the German word for lubricant being ‘Schmiermittel’). Contrary to the EUTM proprietor’s point of view, the Cancellation Division considers that as it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive to an average degree. The word ‘METALLIC’ will be understood due to its similarity with the German equivalent ‘metallisch’. Since it refers to the purpose of the goods (products to be used with metal), it is a weak element. The word ‘METALLSCHMIERMITTEL’, which means ‘lubricant for metal’, is descriptive of the characteristics of the goods and is, therefore, non-distinctive.

Regarding the figurative elements of the earlier sign, the rectangular frame is a banal geometric element devoid of any distinctive character. The grey drop is essentially decorative. Furthermore, since it could allude to the method of use of the goods, it is a weak element.

As mentioned previously, 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.

Therefore, the most distinctive element of the earlier sign is the word element ‘LUBRA’. Furthermore, together with the word ‘METALLIC’, they are the co-dominant elements of the sign due to their size and position, compared to the element ‘METALLSCHMIERMITTEL’ written underneath and visually almost illegible.

The contested sign is a figurative mark consisting of the distinctive word element ‘LUBRA’ written in stylised blue letters and placed within a rectangular blue background. Regarding the stylisation of the contested sign, it is considered that it performs an essentially decorative function. The public is used to perceive such depictions as ornamental elements and will instantly attribute more trade mark significance to the verbal element of the sign.

Visually, the signs coincide in the element ‘LUBRA’ which constitutes the sole distinctive verbal element of the contested sign and the distinctive and co-dominant element of the earlier sign. The contested sign is fully included at the beginning of the earlier sign where the attention of the public is focused on. Indeed, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to buttom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader.

The signs differ in the remaining word elements of the earlier sign, in its figurative elements as described above and in the stylisation and figurative element of the contested sign. Bearing in mind the foregoing assessment concerning the distinctive and dominant components of the signs, it is concluded that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‛LUBRA’, present identically in both signs. The pronunciation differs in the sound of the elements ‘METALLIC’ and ‘METALLSCHMIERMITTEL’ of the earlier sign. However, since the latter is neither distinctive nor dominant, it is probable that the relevant public will not pronounce it when referring aurally to the earlier mark. Given that the element ‘METALLIC’ of the earlier sign is weak and that the coinciding distinctive element is placed at the beginning of the earlier sign, it is considered that the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the contested sign 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, despite the presence of some non‑distinctive and weak elements in the mark as stated above in section c) of this decision.

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).

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 goods are identical. The inherent distinctiveness of the earlier mark is normal.

The signs are visually similar to a medium degree and aurally similar to a high degree on account of the distinctive element ‘LUBRA’ placed at the beginning of the earlier sign. The Cancellation Division considers that the differences between the signs lying in non-distinctive or weak/decorative elements are insufficient to counterbalance the similarities existing between 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.

In the present case, the Cancellation Division considers that the relevant consumer is likely to perceive the identical goods designated by the conflicting signs as belonging to product lines that come from the same undertaking or economically-linked undertakings. The relevant public may assume that the contested sign ‘LUBRA’ represents a sub-brand of the earlier mark ‘LUBRA-METALLIC’.

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

Therefore, the application is well founded on the basis of the applicant’s German trade mark registration No 813 062. It follows that the contested trade mark must be declared invalid for all the contested goods.

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(iii) 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

Catherine MEDINA

Frédérique SULPICE

Lucinda CARNEY

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.