CANCELLATION No 12292 C (INVALIDITY)
Marks and Spencer plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom (applicant), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray’s Inn Road, London WC1X 8BT, United Kingdom (professional representative)
a g a i n s t
D&L Europe Limited, Talbot House, 204/226 Imperial Drive, Harrow, Middlesex HA2 7HH, United Kingdom (EUTM proprietor), represented by AB Asesores, Calle Bravo Murillo, 219 - 1º B, 28020 Madrid, Spain (professional representative).
1. The application for a declaration of invalidity is partially upheld.
2. European Union trade mark No 12 547 212 is declared invalid for some of the contested goods and services, namely:
Class 25: Clothing, footwear, headgear.
Class 35: Wholesaling and retailing in shops and via global computer networks of clothing, footwear, headgear, clothing accessories, leatherware and perfumery.
3. The European Union trade mark remains registered for all the remaining services, contested or not, namely:
Class 35: Wholesaling and retailing in shops and via global computer networks of textile goods, jewellery, decorations, sanitary articles, office requisites and burners.
4. Each party bears its own costs.
The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 12 547 212, namely against all the goods in Classes 25 and some of the services in Class 35. The application is based on international trade mark registration designating the EU No 1 002 156. 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 is likelihood of confusion between the marks, since they are similar and they cover identical goods and similar services.
The EUTM proprietor did not submit observations in reply.
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.
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 3: Cosmetics; perfumes; toiletries; deodorants for personal use; antiperspirants; eau de Cologne; soaps; shampoos; preparations for the hair; preparations for use in the bath, aftershave lotions and shaving creams, all being non-medicated.
Class 18: Articles made of leather or imitation of leather; bags, handbags, trunks (luggage), suitcases, travelling bags, rucksacks, haversacks; bags for campers or climbers; beach bags.
Class 25: Clothing, footwear, headgear.
The contested goods and services are the following:
Class 25: Clothing, footwear, headgear.
Class 35: Wholesaling and retailing in shops and via global computer networks of textile goods, clothing, footwear, headgear, clothing accessories, jewellery, leatherware, sanitary articles and perfumery.
Contested goods in Class 25
Clothing, footwear, headgear are identically contained in both lists of goods and services.
Contested services in Class 35
Wholesaling and retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Clothing accessories fall under the category of clothing and are therefore deemed identical to clothing. Clothing, footwear, headgear are identically contained in both lists of goods and services. Therefore, the contested wholesaling and retailing in shops and via global computer networks of clothing, footwear, headgear, clothing accessories are similar to a low degree to the applicant’s clothing, footwear, headgear.
The contested wholesaling and retailing in shops and via global computer networks of perfumery are similar to a low degree to the applicant’s perfumes.
The contested leatherware is similar to a low degree to the applicant’s articles made of leather or imitation of leather.
Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. The contested textile goods, jewellery, and sanitary articles are not identically included in the list of the applicant’s goods. Therefore, the services relating to these goods are dissimilar. The goods and services have different methods of use and are neither in competition nor complementary.
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 and at business customers with specific professional knowledge or expertise. The degree of attention remains average considering the goods and the type of services.
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 word mark composed of the two words ‘NORTH COAST’.
The contested mark is a figurative mark in black, white and yellow composed of the two words ‘NORTH COAST’ in a highly stylised typeface and, below them and barely legible, the word ‘growers’. Figurative elements depicting three stars and three lightning flashes can also be discerned.
The earlier mark has no elements that could be considered clearly more distinctive or more dominant than other elements.
The element ‘NORTH COAST’ of both signs will be associated in English with the obvious literal meaning of the two words, without associating them with any specific geographical area. Bearing in mind the relevant goods and services, it is of average distinctiveness. The figurative elements of the contested sign are also distinctive.
The element ‘NORTH COAST’ in the contested sign is the dominant element, as it is the most eye-catching.
Visually, the signs coincide in ‘NORTH COAST’, which is the most dominant element of the contested sign. However, they differ in the figurative elements of the contested sign and in the additional word ‘growers’, although it is barely visible.
Therefore, the signs are similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛NORTH COAST’, present identically in both signs. The pronunciation differs in the sound of the word ‛growers’ of the contested mark, if it is pronounced at all, given its very small size.
Therefore, the signs are similar to an average degree or identical for the part of the public that does not pronounce ‘growers’.
Conceptually, the public in the relevant territory will perceive both signs as ‘NORTH COAST’, which, as previously mentioned, will be meaningful for the English-speaking part of the public and meaningless for the rest. In addition, the contested sign will be associated with growers, stars and lightning. As both signs will be perceived as ‘NORTH COAST’, the signs are conceptually similar to an average degree for part of the public. For the rest of the public, only the contested sign will be meaningful due to its graphic elements, and therefore 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.
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.
Global assessment, other arguments and conclusion
The goods are identical, and the contested services are similar to a low degree and dissimilar to the opponent’s goods.
The signs are aurally similar to an average degree, or even identical for part of the public, and visually and conceptually similar (for part of the public) to the extent that they have in common the two words ‘NORTH COAST’, which are distinctive and form the dominant word elements in the contested sign (the word ‘growers’ being barely legible if at all). The visual differences lie in the contested sign’s stylisation, structure and figurative device. However, when signs have both word and figurative components, the word component of the sign usually has a greater impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component.
In other words, the earlier mark is reproduced as the dominant word element in the contested sign, albeit with stylisation and additional word and figurative elements. Therefore, it is considered that the visual dissimilarities between the signs are not sufficient to counteract the predominant visual and aural similarities and commonalities, as well as the conceptual similarities for part of the public. The Office considers it likely that the relevant public, taking into account its average degree of attention, when presented with the trade marks, would consider the contested sign a graphic stylisation of the earlier word mark, even for services that are similar to a low degree.
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 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 at these services cannot be successful.
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(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
Isabel DE ALFONSETI HARTMANN
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.