CANCELLATION No 10 938 C (INVALIDITY)

Aldi Stores (Ireland) Limited, Newbridge Road, Naas, Co. Kildare (applicant), represented by Franks&Co Limited, 15 Jessops Riverside, Brightside Lane, S9 2RX Sheffield, United Kingdom (professional representative)

a g a i n s t

Alcoatrading - Comércio Internacional Lda, En1, km 95, Ataija de Baixo, Aljubarrota (S. Vicente), 2460-000 Alcobaça, Portugal (CTM proprietor), represented by Carlos de Matos, Ave Almirante Reis, 131-1º, 1150-015 Lisboa, Portugal (professional representative).

On 12/11/2015, the Cancellation Division takes the following

DECISION

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

2. Community trade mark No 13 270 707 is declared invalid for some of the contested goods, namely:

Class 3: Fragrancing preparations; household fragrances; vehicle cleaning preparations; leather and shoe cleaning and polishing preparations; parquet floor wax; natural floor waxes; prepared wax for polishing.

Class 5: Deodorizers and air purifiers.

3. The Community trade mark remains registered for all the remaining goods, namely:

Class 3: Cleaning preparations; laundry preparations; anti-smear agents for cleaning purposes; household bleach; cleaning agents for metal; cleaning agents for stone; cleaning agents for household purposes; drying agents for dishwashing machines; stain removing agents; lavatory cleaning compositions; cleaning compositions for spot removal.

Class 4: Lubricants and industrial greases, waxes and fluids; fuels and illuminants.

Class 5: Hygienic preparations and articles; absorbent articles for personal hygiene; disinfectants and antiseptics.

Class 20: Statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; furniture and furnishings; displays, stands and signage; mirrors (silvered glass); frames; blinds, and fittings for curtains and blinds; edgings of plastic for furniture; furniture fittings, not of metal; wall units [furniture]; fittings (non-metallic -) for cupboards; bathroom fittings in the nature of furniture; wardrobe interior fitments; chair pads; japanese floor cushions (zabuton); seat pads being parts of furniture; dressers; sideboards; wall chests; head-rests [furniture]; book rests; furniture chests; wooden chests with drawers covered with decorated paper; clothes hangers and clothes hooks; beds, bedding, mattresses, pillows and cushions.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of Community trade mark No 13 270 707, namely against some of the goods in Classes 3, 4 and 5. The application is based on Irish trade mark registrations No 214 115 and 208 448. The applicant invoked Article 53(1)(a) CTMR in connection with Article 8(1)(b) CTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that 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 the identity or similarity of the goods at issue.

The CTM proprietor did not submit any observations in reply to the application for a declaration of invalidity.

LIKELIHOOD OF CONFUSION – ARTICLE 53(1)(a) CTMR IN CONNECTION WITH ARTICLE 8(1)(b) CTMR

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:

Irish trade mark No 214 115

Class 3: Polish; furniture polish.

Irish trade mark No 208 448

Class 5: Air fresheners in aerosol or solid preparations; all included in Class 5.

The contested goods are the following:

Class 3: Fragrancing preparations; household fragrances; vehicle cleaning preparations; leather and shoe cleaning and polishing preparations; parquet floor wax; natural floor waxes; prepared wax for polishing.

Class 4: Waxes and fluids.

Class 5: Deodorizers and air purifiers.

Contested goods in Class 3

The contested leather and shoe polishing preparations are included in the opponent’s polish. The contested parquet floor wax; natural floor waxes; prepared wax for polishing are all polishing preparations and as such, they are included in the opponent’s polish. These goods are all identical.

The contested leather and shoe cleaning preparations; vehicle cleaning preparations are intended to remove dirt from these products (leather, shoes and vehicles) while the opponent’s polish is used to make a product smooth and shiny by rubbing, especially with wax. Therefore, they are all agents used for improving the aspect of surfaces. To that extent, their nature and purpose are similar. Furthermore, they target the same consumers and are sold in the same retail outlets and in the same section in stores. Therefore, these goods are considered similar.

Fragrancing preparations; household fragrances are used to perfume the air in rooms. The opponent’s air fresheners in aerosol or solid preparations; all included in Class 5 are used to deodorize or purify the air. Even if their nature is different, these goods have the same general purpose of improving the air in a room, even if the opponent’s goods principally provide sanitation functions that go beyond merely fragrancing the air. They may have the same method of use, originate from the same producers and target the same consumers. Therefore, they are similar to a low degree.

Contested goods in Class 4

The contested waxes and fluids belonging to this class are to be understood as products found in their raw states. These goods are not similar to the opponent’s goods in Classes 3 and 5 which are polishing preparations and air fresheners, and therefore finished products. They are different in nature and methods of use and target different purposes and publics. These goods are not manufactured by the same companies and are not distributed through the same channels. Finally, the goods are neither complementary nor in competition.

Contested goods in Class 5

The contested deodorizers and air purifiers are intended to eliminate microorganisms in the air that are malodorous or cause disease. These goods overlap with the opponent’s air fresheners in aerosol or solid preparations; all included in Class 5. Therefore, they are identical.

2. The signs

MISTIK
Earlier trade mark	Contested trade mark

The relevant territory is Ireland.

Visually, the signs are similar to the extent that they coincide in the word element ‘Mistik’. The earlier mark is a word mark and therefore it is irrelevant whether the letters are represented in upper or lower case. The marks only differ in the figurative element and the slight stylization of the contested mark.

Aurally, the pronunciation of the marks coincides in the syllables ‘MIS-TIK’ which is the only verbal element of the signs and is present identically in both signs. Therefore, the marks are aurally identical.

Conceptually, the element ‘MISTIK’ present in both marks will be perceived by the relevant public as a misspelling of the English term ‘mystic’ due to the identical pronunciation and therefore will be associated with ‘someone who attempts to be united with God through prayer’ (Cambridge Dictionaries Online). The figurative element of the contested trade mark will be associated with a ‘candle’. Therefore, the signs are conceptually similar to the extent that they share the ‘mistik’ concept.

Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks have no elements which could be considered clearly dominant (visually eye‑catching) than other elements.

The earlier mark has no elements which could be clearly considered more distinctive than other elements.

The figurative element in the contested sign will be perceived as the representation of a candle. This element is weak for part of the goods, namely fragrancing preparations; household fragrances, which may have the form of scented candles. The public understands the meaning of this element and will not pay as much attention to it as to the other more distinctive element of the mark, namely the word ‘Mistik’. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue. For the remaining goods, the mark has no elements which can be considered more distinctive.

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.

5. Relevant public – level of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, the average consumer’s level 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 and similar to different degrees target the public at large. The level of attention will be average.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C‑39/97, ‘Canon’, paragraph 17 et seq.).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

In the case at issue, the goods are partially identical or similar to different degrees and partially dissimilar. The signs are similar to the extent that they coincide in the verbal element ‘MISTIK’ which result in visual and conceptual similarity and aural identity between the marks. They only differ in the graphic and figurative elements of the contested sign.

Nevertheless, the figurative element is weak for part of the relevant goods, namely fragrancing preparations and household fragrances. Furthermore, it must be noted that when signs show both word and figurative components, the principle has been established that the word 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 most readily refer to a sign by its verbal components.

In view of the foregoing, it is considered that the slight visual and conceptual dissimilarities between the signs are not sufficient to counterbalance the significant aforementioned visual, aural and conceptual similarities existing between the signs.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public even for the goods which are only similar to a low degree due to the abovementioned principle of interdependence. Therefore, the application is partially well founded on the basis of the applicant’s Irish trade mark registrations.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to different degrees to those of the earlier trade mark. The application is not successful insofar as the remaining dissimilar goods are concerned.

COSTS

According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Frédérique SULPICE

Begoña URIARTE VALIENTE

Martina GALLE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.