CANCELLATION No 10 939 C (INVALIDITY)
Aldi Stores Limited, Holly Lane, Altherstone, Warwickshire CV9 2SQ, United Kingdom (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
Desfo, Sgps, S.A., Rua das Casas Queimadas, nº 97, Grijó e Sermonde, 4415-000, Vila Nova de Gaia, Portugal (EUTM proprietor), represented by Carlos de Matos, Ave Almirante Reis, 131-1º, 1150-015 Lisboa, Portugal (professional representative).
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 13 270 707 , namely against some of the goods in Classes 3, 4 and 5. The application is based on United Kingdom trade mark registrations No 2 199 652, ‘MISTIK’ and No 1 492 289, ‘MISTIK’. 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 that there exists a likelihood of confusion on the part of the public between the contested mark and the earlier mark on account of the similarity between the signs and the identity or similarity of the goods at issue.
The EUTM proprietor argues that the goods and the trade marks at issue are different and therefore the application for invalidity must be dismissed.
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 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:
UK 2 199 652
Class 3: Polish; furniture polish.
UK 1 492 289
Class 5: Air fresheners in aerosol or solid preparations; all included in Class 5.
The contested goods, after partial invalidity of the EUTM as a result of cancellation decision 10938 C rendered on 12/11/2015 which is final, are the following:
Class 4: Waxes and fluids.
The contested waxes and fluids belonging to this class are to be understood as products found in their raw states. Waxes are mainly consumed industrially as components of complex formulations. They are often used as coatings, for example, for wood products, due to the matting effects and wear resistance they confer to paints. They are also used as fuel for illuminants, mainly for candles. Fluids protected in Class 4, are substances used for their lubricating properties and different purposes, other than cosmetic and medical. They can also be oils and greases having different industrial applications.
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.
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.
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
Carmen SÁNCHEZ PALOMARES
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.