CANCELLATION No 11257 C (INVALIDITY)
Campomar, S.L., Avda. Espana n° 5, 11701 Ceuta, Spain (applicant), represented by Herrero & Associados, Alcalà, 35, 28014 Madrid, Spain (professional representative)
a g a i n s t
Dominik Ricker, Hinterfeldstrasse 7, 6890 Lustenau, Austria (EUTM proprietor).
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 13 699 202 is declared invalid for all the contested goods, namely:
Class 3: Body cleaning and beauty care preparations.
3. The European Union trade mark remains registered for all the uncontested goods, namely:
Class 24: Textile goods, and substitutes for textile goods.
Class 29: Oils and fats.
Class 33: Alcoholic beverages (except beer).
4. The EUTM proprietor bears the costs, fixed at EUR 1 150.
The applicant filed an application for a declaration of invalidity in respect of European Union trade mark No 13 699 202 (figurative) (the EUTM). The application is directed against some of the goods covered by the EUTM, namely all of the goods in Class 3. The application is based on, inter alia, international trade mark registration designating France No 652 471. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that there exists a likelihood of confusion between the marks for identical goods.
The EUTM proprietor argues that the signs are not similar and that consumers of natural products display a high degree of attention when purchasing Class 3 goods with natural characteristics because they are sensitive to their ingredients. It quotes 12/01/2006, C‑361/04 P, Picaro, EU:C:2006:25, §§ 39 and 40. NIKE is known as a multinational corporation in the field of sports. There is no phonetic or visual similarity between the words ‘NIKE’ and ‘NICK’, which are pronounced ‘ni-key’ versus ‘nick’. The words have only the two first letters in common and, in addition, the EUTM contains an additional word, ‘naturals’.
The applicant argues that there are similarities between ‘NIKE’ and the element ‘NICK’, and the letters ‘CK’ have the same sound as ‘K’. The opponent is not the NIKE multinational engaged in sports but a Spanish company in the field of perfumery products, cosmetics, and beauty and hygiene products. The goods are identical; there is likelihood of confusion.
The EUTM proprietor finally argues that ‘NICK’ would be perceived as a male name while ‘NIKE’ is a multinational corporation engaged in sports; therefore, the signs are conceptually dissimilar. Consumers pay a high degree of attention to the producer of goods in Class 3. Furthermore, the applicant is a Spanish company, while the proprietor is not, and the public could not believe that the goods come from the same undertakings.
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 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 International trade mark registration designating France No 652 471.
The goods on which the application is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions and dentifrices.
The contested goods are the following:
Class 3: Body cleaning and beauty care preparations.
The contested body cleaning and beauty care preparations are included in the broad category of the applicant’s cosmetics. Therefore, they are identical.
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. The degree of attention is average.
The EUTM proprietor argued that the degree of attention should be higher and quoted 12/01/2006, C‑361/04 P, Picaro, EU:C:2006:25, §§ 39 and 40, in support of his argument. The case law mentioned is not relevant to the present case, as the goods in question in that case were motor vehicles, to which the average consumer pays a high degree of attention due to their high price and technological nature.
The relevant public is the public concerned by the goods indicated in the lists of goods and/or services. The actual or intended use of the goods and services, if not stipulated in the list of goods and/or services, is not relevant to the examination (see 16/06/2010, T‑487/08, Kremezin, § 71). In this case, even though the word ‘naturals’ is indicated in the contested mark, it does not allow the Cancellation Division to restrict the public, since the relevant criterion is to be found in the list of goods and not in the trade mark itself.
The relevant goods in the present case being body cleaning and beauty care preparations in general, there is no reason to consider that they are specialised enough to justify a higher than average degree of attention on the part of the public.
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 word mark, ‘NIKE’.
The contested mark is a figurative mark comprising a round figurative element in different shades of red. Below it appear the word ‘NICK’, in near-standard bold upper case letters, and the word ‘naturals’, in near-standard lower case letters.
The earlier mark has no elements which are clearly more distinctive or dominant (visually eye-catching) than others, since it is a word mark and ‘NIKE’ is meaningless to the relevant public.
In the contested sign, the word and figurative elements are co-dominant, but ‘NICK’ is visually dominant over the other word element because it appears in bold upper case letters and before ‘naturals’. In addition, the word ‘naturals’ would be understood in French as ‘naturels’, meaning coming from nature or genuine, which is a desirable quality for the relevant goods in Class 3. This word will therefore not be regarded as distinctive, in contrast to ‘NICK’, which could be perceived as a name by at least part of the French public.
Visually, the elements ‘NIKE’ and ‘NICK’ are composed of four letters each, with the letters ‘NI’ followed by the letter ‘K’, albeit in a different position. They differ in the letters ‘E’ and ‘C’, in ‘naturals’, in the figurative element and in the general layout of the contested sign. 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). In addition, the distinctive and co-dominant word element ‘NICK’ is in bold, comes first and is in upper case, and it therefore has a stronger impact in the sign than the other elements.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the letters ‛NI*K*’, present in both signs, as in French the final ‘E’ would be silent and ‘K’ and ‘CK’ are pronounced identically. The pronunciation differs in the sound of the letters ‛naturals’ of the contested mark, which has no counterpart in the earlier sign. Nevertheless, the public’s attention would be focused on the distinctive element ‘NIKE’/‘NICK’, as ‘naturals’ would be perceived not as an indication of origin of the goods but as describing a quality of them. In addition, the figurative element would not be pronounced. 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are aurally similar to a high degree.
Conceptually, the earlier sign is meaningless. The EUTM proprietor mentioned that the public would associate the mark with the famous brand in the field of sports. First of all, reputation cannot be assumed without evidence. In addition, brands that are meaningless do not convey meanings as such. While the public in the relevant territory will perceive the contested mark as referring to something natural and genuine because the English word ‘naturals’ is similar to its French equivalent, ‘naturels’, and part of the public will see ‘NICK’ as a name (while the figurative element does not convey any meaning), the other sign lacks any meaning in that territory. Since one of the signs 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.
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.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
As has been concluded above, the contested goods in Class 3 are identical to those of the earlier mark and target the public at large, whose degree of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the signs are visually similar to an average degree and phonetically similar to a high degree. This similarity of the impressions will not be altered by any conceptual perception for the part of the public that does not associate ‘NICK’ with a name, since, as previously mentioned, the additional differentiating element ‘naturals’ would not be perceived as an indication of origin and the focus would be on the element ‘NICK’, which appears before the other word element and is pronounced identically to ‘NIKE’.
Indeed, the meaningful element, ‘naturals’, will not have much of an impact on the overall perception of the signs, as it will be perceived as a reference to a characteristic of the goods.
Bearing in mind all these interrelated factors, it must be concluded that the differences resulting from the additional element ‘naturals’ at the end of the contested sign and the figurative co-dominant element at the top of it are not sufficient to counteract, on a visual or phonetic level, the similarity deriving from the letters ‘NI’ and ‘K’ that the signs have in common, also bearing in mind 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.
In the light of the foregoing, and taking into account the principle of interdependence mentioned above, the degree of similarity between the marks at issue is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the goods bearing the contested mark come from the same undertaking as those bearing the earlier mark, or from economically-linked undertakings.
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 international trade mark registration designating France No 652 471. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right ‘NIKE’ 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 rights invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
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.
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.