CANCELLATION No 25 741 C (INVALIDITY)
Igor Kosatchkow, Höhmann Str. 3, 14193 Berlin, Germany (applicant), represented by V. Nieding Ehrlinger Geipel Ingendaay PartGmbB, Kurfürstendamm 66, 10707 Berlin, Germany (professional representative)
a g a i n s t
Pimar snc, Via dell'Artigianato n. 54, 22063 Cantù (CO), Italy (EUTM proprietor) represented by Fabrizio Diana, Via Volta n. 70, 22100 Como, Italy (professional representative).
On 12/07/2019, the Cancellation Division takes the following
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 all the services of European Union trade mark No 13 732 904 . The application is based on European Union trade mark registration No. 12 015 145 ‘UNICO Interiors’ and European Union trade mark registration No. 12 015 228 , both registered for the same goods and services in Classes 11, 18 and 35.
The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION 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 11: Lighting apparatus; Lighting apparatus and installations; Apparatus for lighting purposes with light-emitting diodes (LEDs); Electric lamps; Ceiling lights; Sockets for electric lights; Lamp glasses; Lamp chimneys; Lamp shades; Lampshade holders; Standard lamps; Desk lamps.
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Leather, unworked or semi-worked; Tanned leather; Leather purses; Leather thread; Straps (Leather -); Leather leashes; Studs of leather; Straps (Leather -); Laces (Leather -); Briefcases [leather goods]; Leatherboard; Saddlery of leather; Animal skins, hides.
Class 35: Business management; Business administration; Advertising; Drafting and publication of publicity texts; Publicity columns preparation; Advertising via the Internet; Television advertising; Marketing; Business advice and consultancy; Office functions; Provision of public relations services; Advice for consumers; Wholesaling and retailing, including via the Internet, in the fields of equipment, apparatus and installations for lighting, apparatus for lighting with light emitting diodes (LED), electric lamps, ceiling lights, sockets for electric lights, lamp glasses, lamp chimneys, lamp shades, lampshade holders, standard lamps, desk lamps, leather and imitations of leather and goods made from these materials, unworked or semi-worked leather, tanned leather, leather purses, leather thread, girths of leather, leather leashes, leather rivets, leather straps, leather laces, bags of leather, leatherboard, leather for furniture, leather trimmings for furniture, furniture coverings of leather, saddlery of leather, animal skins, hides, furniture, goods of wood, cork, reed, cane, wicker, horn, bone, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all of these materials, or of plastics, sideboards (furniture), medicine cabinets, medicine cupboards, trestles (furniture), benches (furniture), cable and pipe clips of plastics, tanks, not of metal and not of masonry, closures, not of metal, for containers, bed fittings, not of metal, beds, beds for household pets, bedsteads of wood, bed casters, not of metal, bedding, except linen, flower-stands (furniture), bolts, not of metal, book rests (furniture), library shelves, dressers (furniture), tea trolleys (furniture), office furniture, computer tables, decorations of plastic for foodstuffs, cases of wood or plastic, dowels, not of metal, plugs (dowels), not of metal, cargo floors for furniture, figurines (statuettes) of wood, wax, plaster or plastic, freestanding partitions (furniture), hairdressing chairs, coathooks, not of metal, coat stands, curtain rings, curtain rollers, curtain rods, garden furniture, woven timber blinds (furniture), plate racks, gun racks, hand-held mirrors (toilet mirrors), towel closets (furniture), stools, hat stands, interior textile window blinds, indoor window shades (furniture), settees, index cabinets (furniture), chests, not of metal, high chairs for babies, cushions, coat hangers, clothes hooks, not of metal (furnishings), coatstands, chests of drawers, pillows, bolsters, head-rests (furniture), hampers (baskets), wickerwork, counters, lecterns, easy chairs, massage tables, mattresses, furniture of metal, furniture fittings, not of metal, furniture cups of wood, furniture casters, not of metal, doors for furniture, screens (furniture), armchairs, rattan, racks (furniture), shelves for filing-cabinets (furniture), hinges, not of metal, stools, umbrellas stands, sofa beds, cupboards, screws, not of metal, nuts, not of metal, desks, lockers, school furniture, tea trolleys (furniture), seats of metal, sofas, sofas (divans), standing desks, seats, trays, not of metal, stair rods, tables, tables of metal, table tops, roulette tables, packaging containers of metal, showcases (furniture), curtain rings, pulleys of plastics for blinds, curtain rails, curtain rods, baby changing platforms, washstands (furniture), waterbeds, not for medical purposes, cots, draughtman's tables, magazine racks, newspaper display stands, mirrors, picture frames, mouldings for picture frames, picture frame brackets, carpets, mats and matting, linoleum and other materials for covering existing floors, carpet underlay, rugs, bath mats, foot mats, door mats; Procurement services, for others (purchasing of goods and services for other businesses); Franchise-issuing, Namely business management and organisational and professional business consultancy for businesses; Business management and organisation consultancy, in particular for franchisees.
The contested services are the following:
Class 42: Industrial design.
Industrial design is a process of design applied to products that are to be manufactured through techniques of mass production. Industrial designers not only focus on the appearance of a product, but also on how it functions, is manufactured and ultimately the value and experience it provides for users.
The goods in Class 11 are all lighting apparatus and those in Class 18 are leather and goods made of this material. The goods are not similar to the services. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs, they have different commercial origins, they are not distributed through the same channels and they are not in competition with each other. Furthermore, these goods and services are not complementary as there is not a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44).
The services protected in Class 35 are not only the general categories of business management; business administration; advertising, but also some services included in these categories, as well as services of wholesale and retail of goods.
Business management and business administration services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. Given all this, the conflicting services differ in nature, commercial origin and channels of trade from the contested services. Furthermore, the services are not in competition with each other, nor are they complementary. These services are therefore dissimilar.
Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that, potentially, the services of industrial design may appear in advertisements is insufficient for finding similarity. Thus, the conflicting services are dissimilar.
The services of wholesale and retail consist in the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes. Given this specific nature, these services are not similar to those of industrial design; also, the services have different commercial origins, are distributed through different channels of trade, and the services are not in competition with each other, nor are they complementary. These services are therefore dissimilar.
In account of what has been explained above, all the goods and services protected by the earlier marks are dissimilar to the contested services.
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 and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application filed under Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR must be rejected.
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(ii) 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
Pierluigi M. VILLANI
María Belén IBARRA
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.