CANCELLATION No 13808 C (INVALIDITY)

Decora S.A., ul. Prądzyńskiego 24a, 63-000 Środa Wlkp., Poland (applicant), represented by Kancelaria Patentowa Patentbox Romuald Suszczewicz, ul. Piekary 6/17, 61-823 Poznań, Poland (professional representative)

a g a i n s t

VIC International B.V., Koopvaardijweg 2, 4906 CV Oosterhout, the Netherlands (EUTM proprietor), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, the Netherlands (professional representative).

On 07/05/2018, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

On 23/09/2016, the applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 14 331 409 ‘ ’ (figurative mark), namely against some of the goods and services in Classes 9, 35 and 37. The application is based on international trade mark registration No 1 242 759 designating Romania ‘MULTIPROTEC’ (word mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

In the statement of grounds accompanying the application for a declaration of invalidity, the applicant contends in the main that there exists a high degree of likelihood of confusion, on account of the identity or high similarity of the goods and services, of the high similarity of the marks and of the high distinctive character of the earlier mark.

The EUTM proprietor submitted observations in reply on 03/04/2017. It denies the existence of a likelihood of confusion essentially based on the fact that the earlier mark has less than normal distinctiveness and the similarities between the signs are confined to weak elements, MULTI(-) and PROTEC(T), which as such cannot retain the attention of the ‘quite attentive and well informed’ relevant public.

The applicant wrote back on 09/08/2017. It reiterates that the overall impression of the marks is highly similar and there exists a ‘strong likelihood of confusion’. In addition, the applicant maintains that the earlier mark has ‘a high level of distinctiveness’ and submits evidence to support such a claim (which will be listed and analysed further in the decision).

In its final reply of 13/11/2017, the EUTM proprietor argues that despite potential similarity as regards some goods and services, given the purely descriptive character of the coinciding elements, there is no likelihood of confusion. It also challenges the evidence filed by the applicant and concludes that it is insufficient to show the enhanced distinctive character of the earlier mark.

LIKELIHOOD OF CONFUSION — ARTICLE 60(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.

1. 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 on which the application is based are the following:

Class 19: Underlays for flooring included in this class.

The contested goods and services are the following:

Class 19: Building materials (non-metallic); sheets and panels, not of metal, for building; building materials, not of metal, having insulating properties; panels, boards, rollers or blocks intended for thermal, moisture, fire or noise insulation, including for use for walls, ceilings, roofs, floors, partitions and as facade cladding; non-metallic building products and materials of mineral wool or rock wool; non-metallic fireproof boards and panels for building construction.

Class 35: Business mediation in the purchase and sale, import and export, and wholesaling and retailing of building materials, rigid pipes for building, asphalt, pitch, bitumen, transportable buildings, monuments, building panels, insulating building materials, panels, boards, rolls or blocks intended for thermal, moisture, fire or sound insulation, including for walls, ceilings, roofs, floors, partitions and as facade cladding, non-metallic building products and materials of mineral wool or rock wool, non-metallic fire-resistant boards and panels for building; the aforesaid services also provided via electronic networks, such as the internet.

Class 37: Building construction; repair of building materials, boards and panels, not of metal, for building, insulating building materials, not of metal, panels, boards, rolls or blocks intended for thermal, moisture, fire or sound insulation, including for walls, ceilings, roofs, floors, partitions and as facade cladding, non-metallic building products and materials of mineral wool or rock wool, non-metallic fire-resistant boards and panels for building; installation services relating to building materials, boards and panels, for building, insulating building materials, not of metal, panels, boards, rolls or blocks intended for thermal, moisture, fire or sound insulation, including for walls, ceilings, roofs, floors, partitions and as facade cladding, non-metallic building products and materials of mineral wool or rock wool and non-metallic fire-resistant boards and panels for building; the aforesaid services also provided via electronic networks, such as the internet.

Preliminary remark on the list of the contested services in Classes 35 and 37

The specification of the contested EUTM in Classes 35 and 37 contains the wording ‘the aforesaid services also provided via electronic networks, such as the internet’, which was omitted by the applicant when indicating the contested services in these two classes. As the wording in question is placed at the end of the list of services and separated thereto by a semi-colon, it must be interpreted as applicable to each and every category of services that precedes it. Bearing in mind the foregoing, the Cancellation Division will take into account in its further examination of the application for invalidity the list of the contested services in Classes 35 and 36 as it was specified hereinabove (i.e. as including the wording in question).

Contested goods in Class 19

The applicant’s underlays for flooring included in this class refer to building materials consisting of thin material that rests between the floor covering at top and the subfloor at the bottom in order to provide a smooth place for the floor covering to rest.

Bearing in mind the foregoing, it is clear that the contested building materials (non-metallic) include, as a broader category the applicant’s goods in this class. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

Furthermore, it is noted that the applicant’s goods can be in the form of sheets, panels, boards, rolls or blocks and, in addition to eliminating uneven subfloors, they are also used for dampening some sound, protecting against environmental factors like moisture or providing thermal or fire insulation. To this extent, the applicant’s underlays for flooring included in this class partially coincide with the remaining contested sheets and panels, not of metal, for building; building materials, not of metal, having insulating properties; panels, boards, rollers or blocks intended for thermal, moisture, fire or noise insulation, including for use for walls, ceilings, roofs, floors, partitions and as facade cladding; non-metallic building products and materials of mineral wool or rock wool; non-metallic fireproof boards and panels for building construction. Therefore, they are identical. For the sake of completeness, it is noted that the above conclusion is not called into question by the inclusion in the list of these contested goods of the wording ‘including for use for walls, ceilings, roofs, […], partitions and as facade cladding’. This is because the term including indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

Contested services in Class 35

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. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services.

As shown above in the comparison of goods in Class 19, the applicant’s goods have been found identical to building materials, building panels, insulating building materials, panels, boards, rolls or blocks intended for thermal, moisture, fire or sound insulation. Therefore, the contested wholesaling and retailing of building materials, building panels, insulating building materials, panels, boards, rolls or blocks intended for thermal, moisture, fire or sound insulation, including for walls, ceilings, roofs, floors, partitions and as facade cladding, non-metallic building products and materials of mineral wool or rock wool, non-metallic fire-resistant boards and panels for building; the aforesaid services also provided via electronic networks, such as the internet are similar to a low degree to the applicant’s underlays for flooring included in this class.

On the other hand, the contested wholesaling and retailing of rigid pipes for building, asphalt, pitch, bitumen, transportable buildings, monuments; the aforesaid services also provided via electronic networks, such as the internet are dissimilar to the applicant’s goods in Class 19 (underlays for flooring included in this class). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Wholesale services concern the business of selling of goods in large quantities and at low prices, typically to be sold on by retailers at a profit. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail and wholesale 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/wholesale services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are obviously not identical.

The remaining contested services in this class are business mediation in the purchase and sale and respectively import and export of a range of goods. Business mediation in the purchase and sale of goods is a different service than retail or wholesale and therefore the above considerations that justified a finding of low similarity cannot apply. Indeed, these are specialised business intermediation services by means of which business brokers or intermediaries assist buyers and sellers in the buying and selling process. In other words, they are not wholesalers or distributors, which buy products and then resell them but merely put buyers and sellers together without taking ownership of the product, service or property. The nature and purpose of these services are different from those of the applicant’s goods and so are their methods of use. Moreover, they are neither in competition nor complementary. The mere fact that some of these services may be rendered in connection with goods that are identical to applicant’s ones, is not sufficient for a finding of similarity between them.

As for import and export, these are not considered to be a sales service either and thus cannot be subject to the same arguments as the comparison of the applicant’s goods with the contested retail/wholesale services. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements and do not relate to the actual retail or wholesale of the goods, but would be preparatory or ancillary to the commercialisation of such goods. The fact that the subject matter of some of the import/export services and the applicant’s goods are the same is not a relevant factor for finding similarity.

Therefore, business mediation in the purchase and sale, import and export of building materials, rigid pipes for building, asphalt, pitch, bitumen, transportable buildings, monuments, building panels, insulating building materials, panels, boards, rolls or blocks intended for thermal, moisture, fire or sound insulation, including for walls, ceilings, roofs, floors, partitions and as facade cladding, non-metallic building products and materials of mineral wool or rock wool, non-metallic fire-resistant boards and panels for building; the aforesaid services also provided via electronic networks, such as the internet are found dissimilar to the applicant’s goods.

Contested services in Class 37

The fact that the applicant’s goods may be used during the provision of the contested building construction or may be the subject matter of the contested repair or installation services is not sufficient for a finding of similarity between them. Since by nature goods and services are dissimilar, similarity between the applicant’s underlays for flooring and the contested services in this class could only be found if it is common in the relevant market sector for the manufacturer of the goods to also provide such services, if the relevant public coincides and if the services at issue are provided independently of the purchase of the goods. However, in the present case, the entities that produce underlays for flooring are not usually the same as the ones that construct the building or provide repair or installation services. Furthermore, it is noted that the applicant did not put forward any arguments or evidence to the contrary, but merely stated that the services are similar to its goods since they concern goods ‘identical or similar to high extent to underlays for flooring’. Against this background, it must be concluded that all the contested services in this class are dissimilar to the applicant’s goods.

Conclusion as regards the contested services found dissimilar to the applicant’s goods

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 some of the services in Class 35 and all the services in Class 37 are clearly dissimilar to the applicant’s goods in Class 19, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected insofar as directed at these services.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the applicant in this respect does not alter the outcome reached above.

The examination of the present application will therefore continue only in respect of the goods and services that were found identical or similar to a low degree to the applicant’s goods, namely all the contested goods in Class 19 and some of the contested services in Class 35 (i.e. wholesaling and retailing of building materials, building panels, insulating building materials, panels, boards, rolls or blocks intended for thermal, moisture, fire or sound insulation, including for walls, ceilings, roofs, floors, partitions and as facade cladding, non-metallic building products and materials of mineral wool or rock wool, non-metallic fire-resistant boards and panels for building; the aforesaid services also provided via electronic networks, such as the internet).

2. 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 relevant goods and services are directed at a specialised public, with professional knowledge or expertise in the construction/building sector and also at the public at large. Indeed, it is not inconceivable for the applicant’s underlays for flooring and for at least some of the contested goods to be purchased and installed not only by professionals but also by skilled members of the general public, i.e. DIY amateurs. As regards the level of attention, the applicant claims that professionals will display a low level of attention since ‘they deal with building materials on a daily basis’ and relies of a judgement of the General Court mentioned in the Office’s Guidelines (judgment of 15/06/2010, T-547/08, Strumpf, EU:T:2010:235, §43). The Cancellation Division does not share this view. It rather considers that given the specialised nature of the goods at issue and also, in the case of professionals, their responsibilities, the degree of attention displayed by the latter will vary from average to higher than average. As regards the public at large, the degree of attention is deemed to be rather high, on account of the technical nature of the goods and their costs. Finally, it is noted that the case quoted by the applicant concerns completely different goods (i.e. socks ‘every day, rather low-priced consumer goods’) and as such the findings in that judgement do not apply to the present case.

3. The signs

MULTIPROTEC
Earlier trade mark	Contested trade mark

The relevant territory is Romania.

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, consisting of the eleven-letter word ‘MULTIPROTEC’.

One of the key points of the parties’ dispute is related to the meaning and distinctive character of this element. In this regard, the applicant contends that ‘MULTIPROTEC’ ‘has no meaning in any language and possesses a high level of distinctiveness’. The Cancellation Division cannot accept this. It is settled case-law that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). ‘MULTI-’ exists as such in the Romanian language and will naturally be singled out and understood throughout the relevant territory as an element used to form words and meaning more than one, many (information extracted at https://dexonline.ro/definitie/multi, on 30/04/2018). Furthermore, the Romanian relevant public will also recognise a semantic content in ‘-PROTEC’ since it is very close to the Romanian existing noun protecție (protection) and will understand it as referring to something which prevents something else from being damaged. It follows from the foregoing that the juxtaposition of ‘MULTI-’ and ‘-PROTEC’ forms a logical and conceptual unit for the Romanian consumers and will be associated as a whole with the concept of something which offers multi-protection. Bearing in mind the foregoing, it is considered that the ability of ‘MULTIPROTEC’ to indicate the commercial origin of the relevant goods has been significantly lowered, since this element is indicative of the fact that they are products which provide protection against damage in more than one way.

The contested sign is a complex figurative mark, in colour. It portrays the verbal elements ‘MULTI’, ‘PROTECT’ and ‘BOARD’ and a figurative element depicting the stylised outline of a house against a rectangular background that further includes horizontal lines and a semi-circle. The above considerations on the meaning and distinctiveness of ‘MULTIPROTEC’ in the earlier mark are equally valid and apply mutatis mutandis to the components ‘MULTI’ and ‘PROTECT’ in the contested sign in relation to all relevant goods and services.

The applicant puts forward that ‘BOARD’ is descriptive for the contested goods and ‘therefore cannot be monopolized as a trademark’ but did not file any evidence to support these contentions. The Cancellation Division does not consider ‘BOARD’ to be a basic English word so that it can safely be assumed that its meaning will be understood in the relevant territory. In addition, it must be noted that this word is not close to the Romanian equivalent words (placă, panou). Therefore, and in the absence of any evidence to the contrary, it is deemed that from the point of view of the relevant consumers ‘BOARD’ does not convey a clear and specific meaning, so that the public is capable of grasping it immediately and consequently its distinctiveness for the relevant goods and services is average.

The applicant also shows that this word is ‘frequently present in trade marks protected in the EU territory’ and there are over 1 500 registered EUTMs that include ‘Board’ which ‘only emphasises this word’s wide spread and lack of distinctiveness’. However, the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Consequently, the applicant’s arguments do not demonstrate that Romanian consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the element ‘BOARD’. Under these circumstances, the applicant’s claims must be set aside.

In the context of the relevant goods and services (which are broadly speaking building materials and retail and wholesale relating to those goods), the figurative element further included in the contested sign will be attributed little trade mark significance (if at all) by the relevant consumers, as the outline of the house alludes to the purpose or kind of the goods, whereas the rectangular background (including the lines and the semi-circle) are simple geometrical shapes.

To conclude, ‘BOARD’ must be deemed as the most distinctive element of the contested mark, the one that will catch and retain consumers’ attention.

Finally, it is noted that the contested mark does not have any element that could be considered more dominant (visually eye-catching) than other elements. The same applies to the earlier mark, which is a word mark and by definition does not have any such elements.

Visually, the signs coincide only to the extent where all the letters forming the earlier mark ‘MULTIPROTEC’ are also present in the contested sign, albeit reproduced in two separate words, ‘MULTI‘ and ‘PROTEC(*)’. The signs differ in the last letter ‘-T’ of ‘PROTECT’ and the additional verbal and figurative elements of the contested sign. In addition, the contested mark has a different length, structure and overall presentation than the earlier word mark. While it is true that the shared letters are placed in the initial part of the contested sign and that consumers normally attach more importance to the beginning of words, this cannot be automatically applied in each and every case, as the comparison of signs has to be carried out based ‘on their overall impression’ and cannot be reduced to a matter of arithmetic. Indeed, as already explained, ‘MULTIPROTEC’/’MULTI PROTECT’ have a limited impact only, on account of their low ability to function as a badge of origin for the relevant goods and services. Bearing in mind the foregoing and account taken also of the weight attributed to the differentiating verbal element ‘BOARD’ of the contested sign, it is considered that the overall degree of visual similarity of the signs is at most low.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘m/u/l/t/i/p/r/o/t/e/c’ present identically in both marks and differs in the remaining letters of the contested sign ‘-t’ and ‘b/o/a/r/d’. The applicant argues that ‘it is not common to pronounce distinctly the letter ‘t’ and therefore ‘multiprotec’ and ‘multi protect’ are almost identical on an aural level. In this regard, the Cancellation Division points out that the final consonants ‘-ct’ of ‘protect’ in the contested sign will be referred to aurally as /k+t/, the latter consonant ‘t’ being therefore clearly audible in Romanian. As such and bearing in mind the weight attributed to the shared letters, it is concluded that the overall degree of aural similarity is at most below average.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the coinciding component(s) ‘MULTIPROTEC/’MULTI PROTECT’ will evoke a concept, bearing in mind that these elements have a low ability to function as a trade mark, it can at most lead to a low degree of overall conceptual similarity.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

According to the applicant, the earlier trade mark enjoys a high degree of distinctiveness as result of its long-standing and intensive use in Romania for all the goods for which it is registered since February 2015. Furthermore, in the applicant’s opinion, ‘this argument is supported by the Romanian State Office for Inventions and Trade marks, by the fact that it didn’t refuse to grand protection of the applicant’s international registration in the territory of Romania’.

On 09/08/2017, the applicant submitted the following evidence:

• Extracts from ‘Magazin Pardoseli’ (issue 26/December 2015 February 2016) mentioning ‘MULTIPROTEC 1000/ACOUSTIC/SONIC/CLICK’ (document in Romanian);

• Extracts from Arbitron Product Catalogue 2015 mentioning ‘MULTIPROTEC 1000/X3/CLASSIC/SONIC/CLICK’;

• Internal document (in Polish and English translation) titled ‘List of sales orders’ for the period January 2000 to August 2017, mentioning the Arbitron Catalogue 2015 and a list of clients (seven Romanian based companies); there is no explicit reference to the trade mark; the product appears to be identified by a code (550000000000001892) which could not be linked to any ‘MULTIPROTEC’ goods in the remaining evidence;

• Screenshots from the websites www.dedeman.ro, www.emag.ro, https://traget.ro and harmonyhomedecor.ro mentioning the products ‘Folie parchet Multiprotec/Multiprotec 1000’ and ‘Izolator pentru parchet Arbitron Multiprotec 1000’ (four pages in Romanian).

The applicant’s claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

Having examined the material listed above, the Cancellation Division concludes that the evidence submitted by the applicant does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through use. Despite showing the trade mark being featured in a catalogue, a magazine or on the internet, the evidence provides no information on the extent of such use. In addition, there is no indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. Finally, the internal document (aside from originating from the applicant which endows it with less probative value than material from independent sources) does not mention the trade mark at all. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public and is clearly insufficient to demonstrate the purported claims.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The Cancellation Division has already explained in section c) the reasons for which the juxtaposition of words ‘MULTIPROTEC’ is deemed to possess little trade mark significance for the relevant goods. Nevertheless, as it is a registered trade mark, it must be deemed to be endowed for the purpose of the present proceedings with some low degree of distinctiveness for all the goods.

For the sake of completeness, it is noted that the mere grant of protection in Romania by the Romanian Patent and Trade mark Office does not equate to the mark having a high degree of distinctiveness, as the applicant claims.

5. Global assessment, other arguments and conclusion

The contested goods are identical and the contested services are similar to a low degree to the applicant’s goods.

As detailed in section c) above, the similarity between the signs arises from the shared letters ‘MULTIPROTEC’.

This however has only been of such a nature as to lead to a finding of an overall degree of visual and conceptual similarity which is at most low. Indeed, the ability of this term to indicate the commercial origin has been significantly lowered and consumers’ attention is likely to focus on the differentiating element of the contested sign, ‘BOARD’, which will be perceived as the primary indicator of the commercial origin of the goods and services provided under the contested mark.

While it is true that aurally the degree of overall similarity is a bit higher (at most below average), account must be taken of the fact that in the present case consumers are guided more by the visual aspect of the mark, since the relevant goods are normally bought after rather careful visual inspection. In other words, the visual perception of the marks in question will generally take place prior to purchase and accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion.

It must also be recalled that the distinctiveness of the earlier mark, as a whole, is low. Admittedly, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (judgment of 13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70). However, those conditions are not met in the present case, since the overall impression given by the marks is not highly similar.

Taking into consideration all the above, the Cancellation Division finds that, in a global assessment of all relevant factors, a certain visual, aural and conceptual similarity between the signs in dispute arising from the common letters (sounds) ‘MULTIPROTEC’ is safely outweighed by the differences existing between the marks, as analysed above. Consequently, the relevant public (even when displaying only an average degree of attention) is not likely to believe that the earlier mark and the contested sign originate from the same or economically-linked undertakings, and, as a result, there is no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR.

In support of its claims of a high likelihood of confusion, the applicant refers to the principle of interdependence, according to which a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Cancellation Division has taken this principle into account when assessing the likelihood of confusion and the fact that the goods in Class 19 are identical cannot, in this case, compensate for the differences between the marks.

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the cancellation application must be rejected.

For the sake of completeness, it is noted that in the application for a declaration of invalidity, the applicant also ticked the grounds of Article 60(1)(a) EUTMR in the form corresponding to earlier ‘Well-known trade mark (Article 6bis of the Paris Convention) – Article 8(2)(c) EUTMR’, without any further indications as to the identification of the earlier right concerned, the territory where the mark is well-known, the type of mark or the respective goods and/or services. In addition, the Cancellation Division could not identify any other explicit references to a well-known mark in the sense of the Paris Convention in any of the applicant’s submissions. As such it is not readily clear whether the intention of the applicant was to base the application also on its registered IR claimed to be well-known in Romania in the sense of Article 6bis of the Paris Convention or merely to claim the enhanced distinctive character of the mark as an additional argument under Article 8(1)(b) EUTMR. Be that as it may, the Cancellation Division points out that even if the applicant intended to base the application also on a well-known mark, the outcome of the present decision would still be the same, since the applicant failed to prove the well-known character of the earlier mark. The evidence it filed has already been listed and assessed in the section d) above and it proved clearly insufficient to demonstrate the alleged enhanced distinctiveness of the earlier mark. A fortiori the evidence is also insufficient to prove that the mark would be well-known.

COSTS

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 Rule 94(7)(d)(iv) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for a declaration of invalidity), 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

Liliya YORDANOVA

Oana-Alina STURZA

Irina SOTIROVA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Article 109(8) EUTMR, such a request must be filed within one month of 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.