CANCELLATION No 21 681 C (INVALIDITY)

Roller GmbH & Co. KG, Willy-Brandt-Allee 72, 45891 Gelsenkirchen, Germany (applicant), represented by Massenberg Zürbig Rechtsanwälte Partnerschaft mbB, Brüsseler Platz 1, 45131 Essen, Germany (professional representative)

a g a i n s t

Hongkong Homar Technology CO., Limited, Flat B 03 11/F Man Foong Ind Bldg 7 Cheung Lee St, Chai Wan, People’s Republic of China (EUTM proprietor), represented by José Izquierdo Faces, Calle General Salazar, Nº 10, 48012 Bilbao (Vizcaya), Spain (professional representative).

On 15/04/2019, the Cancellation Division takes the following

DECISION:

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

2. European Union trade mark No 15 859 309 is declared invalid for all the contested goods in Class 24, namely:

Class 24: Bed linen; pillowcases; pillow shams; bed blankets; bath mitts; towels of textile; serviettes of textile; face towels of textile; cloths for removing make-up.

3. The European Union trade mark remains registered for all the uncontested goods, namely:

Class 21: Cutting boards for the kitchen; fruit presses, non-electric, for household purposes; mixing spoons [kitchen utensils]; garlic presses [kitchen utensils]; baking mats; potholders; toilet brushes; brushes for footwear; scrubbing brushes; dishwashing brushes; toilet cases; gloves for household purposes; oven mitts; kitchen mitts; barbecue mitts; insect traps; mouse traps; fly traps.

Class 26: Shoe laces; brassards; arm bands [clothing accessories]; hair curlers, other than hand implements; shoe fasteners; shoe buckles; false hair; wigs; hair extensions; artificial flowers; embroidery.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 15 859 309 (figurative mark), namely against all the goods in Class 24. The application is based on, inter alia, German trade mark registration No 30 2016 105 651 ‘homara’ (word mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion because of the similarity of the signs and the identity/similarity of goods. It argued that the earlier marks had a high level of distinctiveness, and supported its argument with printouts translated into English from the website of the company Roller and from Wikipedia’s page about that company, which owns the trade marks on which the application for declaration of invalidity is based.

The EUTM proprietor did not present any observations in reply.

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.

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 German trade mark registration No 30 2016 105 651 ‘homara’ (word mark).

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:

Class 24: Bed covers; bed linen; cushion covers; towels of textile; towelling [textile]; bath towels; table napkins of textile.

The contested goods are the following:

Class 24: Bed linen; pillowcases; pillow shams; bed blankets; bath mitts; towels of textile; serviettes of textile; face towels of textile; cloths for removing make-up.

Contested goods in Class 24

Bed linen, pillowcases, pillow shams, towels of textile and serviettes of textile are identically contained in both lists of goods (including synonyms).

The contested face towels of textile are included in the broad category of the applicant’s towels of textile. Therefore, they are identical.

The contested bed blankets are included in the broad category of the applicant’s bed covers. Therefore, they are identical.

The contested bath mitts and cloths for removing make-up are similar to a high degree to the applicant’s towelling [textile] as the goods may share purpose, producers, distribution channels and target the same public.

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 goods found to be identical or similar to a high degree are goods for everyday consumption and are directed at the public at large. The degree of attention is average.

3. The signs

homara
Earlier trade mark	Contested trade mark

The relevant territory is Germany.

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 composed of the verbal element ‘homara’. The mark has no meaning in German; therefore, it is distinctive for the relevant goods.

The contested mark is a figurative mark consisting of the verbal element ‘HOMAR’, written in a slightly stylised italic font in upper-case black letters. It has no meaning in German and therefore it is distinctive for the relevant goods. There is a white oval line drawn through the upper part of the letters and a black arrowhead-like ornament in the top right corner of the last letter ‘R’. Upon closer examination, these two elements can be recognised as the two parts of an arrow, the shaft and the sharp arrow point. The arrow ornament does not hinder the perception of the verbal element.

The arrow is perceived with its natural meaning and, since it has a rather decorative nature, it is attributed less than an average level of distinctiveness. In any case, 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).

The marks under comparison have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘HOMAR’ and differ in the last letter of the earlier mark, ‘A’, and in the arrow decoration and the figurative representation of the contested sign. With respect to the earlier mark, it is to be noted that in the case of word marks, since the word as such is protected and not its written form, it is immaterial if the word mark is represented in small or capital letters.

Bearing in mind what has been stated above as regards the importance of the figurative elements, and the fact that the earlier mark is included almost in its entirety in the verbal element of the contested one, the signs are visually similar at least to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘HOMAR’, present identically in both signs. Their pronunciation differs in the sound of the earlier sign’s last letter, ‘A’, which has no counterpart in the contested mark. As a result, the earlier mark will be pronounced in three syllables and the contested mark in two, which renders a different rhythm and intonation. Therefore, the signs are aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive the concept of the arrow in the contested sign, as explained above. The earlier mark, as well as the verbal element of the contested mark, however, have no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are conceptually dissimilar.

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. 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. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks must 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 their distinctive and dominant components’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

Likelihood of confusion must be assessed globally, considering all the circumstances of the case.

The earlier mark enjoys a normal degree of distinctiveness for the relevant public. The goods are partly identical and partly similar to a high degree. The marks under comparison are visually similar at least to an average degree, aurally similar to an average degree and conceptually dissimilar. The relevant public is composed of average consumers and the level of attention is average.

The marks under comparison differ in the earlier mark’s last letter ‘a’, while the earlier mark is included almost in its entirety in the verbal element of the contested sign. The marks also differ in the figurative representation of the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the left or top of the sign (the initial part) the one that first catches the attention of the reader.

Account is taken of 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 (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In spite of the one-letter difference between the verbal elements of the marks, there is a likelihood of confusion because, as mentioned above, the public tends to focus on the beginning of a sign and does not usually make a direct comparison between the signs.

Regarding the figurative elements of the contested sign, they have a smaller impact on the consumer and consequently on the assessment of likelihood of confusion compared to the verbal ones. Moreover, the arrow decoration has a lower than average level of distinctiveness due to its decorative nature.

Therefore, in view of all the relevant factors, the Cancellation Division finds that the differences between the marks do not outweigh their striking similarities, especially taking into account that the contested goods are partly identical and partly similar to a high degree to the applicant’s goods.

It follows from the above that the contested trade mark must be cancelled for the goods found identical or similar to a high degree to those of the earlier trade mark.

Considering all the above, there is a likelihood of confusion on the part of the relevant public.

Therefore, the cancellation is well founded on the basis of the applicant’s German trade mark registration No 30 2016 105 651 ‘homara’ (word mark) and the contested trade mark must be cancelled for all the contested goods.

Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its extensive use as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right examined 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).

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) 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

Plamen IVANOV

Birgit Holst FILTENBORG

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.