CANCELLATION No C 46 066 (INVALIDITY) 

 

Way2web Spółka Z O. O. Spółka Komandytowa, ul. Przemysłowa 10, 42300 Myszków, Poland (applicant), represented by Biuro Doradztwa Technicznego I Usług Patentowych Plik Joanna Pawlik, ul. Grażyńskiego 15A/42, 40-126 Katowice, Poland (professional representative)

 

a g a i n s t

 

DOX Mariusz Majewski, ul. Ściegiennego 10/1, 42-400 Zawiercie, Poland  (EUTM proprietor), represented by Joanna Kluczewska-Strojny, Farysa 29e, 01-971 Warsaw, Poland (professional representative).

On 02/03/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

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

 

2.	European Union trade mark No 15 911 209 is declared invalid in its entirety.

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

REASONS

 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 15 911 209 (figurative mark), (the EUTM). The request is directed against all the goods and services covered by the EUTM in Classes 34 and 35. The application is based on, inter alia, EUTM registration No 14 941 744  .

The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) and b) EUTMR. In its observations attached to the application for a declaration of invalidity the applicant also claimed that the contested sign was applied for in bad faith by the EUTM proprietor and that the provision of Article 59(1)(b) EUTMR is applicable.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that there is a likelihood of confusion between the signs since the marks are highly similar and the goods and services are identical or similar. Furthermore, the applicant states that Mr. Mariusz Majewski from the EUTM proprietor was an employee of WAY2WEB sp. z o.o. sp. Komandytowa between 2014 and 2015 as coordinator of the sales department and his duties included, among others: “marketing the company products, observing and monitoring the information related to the products offered by the company". Moreover, from 01/09/2011 to 08/08/2012 the President of the Management Board of WAYWEB Spółka z o.o. (the general partner of WAY2WEB) was Mariusz Majewski, who represented WAY2WEB in accordance with the Code of Commercial Companies and Partnerships. The applicant claims that the EUTM proprietor filed the contested sign in bad faith and filed some evidence in this respect which will be listed and assessed only if necessary.

The EUTM proprietor did not submit any observations in reply, despite being expressly invited to do so by the Office.

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. 

 

 

a) The goods and services

 

 

The goods and services on which the application is based are, inter alia,  the following: 

 

Class 34: Tobacco-free cigarettes, electric and electronic tobacco-free cigarettes, cartridges for electronic tobacco-free cigarettes, liquids for filling cartridges, filters for electronic tobacco-free cigarettes; Ampoules for electronic or electric tobacco-free cigarettes; electronic or electrical cigarettes; Cigarette filters; Cigarette holders; Filter-tipped cigarettes; Cigarettes containing tobacco substitutes, not for medical purposes; Cigarettes containing tobacco substitutes; Liquids for filling cartridges for electronic or electric cigarettes; Filters for electronic or electric tobacco-free cigarettes; Cigarette cases; Electric and electronic tobacco-free cigarettes for medical purposes; Ampoules for electronic tobacco-free cigarettes; Cartridges for electronic or electric tobacco-free cigarettes; Liquids for filling cartridges for electronic or electric cigarettes.

Class 35: Sale, in retail outlets, wholesale outlets, on a computer network, including in online shops via mail order sale of electric and electronic cigarettes, spare parts and accessories for the aforesaid cigarettes, including liquids for filling cartridges, pharmaceutical preparations, dietary supplements, dietetic food, supplements, herbs, coffee, tea, cocoa, artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice.

 

The contested goods and services are the following: 

 

Class 34: Boxes for electronic cigarettes; Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; Electronic cigarettes; Tobacco-free cigarettes, electric and electronic tobacco-free cigarettes, cartridges for electronic tobacco-free cigarettes, liquids for filling cartridges, filters for electronic tobacco-free cigarettes; Ampoules for electronic or electric tobacco-free cigarettes; Electric cigarettes; Cigarette filters; Mouthpieces for cigarettes; Filter-tipped cigarettes; Cigarettes containing tobacco substitutes, not for medical purposes; Cigarettes containing tobacco substitutes; Liquids for filling cartridges for electronic or electric cigarettes; Filters for electronic or electric tobacco-free cigarettes; Cigarette cases; Electric and electronic tobacco-free cigarettes for medical purposes; Ampoules for electronic tobacco-free cigarettes; Cartridges for electronic or electric tobacco-free cigarettes.

Class 35: Sale in retail outlets, wholesale outlets or on a computer network, including in online shops via mail order sale, of electric and electronic cigarettes, parts and accessories for the aforesaid cigarettes, including liquids for filling cartridges, pharmaceuticals; Sale in retail outlets, wholesale outlets or on a computer network, including in online shops via mail order sale, of herbs, artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastries and confectionery, edible ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice.

Contested goods in Class 34

 

The contested goods electronic cigarettes, electronic cigarettes; tobacco-free cigarettes, electric and electronic tobacco-free cigarettes, cartridges for electronic tobacco-free cigarettes, liquids for filling cartridges, filters for electronic tobacco-free cigarettes; ampoules for electronic or electric tobacco-free cigarettes; electric cigarettes; cigarette filters; filter-tipped cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; cigarettes containing tobacco substitutes; liquids for filling cartridges for electronic or electric cigarettes; filters for electronic or electric tobacco-free cigarettes; cigarette cases; electric and electronic tobacco-free cigarettes for medical purposes; ampoules for electronic tobacco-free cigarettes; cartridges for electronic or electric tobacco-free cigarettes are equally present in the list of the earlier mark (including synonymous). Therefore these are identical goods.

The contested boxes for electronic cigarettes overlaps with cigarette holders of the applicant and the contested mouthpieces for cigarettes overlaps with cigarette filters of the applicant. These goods are identical.

The contested personal vaporisers (…) includes the applicant’s electric and electronic tobacco-free cigarettes. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested flavourings and solutions therefor are included in, or overlap with, the earlier mark’s liquids for filling cartridges. These goods are also identical.

Contested services in Class 35 

 

All the contested services are identically covered by the earlier mark in Class 35 (including synonyms.

 

b) 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 and services found to be identical are directed at the public at large.

 

Although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved. This has been confirmed by several Board of Appeal decisions (e.g. 26/02/2010, R 1562/2008-2, victory Slims (fig.) / VICTORIA et al., where it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal; 25/04/2006, R 61/2005-2, GRANDUCATO / DUCADOS et al.).

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36).

 

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

 Therefore, the degree of attention may vary from average (e.g. the case of herbs) to high (tobacco related products and pharmaceuticals), depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

 

Earlier trade mark	Contested sign

 

 

The relevant territory is   the European Union.

 

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 marks share the letters ‘pink’ written with the same fanciful pink script and forming the first word of the earlier mark and four out of the five letters’ first word of the contested sign. Pink is a colour in English and it is considered to be generally understood in the EU. The General Court previously stated that the word ‘pink’ ‘must be regarded, in the same way as the words ‘blue’ and ‘red’, as part of basic English vocabulary regularly used both in everyday life and in advertising. It is clear that the relevant public throughout the European Union has had extensive and repeated exposure to that word […].’ ‘Accordingly, the Board of Appeal did not err in concluding, […] that the term ‘pink’ is a basic English word and that, regardless of the various languages spoken in the European Union, the average consumer of the general public, who is deemed to be reasonably well informed and reasonably observant and circumspect, is capable of understanding the meaning of that word.’ (15/10/2018, T‑164/17, WILD PINK / PINK LADY et al., EU:T:2018:678, § 58-59). ‘Pinki’ will be also perceived, at least by the English-speaking public, as misspelling of ‘PINKY’ which is used as reference to partly pink or with a pink tinge¹. Apart from this meaning it has no connotation in relation to the goods and services at hand and it is therefore distinctive.

The same is applicable for the word ‘original’ of the contested mark which is generally understood in the EU with its English meaning: a) the first one made and not a copy; b) an original piece of work, such as a painting, etc. is produced by the artist and not a copy; c) not the same as anything or anyone else and therefore special and interesting.²

The earlier mark contains a second word, ‘fury’, linked to the first one ‘pink’ by a hyphen. ‘Fury’ will be understood by the English speaking public meaning ‘extreme anger or force’³. It is meaningless for all the public in relation to the earlier goods and it is therefore distinctive.

The word ‘pinki’ is the most distinctive element of the contested mark since ‘original’ has laudatory connotations and is considered to be descriptive and therefore not distinctive for any of the goods or services. ‘Pinki’ is also the most dominant element of the contested sign due to its primary position and larger size in comparison to that of the term ‘original’.

As regards the elements of the earlier sign, the term ‘pink’ has relatively the same size as ‘fury’ so the Cancellation Division cannot state that it has a clear dominant role (eye catching) in the mark. It is noted though that ‘pink’ is placed in a primary position and adorned with a tail like figurative element which slightly emphasise it when compared to the term ‘fury’. Both terms composing the earlier mark (PINK and FURY) are equally distinctive even for the English speaking public in relation to the relevant goods. However, the tail like figure is merely decorative and secondary, whereas the hyphen has no trade mark significance.

Visually, the signs coincide in the sequence of letters PINK (forming the first word of the earlier mark and almost the entire first word of the contested sign) and in their identical script and colour. However, they differ on one hand in the additional letter ‘i’ at the end of the term ‘pink’ and the additional words ‘original’ of the contested sign and, on the other hand, on the term ‘fury’, and the figurative element similar to a tail and the hyphen of the earlier mark (decorative and with no trade mark significance elements respectively).  

 

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with 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 (and the top) of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the signs are similar to an average degree.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /P/I/N/K/, present identically in both marks, in their initial part. The pronunciation differs in the sound of the final letter ‘’i’ of the first element of the contested EUTM and in the word ‘original’ (if uttered given its very small size and its lack of distinctiveness) of the contested sign and ‘fury’ of the earlier sign. Given their secondary positions (and for ‘original’ its lack of distinctiveness), the additional terms ‘fury’ and ‘original’ are not capable of counteracting the aural similarity between ‘pink’ and ‘pinki’. Therefore, the signs are similar to an average degree.

 

Conceptually, reference is made to the above findings regarding the meaning of the elements composing the signs. In both signs the same meaning of pink will be grasped; therefore, the signs are 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.

 

d) 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, the 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 particular meaning for any of the goods and services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of figurative elements (merely decorative) or a punctuation in the mark, with no trade mark significance, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion 

 

The goods and services of the signs in conflict were found identical. The marks are similar overall due to the striking similarity between their first words PINK and PINKI. Notably they share the same pink colour and the same particular script. The additional elements are either non-dominant and non-distinctive (‘original’), are placed in a second position in the earlier sign (‘fury’), or at the end of the most important word of the contested sign (the last i of ‘pinki’), are merely decorative in nature (the tail like shape of the earlier sign) or have no trade mark significance (the hyphen of the earlier sign).

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). 

 

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

It is frequent practice nowadays for companies to make variations of their trade marks, for example adding terms or elements to them, in order to denote new lines of products, or to re-create a classic version of a mark or in order to modernise it.

In the present case, given the identity of the goods and services and the fact that the earlier mark’s first word element is entirely contained in the contested sign’s most distinctive and dominant element, it is likely that consumers will perceive the contested sign as a sub-brand to denote a new line of the earlier mark or a modernization of the sign. This finding is not called into question by the fact that the relevant public is deemed to display a higher degree of attention in relation to the purchases of some of the goods in question.

 

Therefore, the application is well founded on the basis of the applicant’s EUTM registration No 14 941 744. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the application, namely Article 60(1)(a) in connection with Article 8(1)(a) and Article 59(1)(b) EUTMR.

 

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, he must bear the cancellation fee as well as the costs incurred by the applicant 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 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

 

Pierluigi M. VILLANI

Ioana MOISESCU

Nicole CLARKE

 

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.