CANCELLATION No C 44 463 (INVALIDITY) 

 

Interplast Co. Ltd, PO Box 4679, Sharjah, United Arab Emirates (applicant), represented by Wynne-Jones IP Limited, 2nd Floor, 5210 Valiant Court Gloucester Business Park, GL3 4FE Gloucester, Gloucestershire, United Kingdom (professional representative)

 

a g a i n s t

 

Cromwell Group (Holdings) Ltd, 65 Chartwell Drive, Wigston, LE18 2FS Leicester, Leicestershire, United Kingdom  (EUTM proprietor), represented by Brabners LLP, Horton House, Exchange Flags, Liverpool, Merseyside L2 3YL, United Kingdom (professional representative).

On 17/12/2020, the Cancellation Division takes the following

 

 

DECISION

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

 

2.	European Union trade mark No 16 007 213 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 16 007 213   (figurative mark), (the EUTM). The request is directed against all the goods covered by the EUTM, namely those in Classes 8, 9, 11, 20. The application is based on EUTM registration No 11 927 381 ‘EDISON’ (word mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Articles 8(1)(a) and (b) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

  

The applicant provides a history of the dealings between the parties and previous oppositions and appeal decision in this regard. It claims that according to the previous Board of Appeal decision of 15/11/2019, R409/2019-4 concerning the proprietor’s other EUTM No 15 975 683 ‘EDISON’ (word mark) for the same goods, the Board of Appeal found that the contested goods in Class 8 were similar to a low degree and upheld the opposition (B 2 934 514) fully. It claims that in the present case the signs are identical because the minor differences will go unnoticed by the average consumer. It also argues that contested goods in Classes 9 and 11 are identical to the earlier goods and the remaining goods in Classes 8 and 20 are similar. Therefore, it contends that there is a likelihood of confusion.

The applicant submitted the following evidence in support of its observations:

 Copy of the decision of the Opposition Division of 20/12/2018, B 2 934 514.

 Copy of the decision of the Board of Appeal of 15/11/2019, R409/2019-4.

 Extract from eSearch database for the EUTM No 11 927 381 ‘EDISON’ (word mark).

The EUTM proprietor did not submit any observations in reply although it was invited to do so and set a time limit in which to 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. 

 

a) 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 9: Electrical accessories and components; electric switches and sockets, electrical plugs, optical switches and sockets, electrical wiring devices, wire connectors for electricity, light switches, dimmer switches, power switches, spur units, outlet plates, socket outlets, shaver plugs, tv, satellite, computer and telephone outlets; home and office automation systems; solar panels; component peripheral accessories required in home and office automation; electronic control apparatus; electronic control apparatus for lighting; power posts, power poles, bench trunking, mounting boxes, electrical wiring modules and plates, blank plates, plug sockets; electrical and optical cables; junction sleeves for electrical and optical cables, fuse wire and fused connection units; light emitting diodes; light emitting diode indicator lights; semiconductor elements; photoelectric sensors; electronic light controllers; plastic conduits for electric and optical wiring; electricity branch boxes; switch boxes; circuit breakers; electricity panel boards; panel boards containing circuit breakers; optical connectors for electromagnetic radiation; plastic housings for electrical apparatus; plastic lenses; plastic optical fibres; plastic poles for carrying wires and cables.

Class 11: Electrical lighting fixtures; lamps and lamp casings; lamp holders; ceiling roses; ceiling pendants; chimneys, glasses, globes, mantles, reflectors and shades; lampshade holders; lanterns; luminaires;  computer controlled apparatus lighting apparatus; iceboxes; refrigerating containers and water cooling appliances; cold rooms; chilling containers; refrigerators; water coolers; refrigerated shipping containers; parts, fittings and accessories for all the aforesaid goods.

The contested goods are the following: 

 

Class 8: Speciality application tools for cable ties, namely cable guns.

Class 9: Circuit testers; stud, pipe and voltage detectors.

Class 11: Lanterns, work lights and inspection lamps; torches.

Class 20: Cable ties for fastening electrical conductors.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. 

The term ‘namely’, used in the EUTM proprietor’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

 

As a preliminary remark, according to Article 33(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 8

The contested Speciality application tools for cable ties, namely cable guns in Class 8 are hand-operated tools used for fastening cable ties. These goods are at least similar to a low degree to the earlier electrical and optical cables (as found also in the decision relied upon by the applicant, namely, Board of Appeal decision of 15/11/2019, R409/2019-4). When the aforementioned earlier goods are installed they are fastened together by cable guns with a cable tie. Therefore, the conflicting goods are complementary in the sense that the use of a cable gun for fastening cable ties does not make any sense without cables to be fastened. The earlier cables are indispensable or important for the use of the contested cable guns. Moreover, the conflicting goods have the same relevant public, electricians or DIY enthusiasts, and may be found in the same sections of specialised stores and outlets. Therefore they are similar at least to a low degree to the earlier electrical and optical cables in Class 9.

Contested goods in Class 9

The contested stud, pipe and voltage detectors are included in the broad categories of the earlier electrical accessories and components, electronic control apparatus as the contested goods are types of electrical testing equipment used to control where there are obstacles such as studs, pipes and electrical currents in walls. Therefore, they are identical.

A circuit tester is an instrument for checking the performance of electronic circuits, whereas the earlier goods circuit breakers is a resettable fuse-like device that is designed to protect a circuit against overloading. Therefore, the contested circuit testers are similar to a high degree to the earlier circuit breakers because both instruments ensure the proper functioning of a circuit. Moreover, they coincide in distribution channels, end users and producers.

Contested goods in Class 11

The goods lanterns are identically contained in both lists of goods and are thus identical.

The contested work lights and inspection lamps are included in the broad category of the opponent’s lamps. Therefore, they are identical.

The contested torches are devices for producing light, as are the earlier goods lamps. Therefore, these goods have the same purpose. Furthermore, these goods can be produced by the same manufacturers and use the same distribution channels. They also target the same end users. Therefore, these goods are at least similar.

Contested goods in Class 20

The contested cable ties for fastening electrical conductors are ties used to fasten or to bundle wires. The earlier goods junction sleeves for electrical and optical cables in Class 9 consist of an enclosure that houses electric wires or cables and protects the connections. Both the contested and earlier goods can be used to bundle or protect cables. Therefore, they are similar to a high degree because they have the same purpose. Moreover, they are in competition and coincide in distribution channels, end users, and producers. 

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 found to be identical or similar to varying degrees are directed at the public at large, which includes the average DIY enthusiast, and the professional public. 

The degree of attention may vary from average (lamps) to high (voltage detector), depending on the specialised nature of the goods, the frequency of purchase and their price.  

c) The signs and the distinctiveness of the earlier mark

 

EDISON
Earlier trade mark	Contested sign

 

The relevant territory is  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 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.

The earlier mark is a word mark comprising a single word ‘EDISON’. This word will be understood by the vast majority of the public in the EU as a surname, due to the famous Thomas Edison who invented, amongst others, the incandescent light bulb. This surname is distinctive to an average degree, even despite any allusion to the aforementioned inventor. Therefore, the distinctiveness of the earlier mark must be seen as normal.

The contested sign is a figurative sign which consists of the same word ‘EDISON’ but it is depicted in a standard yellow uppercase typeface and underlined in yellow and all superimposed on a black rectangular background. The applicant claims that this figurative aspect will go unnoticed by the relevant consumer and therefore the signs are identical. However, the Cancellation Division cannot agree with this premise. The figurative element, although rather standard and merely decorative and non-distinctive, is still clearly perceptible within the sign. These differences will not go unnoticed by the relevant consumer and therefore, this argument must be set aside. Even so, the most distinctive element of the contested sign is the word ‘EDISON’ which, as seen above, is a surname and is distinctive to a normal degree. The sign has no element which can be considered more dominant (visually eye-catching) than other elements.

The contested mark has no element that could be considered clearly more dominant than other elements. 

Visually, the signs coincide in the identical word ‘EDISON’ which is the entirety of the earlier mark and the most distinctive element of the contested sign. However, they differ in the figurative element of the contested sign, although this element is merely decorative and non-distinctive and therefore, its impact is very limited. 

Therefore, visually the signs are highly similar. 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the identical word ‘EDISON’. Therefore, the signs are phonetically identical.

Conceptually, as both signs share the common concept of the surname ‘EDISON’ and there is no clear concept behind the figurative element as it is merely decorative, the signs are also conceptually identical.

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

d) Global assessment, other arguments and conclusion 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). 

In the present case the signs are visually highly similar and phonetically and conceptually identical. The goods in conflict were found to be partly identical and partly similar to varying degrees. The earlier mark is distinctive to a normal degree and the relevant public is both the average and the professional consumer whose degree of attention ranges from average to high.

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).

Considering all of the above and the fact that the signs only differ in a decorative and non-distinctive figurative element, and the goods are identical and similar to varying degrees, the Cancellation Division considers that there is a likelihood of confusion in relation to all of the earlier goods. This conclusion also stands in relation to the goods found to be at least similar to a low degree due to the striking similarities between the signs. Moreover, even in relation to the professional consumer and where the attention of the public is high in relation to the relevant goods, they must rely on their imperfect recollection of the signs and as the verbal element of both signs is identical, and this is the easiest way to recall a sign, there will be a likelihood of confusion also for the professional public and where the attention of the public is high.

Conclusion

 

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 EUTM registration No 11 927 381. It follows that the contested trade mark must be declared invalid for all the contested goods.

 

It is noted that the applicant also based its application for a declaration of invalidity on the ground of Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) EUTMR. As the application has been fully upheld in relation to the ground of Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR there is no need for the Cancellation Division to examine this ground as it will not affect the outcome of the present application. However, it is noted that this ground would not have been successful as the signs were considered not to be strictly identical.

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(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

 

Ioana MOISESCU

Nicole CLARKE

Julie, Marie-Charlotte HAMEL

 

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.