CANCELLATION No 39 040 C (INVALIDITY)

Wittchen Premium Spółka Z Ograniczoną Odpowiedzialnościa Spółka Komandytowa, Kiełpin, ul. Ogrodowa 27/29, 05-092 Łomianki, Poland (applicant), represented by Rolbiecka I Gorzkiewicz Kancelaria Adwokatów I Radców Prawnych SP.P., Twarda 44, 00-831 Warsaw, Poland (professional representative)

a g a i n s t

Vinci Luggage Ltd., 5 Bransgill Court, Milton Keynes, Milton Keynes MK13 7LN, United Kingdom (EUTM proprietor)

On 15/05/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 639 824 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 17 639 824 ‘VINCI LUGGAGE’. The application is based on Polish trade mark registration No 142 279 ‘da vinci’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the goods are identical or highly similar and the signs share the distinctive word ‘VINCI’. In these circumstances the public, who is made up of average consumers, will confuse the commercial origin of the goods.

The EUTM proprietor did not file observations.

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

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 18: Briefcases, diplomatic bags, key cases, muzzles, animal collars, leather belts, wallets, purses, purses not of precious metal, harness, dog collars, leather or leather board boxes, leather boxes for hats, umbrella handles, suitcase handles, cane handles, leather straps, hunting saddlebags, riding saddles, leashes, stirrups, leather cords, hunting bags, roller bags, leather tool bags, handbags, school satchels, suitcases.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; briefcases; briefcases [leather goods]; attaché cases made of imitation leather; attaché cases made of leather; travel baggage; purses; travel luggage; Gladstone bags; wrist mounted carryall bags; flexible bags for garments; cosmetic purses; vanity cases, not fitted; toiletry bags; wash bags for carrying toiletries; cosmetic bags sold empty; cosmetic cases sold empty; make-up bags sold empty; vanity cases sold empty; trunks [luggage]; trunks and suitcases; clutch bags; small rucksacks; small bags for men; small clutch purses; small suitcases; metal luggage tags; compression cubes adapted for luggage; straps for luggage; plastic luggage tags; rucksacks; daypacks; baby backpacks; rucksacks on castors; sports packs; hiking rucksacks; tie cases for travel; hat boxes for travel; garment bags for travel made of leather; garment bags for travel; key-cases of leather and skins; business card cases; luggage covers; travel garment covers; purses, not of precious metal; suitcase handles; luggage tags; make-up boxes; hat boxes of leather; multi-purpose purses; leather coin purses; hipsacks; gentlemen’s handbags; document cases of leather; shoulder belts [straps] of leather; leather credit card wallets; shopping bags made of skin; folding briefcases; fashion handbags; back frames for carrying children; briefcases and attache cases; portfolio cases [briefcases]; art portfolios [cases]; leather cases; textile shopping bags; bags; conference folders; music cases; bags for climbers; work bags; bags for sports; leather bags and wallets; courier bags; nappy bags; carriers for suits, shirts and dresses; overnight bags; book bags; roller bags; knitting bags; tool bags, empty; tool bags [empty] for motor cycles; tool bags sold empty; music bags; shoe bags; bags for sports clothing; belt bags and hip bags; hiking bags; sling bags; weekend bags; two-wheeled shopping bags; shopping bags; wheeled shopping bags; reusable shopping bags; garment carriers; shopping bags with wheels attached; children’s shoulder bags; souvenir bags; beach bags; carry-on bags; shoe bags for travel; trolley duffels; travelling bags made of imitation leather; travel bags made of plastic materials; flight bags; holdalls for sports clothing; carrying cases; canvas bags; knitted bags, not of precious metals; tool bags of leather, empty; school bags; school book bags; bags for campers; all-purpose carrying bags; roll bags; waterproof bags; bags made of leather; towelling bags; bags made of imitation leather; grocery tote bags; artificial fur bags; handbags; ladies’ handbags; cross-body bags; bumbags; tool pouches, sold empty; shoulder bags; travelling handbags; slouch handbags; minaudieres; handbags made of imitations leather; handbags made of leather; handbags, purses and wallets; boston bags; bucket bags; school knapsacks; grips for holding shopping bags; grips [bags]; all-purpose athletic bags; general purpose sport trolley bags; suitcases; business cases; wheeled suitcases; overnight cases; travel cases; leather suitcases; suitcases with wheels; motorized suitcases; portmanteaus; kori wicker trunks; charm bags (omamori-ire); duffel bags; drawstring bags; pouches; lockable luggage straps; travelling sets; luggage tags [leatherware]; travelling sets [leatherware]; golf bag tags of leather; straps for handbags; small purses; clutches [purses]; holders in the nature of cases for keys; carrying cases for documents; shaving bags sold empty; rubber luggage tags; key cases of imitation leather; cases of imitation leather; folio cases; key cases; credit card cases [wallets]; credit card holders made of imitation leather; banknote holders; diplomatic bags; haversacks; wallets including card holders; credit-card holders; wallets for attachment to belts; key bags; saddlebags; pouches for holding make-up, keys and other personal items.

Many of the contested goods are identical to the applicant’s goods, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the contested goods. For example, suitcases appear in both specifications, the contested leather credit card wallets are included in the applicant’s wallets, the contested bags include the applicant’s diplomatic bags, and the contested hat boxes for travel and the applicant’s leather boxes for hats overlap.

All the remaining contested goods that are not identical are similar to varying degrees. The following are some examples: the contested travelling sets are similar to a high degree in relation to handbags as the goods have the same purpose and nature, and usually coincide in producer, relevant public, distribution channels and method of use; the contested key-cases of leather and wallets are similar to an average degree as the goods usually coincide in producer, relevant public and distribution channels. In addition the contested shopping bags are similar to a low degree to the applicant’s briefcases as the goods have the same purpose and usually coincide in producer and distribution channels.

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 varying degrees) are directed at the public at large with a degree of attention that is, on the whole, average.

3. The signs

da vinci	VINCI LUGGAGE
Earlier trade mark	Contested trade mark

The relevant territory is Poland.

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).

Both marks are word marks and, they lack visually dominant elements.

For part of the relevant public, the verbal elements ‘VINCI’ and ‘DA VINCI’ might evoke the figure of the artist Leonardo da Vinci but, for another part, they might be meaningless. The Cancellation Division will focus the comparison on the former part of the relevant public, as this is the best-case scenario for the applicant. The verbal elements are distinctive for the goods as they have no meaning in relation to them.

When the verbal element ‘LUGGAGE’ is understood as an English word, it will be either descriptive or weak for the goods at issue, most of which are used to transport things from one place to another, or are complementary to these kinds of goods. For the part of the relevant public who does not understand it, the word is distinctive. The Cancellation Division will focus the comparison on the former part of the relevant public as this is the best-case scenario for the applicant.

Visually and aurally, the marks coincide in the distinctive word ‘VINCI’ and differ in the words ‘DA’ and ‘LUGGAGE’. Given that ‘LUGGAGE’ is either non-distinctive or weak for those who understand it and its position at the end of the mark, and that ‘DA’ is very short, the marks are similar to a high degree.

Conceptually, the marks are linked given that ‘VINCI’, the first word of the contested mark, is the second word of the applicant’s mark, and it is part of a well-known artist’s name. As seen above, for part of the relevant public, the word ‘LUGGAGE’ is descriptive or weak, and furthermore the word is in second position in the mark. Therefore, the marks are similar to a high degree.

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.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The signs have been found similar to a high degree in all three aspects of the comparison, the public has an average degree of attention and the earlier mark has a normal degree of distinctiveness. Therefore, when encountering identical or similar goods (to an average degree) the relevant public might believe that they originate from the same undertakings or companies with economic links. This is also the case vis-à-vis the goods that are similar to a low degree given the coincidence in the distinctive element ‘VINCI’, which has an independent role in the contested mark. In this regard, a global assessment of the likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between these goods or services. A lesser degree of similarity between the goods may be offset by a greater degree of similarities between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Therefore, the application is well founded on the basis of the applicant’s Polish trade mark registration No 142 279 and the contested trade mark must be declared invalid for all the contested goods.

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

Vít MAHELKA

María Belén IBARRA DE DIEGO

Ana MUÑIZ RODRÍGUEZ

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.