CANCELLATION No 36 719 C (INVALIDITY)

Medicom Toy Corporation, 3-22-5, Uehara, Shibuya-ku, 151-0064 Tokyo, Japan (applicant), represented by Marks & Clerk LLP, 15 Fetter Lane, London EC4A 1BW, United Kingdom (professional representative)

a g a i n s t

Specifics Brands SL, Av/ Republica Argentina, 18 8 15, 46800 Xativa, Valencia, Spain (EUTM proprietor), represented by Sandra Santos Rodríguez, Alameda San Mamés 43 bis, 3–1, 48010 Bilbao (Bizkaia), Spain (professional representative).

On 05/03/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 961 409 is declared invalid for some of the contested goods, namely:

Class 18: Walking sticks; straps for skates.

Class 25: Footwear; headgear; clothing.

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

Class 18: Luggage, bags, wallets and other carriers; umbrellas and parasols; saddlery, whips and apparel for animals; shoulder belts; reins for guiding children; shoulder belts [straps] of leather; chin straps, of leather; toiletry bags sold empty; kid; boxes made of leather; boxes of leather or leatherboard; imitation leather hat boxes; leatherboard; girths of leather; leather laces; straps made of imitation leather; straps for soldiers’ equipment; leather luggage straps; shoulder straps; leather sold in bulk; imitation leather; imitation leather sold in bulk; polyurethane leather; leather and imitations of leather; leather, unworked or semi-worked; leather for harnesses; leather for furniture.

Class 35: Advertisements (placing of -); market campaigns; management assistance for promoting business; business assistance, management and administrative services; advertising, marketing and promotional services; business analysis, research and information services.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 17 961 409 for the word mark ‘BEARBRICK’ namely against all the goods and services in Classes 18, 25 and 35. The application is based on United Kingdom trade mark registration No 2 309 386 . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

Although in its explanation of grounds, the applicant also invoked Article 60(1)(b) EUTMR, the Cancellation Division considers this to be a typographical error, and not an invocation of an additional ground. This is obvious from the wording of the explanation of grounds, as in the reference to Article 60(1)(b) EUTMR the applicant further mentions only Article 8(5) EUTMR (which can only be invoked in connection to Article 60(1)(a) EUTMR while Article 60(1)(b) EUTMR refers to conditions set out in Article 8(3) EUTMR — unauthorised filing by agents of the TM proprietor). Moreover, in the application for a declaration of invalidity, the grounds are correctly invoked and solely pertain to Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and Article 60(1)(a) EUTMR in connection with Article 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there is a similarity between the goods and services involved and a similarity between the earlier mark and the contested mark, resulting in a likelihood of confusion on the part of the public.

Moreover, the applicant further argued that the earlier mark has a reputation, especially for upmarket collectable toys, although it did not submit any evidence in support of this claim. It merely stated that the earlier mark was filed in 2002 and has been used in the United Kingdom ever since, including in collaborations with a range of designer and reputable brands such as Chanel, Nike, Casio, Disney, DC Comics, Detsu and NBC Universal’s DreamWorks Animation Television. The applicant claimed that the similarity between the marks and its collaboration with retailers, designers and the film industry, creates a risk that the relevant consumers will wrongly believe that the merchandise and promotional activities under the EUTM are economically connected to, or affiliated with, the applicant. Therefore, in its opinion, the use of the EUTM will take unfair advantage of, or be detrimental to, the distinctive character and repute of the earlier mark.

The EUTM proprietor did not submit observations in reply, despite having been 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.

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 28: Assembled dolls, dolls, dolls’ clothes, dolls’ houses, toys, toys for domestic pets, teddy bears, blocks, building games, marionettes, mobiles, puppets, roller skates, wax for skis, fishing tackle, games, apparatus for electronic games, billiard balls, conjuring apparatus, dice, stand alone video game machines.

The contested goods and services are the following:

Class 18: Luggage, bags, wallets and other carriers; walking sticks; umbrellas and parasols; saddlery, whips and apparel for animals; shoulder belts; reins for guiding children; shoulder belts [straps] of leather; chin straps, of leather; toiletry bags sold empty; kid; boxes made of leather; boxes of leather or leatherboard; imitation leather hat boxes; leatherboard; girths of leather; leather laces; straps made of imitation leather; straps for soldiers’ equipment; leather luggage straps; straps for skates; shoulder straps; leather sold in bulk; imitation leather; imitation leather sold in bulk; polyurethane leather; leather and imitations of leather; leather, unworked or semi-worked; leather for harnesses; leather for furniture.

Class 25: Footwear; headgear; clothing.

Class 35: Advertisements (placing of -); market campaigns; management assistance for promoting business; business assistance, management and administrative services; advertising, marketing and promotional services; business analysis, research and information services.

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 18

The contested straps for skates are similar to the applicant’s roller skates as they are complementary. They have the same producers and target the same public.

The contested walking sticks include goods that could be considered as sporting articles since they are used for trekking, hiking, and mountaineering. Therefore, the contested goods are similar to a low degree to the applicant’s roller skates as they both coincide in their target public and distribution channels. Moreover, they share the same broad purpose of assisting in sporting activities.

The rest of the contested goods include bags and other carriers, boxes, umbrellas, saddlery, whips, straps, leather and skins of various kinds of animals (or imitations thereof). These goods are all dissimilar to the applicant’s goods in Class 28. The latter are, generally speaking, toys, games and sporting items. Therefore, all of the goods under comparison serve very different purposes. They have nothing relevant in common, they differ in nature, producers and method of use and they are neither complementary, nor in competition.

Contested goods in Class 25

Clothing, footwear and headgear include sports clothing, footwear and headgear, which are items of apparel designed specifically to be worn when doing sport. The purpose and nature of these goods are different from those of the applicant’s roller skates, which are sporting equipment. However, undertakings that manufacture sporting and gymnastic equipment, including roller skates, may also manufacture sports clothing/sports footwear/sports headgear. In this case, the distribution channels can be the same. Therefore, there is a low degree of similarity between sports clothing/sports footwear/sports headgear and roller skates.

Sports clothing, footwear and headgear are included in the general categories of clothing, footwear and headgear. Therefore, since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, clothing, footwear and headgear are similar to a low degree to roller skates.

Contested services in Class 35

The contested services in Class 35 include various services that provide tools and expertise to enable the proprietor’s customers to carry out and advertise their business. The services include activities such as business and organisational consultancy, and any assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate human resources, improve productivity, increase market share, deal with competitors, communicate with the public, market or launch new products etc. These services are usually offered by highly skilled professionals. They have nothing in common with the applicant’s goods, which are various toys and games and some sporting equipment. Firstly, the nature of goods is, in general, dissimilar to the nature of services because goods are tangible and their sale usually entails the transfer of title in something physical, (e.g. a toy), whereas services involve the provision of intangible activities. Secondly, there are no connections between those particular services and the earlier goods; there is no link of complementarity or competition, nor any coincidence in terms of purpose, distribution channels and producers that could create any degree of similarity. Therefore, the goods and services under comparison are dissimilar.

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 similar to various degrees are directed at the public at large. The degree of attention is average.

3. The signs

	BEARBRICK
Earlier trade mark	Contested trade mark

The relevant territory is the United Kingdom.

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 figurative mark, composed of the verbal element ‘BEARBRICK’ in a three-dimensional, bold font. The letter ‘A’ is substituted by the ‘at’ symbol, ‘@’, which is depicted with ears, thereby alluding to a bear’s head.

The verbal element ‘Bearbrick’ does not exist in English. However, the relevant consumers will easily identify the meaningful components ‘BEAR’ and ‘BRICK’ within it. The concept of a bear, namely a large strong mammal with a thick fur coat, is further reinforced by the depiction of the ears above the ‘@’ symbol. The word ‘brick’ will be associated with a rectangular block of hard material used for building walls. As those meanings have no relation to the goods in question, both components, and the verbal element as a whole, have a normal degree of distinctiveness.

The contested mark is a word mark containing an identical verbal element as that in the earlier right. Therefore, the assertions made above with regard to this element apply equally to the contested mark.

Visually, both signs coincide in the verbal element ‘BEARBRICK’ with the only difference being that in the earlier mark the letters are depicted in a stylised font with a fanciful depiction of the letter ‘A’. Nevertheless, this difference is not enough to dispel the high visual similarity between the marks under comparison.

Aurally, the marks are identical as there is no doubt that the ‘at symbol’, ‘@’, in the earlier mark will be read as an ‘A’ by the relevant public.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both marks will be associated with the meanings mentioned above, they are conceptually identical.

The figurative stylisation of the earlier mark does not change this assertion since the shape of the letter ‘A’ forming part of the word ‘BEAR’, will, on the one hand, be regarded as alluding to a bear’s head, and thereby reinforcing the concept of a bear (already present in the mark due to the verbal component), and on the other hand, it will be perceived as the at symbol, @, which, however, will only allude to the fact the goods are available online. This additional concept is in itself non-distinctive and will not help the consumers to differentiate between the commercial origin of the marks. Therefore, it remains neutral in the comparison.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence to prove this claim.

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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the marks and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Moreover, 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).

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.

The goods and services are partly similar to varying degrees and partly dissimilar. The degree of attention of the relevant public is average.

The marks are visually highly similar and aurally identical. This is because the contested mark is fully incorporated in the earlier mark as its only verbal element. As a consequence, the marks also have the same concept. The difference in the stylisation will not help the consumers to differentiate between the marks. This is because it is common practice for manufacturers to make variations in their trade marks, for example by adding or omitting elements to endow the trade mark with a new image (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Therefore, even if the difference in stylisation were spotted by consumers, they might legitimately assume that both trade marks come from the same or economically linked undertakings.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s UK trade mark registration.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be similar to those of the earlier trade mark. The application is also successful insofar as the goods that are similar to a low degree are concerned, as the high degree of similarity between the marks clearly outweighs the low degree of similarity between the goods.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed against these goods cannot be successful on the basis of Article 60(1)(a) EUTMR in conjunction with Article 8(1) EUTMR.

Therefore, the Cancellation Division must examine the other ground invoked by the applicant, namely Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR.

REPUTATION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(5) EUTMR

According to the applicant, its earlier registered mark, on which the application is based, has a reputation in the United Kingdom for all the registered goods.

According to Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, a European Union trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, where there is an earlier mark as referred to in Article 8(2) EUTMR and the conditions set out in paragraph 5 of that Article are fulfilled (i.e. where the contested trade mark is identical with, or similar to, the earlier trade mark, and it is registered for goods or services which are identical to, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark).

According to Article 16(1)(b) EUTMDR, in the case of an application pursuant to Article 60(1) EUTMR, the applicant must provide evidence of the existence, validity and scope of protection of its earlier mark or right, as well as evidence proving its entitlement to file the application request. In particular, if the application for a declaration of invalidity is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the applicant shall provide evidence showing that the mark has a reputation in the Union or in the Member State concerned for the goods or services indicated, as well as evidence or arguments showing that use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The applicant did not submit any evidence to prove the alleged reputation of the earlier trade mark.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the application has to be rejected also insofar as it is based on Article 60(1)(a) EUTMR in conjunction with Article 8(5) 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. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Julie, Marie-Charlotte HAMEL

Marta Maria CHYLIŃSKA

Liliya YORDANOVA

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.