CANCELLATION No 33 922 C (INVALIDITY)

Holy Lama Naturals Ltd, 11 Sycamore Avenue, Hatfield, Hertfordshire AL10 8LZ, United Kingdom (applicant), represented by Wildbore & Gibbons, Halton House 20‑23 Holborn, London EC1N 2JD, United Kingdom (professional representative)

a g a i n s t

M/S Universal Oleoresins, 8/946 Navratana House, Jawahar Road, Kochi, Kerala 682002, India (EUTM proprietor), represented by Habbel Und Habbel Patentanwälte Partg mbB, Am Kanonengraben 11, 48151 Münster, Germany (professional representative).

On 30/03/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 962 205 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 17 962 205 for the figurative mark . The application is based on United Kingdom trade mark registration No 3 014 265 for the word mark ‘Spice drops’ and European Union trade mark registration No 16 642 092 for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

As mentioned above, 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 European Union trade mark registration No 16 642 092, as this earlier right is not under the proof of use requirement.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claimed that the contested EUTM should be invalidated under Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

The EUTM proprietor requested that the applicant furnish proof of genuine use of the other earlier right invoked, namely United Kingdom trade mark registration No 3 014 265. However, as the earlier right concerned with this examination is not under the proof of use requirement (as it was not covered by the request and, moreover, the grace period applies), the Cancellation Division does not find it necessary to refer to this matter at this moment.

In addition to making the aforementioned request, the EUTM proprietor also argued that the verbal element ‘spice drops’ of the earlier mark is non-distinctive. To support this assertion, it referred to an Office decision in which an application was refused for the registration of a word mark (EUTM No 15 010 036) solely composed of this element, on the basis of Article 7(1) EUTMR. It further argued that due to the different compositions of the marks and the distinctiveness of their other elements, the marks are dissimilar. Moreover, the EUTM proprietor contested the similarity of some services. As a consequence, and also taking into account the higher than average attention of the public in this case as claimed by the proprietor, no likelihood of confusion exists.

In response, the applicant stated that when analysing the distinctiveness of the earlier marks, they should always be considered to have at least a minimum degree of inherent distinctiveness. Given that the verbal element ‘Spice Drops’ comprises the entire UK trade mark, this individual verbal element must also be considered distinctive within the earlier EUTM. Moreover, in the opinion of the applicant, the earlier mark enjoys enhanced distinctiveness in the UK due to its intensive use. In this case, the conflicting signs coincide in their distinctive, dominant elements. Moreover, according to the applicant the goods are identical and the degree of attention of the relevant public is average. Therefore, the differences between the marks are not enough to outweigh the similarities and accordingly there is a likelihood of confusion on the part of the public.

The proprietor contested the enhanced character of the earlier mark and further maintained its previous arguments regarding the lack of distinctiveness of the coinciding element ‘spice drops’.

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 3: Extracts of flowers; food flavourings [essential oils]; cake flavourings [essential oils]; flavourings for cakes [essential oils]; flavourings for beverages [essential oils]; flavour enhancers for food [essential oils].

Class 30: Spice extracts; extracts used as flavoring [not essential oils]; spices; spice preparations; spice mixes; baking spices; curry spices; edible spices; curry spice mixes; food flavourings; vanilla [flavoring] [flavouring]; flavourings for foods; flavourings for cakes; flavourings and seasonings; flavourings for soups; flavourings for beverages; flavourings of lemons; flavourings made from fruits; flavourings [not essential oils]; fruit flavourings, except essences; herbal flavourings for making beverages; food flavourings [other than essential oils]; flavourings made from fruits [other than essential oils]; fruit flavourings for food or beverages, except essences; plant flavourings [other than essential oils] for beverages; flavour enhancers for food [other than essential oils]; flavourings, other than essential oils, for cakes; flavourings, other than essential oils, for beverages; flavourings, other than essential oils, for butter; flavourings, other than essential oils, for cheeses; flavourings, other than essential oils, for foods; flavourings, other than essential oils, for soups; flavourings for cakes other than essential oils; flavourings for soups [other than essential oils]; flavourings of lemons for food or beverages; herbal flavourings, other than essential oils, for making beverages; natural flavourings for use in ices [other than etheric essences or essential oils]; natural flavourings for use in ice cream [other than etheric essences or essential oils].

The contested goods are the following:

Class 3: Essential oils; scented oils; aromatherapy oils; aromatics (essential oils); non-medicated oils; food flavourings (essential oils); perfumery and fragrances; per-fume oils; blended essential oils; natural essential oils; perfumed powder; perfumed creams; perfumed soap; body massage oils; body cleaning and beauty care preparations; ethereal essences and oils; essential oils and aromatic extracts.

Class 30: Food flavourings, other than essential oils; essences for cooking (other than essential oils); flavourings, other than essential oils, for beverages; spices; spice preparations; mixed spices; marinades containing spices; spice extracts; extracts used as a flavoring (not essential oils); salt.

Contested goods in Class 3

The opponent’s extracts of flowers include perfumes but also other fragrances, for example for households or aromatherapy, as well as flower extracts for foodstuffs. Therefore, this term overlaps and consequently is identical with the contested essential oils; scented oils; aromatherapy oils; aromatics (essential oils); non-medicated oils; food flavourings (essential oils); perfumery and fragrances; perfume oils; blended essential oils; natural essential oils; body massage oils; ethereal essences and oils, essential oils and aromatic extracts; as all of these goods could be in the form of oil extracted from flowers by solvents.

The remaining perfumed powder; perfumed creams; perfumed soap; body cleaning and beauty care preparations could be characterised as cosmetics. As such they are similar to extracts of flowers, which include perfumes, as explained above. Therefore, it must be considered that they have the same general purpose, namely to protect or enhance the odour or fragrance of the body. Additionally, they usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 30

The contested food flavourings, other than essential oils; essences for cooking (other than essential oils); flavourings, other than essential oils, for beverages; spices; spice preparations; mixed spices; marinades containing spices; spice extracts; extracts used as a flavoring (not essential oils); salt are identical to the applicant’s flavourings for foods; flavourings and seasonings; spices; spice extracts; herbal flavourings for making beverages; plant flavourings [other than essential oils] for beverages; extracts used as flavoring [not essential oils]; spice preparations, 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.

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 are directed at the public at large and professionals in the food industry (e.g. food flavourings, other than essential oils). The proprietor argued that due to the higher price level of the goods and the specific expectations of the consumers regarding the flavour they are looking for, they will display a higher level of attentiveness. However, in the opinion of the Cancellation Division, the fact that consumers have different expectations regarding flavour does not necessarily mean that they display a higher level of attention when choosing the goods at issue. Most people have some preferences regarding most goods and services. This alone does not mean that they constantly display an equally high degree of attention. It must be borne in mind that, in any case, the consumers are reasonably well informed and reasonably observant and circumspect. However, contrary to the proprietor’s assertions, since the goods at issue are not very expensive or rarely purchased, there is no reason to assume a heightened attentiveness on the part of the consumers. In these cases, the Cancellation Division considers that the degree of attention of the relevant public is average.

3. The signs

Earlier trade mark	Contested trade mark

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

The coinciding verbal elements ‘spice drop’ / ‘spice drops’ are meaningful in English. For some of the goods at issue, these elements will have a significantly diminished degree of distinctiveness as they will allude to the fact that the goods are spices in the form of a liquid. Since the degree of similarity between the signs is the higher, the higher the distinctiveness of the coinciding elements, the Cancellation Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public, such as the public in France and Spain.

The verbal elements ‘spice drop’/‘spice drops’ are meaningless and distinctive for the public in focus. However, the presence of the final ‘s’, in the earlier mark, might be perceived by the relevant public as the plural form. Moreover, in both marks these elements are visually eye-catching and therefore considered dominant amongst the verbal elements.

The verbal element ‘HOLY LAMA’ is barely noticeable in the earlier mark. However, if noticed at all, the word ‘LAMA’ might be associated by part of the public with some other meanings, for example, a Tibetan monk or a domesticated South American camelid. In any case, these words have a normal degree of distinctiveness, as they do not refer to the goods at issue and will have a limited impact on the overall impression created by the mark due to their very small size.

The verbal element ‘NATURAL EXTRACT’ of the earlier mark will be understood by the relevant public, as it has close equivalents in the respective languages ‘extracto natural’ in Spanish and ‘extrait naturel’ in French. In relation to the goods at issue, which could all be or contain these extracts, this verbal element is non-distinctive.

The figurative depiction of an elephant in the earlier mark is distinctive and visually co-dominant with the verbal element ‘spice drops’. As for the depiction of the drops (amongst which the largest serves as the background for the verbal elements), their distinctiveness is low as they allude to the liquid form of the goods. Moreover, it must be borne in mind that when signs are composed of figurative and verbal elements, the verbal element 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 English words ‘Your secret ingredient’ in the contested mark will be perceived as a foreign sentence to the public in France and Spain. If considered in detail, they might allude to the equivalent ‘Tu ingrediente secreto’ in Spanish or ‘ton ingrédient secret’ in French and as such, will be at most distinctive to a low degree because of the direct allusion to the goods. However, it is also possible that due to the foreign origin of the words, and their length, size and positioning within the mark, they will not be attributed much attention.

The figurative element, across which the words ‘spice drop’ are depicted in the contested mark, is banal and serves solely to bring the words to the attention of the public. Its distinctiveness is at most low.

Visually, the signs coincide in the dominant words ‘Spice drop(s)’ with the sole difference of an additional letter ‘s’ at the end of the earlier mark. In both marks these words are depicted on two lines against a dark background.

The signs differ in their additional verbal elements, which are, however, visually less significant due to their much smaller size and positioning. On the other hand, the figurative element depicting an elephant, of the earlier mark, is more eye-catching in the structure of the mark, and contributes to diminishing the overall similarity between the marks to some extent.

Therefore, taking into account the similarities within the dominant verbal elements of the signs and their composition, but also the differences between the marks, the Cancellation Division finds the marks visually similar to an average degree.

Aurally, it must be remarked that signs that include several words will generally be abbreviated orally to something easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75). In this case, it is highly unlikely that the relevant public will pronounce the visually secondary elements ‘HOLY LAMA’ and ‘NATURAL EXTRACTS’ in the earlier mark and the foreign phrase ‘Your secret ingredient’ in the contested mark.

In this case, irrespective of the different pronunciation rules in different parts of the relevant territory, the marks coincide in the sound of their dominant and distinctive verbal elements ‘Spice drop(s)’, with the sole difference of the additional letter ‘s’ at the end of the earlier mark. However, this final letter is mute for the French-speaking part of the public. Consequently, the signs are aurally highly similar for Spanish speakers and identical for French speakers.

Conceptually, the trade marks are not similar as in the earlier mark the figurative element conveys a concept of an elephant that is not present in the contested mark. Moreover, if the public has some other conceptual associations with the verbal elements, (explained above), this will create even more difference between the signs.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the relevant public. 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 likelihood of confusion, trade marks have to 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, in particular, their distinctive and dominant components’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

In the present case, the goods at issue are identical or similar and target the public at large and professionals whose degree of attention is average.

The signs coincide in the distinctive and dominant words ‘Spice Drop(s)’ with the sole difference of an additional letter ‘s’ at the end of the earlier mark, which has no aural impact for the French-speaking part of the public. Moreover, the overall presentation of these words is similar in both marks as they are depicted on two lines against dark backgrounds. It is true that the depiction of an elephant, which contributes to the overall impression created by the earlier sign, is not reproduced in the contested sign. However, as stated above, the public will pay less attention to the figurative elements of the marks. Moreover, it must be borne in mind that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, but also where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. In the present case, it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the public may attribute the same or economically linked commercial origin to the goods that are identical or similar.

Considering all the above, there is a likelihood of confusion on the part of the French- and Spanish-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 16 642 092. It follows that the contested trade mark must be declared invalid 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.

Moreover, 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 right invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). Therefore, there is also no need to examine the evidence of use submitted by the applicant.

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

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.