COOKSMARK | Decision 2627472

Date Published: Sep 24, 2017

OPPOSITION No B 2 627 472

City Look Imports Ltd, Unit 6/6A, Harrison Trading Estate, Crompton Street, Preston PR1 5RT, United Kingdom (opponent), represented by Marks & Clerk LLP, 1 New York Street, Manchester M1 4HD, United Kingdom (professional representative)

a g a i n s t

Passion Investment Company Limited, RM 1401, 14/F World Commerce Ctr, Harbour City, 7-11 Canton Rd, TST KLN, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo, 65 - Local 1 ‘Llopis & Asociados’, 03012 Alicante, Spain (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 627 472 is upheld for all the contested goods.

2.        European Union trade mark application No 14 552 632 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 552 632. The opposition is based on, inter alia, European Union trade mark registration No 8 952 764. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark registration No 8 952 764 and United Kingdom trade mark registration No 2 421 059, ‘COOKSMART’. For reasons of procedural economy, the Opposition division will focus on the proof of use of European Union trade mark registration No 8 952 764.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 18/09/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 18/09/2010 to 17/09/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 21:        Kitchen utensils and containers; serving trays; glassware, porcelain and earthenware; tableware made of glass, china, porcelain or earthenware; plate racks; chopping boards of wood or plastics for kitchen use; rubber gloves for household use; cookware; kitchen cleaning utensils, not including cooking pots and cooking pans.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 10/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/10/2016 to submit evidence of use of the earlier trade mark. The deadline was extended to 15/12/2016 on 14/10/2016. On 15/12/2016, within the time limit, the opponent submitted evidence of use.

The evidence submitted is, inter alia, the following:

• Four catalogues containing the mark , mainly for kitchenware, and referring to 2012, 2013, 2014 and 2015 (Exhibit 5).

• Forty-four invoices referring to 2009-2015, only three of which date from outside the relevant period (i.e. from 18/09/2010 to 17/09/2015 inclusive). The codes of some of the products displayed in Exhibit 5 appear in them (e.g. see pages 41-43 of Exhibit 5, where the products code correspond to items on page 205 of Exhibit 7). The invoices are for several hundred pounds (thousands in some cases). The evidence contains references to clients in the United Kingdom and other Member States of the European Union, for instance France, Ireland and Romania (Exhibits 6 and 7).

• A price list for ‘COOKSMART’ products, consisting of houseware and kitchenware, referring to 2010-2011 (Exhibit 8).

• A selection of printouts from the websites of several retailers, including amazon.co.uk, dated December 2016, which is outside the relevant period; johnlewis.com, dated April 2015; and tesco.com, dated December 2016, which is outside the relevant period (Exhibits 12, 14 and 15).

Place of use

According to Article 15(1) EUTMR, the evidence must show that the European Union trade mark has been genuinely used in the European Union.

In territorial terms, and in view of the unitary character of the EUTM, the appropriate approach is to consider not political boundaries but market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.

As the Court indicated in the judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816, it is impossible to determine, a priori, and in the abstract, the territorial scope that should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule cannot be laid down (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 58).

In the present case, the documentation filed shows that the place of use is several European Union Member States; however, it is mainly related to the United Kingdom. This can be inferred from the language of the documents (English), the currency of the invoices and of the price list (pounds), and some addresses in that country. Moreover, the invoices were issued by the opponent to United Kingdom companies (see Exhibit 6) but also refer to sales of goods to various entities with addresses in several different Member States in the relevant market (e.g. France, Ireland, Romania; see Exhibit 7).

Consequently, the evidence submitted suffices to establish that the sign was used in the market in the relevant territory.

Time of use

The great majority of the evidence is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, a minor part of the evidence refers to use outside the relevant period, in particular some of the website extracts dated after this time (e.g. in Exhibits 6, 7, 12 and 15). Said evidence is considered to display additional supporting information of use of the opponent’s mark within the relevant period, because the use it refers to is close in time to it and it provides evidence of continuity of use over time.

Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, in particular the invoices, supported by the catalogues, the price lists and the website extracts, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope and the duration and frequency of use in relation to the relevant goods.

Although use is not shown throughout the whole European Union, it relates to different clients in several different Member States of the European Union in the relevant market. It should also be noted that the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

The materials submitted, in particular the invoices, relate to dates during several years of the relevant period (in particular the ones dated between 2010 and 2015) and prove the duration and frequency of use of the mark during that period.

The amounts of sales of goods with the earlier mark shown in the invoices vary around several hundred pounds per invoice (thousands in some cases). Use of the mark need not be quantitatively significant for it to be deemed genuine. Moreover, the fact that the invoices are non-consecutive must also be taken into consideration. From this, it can be inferred that the invoices have been submitted merely as examples of sales and do not represent the total sales of goods under the earlier mark realised by the opponent during the relevant period. Therefore, the documents provide sufficient information concerning the commercial volume of use.

It is clear from the evidence that the opponent distributed goods bearing the earlier mark in the relevant market. This gives the Opposition Division sufficient information regarding the commercial activities of the opponent in the relevant period. In any case, the documents prove that use of the mark has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

It is appropriate to consider whether the mark as used contains differences from its registered form that would affect its distinctive character or, in spite of some differences, the mark as used and its registered form are essentially the same.

In the present case, the earlier European Union and United Kingdom trade marks are registered as the word mark ‘COOKSMART’.

The catalogues, the price lists and the printouts from the internet contain the figurative mark . In this documentation, the word ‘COOKSMART’ is displayed in rather standard typefaces, accompanied by not particularly distinctive figurative elements and words (e.g. the wording ‘England’ would merely indicate the place of production or distribution of the products).

This depiction of the mark constitutes an acceptable means of bringing the mark in question to the public’s attention and, consequently, does not affect the distinctiveness of the verbal element ‘COOKSMART’, which has been registered as a word mark.

Consequently, the sign ‘COOKSMART’, although used with additional elements, functions as a trade mark identifying the commercial origin of the goods sold by the opponent, and the use proven does not alter its distinctive character.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1)(a) EUTMR.

In addition, the evidence shows that the mark has been used as registered for all the goods for which the mark is registered (see, for instance, Exhibits 5, 8 and 15), as it displays several kitchenware items.

Overall assessment

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The earlier mark is registered for the following goods:

Class 21:        Kitchen utensils and containers; serving trays; glassware, porcelain and earthenware; tableware made of glass, china, porcelain or earthenware; plate racks; chopping boards of wood or plastics for kitchen use; rubber gloves for household use; cookware; kitchen cleaning utensils, not including cooking pots and cooking pans.

Consequently, the evidence of use of the earlier trade mark refers to the goods for which it is registered.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

LIKELIHOOD OF CONFUSION – 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 952 764.

1. The goods

The goods on which the opposition is based are the following:

Class 21:        Kitchen utensils and containers; serving trays; glassware, porcelain and earthenware; tableware made of glass, china, porcelain or earthenware; plate racks; chopping boards of wood or plastics for kitchen use; rubber gloves for household use; cookware; kitchen cleaning utensils, not including cooking pots and cooking pans.

The contested goods are the following:

Class 8:        Vegetable knives; paring knives; spoons; ladles [hand tools]; cutlery; scissors; cutters; knives; table cutlery [knives, forks and spoons]; penknives.

Class 11:        Cooking utensils, electric; autoclaves [electric pressure cookers]; cooking apparatus and installations; griddles [cooking appliances]; microwave ovens [cooking apparatus]; disinfectant apparatus; water purification installations; kettles, electric; hoods (extractor -) for kitchens; refrigerating appliances and installations.

Class 21:        Stew-pans; pot lids; cooking pots; deep fryers, non-electric; griddles [cooking utensils]; saucepans (earthenware -); pressure cookers [autoclaves], non-electric; frying pans; cooking utensils, non-electric; cauldrons; gridiron supports; kitchen utensils.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 8

The contested vegetable knives; paring knives; spoons; ladles [hand tools]; cutlery; scissors; cutters; knives; table cutlery [knives, forks and spoons]; penknives consist of cutting tools. They are similar to the opponent’s kitchen utensils and containers in Class 21, as they have the same purpose and can coincide in producers, end users and distribution channels.

Contested goods in Class 11

The contested cooking utensils, electric; autoclaves [electric pressure cookers]; cooking apparatus and installations; griddles [cooking appliances]; microwave ovens [cooking apparatus]; disinfectant apparatus; water purification installations; kettles, electric; hoods (extractor -) for kitchens; refrigerating appliances and installations are apparatus for cooking, sanitary purposes, refrigeration and water supply. They are similar to the opponent’s kitchen utensils and containers in Class 21, as they can coincide in producers, end users and distribution channels.

Contested goods in Class 21

Kitchen utensils are identically contained in both lists of goods.

The contested stew-pans; pot lids; cooking pots; deep fryers, non-electric; griddles [cooking utensils]; saucepans (earthenware -); pressure cookers [autoclaves], non-electric; frying pans; cooking utensils, non-electric; cauldrons; gridiron supports are included in the broad category of the opponent’s kitchen utensils and containers. Therefore, they are identical.

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. The degree of attention is average.

3. The signs

COOKSMART
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 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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a 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 reject the contested application.

The marks are not meaningful in certain territories, for example in those countries where English is not understood, such as Poland, Hungary and Portugal. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-, Hungarian- and Portuguese-speaking parts of the public.

The earlier mark is the word mark ‘COOKSMART’, which has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark including the word ‘COOKSMARK’, in black bold upper case characters. When signs consist of both verbal and figurative components, in principle, the verbal component 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). Therefore, the stylisation of the mark is of secondary relevance in the present comparison. Being meaningless for the relevant public, the word ‘COOKSMARK’ is distinctive.

The marks have no elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the string of letters/sounds ‘COOKSMAR*’ and differ only in their last letter/sound, namely ‘T’ of the earlier mark and ‘K’ of the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the difference in the last letter of the marks will have less relevance than the commonality in the other eight letters of the marks. The same applies to the (aurally imperceptible) stylisation of the contested mark, which has a limited impact because of its figurative nature.

Therefore, considering that the marks have in common eight out of nine letters/phonemes and that their differences have limited relevance for the reasons explained above, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of 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 opponent, 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 opponent 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 in question 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 goods are partly identical and partly similar. They target the public at large, whose degree of attention is considered average. The earlier mark has been considered as enjoying a normal degree of distinctive character in connection with the relevant goods.

The signs are visually and aurally highly similar, because they have eight out nine letters in common and the only different letters are placed where consumers do not focus their attention, namely at the end of the marks. They also differ in the stylisation of the contested sign, which, however, plays a secondary role in the overall impression given by the mark, because of its figurative nature. There is no conceptual aspect that would constitute a valid difference between the marks.

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 the above, there is a likelihood of confusion on the part of the Polish-, Hungarian- and Portuguese-speaking parts of the 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 reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 952 764. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition 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 opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark registration No 8 952 764 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Andrea VALISA

Orsola LAMBERTI

María Clara IBÁÑEZ FIORILLO

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.