Fiore | Decision 2610650
Date Published: Oct 15, 2017
OPPOSITION No B 2 610 650
Gallega de Distribuidores de Alimentación, S.A., Polígono de Piadela s/n, 15300 Betanzos (Coruña), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)
a g a i n s t
Monte Bianco S.A., Strada Laminorului 16, 130089 Targoviste, Romania (applicant), represented by Cristian Nastase, Splaiul Independentei no. 3, Bl. 17, sc. 2, ap.27, sector 4, 040011 Bucharest, Romania (professional representative).
On 12/10/2017, the Opposition Division takes the following
1. Opposition No B 2 610 650 is upheld for all the contested goods.
2. European Union trade mark application No 13 837 943 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 837 943 for the figurative mark . The opposition is based on Spanish trade mark registration No 1 595 683(0) for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
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, now Article 47(2) and (3) EUTMR), 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 the trade mark on which the opposition is based, namely Spanish trade mark No 1 595 683(0) for the figurative mark .
The contested application was published on 17/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 17/08/2010 to 16/08/2015 inclusive.
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.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; publications (newspapers, magazines or books); bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); playing cards; printers' type; printing blocks; plastic materials for packaging (not included in other classes) and especially toilet paper, table napkins of paper, paper roll for kitchen and tissues.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), 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 or services in respect of which it is registered and on which the opposition is based.
On 13/06/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 13/08/2016 to submit evidence of use of the earlier trade mark. This time limit was extended till 13/10/2016. On 13/10/2016, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
- Annex 1: 153 invoices dated 2010-2015 issued by BOPAPEL, S.L. (supplier of the opponent), for substantial amounts, showing the supply of toilet paper, which appears in the invoices under the description ‘higienico FIORI P12’.
- Annexes 2 and 3: 36 invoices issued by the opponent dated 2010-2015. The invoices refer to the sale of toilet paper under the mark ‘FIORI’ to different supermarkets, stores and shops in different cities of Spain, such as Santiago, Pontevedra, Orense and Valladolid. The invoices are referring to the earlier mark as ‘PAPEL HIGIENICO FIORI 12 ROLLOS’.
- Annex 4: 6 invoices issued by subsidiaries of the opponent (group supermarkets) dated 2013-2015 to clients in Spain mentioning ‘PAPEL HIGIENICO FIORI 12 ROLLOS’.
- Annex 5: Brochure dated August 2013 for Valladolid, Palencia, Zamora, Segovia and Avila (Spain) showing the earlier mark as
The applicant contests the evidence of use filed by the opponent on the grounds that some of it does not originate from the opponent itself but from another company (suppliers and subsidiaries).
According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.
The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).
Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.
To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.
The applicant’s other arguments are based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
The invoices and the brochure show that the place of use is Spain. This can be inferred from the language of the documents (Spanish) and addresses in Spain. Therefore, the evidence relates to the relevant territory.
The evidence is dated within the relevant period.
The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that 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 47(2) and (3) EUTMR, Article 18 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.
In the present case, the verbal element ‘Fiori’ of the earlier mark is represented almost identically on the packaging of the goods. The fact that the verbal element is placed against a different background does not alter the distinctive character of the mark as the figurative elements in the earlier mark will be seen as decorative and are therefore less distinctive.
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 18(1), second subparagraph, point (a), EUTMR.
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).
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.
In the present case the evidence shows genuine use of the trade mark for the following goods:
Class 16: Toilet paper.
However, none of the other goods protected by the earlier trade mark and listed above are mentioned in the evidence.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
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 goods
The goods on which the opposition is based are the following:
Class 16: Toilet paper.
The contested goods are the following:
Class 16: Handkerchiefs of paper; Towels of paper; Tissues; Toilet paper; Paper washcloths; Absorbent paper; Coarse tissue [for toiletry use]; Paper for use on examination tables; Napkin paper; Place mats of paper; Tablemats of paper; Tissues of paper for removing make-up; Table napkins of paper.
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.
Toilet paper is identically contained in both lists of goods.
The contested handkerchiefs of paper; towels of paper; tissues; paper washcloths; absorbent paper; coarse tissue [for toiletry use]; paper for use on examination tables; napkin paper; place mats of paper; tablemats of paper; tissues of paper for removing make-up; table napkins of paper are similar to the opponent’s toilet paper. These goods are all made of paper and therefore often produced by the same companies, distributed through the same distribution channels and target the same relevant public.
- 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 mainly directed at the public at large and some at a professional public with specific professional knowledge or expertise. The degree of attention is average.
- The signs
Earlier trade mark
The relevant territory is Spain.
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 verbal elements, ‘Fiori’ of the earlier mark and ‘Fiore’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.
As regards the earlier mark, it is composed of a distinctive verbal element and less distinctive figurative elements. The background horizontal lines and the background rectangular frame are of a purely decorative nature. The representation of flowers alludes to ‘freshness’ or the ‘pleasant smell’ of the goods. Therefore, the verbal element ‘Fiori’ is more distinctive than the figurative elements.
The stylisation of the contested sign consists basically in a slightly stylised typeface in two colours and is not considered that elaborated that it could take away the attention from the verbal element.
Moreover, as both signs are figurative, it can be noted that 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).
The marks have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the first four letters out of five ‘FIOR*’ of their verbal elements. However, they differ in their last letters, ‘i’ in the earlier mark and ‘e’ in the contested sign. Furthermore, the marks differ in their stylisation and figurative elements, which will, however, not attract the primary attention of the relevant public due to the fact that those elements are less distinctive than the verbal element in the earlier mark and not elaborated enough to take away the attention of the verbal element in the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛FIOR*’, present identically in both signs. The pronunciation differs due to the fact that the marks have a different final letter, ‘i’ in the earlier mark and ‘e’ in the contested sign.
Therefore, the signs are aurally highly similar.
Conceptually, the earlier mark evokes the concept of flowers while the contested sign will be perceived as meaningless. However, the concept of flowers is not very distinctiveness in relation to the relevant goods as explained above and is not an element that can indicate the commercial origin of those goods or that will help the relevant public to distinguish between the marks. The attention of the relevant public will be attracted by the distinctive verbal elements, which have no meaning. Therefore, although the marks are strictly speaking conceptually not similar, the impact of this on the assessment of the signs will be very limited.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 opponent 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. 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, despite the presence of some weak elements in the mark as stated above in section c) of this decision.
- 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 which 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).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
The contested goods are partly identical and partly similar to the opponent’s goods. The relevant public is the public at large and the professional public, the level of attention is considered to be average. The earlier mark as a whole has a normal degree of distinctiveness.
The marks are visually similar to an average degree and aurally they are highly similar. The conceptual difference between the marks produced by the figurative element representing flowers has a limited impact on the assessment of the signs since this element has a weak distinctive character.
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).
Taking into account all the relevant factors, and especially the visual and aural similarities between the marks, as well as the identity and similarity between the goods, it is considered that the relevant public might be led to believe that the identical and similar goods come from the same or economically linked undertakings.
In its observations, the applicant argues that there are many trade marks that include ‘FIOR’. In support of its argument the applicant refers to some EUTM registrations. According to the applicant, this shows that different marks containing this element might co-exist in the market. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘FIOR’. Under these circumstances, the applicant’s claim must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 1 595 683(0). It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.