MUNCHIES | Decision 2532011 - Munchies Dining Limited v. Intersnack Group GmbH & Co. KG

OPPOSITION DIVISION
OPPOSITION No B 2 532 011
Munchies Dining Limited, Alfie Byrne Road East Point Business Park, Dublin 3,
Ireland (opponent), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4,
Ireland (professional representative)
a g a i n s t
Intersnack Group GmbH & Co. KG, Peter-Müller-Str. 3, 40468 Düsseldorf,
Germany (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354
Hamburg, Germany (professional representative).
On 02/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 532 011 is partially upheld, namely for the following
contested goods:
Class 29: Processed vegetable and potato products; Roasted, dried, salted,
spiced, coated and processed nuts, cashew kernels, pistachios,
almonds, peanuts, coconuts (dried); Preserved, dried and cooked
fruits and vegetables; Ginger products being dried fruit.
Class 30: Processed tapioca, manioc, rice, maize, wheat or other cereal
products; Ginger products, being confectionery and fruit jellies;
Savoury biscuits and pretzels; Muesli bars, mainly consisting of
nuts, dried fruits, processed cereal grains; Chocolate and
chocolate products; Sauces.
2. European Union trade mark application No 13 761 697 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 13 761 697 for the figurative sign . The
Decision on Opposition No B 2 532 011 page: 2 of 19
opposition is based on European Union trade mark registrations No 5 074 711 and
No 818 948, Irish trade mark registration No 233 214, all for the word mark
‘MUNCHIES’, and the European Union, Bulgarian, Belgian, Czech, Danish, German,
Estonian, Greek, Spanish, French, Irish, Italian, Cypriot, Latvian, Lithuanian,
Luxembourgish, Hungarian, Maltese, Dutch, Austrian, Polish, Portuguese, Romanian,
Slovenian, Slovakian, Finnish, Swedish and United Kingdom non-registered trade
mark ‘MUNCHIES’. The opponent invoked Article 8(1)(b), Article 8(5) and Article 8(4)
EUTMR.
Preliminary remark on the substantiation of earlier European Union trade mark
registration No 5 074 711
When filing the notice of opposition, the opponent attached two extracts from the EU
trade mark register (the Office’s ‘eSearch’ database), both of them showing details for
earlier EU trade mark registration No 818 948, and one extract from the Irish trade
mark database, showing registration details for Irish trade mark No 233 214.
The applicant argues that, since the opponent failed to provide the Office with
evidence for earlier EU trade mark registration No 5 074 711, the opposition based
on this earlier mark is unfounded for formal reasons.
In that respect, the Opposition Division recalls that if the earlier mark is an EU trade
mark, the opponent does not have to submit any documents as far as the existence
and validity of the EU trade mark is concerned. The examination of the substantiation
is done ex officio with respect to the data contained in the Office’s database. This is
pursuant to Rule 19(2)(a) EUTMIR (in the version in force at the time of
commencement of the adversarial part of the opposition proceedings).
Therefore, the opponent was not required to submit evidence for substantiating
earlier EU trade mark registration No 5 074 711, and the applicant’s arguments in this
regard are dismissed.
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 EU trade mark
registrations No 5 074 711 and No 818 948, and Irish trade mark registration
No 233 214, all for the word mark ‘MUNCHIES’.
On 21/12/2015, 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
Decision on Opposition No B 2 532 011 page: 3 of 19
26/02/2016 to submit evidence of use of earlier EU trade mark registration
No 818 948 and Irish trade mark registration No 233 214. Upon the opponent’s
request, this time limit was extended until 26/04/2016.
On 26/04/2016, within the time limit, the opponent submitted evidence of use. On
12/05/2016, the Office forwarded the proof of use filed by the opponent to the
applicant and invited it to submit observations which the applicant did on 15/07/2016.
However, after a further examination of the file, it came to the Office’s attention that
the applicant had requested proof of use for all three of the earlier marks on which
the opposition is based in relation to Articles 8(1)(b) and 8(5) EUTMR. On
08/03/2017, the Office officially invited the opponent to submit proof of use in relation
to earlier EU trade mark registration No 5 074 711, giving it a time limit until
13/05/2017. Although upon the opponent’s request this time limit was extended until
13/07/2017, no further evidence was filed. Given that the opponent had submitted
evidence on 26/04/2016, these submissions will be taken into account for the
assessment of genuine use also in relation to earlier EU trade mark No 5 074 711.
At this point the Opposition Division considers it appropriate to focus the assessment
of proof of use on earlier EU trade mark registrations No 5 074 711 and No 818 948,
since the opponent’s Irish trade mark registration No 233 214 is registered for the
same list of goods and services as earlier EU trade mark No 5 074 711.
The contested application was published on 02/03/2015. The opponent was,
therefore, required to prove that the trade marks on which the opposition is based
were put to genuine use in the European Union from 02/03/2010 to 01/03/2015
inclusive.
The request was submitted in due time and is admissible as the earlier trade marks
were registered more than five years prior to the relevant date mentioned above.
The evidence must show use of the trade marks for the goods and services on which
the opposition is based, namely the following:
1) EU trade mark registration No 5 074 711
Class 29: Smoothie beverages consisting primarily of yoghurt; dairy based
beverages; smoothies (milk predominating); salads; milk and dairy
products; eggs; meat, fish, poultry and game; prepared meals in Class
29; jams; pickles, soups.
Class 30: Coffee; tea; sandwiches; prepared meals in Class 30.
Class 32: Smoothie beverages (fruit predominating); fruit drinks and fruit juices;
crushed fruit juice drinks; still and carbonated water.
Class 43: Restaurants; sandwich bars; provision of food and drink.
2) EU trade mark registration No 818 948
Class 29: Salads; milk and dairy products; eggs; meat, fish, poultry and game;
prepared meals in Class 29; jams; pickles.
Class 30: Sandwiches; prepared meals in Class 30; coffee, tea, sauces.
Decision on Opposition No B 2 532 011 page: 4 of 19
Class 42: Restaurants; sandwich bars; cafes; provision of food and drink.
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.
List of evidence
The evidence to be taken into account is the following:
Annex A: Some screenshots from the opponent’s website, www.munchies.ie,
captured on 26/04/2016, listing six addresses of the ‘Munchies’ food
establishments in Dublin, Ireland and providing information on their
opening hours and the delivery service. The annex further contains
several photographs showing some street-views of the ‘Munchies’
establishments as well as a busy atmosphere indoors, images of
prepared desserts with the ‘Munchies’ sign on the packaging, and a
refrigerated display case with take-away foodstuffs (salads,
smoothies). For example:
Annexes B-C:Two invoices, dated 05/01/2016 and 23/12/2015, and a price list dated
09/08/2015, providing information about ‘Munchies’ branded
packaging items that were custom-made for the opponent by an
external service provider (e.g. coffee cups and lids, soup cups, sugar
and salt packets, small, medium and large bags, tissues, boxes,
loyalty cards, flask labels, platter menus, take-out menus). The
evidence further contains a statement, dated 04/01/2016, emanating
from the external service provider regarding the orders of the
‘Munchies’ branded packaging and promotional items.
Annex D: A selection of images showing an advertising panel promoting the
‘Munchies’ establishments for ‘THE FINEST COFFEE &
SANDWICHES IN DUBLIN’ and referring to seven different locations.
The annex also contains a layout for a Christmas-themed sleeve for a
cup, and a copy of an undated menu offering a wide range of
sandwiches, various salads, pastries, soup, coffee, tea, fruit-based
smoothies and fruit juices. On all of the documents, the sign is shown
as follows:
Decision on Opposition No B 2 532 011 page: 5 of 19
Annex E: Three press articles, published on Irish media, namely the Irish
Sunday Business Post on 14/05/2006, the Irish Independent online on
21/08/2002, and the Irish Times online on 11/07/1998. These press
articles mainly report on the business model of the ‘Munchies’
establishments/franchise, and refer to it as a ‘sandwich bar’.
The annex also contains customer reviews published on the
TripAdvisor and Yelp websites, dated from 03/02/2009 to 23/01/2016.
The documents clearly refer to the chain of the Munchies’
establishments in Dublin (e.g. in Bayside or South William Street).
Most of the reviews contain a clear reference to a specific dish and/or
drink consumed by the person giving the feedback, namely coffee,
tea, various types of sandwiches, soups, wraps, chips/fries, sauces,
burgers, pastries, smoothies, porridge, fruit juices, salads. Moreover,
there is an indication on whether the person is commenting on the
food/drinks for take-away, or on the ‘eat-in’ experience in the
‘Munchies’ sandwich bars. Some of the reviews contain a reference to
the fact that they are frequenting the ‘Munchies’ establishments. Some
of the reviews feature a photograph showing a sandwich served for
consumption, or a take-out coffee/tea cup bearing the same sign as
shown above.
In addition, the Opposition Division notes that, in the observations accompanying the
evidence, the opponent provides data on the annual turnover of goods sold and
services provided under the ‘Munchies’ trade mark from 2009 to 2015 (expressed in
several million Euro each year) and the data on advertising and promotion activities
in the same period (expressed in several thousand Euro each year).
Assessment of the evidence
The applicant argues that not all the items of evidence indicate genuine use in terms
of time, place, extent, nature and use of the goods and services for which the earlier
marks are registered.
The applicant’s argument is 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 applicant also criticises the turnover data provided as a mere statement in the
opponent’s observations. As far as the probative value of this document is
concerned, statements drawn up by the interested parties themselves or their
employees or legal representatives are generally given less weight than independent
evidence. This is because the perception of the party involved in the dispute may be
more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value
at all.
The final outcome depends on the overall assessment of the evidence in the
particular case. This is because, in general, further evidence is necessary to
establish use, since such statements have to be considered as having less probative
value than physical evidence (labels, packaging, etc.) or evidence originating from
independent sources.
Decision on Opposition No B 2 532 011 page: 6 of 19
The customer reviews show that the place of use is the Republic of Ireland. This can
be inferred from the addresses of the ‘Munchies’ establishments in several places in
Dublin, the capital of Ireland. Therefore, the evidence relates to the relevant territory.
This evidence is supported by the screenshots from the opponent’s website that list
several locations in Dublin and has the Irish top-level domain (.ie).
Although some of the evidence (such as the press articles that are from 1998, 2002
or 2006) reflect events that took place long before the relevant timeframe which runs
from 02/03/2010 to 01/03/2015, and even though the material from the opponents
website, the copies of the menu or the promotional panel are undated, there are
sufficient indications of use dated well within the relevant time period provided in
other items of the evidence. More specifically, 25 out of 35 customer reviews are
dated from 10/05/2010 to 04/01/2015. As regards the undated evidence, it can still
serve for the purposes of showing other factors, for example nature 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, and 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 customer reviews, viewed in conjunction with the turnover figures, provide the
Opposition Division with sufficient information concerning the commercial volume, the
territorial scope, the duration, and the frequency of use. The customer feedback
provided by different individuals on the TripAdvisor and Yelp websites constitutes
evidence emanating from independent sources and has high probative value. The
fact that in 25 instances within the relevant period consumers expressed their opinion
(praise or criticism) about several food establishments in Dublin demonstrates that
the opponent’s use of the ‘Munchies’ marks was such as to maintain an outlet for the
goods and services, ranging from certain foodstuffs offered for take-away or for
delivery at home or office, to the provision of food and drink in sandwich bars. The
use was not merely token. On the contrary, the use of the ‘Munchies’ marks was such
as to reach a commercial extent. Moreover, the evidence leaves no room for doubt
that the use was public and outward.
The distribution of the customer reviews over each year of the relevant time period is
as follows: a couple of reviews from years 2010, 2011, 2012 and 2015 each, eight
reviews from 2013, 10 reviews from 2014. That shows that the ‘Munchies’ marks
were used throughout the relevant timeframe. The use was commercially visible and
frequent enough for the public to favour this sandwich bar chain to its competitors, as
mentioned in the feedback provided by some of the customers.
It is true that each review mentions an individual dining experience, often consisting
of a single cup of coffee and a sandwich. Firstly, this is only natural for such type of
evidence. Furthermore, the relatively low indications of physical volumes of use do
not automatically rule out the finding of genuine use. It is recalled that use of the
mark need not be quantitatively significant for it to be deemed genuine.
Decision on Opposition No B 2 532 011 page: 7 of 19
The evidence submitted by the opponent in order to prove genuine use of the earlier
EU trade marks relates exclusively to Ireland and more specifically to Dublin. In that
regard, it has to be pointed out that the evidence clearly demonstrates use of the
‘Munchies’ marks for a chain of food establishments, consisting of at least six
locations in Dublin, with its 1,1 million inhabitants by far the biggest urban area in the
Republic of Ireland, which amounts to use in a significant part of the relevant territory.
As stated above, 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.
Therefore, the Opposition Division considers that the opponent has provided
sufficient indications concerning the extent of use of the earlier EU trade marks, for
certain goods and services.
In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in
accordance with its function, of use of the mark as registered, or of a variation thereof
according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for
the goods and services for which it is registered.
The copy of the menu, the photographs of the food/drinks prepared for take-away,
the photographs showing the exterior and interior of the sandwich bars, and the
customer reviews show use of the ‘Munchies’ marks in a trade mark sense. The sign
was either affixed on the goods themselves, or used in close relation to the services,
as a badge of commercial origin in such a way as to establish a clear link between
the goods/services and the undertaking responsible for their marketing. In view of the
above, the Opposition Division considers that the evidence shows use of the earlier
marks as a trade mark.
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 registered form and the actual manner of use are as follows:
MUNCHIES
Registered form Actual use
The earlier EU trade marks are registered as word marks. The actual use comprises
a slightly stylised, visually eye-catching representation of the verbal component of the
marks, accompanied by a tag line, ‘HONEST TO GOODNESS’. The figurative
Decision on Opposition No B 2 532 011 page: 8 of 19
elements that are limited to a typeface that does not deviate far from standard, and a
frame, are commonplace and non-distinctive on their own. The tag line is purely
promotional and has very little trade mark significance. Therefore, the addition of
these elements is not capable of altering the distinctive character of the earlier marks
as registered.
In view of the above, the Opposition Division considers that the evidence does show
use of an acceptable variation of the marks as registered within the meaning of
Article 18(1), second subparagraph, point (a), EUTMR.
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 marks during the relevant
period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade
marks for all the goods and services covered by the earlier trade marks.
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.
According to case-law, when applying the abovementioned provision, the following
should be considered:
…if a trade mark has been registered for a category of goods or services
which is sufficiently broad for it to be possible to identify within it a
number of sub-categories capable of being viewed independently, proof
that the mark has been put to genuine use in relation to a part of those
goods or services affords protection, in opposition proceedings, only for
the sub-category or sub-categories to which the goods or services for
which the trade mark has actually been used belong. However, if a trade
mark has been registered for goods or services defined so precisely and
narrowly that it is not possible to make any significant sub-divisions within
the category concerned, then the proof of genuine use of the mark for the
goods or services necessarily covers the entire category for the purposes
of the opposition.
Although the principle of partial use operates to ensure that trade marks
which have not been used for a given category of goods are not rendered
unavailable, it must not, however, result in the proprietor of the earlier
trade mark being stripped of all protection for goods which, although not
strictly identical to those in respect of which he has succeeded in proving
genuine use, are not in essence different from them and belong to a
single group which cannot be divided other than in an arbitrary manner.
The Court observes in that regard that in practice it is impossible for the
proprietor of a trade mark to prove that the mark has been used for all
conceivable variations of the goods concerned by the registration.
Consequently, the concept of ‘part of the goods or services’ cannot be
taken to mean all the commercial variations of similar goods or services
but merely goods or services which are sufficiently distinct to constitute
coherent categories or sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 45 and 46).
Decision on Opposition No B 2 532 011 page: 9 of 19
The customer reviews, when assessed in conjunction with the menu of the
‘Munchies’ sandwich bar and the photographs in Annex 1, prove use for a range of
prepared foodstuffs and drinks for take-away or delivery, namely coffee, tea, various
types of sandwiches, soups, wraps, chips/fries, sauces, burgers, pastries, fruit-based
smoothies, porridge, fruit juices, salads, and prepared desserts. In addition, the
evidence proves use for offering such food and drinks for immediate consumption in
sandwich bars.
Coffee, tea, sandwiches, soups, sauces, fruit-based smoothies, fruit juices, and
salads are covered by one or both specifications of the earlier EU trade marks in
question (albeit in slightly different wordings).
As regards wraps, burgers, porridge, prepared desserts or sandwiches, these goods
belong to the broad category of prepared meals in Class 30 included in the
specifications of the two earlier marks. In the same sense, chips/fries and salads
belong to the following category included in both specifications: prepared meals in
Class 29.
Sandwich bars and delivery of food/drink or catering are included in the broader
category of provision of food and drink. Since it is impossible for the Opposition
Division to filter sandwich bars from restaurants or cafes, it is considered that
genuine use is shown also in relation to these services.
As the opponent is not required to prove all the conceivable variations of the
categories of goods and services for which the earlier marks are registered and as
the goods and services for which use has been proved do not constitute coherent
subcategories within the broad categories in the specifications to which they belong,
the Opposition Division considers that the evidence shows genuine use of the trade
mark for the broad categories of prepared meals in Classes 29 and 30, and provision
of food and drink.
It follows that the evidence shows genuine use of the earlier EU trade marks for the
following goods and services which will be taken into account for further assessment
of the opponent’s claims:
1) EU trade mark registration No 5 074 711
Class 29: Salads; prepared meals in Class 29; soups.
Class 30: Coffee; tea; sandwiches; prepared meals in Class 30.
Class 32: Smoothie beverages (fruit predominating); fruit juices.
Class 43: Restaurants; sandwich bars; provision of food and drink.
2) EU trade mark registration No 818 948
Class 29: Salads; prepared meals in Class 29.
Class 30: Sandwiches; prepared meals in Class 30; coffee, tea, sauces.
Class 42: Restaurants; sandwich bars; cafes; provision of food and drink.
Decision on Opposition No B 2 532 011 page: 10 of 19
However, the evidence furnished by the opponent does not succeed in proving
genuine use for the remaining goods on which the opposition is based. The evidence
exclusively relates to the abovementioned goods and services, whereas there is no
or little reference to any other goods, such as smoothies other than fruit-based (i.e.
that would contain any dairy products), milk and dairy products in general, eggs,
meat or fish, jams, pickles, beverages other than fruit juices (i.e. that would be fruit-
based drinks or waters). This is clear, for example, from the customer reviews,
menus and the website screenshots where there is no mention of the
abovementioned foodstuffs that are either ingredients for making the prepared meals
sold under the trade marks at issue, or beverages that are sufficiently different as to
be clearly separated from fruit-based smoothies or fruit juices.
For the sake of completeness, it has to be mentioned that although the evidence
refers to use for pastries, such goods are not protected by any of the earlier marks.
Therefore, use in relation to those goods cannot be taken into account.
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 EU trade mark registrations No 5 074 711 and No 818 948.
a) The goods and services
Following the proof of use assessment, the goods and services on which the
opposition is based in relation to earlier EU trade mark registrations No 5 074 711
and No 818 948 are the following:
1) EU trade mark registration No 5 074 711
Class 29: Salads; prepared meals in Class 29; soups.
Class 30: Coffee; tea; sandwiches; prepared meals in Class 30.
Class 32: Smoothie beverages (fruit predominating); fruit juices.
Class 43: Restaurants; sandwich bars; provision of food and drink.
2) EU trade mark registration No 818 948
Class 29: Salads; prepared meals in Class 29.
Class 30: Sandwiches; prepared meals in Class 30; coffee, tea, sauces.
Decision on Opposition No B 2 532 011 page: 11 of 19
Class 42: Restaurants; sandwich bars; cafes; provision of food and drink.
The contested goods are the following:
Class 29: Extruded and pelletised and otherwise manufactured or processed
vegetable and potato products; Roasted, dried, salted, spiced, coated
and processed nuts, cashew kernels, pistachios, almonds, peanuts,
coconuts (dried); Preserved, dried and cooked fruits and vegetables;
Weed extracts for food; Ginger products being dried fruit; Peanut
butter.
Class 30: Extruded and pelletised and otherwise manufactured or processed
tapioca, manioc, rice, maize, wheat or other cereal products; Ginger
products, being confectionery and fruit jellies; Savoury biscuits and
pretzels; Muesli bars, mainly consisting of nuts, dried fruits, processed
cereal grains; Chocolate and chocolate products; Sauces.
Class 31: Unprocessed nuts, cashew kernels, pistachios, almonds, peanuts and
seeds; Algae for human consumption.
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 29
The contested preserved and cooked fruits and vegetables include various pastes or
other preparations which can have the same purpose as the opponent’s sauces in
Class 30 of earlier mark 2, since the latter includes fruit sauces, tomato sauces etc.
These goods are in competition and they are commonly manufactured by the same
undertakings (food processing companies, caterers, etc.). They are directed at the
same public and move through the same distribution channels. They are similar to a
high degree.
The contested dried fruits and vegetables include snacks made from pumpkin, apple,
quince, beetroot, rhubarb etc. Also the contested ginger products being dried fruit can
be consumed as snacks. It is not uncommon that food establishments, such as the
opponent’s restaurants, sandwich bars in Class 43 of earlier mark 1, or in Class 42 of
earlier mark 2, cultivate a vegetable plot or fruit garden and use the produce to make
its dishes. At the same time, they offer pre-packaged snack-food for take-away. Even
when it comes to more exotic ingredients that are not cultivated locally (such as
ginger), restaurant chefs often make preserves of the fresh produce for serving them
on the spot (using them as ingredients for cooking/baking) or for selling them as
home-made delicatessen. To that extent, there is a complementarity between these
goods and services, and a further coincidence in the distribution channels and usual
origin. Therefore, and despite the differences in the natures and purposes, these
goods and services are similar to a low degree.
In the same sense, the contested processed vegetable and potato products can refer
to potato crisps made from the produce cultivated in a restaurant’s own vegetable
plot and offered both as side dishes for immediate consumption in the restaurant, or
for take-away. Based on the same similarity factors, namely complementarity, shared
distribution channels and usual origin, these goods are similar to a low degree to the
Decision on Opposition No B 2 532 011 page: 12 of 19
opponent’s restaurants, sandwich bars in Class 43 of earlier mark 1, or in Class 42 of
earlier mark 2.
As regards the contested roasted, dried, salted, spiced, coated and processed nuts,
cashew kernels, pistachios, almonds, peanuts, coconuts (dried), even though they
are not commonly grown in the backyard gardens of restaurants, they are still
complementary to the opponent’s restaurants, sandwich bars in Class 43 of earlier
mark 1, or in Class 42 of earlier mark 2. Indeed, such goods are used and offered in
the context of a food establishment as typical snack-foods that accompany a glass of
beer or wine. The goods and services share the same distribution channels and the
usual origin, since the restaurant chefs commonly roast, spice or otherwise process
nuts before serving them. It is not uncommon that pre-packaged nuts are sold for
take-away as the restaurant’s home-made speciality. Therefore, they are similar to a
low degree.
However, the contested extruded and pelletised and otherwise manufactured
vegetable and potato products; weed extracts for food; peanut butter do not have the
abovementioned factors in common with the opponent’s goods which essentially are
convenience foods and refreshments. The remaining contested goods are processed
to a high degree, or at least by methods that are more common to industrial food
production rather than preparing dishes at home or at a catering/food establishment.
Moreover, the contested weed extracts are additives for food used for industrial
purposes (for gelling, water retention, emulsifying or other physical properties). The
abovementioned contested goods are not commonly offered by restaurants or other
food establishments in the form of locally cultivated, home-made preserves for take-
away, thus there are no relevant commonalities vis-à-vis the opponent’s services
either. The remaining contested goods do not share the same nature and usual origin
as any of the opponents goods or services. They are neither complementary nor in
competition. The mere facts that some of the contested goods are foodstuffs which
satisfy the need for food, or that they are directed at the same public, or that they can
be found in supermarkets, are insufficient for a finding of similarity. Therefore, the
abovementioned contested goods are dissimilar to all of the opponent’s goods and
services of earlier marks 1 and 2.
Contested goods in Class 30
Sauces are identically contained in the list of the contested goods and also that of
earlier mark 2.
The contested processed tapioca, manioc, rice, maize, wheat or other cereal
products; ginger products, being confectionery and fruit jellies; savoury biscuits and
pretzels; muesli bars, mainly consisting of nuts, dried fruits, processed cereal grains;
chocolate and chocolate products are complementary to the opponent’s restaurants,
sandwich bars in Class 43 of earlier mark 1, or cafes in Class 42 of earlier mark 2.
Those goods are closely related to the services, given that home-made preparations
made from cereals (in a broad sense), bakery products, and confectionery articles
are commonly offered in the context of restaurants, sandwich bars and cafes, where
they are also sold for take-away. The goods and services share the same distribution
channels and the usual origin. Therefore, they are similar to a low degree.
However, the contested extruded and pelletised and otherwise manufactured
tapioca, manioc, rice, maize, wheat or other cereal products do not have the
abovementioned factors in common with the opponent’s goods which essentially are
convenience foods and refreshments. The remaining contested goods are processed
to a high degree, or at least by methods that are more common to industrial food
Decision on Opposition No B 2 532 011 page: 13 of 19
production rather than preparing dishes at home or at a catering/food establishment.
The remaining contested goods do not share the same nature and usual origin as
any of the opponent’s goods or services. They are neither complementary nor in
competition. The mere facts that some of the remaining contested goods are
foodstuffs which satisfy the need for food, or that they are directed at the same
public, or that they can be found in supermarkets, are insufficient for a finding of
similarity. Therefore, the abovementioned contested goods are dissimilar to all of the
opponent’s goods and services of earlier marks 1 and 2.
Contested goods in Class 31
The contested goods in this class, namely unprocessed nuts, cashew kernels,
pistachios, almonds, peanuts and seeds and algae for human consumption must be
interpreted as fresh foodstuffs which often require at least some processing
(washing, peeling, shelling etc.) before they can be served for consumption. These
contested goods do not share the same nature and usual origin as any of the
opponent’s goods or services. They are neither complementary nor in competition.
The mere facts that the contested goods are foodstuffs which satisfy the need for
food, or that they are directed at the same public, or that some of them can be found
in supermarkets, are insufficient for a finding of similarity. Therefore, these goods are
dissimilar to all of the opponent’s goods and services of earlier marks 1 and 2.
b) 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 and services found to be identical or similar, to varying
degrees, are directed at the public at large. The degree of attention is considered to
be average.
c) The signs
MUNCHIES
(EUTMs No 5 074 711 and No 818 948)
Earlier trade marks 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).
Decision on Opposition No B 2 532 011 page: 14 of 19
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 common element, ‘MUNCHIES’, is meaningful for the Anglophone public in the
relevant territory, which has a diminishing effect on its distinctive character.
However, this word lacks any meaning and enjoys an average degree of
distinctiveness for the goods and/or services at issue in the perception of a significant
part of the public in those countries where English is not generally understood.
Neither does it belong to basic English vocabulary that would be universally known
by the public at large due to extensive use.
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on the non-English-speaking part of the public in the European Union, for
example a significant part of the public in the Romance, Slavic and Baltic language
areas (e.g. in France, Italy, Spain, Portugal, Romania, Poland, Bulgaria, Czech
Republic, Slovakia, Slovenia, Lithuania and Latvia).
Conceptually, neither of the signs has a meaning for the public in the relevant
language areas. Since a conceptual comparison is not possible, the conceptual
aspect does not influence the assessment of the similarity of the signs.
Visually, the signs coincide in that the entirety of the earlier marks, ‘MUNCHIES’, is
reproduced in the contested sign. Although the signs differ in that the word in the
contested sign is depicted in a stylised manner, which features three colours (black,
orange and yellow), use of different sizes for the letters, and little speckles around
the lettering which brings to mind crumbs, the stylisation does not eclipse the verbal
component which is readily perceptible as such. Furthermore, none of the signs has
any dominant element. Therefore, the signs are highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant language areas, the pronunciations of the signs are identical.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier marks
The distinctiveness of the earlier marks is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent claimed that the earlier trade marks enjoy enhanced distinctiveness
but, within the time limit given for substantiating the opposition, the opponent did not
file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on
their distinctiveness per se. In the present case, the earlier trade marks have no
meaning for any of the goods and services in question from the perspective of a
significant part of the public in the relevant language areas which the present
Decision on Opposition No B 2 532 011 page: 15 of 19
assessment focuses on. Therefore, the distinctiveness of the earlier marks must be
seen as normal.
e) Global assessment, other arguments and conclusion
Some of the contested goods are identical or similar, to varying degrees, to the
opponent’s goods and services. They are directed at the general public whose
attention will not be enhanced in relation to the purchases at issue. In the perception
of a significant part of the public in the language areas which the present assessment
focuses on, the earlier marks are endowed with an average degree of distinctiveness
which affords them a normal scope of protection. The signs are strikingly similar
visually and, on an aural level, they are identical, without this impression being
altered by any conceptual perception.
It constitutes frequent practice nowadays for companies to make small variations of
their trade marks, for example by altering their typeface or colour, or adding terms or
elements to them, in order to create a modernised version of the mark. In the present
case, given the obvious similarity between the signs, it is likely that consumers will
perceive the contested sign as an embellished depiction of the earlier marks, used
for denoting new or specific lines of goods that are identical or similar to the
opponent’s goods and services, offered under the control of the same undertaking, or
an economically-linked undertaking.
As regards the contested goods that have been found similar to a low degree to the
opponent’s services, it is recalled that 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). In the
present case, the strong similarity between the signs clearly counteracts the low
similarity between the goods and services in question, and a likelihood of confusion
exists also in relation to them.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of a significant part of the public in the Romance, Slavic and
Baltic language areas. Therefore, the opposition is partly well founded on the basis of
the opponent’s European Union trade mark registrations No 5 074 711 and
No 818 948. 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.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar, including to a low degree, to those of the
earlier trade marks.
The rest of the contested goods are dissimilar. As similarity of goods and services is
a necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this Article and directed at these goods cannot be successful.
The opponent has also based its opposition on Irish trade mark registration
No 233 214 for the word mark ‘MUNCHIES’. Since this earlier right covers the same
list of goods and services as the opponent’s EU trade mark No 5 074 711, and as the
evidence submitted as proof of use equally refers to this earlier mark, neither the
outcome of the proof of use assessment, nor the outcome of the present opposition
Decision on Opposition No B 2 532 011 page: 16 of 19
could be different in relation to this earlier right or with respect to the contested goods
for which the opposition has already been rejected. Therefore, no likelihood of
confusion exists with respect to those goods.
REPUTATION — ARTICLE 8(5) EUTMR
In relation to these grounds, the opponent invokes EU trade mark registrations
No 5 074 711 and No 818 948, and Irish trade mark registration No 233 214, all for
the word mark ‘MUNCHIES’. Reputation is claimed for all of the Member States of
the EU, or Ireland in the case of the earlier Irish trade mark, for all of the goods and
services covered by the registrations.
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, 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 Union or, 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 95(1) EUTMR, in proceedings before it the Office will examine
the facts of its own motion; however, in proceedings relating to relative grounds for
refusal of registration, the Office will be restricted in this examination to the facts,
evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to present the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR (in the version in force at the time of
commencement of the adversarial part), when the opposition is based on a mark with
reputation within the meaning of Article 8(5) EUTMR, the opposing party must
provide evidence showing, inter alia, that the mark has a reputation, as well as
evidence or arguments showing that 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.
In the present case, the notice of opposition was not accompanied by any evidence
of the alleged reputation of the earlier trade marks.
On 11/06/2015, the opponent was given two months, commencing after the end of
the cooling-off period, to submit the abovementioned material. This time limit expired
on 16/10/2015.
The opponent did not submit any evidence concerning the reputation of the trade
marks on which the opposition is based.
Decision on Opposition No B 2 532 011 page: 17 of 19
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the
opposition must be rejected as unfounded, insofar as these grounds are concerned.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF
TRADE — ARTICLE 8(4) EUTMR
In relation to these grounds, the opponent invokes the European Union, Bulgarian,
Belgian, Czech, Danish, German, Estonian, Greek, Spanish, French, Irish, Italian,
Cypriot, Latvian, Lithuanian, Luxembourgish, Hungarian, Maltese, Dutch, Austrian,
Polish, Portuguese, Romanian, Slovenian, Slovakian, Finnish, Swedish and United
Kingdom non-registered trade mark ‘MUNCHIES’, claiming use of more than mere
local significance for the following goods and services:
Smoothie beverages consisting primarily of yoghurt; dairy based
beverages; smoothies (milk predominating); salads; milk and dairy
products; eggs; meat, fish, poultry and game; prepared meals;
jams; pickles, soups. Coffee; tea; sandwiches. Smoothie beverages
(fruit predominating); fruit drinks and fruit juices; crushed fruit juices
drinks; still and carbonated water. Restaurants; sandwich bars;
provision of food and drink; delicatessans; cafes.
First of all, it has to be clarified that non-registered trade marks are not protected
under European Union law. Therefore, the opponent’s claims to a ‘European Union
non-registered trade mark’ are inadmissible. However, the examination of the
opposition may continue with respect to the non-registered trade marks in relation to
which the express references to the Member States of the EU are sufficient
indications of the territorial scope of their protection.
According to Article 8(4) EUTMR, upon opposition by the proprietor of a
non-registered trade mark or of another sign used in the course of trade of more than
mere local significance, the trade mark applied for will not be registered where and to
the extent that, pursuant to the Union legislation or the law of the Member State
governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration
of the European Union trade mark, or the date of the priority claimed for the
application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent
trade mark.
The condition requiring use in the course of trade is a fundamental requirement,
without which the sign in question cannot enjoy any protection against the
registration of a European Union trade mark, irrespective of the requirements to be
met under national law in order to acquire exclusive rights.
As mentioned above, according to Article 95(1) EUTMR, in proceedings before it the
Office will examine the facts of its own motion; however, in proceedings relating to
relative grounds for refusal of registration, the Office will be restricted in this
examination to the facts, evidence and arguments submitted by the parties and the
relief sought.
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
Decision on Opposition No B 2 532 011 page: 18 of 19
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to present the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file proof of the existence, validity and scope of protection
of its earlier mark or earlier right, as well as evidence proving its entitlement to file the
opposition.
In the present case, the notice of opposition was not accompanied by any evidence
of use of the earlier sign in the course of trade.
As outlined above, on 11/06/2015, the opponent was given two months, commencing
after the end of the cooling-off period, to submit the abovementioned material. This
time limit expired on 16/10/2015.
The opponent did not submit any evidence of use in the course of trade of the earlier
sign on which the opposition is based. For the sake of completeness, it is also noted
that the opponent failed to submit a clear identification of the contents of the national
law relied upon by adducing publications of the relevant provisions or jurisprudence.
Given that at least one of the necessary requirements of Article 8(4) EUTMR is not
met, the opposition must be rejected as unfounded, insofar as these grounds are
concerned.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some 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 Opposition Division
Birgit FILTENBORG Solveiga BIEZA Martin EBERL
Decision on Opposition No B 2 532 011 page: 19 of 19
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.

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