OPPOSITION Nо B 1 767 055

 

Sc Star Foods Em Srl, Str. Drumul Taberei Baza de Producție SIAU Jud Ilfov,, Comuna Popești Leordeni, Romania (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative) 

 

a g a i n s t

 

Max Kiene Gmbh, Oberhafenstr. 1, 20097 Hamburg, Germany (applicant), represented by Hauck Patentanwaltspartnerschaft Mbb, Kaiser-Wilhelm-Straße 79-87, 20355 Hamburg, Germany (professional representative).

On 14/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.

Opposition No B 1 767 055 is upheld for all the contested goods, namely: Class 29: Preserved, frozen, dried and cooked fruits and vegetables; pulses, dried fruits, dried vegetables; potato snack foods; dried tropical and subtropical fruits, raisins, currants and pulses; fruit snacks; nuts of all kinds (processed); roasted, dried, salted, spiced and seasoned nuts; roasted almonds; roasted peanuts; pine nuts (processed); nut snacks, mixed nuts. Class 30: Confections; Confectionery; The aforesaid goods other than edible ices and frozen cakes; Savoury biscuits and pretzels; Rice snacks, corn snacks, cereal snacks.

2.	European Union trade mark application No 9 233 313 is rejected for all the contested goods. It may proceed for the remaining goods.

 

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

 

REASONS

 

On 07/12/2010, the opponent filed an opposition against some of the goods of European Union trade mark application No 9 233 313 (figurative mark), namely against all the goods in Classes 29 and 30. The opposition is based on Romanian trade mark registration No 46 302, ‘MAX’ (word mark). The opponent invoked  Article 8(1)(b) EUTMR and Article 8(5) 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, 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 earlier Romanian trade mark registration No M 2000 04533. 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 06/09/2010. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Romania from 06/09/2005 to 05/09/2010 inclusive.

 

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

 

Class 29:  Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; edible oils and fats.

 

Class 30:    Tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery; honey, molasses syrup; yeast, baking powder; salt, mustard; vinegar, sauces (spices); spices, ice. 

In the submission of 30/11/2018 the opponent stated: ‘we hereby submit proof of use of the earlier mark MAX in Romania in relation to “preserved, dried and cooked vegetables, in particular potato chips and potato crisps” in class 29 during the relevant time’. As this statement does not represent a clear and unambiguous limitation of the extent of the opposition, the Opposition Division will assess the evidence of use in relation to all the goods in Class 29 and 30 listed above and claimed as basis of the opposition on 07/12/2010.

 

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 26/07/2018, 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 30/09/2018 (term further extended until 30/11/2018) to submit evidence of use of the earlier trade mark. On 30/11/2018, 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.

 

The evidence to be taken into account is the following:

 Enclosure OP-3: Several samples of packaging and packaging printing layouts representing the opponent’s trademark in relation to potato chips, for instance: ; ; . The languages displayed in the packaging is Romanian. Most of the submitted evidence are not dated, although the opponent asserts that the provided packaging were used in the market within the relevant period. Furthermore, the opponent shows that in some of the submitted evidence the expiring date is on 19/02/2010.

 Enclosure OP-4: An affidavit signed on 27/11/2018 by the legal representative of the opponent’s company asserting that between 2007 and 2010 the trademark ‘MAX’ have been consistently used within the Romanian market. In the document it is reproduced a chart showing that hundreds of tons of products sold under the signs ‘STAR MAX’ and ‘LAY’S MAX’ have been sold in the relevant market within the period 2006 – 2008, generating incomes for thousands of RON.

o The affidavits include a considerable number of invoices issued within 29/09/2006 and 28/12/2010 to customers in different Romanian cities. The documents display the sign ‘MAX’ in relation to other marks such as ‘LAY’S’ or ‘STAR’ and to flavors such as ‘Paprika’ which are those indicated in the above packaging. Finally, the invoice makes reference to sufficient amounts and units sold.

 Enclosure OP-5: Printouts of Youtube® displaying the opponent’s trademark used in video-advertisement in relation to potato chips goods. The provided documents also show that most of these videos have been published in 2008. The Youtube® webpage is displayed in Romanian language. The opponent also provided some screenshot of undated advertisement in Romanian language.

 Enclosure OP-6: Extracts of websites in Romanian making reference to dates in 2018 and displaying the opponent’s trademark used in relation to potato chips.

 Enclosure OP-7: Extract of a 2009 business plan in Romanian language setting the market strategy in relation to the opponent’s trademark for potato chips.

 Enclosure OP-8: Extract of an article in Romanian issued in 2009 and displaying the opponent’s trademark used in relation to potato chips as follow: .

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been are self-explanatory, the Opposition Division considers that there is no need to request a translation.

As far as the affidavit is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees 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.

 

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

 

The applicant also argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is 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.

Assessment of genuine use — factors

Place of use

The evidence must show genuine use of the earlier trade mark within the relevant territory (i.e. Romania).

Specifically, all the provided documents refer to addresses in Romania (e.g. the invoices) or are in Romanian language (e.g. the web extracts or the business plan). Furthermore the prices in the invoices are expressed in the Romanian currency. Therefore, the evidence relates to the relevant territory.

Time of use

The evidence must show genuine use of the earlier trade mark within the relevant period.

Most of the submitted evidence refers to the time period 2006 – 2010. It follows that the evidence of use provided by the opponent contains sufficient indications concerning the time of use of the earlier sign.

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 documents submitted, in particular the web extracts, advertisements, products and packaging samples and invoice provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

It is clear from the evidence that the opponent distributed or provided goods bearing or sold under the trade mark ‘MAX’ in the relevant market. The Opposition Division, therefore, has sufficient information regarding the opponent’s commercial activities during the relevant period. Consequently, these documents prove the duration and frequency of use of the earlier mark.

Nature of use — use as a trade mark

Nature of use requires, inter alia, that the trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

Most of the items of evidence submitted clearly shows the trade mark ‘MAX’ or used in relation to potato chips. Therefore, a clear link can be established between the sign and the goods themselves.

The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Nature of use — use of the mark as registered

Article 18 and Article 47(2) EUTMR require proof of genuine use in connection with the goods or services for which the trade mark is registered and which the opponent cites as justification for its opposition. Therefore, the opponent must demonstrate that the mark has been used as a trade mark on the market. As the function of a trade mark is, inter alia, to operate as a link between the goods and services and the person or company responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Article 10(4) EUTMDR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T 105/13, TrinkFix, EU:T:2014:1070, § 28-38). The use of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

A substantial part of the evidence submitted (inter alia, the invoices, the website extracts and the business plan) clearly refers to the subject trade mark, in either its denominative form or with a slight stylization, namely that does not clearly alter its distinctive character since purely decorative.

Therefore, the Opposition Division concludes that the mark has been used in accordance with Article 18(1)(a) EUTMR.

On the use of several marks or signs simultaneously

In the present case – and as also recalled by the applicant – the opponent’s trade mark is used in combination with other signs, namely ‘STAR’ and ‘LAY’S’.

It is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 47 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are being used jointly but autonomously (07/08/2014, R 1880/2013-1, HEALTHPRESSO / PRESSO, § 42).

The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied both where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C-12/12, Colloseum Holding, EU:C:2013:253, § 36.). Similarly, the Court has clarified that use can be genuine where a figurative mark is used in conjunction with a word mark superimposed over it, even if the combination of those two marks is itself registered, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered (18/07/2013, C-252/12, Specsavers, EU:C:2013:497, § 31).

Therefore, the Opposition Division concludes that the sign at issue is used together with other distinctive signs, i.e. house marks. In the foodstuff sector it is also common that the product name appears together with the house mark. Consequently, the sign as registered will be perceived independently in the sign as used.

Use in relation to the registered goods

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; 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.

 

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, § 45‑46.)

 

In the present case, the evidence proves use only for potato chips. These goods can be considered to form an objective subcategory of preserved, dried and cooked vegetables in Class 29. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for potato chips.

 

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.

  

a) The goods

 

The goods on which the opposition is based and the use was proved are the following:

Class 29: Potato chips.

The contested goods are the following:

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; pulses, dried fruits, dried vegetables; potato snack foods; dried tropical and subtropical fruits, raisins, currants and pulses; fruit snacks; nuts of all kinds (processed); roasted, dried, salted, spiced and seasoned nuts; roasted almonds; roasted peanuts; pine nuts (processed); nut snacks, mixed nuts.

Class 30: Confections; Confectionery; The aforesaid goods other than edible ices and frozen cakes; Savoury biscuits and pretzels; Rice snacks, corn snacks, cereal snacks.

In this regard, it is noted that in the submission of 11/05/2018 the opponent asserted that the earlier goods are also similar to the contested goods in Class 31. However, in the notice of opposition of 07/12/2010 it is clearly indicated that the proceedings is directed against ‘all goods in Class 29 and 30’. Consequently, it is not possible to extend the scope of the opposition also to the goods in Class 31 as this claim was raised after the end of the opposition period i.e. 07/12/2010.  

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 potato snack foods overlap with the opponent’s potato chips. Therefore, they are identical.

The contested preserved, frozen, dried and cooked vegetables; dried vegetables are at least similar with the opponent’s potato chips as they, at least, coincide in producer, relevant public and distribution channels.

The contested preserved, frozen, dried and cooked fruits; dried fruits; dried tropical and subtropical fruits, raisins, currants; fruit snacks are similar to a low degree with the opponent’s potato chips as they usually coincide in producer, relevant public and distribution channels.

The contested pulses; dried pulses; nuts of all kinds (processed); roasted, dried, salted, spiced and seasoned nuts; roasted almonds; roasted peanuts; pine nuts (processed); nut snacks, mixed nuts are at least similar to a low degree with the opponent’s potato chips. As they may usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition. In addition, both goods can be in the form of snacks.

Contested goods in Class 30

The contested confections; confectionery; the aforesaid goods other than edible ices and frozen cakes; savoury biscuits and pretzels; rice snacks, corn snacks, cereal snacks are at least similar to a low degree with the opponent’s potato chips as they usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition since they can be all in the form of snacks.

  

b) The signs

 

MAX
Earlier trade mark	Contested sign

 

 

The relevant territory is  Romania.

 

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 trademarks in conflict coincide in the verbal element ‘MAX’ that will be perceived by the relevant consumer as the abbreviation of the term ‘maxim’ (correspondent to the English word ‘maximum’). However, in the present case it is immaterial the degree of distinctiveness of the signs' verbal elements as they are the same in both marks and because the only differentiating elements of the contested application merely reside in non-distinctive components, namely two basic circles that purely serve to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to them (see, by analogy 15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27) and in a standard typeface.

Consequently, the signs are visually highly similar whereas aurally and conceptually identical since the contested sign’s outlined figurative elements and stylization are non-distinctive and will not entail any semantic difference.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

c) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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).

As illustrated in the comparison of signs, their near identity implies that consumers will not be able to distinguish between them.

The opponent claimed that the earlier trade mark enjoys reputation but did not file any evidence in order to prove such a claim. However, the above conclusion would hold true even if the distinctiveness of the coinciding elements and the earlier mark as a whole was very low and irrespective of the degree of attention and sophistication of the relevant public.

As the degree of similarity between the signs clearly offsets even the low degree of similarity between some of the goods in conflict, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must be upheld for all the contested goods.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 46 302. It follows that the contested trade mark must be rejected for all the contested goods.

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

 

COSTS

 

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

 

 

Angela DI BLASIO

Aldo BLASI

Chiara BORACE

 

 

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.