OPPOSITION No B 2 162 454

Société des Produits Nestlé S.A., Service des Marques, Case postale 353, 1800 Vevey, Switzerland, (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Pan United Ltd., 15 College Road, 4th Floor, Harrow, Middlesex HA1 1BA, United Kingdom (applicant), represented by Dehns, St Bride's House, 10 Salisbury Square, London EC4Y 8JD, United Kingdom (professional representative)

On 20/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 162 454 is partially upheld, namely for the following contested goods:

Class 29: Milk products.

Class 30: Confectionery; Ices.

2. European Union trade mark application No 11 439 114 is rejected for all the above goods. It may proceed for the remaining goods and services.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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/or EUTMIR should be understood as references to the regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 439 114 for the figurative mark , namely against some of the goods in Classes 29 and 30. The opposition is based on Spanish trade mark registration No 2 756 867 for the word mark ‘APOLO’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON SUBSTANTIATION

The applicant argues that the opponent has not substantiated the opposition since the documents and translations of the earlier mark filed with the notice of opposition originated from an unknown source and the translation does not meet the requirements since it originated from Thomson CompuMark’s commercial database. Moreover, the applicant claims that the further extract and translation submitted together with the opponent’s letter dated 16/10/2013 were not filed within the period for substantiating the earlier right and that no evidence or translation has thus been filed in the language of the proceedings about the type of sign that has been registered or about the status of the claimed right.

In this respect, the Opposition Division notes that on 21/06/2013 the Office communicated the date of the commencement of the adversarial part of the opposition proceedings to both parties and invited the opponent to substantiate the earlier rights and submit further material in support of the opposition by 21/10/2013.

On 16/10/2013, within the time limit mentioned above, the opponent submitted further arguments and evidence in support of the opposition. The evidence included an extract of the earlier mark on which the opposition is based from SITADEX, the Spanish Patent and Trade Mark Office’s official on-line database, and was also accompanied by an English translation duly reproducing the structure and contents of the original document as required.

It follows that, contrary to the applicant’s allegations, the evidence submitted by the opponent on 16/10/2013 was submitted within the period for substantiating the earlier right and also shows, including in the language of the proceedings, the type of sign that was registered, its scope of protection and status as a registered trade mark (valid until 22/02/2017). It also shows that the opponent is the owner of the earlier mark invoked. Furthermore, on 02/05/2017 the opponent submitted a copy of the renewal certificate of the earlier mark together with an English translation of the same, also following the structure and contents of the original document, proving that the scope of protection of the earlier mark was extended and is now valid until 22/02/2027.

Consequently, the applicant’s claims that the opponent did not properly substantiate the existence and scope of protection of the earlier mark on which the opposition is based within the relevant time period must be set aside as unfounded.

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 2 756 867 for the word mark ‘APOLO’.

The contested application was published on 20/03/2013. 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 20/03/2008 to 19/03/2013 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 30: Coffee, coffee extracts, coffee-based beverages and preparations, iced coffee, coffee substitutes, coffee substitute extracts, coffee substitute-based beverages and preparations, chicory, tea, tea extracts, tea-based beverages and preparations, iced tea, malt-based preparations, cocoa and cocoa-based beverages and preparations, chocolate, chocolate products, chocolate-based beverages and preparations, confectionery products, sweets, caramels, sugar, chewing gum, natural sweeteners, bread products, bread, yeast, pastry, biscuits, cakes, buns, biscuit rolls, toffees, puddings, ice creams, ice cubes, sorbets, frozen candy, frozen cakes, shakes, frozen yoghurt, binding agents for ice creams and/or ice cubes and/or sorbets and/or frozen candy and/or frozen cakes and/or shakes and/or frozen desserts and/or frozen yoghurt, honey and honey substitutes, breakfast cereals, muesli, corn flakes, cereal bars, cereal-based snack food, cereal preparations, rice, pasta, noodles, rice/flour/cereal-based food, also in the form of prepared meals, pizzas, sandwiches, food paste mixes and oven-ready dough, sauces, soja sauce, ketchup, aromatic products and condiments for food, edible spices, condiments, salad dressings, mayonnaise, mustard, vinegar.

As a preliminary remark, it should be noted that the applicant argues that sorbets are not covered by the earlier mark since the English translation of the registration details of the earlier mark submitted on 16/10/2013 lists sherbets but not sorbets. In British English sherbet generally refers to a sweet dry powder that tastes fizzy and is eaten as a sweet although it may also have the same meaning as sorbet. In this respect, while it is true that the English translation of the earlier mark submitted on 16/10/2013 did indicate sherbets in the list of goods covered, both the opponent’s statement of grounds filed on the same date as well as the English translation of the list of goods of the earlier mark from Thomson CompuMark’s commercial database filed together with the notice of opposition used the English translation sorbets and not sherbets. Furthermore, the goods listed in the registration details of the original language, Spanish, are ‘sorbetes’, which is essentially the same word as sorbets. Therefore, it is clear from the documents submitted that the goods protected by the earlier mark concern sorbets and not sherbets (in the sense of a sweet dry powder that tastes fizzy and is eaten as a sweet). Consequently, the Opposition Division has used the word sorbets in the list of goods covered by the earlier mark above since these are clearly protected for the reasons outlined above and the word sorbets gives no ambiguity as to its possible meaning or the nature of the goods.

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 08/03/2017, 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 13/05/2017 to submit evidence of use of the earlier trade mark. On 02/05/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Catalogues: product catalogues for the years 2011-2013 for ‘Península y Baleares’ (the Spanish mainland and Balearic Islands) and ‘Canarias’ (the Canary Islands) respectively including, inter alia, lemon sorbet and chocolate ice cream (in packages of 6 litres) offered under the earlier mark as follows:

(2011-2012) (2013)

• Picture of product packaging: a picture taken on 07/02/2014 of a lemon sorbet package (6 litres) branded with the earlier mark as follows:

• Invoices: 39 invoices (approximately 10 from each year between 2009 and 2012) issued by HELADOS Y POSTRES, S.A. to different clients located in different Spanish cities, such as Madrid, Denia, Valencia, Santander, Burgos, Jaen, Malaga, Cartagena and Pamplona. The invoices show sales of, inter alia, around 120 6 litre boxes of lemon sorbet and three 6 litre boxes of chocolate ice cream described as ‘APOLO’.

• Invoices: 10 invoices from 2013 issued by HELADOS Y POSTRES, S.A. to different clients located in different Spanish cities, such as Madrid, Alcobendas, Malaga, Marbella and Torremolinos. The invoices show sales of, inter alia, 25 6 litre boxes of lemon sorbet described as ‘APOLO’.

• Affidavit: an affidavit signed on 26/01/2017 by Dolores Perea García, an authorised signatory of Helados y Postres, S.A., providing information about the number of units sold and the sales figures in euros in Spain of ‘APOLO’ branded chocolate ice cream and lemon sorbet for the years 2009-2013 as follows:

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 for which the earlier mark is registered.

However, 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.

For the reasons set out below, taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory, albeit not in relation to all goods for which it is registered and on which the opposition is based.

As a preliminary remark, the applicant argues that the opponent did not submit translations of some of the evidence of use. 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, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely the product catalogues and invoices and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The applicant also contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company, Helados y Postres, S.A..

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 this other company was made with the opponent’s consent and thus is equivalent to use made by the opponent.

In any event, in response to this claim by the applicant, on 02/02/2018 the opponent also submitted supplementary evidence from www.bloomberg.com to prove that both Helados y Postres, S.A. and the opponent, Société des Produits Nestlé S.A., are subsidiaries of Nestlé S.A. and thus belong to the same group of companies.

Place

The applicant argues that many of the materials do not identify a specific location and provide insufficient indications regarding the place of use and claims, for example, that Spain is not the only country in the world where Spanish is spoken and the existence of a catalogue that mentions a country is not evidence of distribution of the catalogue or the sale of products in that country. However, the product catalogues submitted do not only mention a country but actually indicate that they concern products and prices for specific regions, namely ‘Península y Baleares’ (the Spanish mainland and Balearic Islands) and ‘Canarias’ (the Canary Islands). It is common in the Spanish market that different prices or conditions apply to these two regions (‘Península y Baleares’ and ‘Canarias’). Therefore, even if Spanish is spoken in other countries as well, there is no doubt that the catalogues submitted concern Spain and not any other Spanish-speaking country in the world. Furthermore, all the invoices submitted are addressed to different specific locations in Spain. Therefore, the evidence in its entirety clearly provides sufficient indications regarding the place of use.

Time

Even if some of the evidence submitted is outside the relevant time period (e.g. the picture of the product packaging from February 2014), the invoices submitted from different dates for each year between 2009 and 2012 and the invoices from 2013 (which are all dated between January and March) concern almost all the time of the relevant period between 20/03/2008 and 19/03/2013 and the product catalogues also concern the years 2011, 2012 and 2013. Therefore, the evidence provides sufficient information concerning the time of use.

Extent

As regards the extent of use, the applicant indicates that the affidavit is seriously flawed, inter alia, since it is not indicated what company position the signatory held during the relevant time period or from where the figures are derived (what records she had access to) and also points out that if the signatory is from a licensee, it will have an interest in the outcome of the proceedings.

Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) 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, even if, in the present case, the Opposition Division agrees that the declaration submitted is not particularly well drafted for the reasons highlighted by the applicant as outlined above.

In any event, 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.

In this respect, the applicant puts forward that the invoices are for relatively low product quantities and argues that it has therefore not been demonstrated that the use is ‘genuine’ in the sense of being sufficient to create or maintain a market share. The applicant also indicates that no indications are given as to the size of the market in ice creams (or sorbets) in Spain and that there is, therefore, no context in which the claimed extent of use can be assessed.

Nevertheless, although the concept of genuine use excludes all minimal and insufficient use as the basis for a finding that a mark is being put to real and effective use on a given market, the requirement of genuine use does not seek to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (16/06/2015, T-660/11, EI du Pont de Nemours (POLYTETRAFLON), ECLI:EU:T:2015:387, § 44).

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).

In this respect, 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.

Even if the invoices submitted concern relatively low sales, in particular considering the relevant market for ice cream and sorbets, and may thus not support the significant sales figures indicated by an authorised signatory of Helados y Postres, S.A., belonging to the same group of companies as the opponent, they provide examples from almost all of the relevant years and from numerous different months and dates. Furthermore, the invoices submitted are addressed to different clients in numerous different locations and in different regions of Spain, e.g. Burgos in the north, Madrid in the centre and Malaga in the south, etc. The applicant also argues that the invoices from 2013 fall outside the relevant time period and cannot be taken into account. However, the relevant time period ends on 19/03/2013 and all but two of the invoices from 2013 indicate dates that are earlier than 19 March. The two invoices from 2013 that fall outside the relevant time period are dated 28/03/2013 and 03/04/2013 respectively. As a result, this argument of the applicant is largely unfounded. In any event, while it is true that evidence referring to use made outside the relevant timeframe should generally be disregarded, events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). Therefore, even the two invoices submitted showing dates that are slightly after the end of the relevant time period in 2013 may also assist to infer that the invoices submitted concerning most of the relevant time period, including the ones from 2013, does not show only token use for the sole purpose of preserving the rights conferred by the earlier mark but rather support that the use has been genuine in order to create or preserve an outlet for the goods in the market.

Even if the sales volumes shown in the invoices are not particularly high, taking into account that they show continuous use of the mark in several different locations and regions of the relevant territory, addressed to numerous different clients over a long period of time, this indicates that the invoices submitted are only exemplary invoices to prove that the earlier mark has been used publicly and outwardly in the normal course of trade as pointed out by the opponent. Therefore, and bearing in mind that use of the mark need not be quantitatively significant for it to be deemed genuine, the Opposition Division considers that the invoices submitted, together with the product catalogues and the affidavit, make it possible to assume, with a more than reasonable degree of certainty, that the overall sales of the products in question are in reality much higher than those specifically referred to.

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

Nature of use

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.

As regards the use of the earlier word mark ‘APOLO’ in the figurative form , this is not of such a nature as to alter its distinctive character and must therefore be considered use of the earlier mark within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

The applicant also argues that other signs are more prominent in the proof of use and therefore questions whether ‘APOLO’ will even be recognised as a trade mark. In this respect, even if the earlier mark ‘APOLO’ is used together with other brands such as ‘Nestlé’, 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 (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 used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42). In view of the evidence submitted, it is clear that the earlier mark ‘APOLO’ will be perceived as the trade mark name for specific ice cream and sorbet products while ‘Nestlé’ on the product packaging or ‘HELADOS Nestlé’ depicted at the top of the product catalogues will be perceived as the house mark for a range of ice cream products with different sub-brands, such as ‘APOLO’ or ‘MIKO’. As a result, the use of the earlier mark together with other marks, in an autonomous way, does not alter its distinctive character as registered.

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 30: Ice creams; sorbets.

Although the invoices mostly concerned sorbets and only provided a few examples of ice creams actually sold, all the product catalogues submitted show that both products have been marketed next to each other and the figures provided in the affidavit indicate much larger sales figures of the lemon sorbet offered than the ice cream product, which may also explain why there are much less examples of ice cream sold in the exemplary invoices submitted. Therefore, taking the evidence into account in its entirety, the Opposition Division considers that it is sufficient to show genuine use of the earlier mark, i.e. use which has not been merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark, both in relation to sorbets and ice creams.

However, none of the evidence submitted related to any other goods than these. 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.

1. The goods

The goods on which the opposition is based and for which use has been proven are the following:

Class 30: Ice creams; sorbets.

The contested goods are the following:

Class 29: Milk and milk products.

Class 30: Confectionery, ices, ice.

As a preliminary remark it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

The contested milk products are made principally of milk and may contain flavourings (such as chocolate) and be eaten as a snack or dessert. Furthermore, these goods may also be chilled or frozen, such as frozen yoghurt. The opponent’s ice creams consist of sweetened frozen food that is usually made from dairy products (such as milk and cream), sugar and flavourings (such as chocolate) and is also typically eaten as a snack or dessert. Therefore, the goods under comparison can have a similar nature, have the same purpose and be in competition; they can also target the same relevant public and coincide in the same producers. Furthermore, these goods can share the same distribution channels since they may both be found in the same outlets in, for example, the section of frozen desserts. Therefore, these goods are considered highly similar. For the sake of completeness, the opponent’s sorbets, although not usually made of milk, are also at least similar to the contested milk products since these goods can also have the same purpose, target the same relevant public, coincide in the same producers and share the same distribution channels for the same reasons as those outlined above.

However, the contested milk is not considered similar to the opponent’s ice creams or sorbets in Class 30. The contested goods concern pure milk which is not frozen or consumed as a snack or dessert but rather, albeit usually chilled, in a liquid form to quench thirst. Therefore, these goods do not have a similar nature and although the contested goods may also include flavoured milk, as argued by the opponent, they would still have a different purpose for the reasons outlined above. Furthermore, these goods are not complementary or in competition. In this respect, the opponent argues that milk is a broad category of goods that also includes milk shakes. However, milk shakes do not consist of only milk but are rather milk-based beverages. Therefore, even if milk shakes would be included in the broad category of milk products compared above, such goods are not included in the term milk as such. Moreover, although the goods under comparison may be found in the same outlets, these particular goods are not usually found in the same shelves or sections of a super market. Finally, the opponent also puts forward that the goods may coincide in producers to the extent that some dairies produce ice creams with milk as a main ingredient and cites cases R 476/2016-2, R 1818/2015-2 and B 226572 and, for further substantiation also submitted extracts from www.farmhouseicecream.com presenting a concept developed in the Netherlands for dairy farmers to start their own ice cream business and www.bauernhofeis-mueller.de promoting packaged ice cream from a German farm to support that manufacturers of milk and ice cream may coincide on a European-wide level. Nevertheless, as pointed out by the applicant, the mere fact that one ingredient is needed (or may be used) for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (see to this effect 26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). Moreover, despite the finding in the cases referred to by the opponent that some dairies may produce ice cream with milk as a main ingredient, the Opposition Division notes that when an ingredient can be considered as being the main ingredient of the prepared dish, a similarity will exist only if the goods share some other relevant criterion or criteria, in particular the usual origin, nature, purpose or method of use. In the present case, for the reasons already outlined above, the goods under comparison do not share the same or a similar nature, purpose or method of use and even if the opponent submitted evidence to show that two farms also produce ice cream and the cases referred to above found that some dairies produce ice creams with milk, this does not demonstrate that farms would typically produce both milk and ice cream and that the usual origin of such goods is thus the same. In this respect, the Opposition Division does not consider that manufacturers of milk would also typically produce ice creams or sorbets and therefore finds, in the absence of more conclusive evidence to the contrary, that the usual origin of the goods in question is not the same. As a result, even if the opponent’s ice creams may use milk as an essential ingredient and even if a few milk farmers may also produce ice cream, this is not sufficient for a finding of similarity between them since the usual origin is not the same and the goods in dispute do not share any other relevant criteria as explained above. Therefore, the contested milk is considered dissimilar to the opponent’s ice creams and sorbets in Class 30.

Contested goods in Class 30

The applicant argues that the contested ices may encompass iced lollipops made of flavoured water, but not ice cream. Nevertheless, the contested ices do not only include iced lollipops but are also to be understood as ‘ice creams’. Therefore, the contested ices and the opponent’s ice creams are identical. Furthermore, although not identical, the opponent’s sorbets are highly similar to the contested ices since these goods have the same purpose, target the same public, originate from the same undertakings, share the same distribution channels and are in competition.

The contested confectionery is similar to the opponent’s ice creams and sorbets since they can have the same purpose to be eaten as a snack or dessert; they also target the same relevant public and are in competition. Furthermore, they can often be produced by the same undertakings.

The contested ice is to be understood as ‘cooling ice’ used for cooling drinks or for food preservation whereas the opponent’s ice creams are smooth, sweet and cold food prepared from a mixture of milk products and/or flavourings and often eaten as a snack or dessert and the opponent’s sorbets are also frozen desserts but usually made with fruit juice, sugar, and water. The opponent argues that ice cubes may be offered side-by-side with ice cream and sorbets in the fridges of supermarkets and that the goods are in competition because there are diverse possibilities of flavouring ice cubes (and also submitted Internet extracts showing pictures of flavoured ice cubes or ice cubes containing pieces of fruits, herbs and vegetables). However, the fact that these goods may be available to the public in supermarkets from the same fridges is insufficient for a finding of similarity between them since their nature, purpose and methods of use are different. Moreover, the pictures submitted by the opponent rather show ideas and suggestions for flavouring ice cubes at home and do not establish that such goods are actually prepared and sold at a commercial scale. Nevertheless, even if flavoured ice cubes were also sold next to the opponent’s goods, these goods would still not be complementary or in competition, since flavoured ice cubes would in any event not be consumed as a snack or dessert instead of an ice cream or sorbet but would still rather be used for cooling drinks. Furthermore, the opponent has not substantiated the claim that manufacturers of sorbets are likely to also offer fruit-flavoured ice cubes and the Opposition Division does not consider, in the absence of any evidence to the contrary, that the commercial origin of the goods under comparison would usually be the same. Therefore, the contested ice is considered dissimilar to the opponent’s ice creams and sorbets.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

The applicant argues that since the opponent’s evidence of use, if anything, only shows use of goods sold in bulk 6 litre containers for commercial use, the opponent’s goods could only be held to be for ice creams and sorbets for sale in bulk to businesses and that the degree of attention of this public would be reasonably high. However, the examination of the likelihood of confusion which the Opposition Division is called on to carry out is a prospective examination and it is the ‘usual’ circumstances in which the goods covered by the marks are marketed that must be taken as a benchmark, that is, those which it is usual to expect for the category of goods covered by the marks (12/01/2006, T-147/03, TIME ART (QUANTUM), EU:T:2006:10 § 103-104). Since the particular circumstances in which the goods in question have been marketed may vary in time and depending on the wishes of the proprietor of the opposing mark, it is inappropriate to take such circumstances into account in the prospective analysis of the likelihood of confusion (15/03/2007, C-171/06 P, TIME ART (QUANTUM), EU:C:2007:171, § 59).

In the present case, the goods found to be identical or similar to varying degrees are usually directed at the public at large but may also be directed at business customers in the field of the provision of food and drinks.

The applicant argues that the level of attention of consumers for food products in general is fairly high because most people are careful, at least to a reasonable degree, about what they eat and also claims that most consumers know that the source of food products can affect the quality, taste and safety of the product.

In this respect, it must however be noted that the goods in question are mass consumption goods that are inexpensive and rather frequently consumed and do not require any specific instructions on the safety of the products. Therefore, contrary to the applicant’s arguments, the degree of attention of the relevant public is rather somewhat below normal or at most average (see to this effect 30/11/2016, R 499/2016-2, BOOM CHOCOLATTA! / BUMM, § 24 and the case-law cited).

3. The signs

APOLO
Earlier trade mark	Contested sign

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 earlier mark is the word mark ‘APOLO’ and the contested sign is a figurative mark consisting of the verbal element ‘APOLLO’ depicted in white standard upper case letters on an oval red background. A number of small white stars are depicted above the verbal element and underneath there are two figurative elements, a yellowish planet and an astronaut. The contested sign also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The applicant argues that the Spanish public will see the earlier mark as an invented word or possibly (unlike APOLLO) as a place name.

However, the word ‘APOLO’ is the Spanish name of a God in the Greek mythology and also means ‘a man of great beauty’. Furthermore, ‘APOLO’ is also the Spanish name of the spacecrafts launched by NASA under the Apollo program. Therefore, the public in the relevant territory will associate the earlier mark with either of these meanings. Either way, ‘APOLO’ will have no particular meaning in relation to the goods concerned and is, therefore, distinctive.

The verbal element of the contested sign ‘APOLLO’ is an English word having the same meanings as those outlined above but does not exist in Spanish and has therefore no meaning as such in the relevant territory. However, even if consumers in Spain may not generally know that ‘APOLLO’ is an English word with these meanings, since it has no meaning as such in Spanish and is almost the same word as the Spanish word ‘APOLO’ (only with an additional ‘L’), it is still likely to be associated with (or even be perceived as a misspelling of) the word ‘APOLO’ by a significant part of the relevant public. Furthermore, the meaning of the word ‘APOLLO’ as a reference to the spacecrafts launched by NASA under the Apollo program is reinforced by the figurative elements surrounding this word (the stars above and a planet and an astronaut below which will be immediately associated with outer space and space exploration as also claimed by the applicant). Therefore, a significant part of the relevant public will associate the verbal element ‘APOLLO’ with the word ‘APOLO’ and its meaning as the name of the spacecrafts launched by NASA under the spaceflight program with the same name. Since it has no particular meaning in relation to the goods concerned it is distinctive.

As regards the figurative elements of the contested sign, although the oval red background will be perceived merely as a decorative element since it consists of a basic geometric shape (in red) commonly used in trade, the figurative devices of, in particular, a planet and an astronaut have no connection to the goods concerned and must be considered distinctive.

The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

However, 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).

Since a non-negligible part of consumers is likely to associate both signs with the word ‘APOLO’ and its meaning as the name of the spacecrafts launched by NASA under the spaceflight program with the same name for the reasons outlined above, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public in the relevant territory.

Visually, the signs coincide in the letters ‘APOL*O’ and their respective verbal element only differs in the additional penultimate ‘L’ letter in the contested sign. However, the signs differ in the additional figurative elements of the contested sign which are not present in the earlier mark.

Nevertheless, for the reasons outlined above, the verbal element of the contested sign, which is also depicted in a prominent position in the middle of the sign, will have a stronger impact on the consumer and the signs verbal elements are highly similar.

Therefore, the signs are visually similar to an average degree overall.

Aurally, even if the double ‘L’ letters in the contested sign would normally be pronounced as a ‘y’ in Spanish as pointed out by the applicant, since the part of the public under analysis will associate the contested sign with the word ‘APOLO’, this part of the public will pronounce both the earlier mark and the contested sign as ‛A‑PO-LO’.

Therefore, the signs are aurally identical for this part of the public.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks for the part of the public under analysis. Since both signs will be associated with the same concept of ‘APOLO’, being the name of the spacecrafts from the Apollo program and the further concepts conveyed by the contested sign (stars, a planet and an astronaut) only reinforce the concept of outer space and space exploration, the signs are conceptually highly similar for this part of the public.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade mark is highly distinctive per se but did not claim that it enjoys an enhanced distinctiveness through use.

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 has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the inherent distinctiveness of the earlier mark must be seen as normal but not high as put forward by the opponent.

5. Global assessment, other arguments and conclusion

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).

Account should also be 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).

In the present case, the goods have been found partly identical or similar to varying degrees and partly dissimilar and the degree of attention of the relevant public is at most average.

For the part of the public under analysis, the signs have been found visually similar to an average degree, aurally identical and conceptually highly similar and the earlier mark has a normal distinctiveness.

Considering that the part of the public under analysis will perceive both signs as referring to the same word, ‘APOLO’ (and its meaning as the name of the NASA spacecrafts), which is distinctive, and that consumers, who will pay at most an average degree of attention when purchasing the goods concerned, may not even recall the slight difference between the verbal elements of the signs when relying on their imperfect recollection of them, the Opposition Division finds that there is a likelihood of confusion on this part of the public in relation to the goods which are identical, highly similar or similar.

The applicant argues that the figurative elements of the mark applied for will clearly make a significant impact in the way the mark applied for is appreciated by consumers and that the overall impression of the mark applied for points to a theme of outer space which is simply not present in the commercial impression created by the earlier trade mark. However, for the reasons set out in section c) of this decision, the non-negligible part of the public under analysis will perceive the verbal element of both signs as referring to the name of the spacecrafts launched by NASA and thus also associate the earlier mark with the concept of outer space. Therefore, since both signs will be associated with the same distinctive word ‘APOL(L)O’ and a highly similar concept, even if the contested sign introduces figurative elements that are not present in the earlier mark, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 756 867. As stated above in section c) of this decision, a likelihood of confusion for only a non-negligible part of the relevant public of the relevant territory 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 to varying degrees to those of the earlier trade mark.

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)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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

Begoña URIARTE VALIENTE

Sam GYLLING

Sandra IBAÑEZ

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.