OPPOSITION No B 2 368 002

Charoen Pokphand Group Co., Ltd., 313 C.P. Tower, Silom Road, Silom Sub-district, Bangrak District, Bangkok 10500, Thailand (opponent), represented by Uexküll & Stolberg Partnerschaft von Patent- und Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional representative)

a g a i n s t

Exportaciones Agroindustriales Argentinas Sociedad Anónima, Moreno 877 Piso:23, Ciudad Autónoma Buenos Aires 1091, Argentina (applicant), represented by López Giménez Torres, Avenida Maisonnave, 28 bis, 2º - Oficina 8, 03003 Alicante, Spain (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 368 002 is partially upheld, namely for the following contested goods:

Class 29:

Meat, fish, poultry and game.

2. European Union trade mark application No 12 595 021 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 595 021. The opposition is based on European Union trade mark registration No 4 681 292. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 24/03/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 24/03/2009 to 23/03/2014, inclusive. Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 29:	Fresh, processed and frozen meat, including chicken, pork, fish, shrimp, fresh chicken, processed chicken, foods prepared from chicken, fresh pork, processed pork, foods prepared from pork, fresh fish, processed fish, foods prepared from fish, fresh shrimp, processed shrimp, foods prepared from shrimp, eggs, preserved, cooked and dried vegetables and fruits.
Class 31:	Fresh vegetable and fruits.
Class 35:	Business management relating to retail of fresh, processed and frozen meat, including chicken, pork, fish, shrimp and all kinds of foods prepared from chicken, pork, fish and shrimp, eggs, fresh vegetable and fruits, preserved, cooked and dried vegetable and fruits.

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

On 30/01/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/03/2015 to submit evidence of use of the earlier trade mark. This time limit was extended, at the request of the opponent, to 30/05/2015. On 01/06/2015, within the time limit, since a deadline expiring on a Saturday or Sunday is extended to the next working day, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• A statutory declaration of the 28/05/2015, signed by Mr Thirayut Phityaisarakul and Mr Eam Ngamdamronk, the authorised directors of Charoen Pokphand Group Co., Ltd., Bangkok, Thailand, since 18/09/1976 and 17/07/1998 respectively. According to the declaration, their company sells food products in many countries worldwide including in the European Union (France, the United Kingdom, Belgium, Spain, Italy, Greece and Germany) and is also active in the wholesale and retail trade in such products. With the declaration, the opponent also submitted a table with the turnovers for the mentioned countries from 2006 to 2015.

• Eight invoices issued by C.P. MERCHANDISING CO. LTD., Zweigniederlassung Deutschland, and one invoice issued by C.P. MERCHANDISING CO LTD SUCURSAL EN ESPAÑA. Seven invoices are within the relevant time period and are dated from 11/01/2010 to 03/01/2014. The invoices are issued from the opponent’s company branches situated in Germany and in Spain and are addressed to different companies in Germany. The goods shown are items such as steamed chicken, cooked deboned duck, frozen pangasius fillet, frozen mixed green curry with rice and chicken, etc. The prices vary from EUR 7 294.83 to USD 132 030.00 (for the invoice issued by the Spanish subsidiary).

• 29 invoices issued by CP Foods (UK) Limited, of which 13 are within the relevant time period and dated from 25/02/2009 to 12/03/2014. The invoices are issued from the opponent’s company branch in the United Kingdom. The goods shown are items such as shrimp wonton soup, prawn wonton soup, crispy aromatic duck, flaming chicken, etc. The prices vary from GBP 195.90 to GBP 42 704.40.

• 23 invoices issued by CP MERCHANDISING COMPANY LIMITED (SUCCURSALE FRANÇAISE), of which 14 are within the relevant time period and dated from 06/01/2009 to 03/01/2014. The invoices are issued from a company branch in France. The goods shown are items such as shrimp wonton, frozen yakitori, frozen chicken samosa, etc. The prices vary from EUR 373.05 to EUR 72 536.53.

• 19 invoices issued by C.P. MERCHANDISING CO., LTD. SUCURSAL EN ESPAÑA, of which 10 are within the relevant time period and dated from 08/01/2010 to 09/01/2014. The invoices are issued from a company branch in Spain. The goods shown are items such as frozen roasted duck deboned, vannamei shrimp, etc. The prices vary from EUR 3.24 to EUR 150 696.00.

• A brochure for the ‘Penny promotional week 2014’ that took place in a supermarket called Penny in Germany. The brochure contains pictures showing products bearing the opponent’s figurative mark ‘CP’ displayed on shelves in a store.

• A document in German giving information about the opponent’s company Charoen Pokphand Group and its products under the opponent’s mark ‘CP’.

• A picture of a product (CP Bangkok Firecracker Prawns) that was promoted from 27/12/2011 to 15/01/2012. Pictures of displayed products under the opponent’s mark in a store in the United Kingdom. There is also a photograph showing several press cuttings about the ‘CP’ trade mark.

• Pictures of products under the trade mark ‘CP’ displayed in a store and pictures of a promotional campaign that took place in France.

• Pictures of products under the opponent’s mark displayed in a store in Spain and brochures of a few ‘CP’ products.

• Pictures of promoted and displayed products under the opponent’s mark in a store in Belgium. A picture of a product (yakitori aux 3 saveurs (Indonésienne, japonaise & thaïe)) that was promoted from 04/12/2012 to 25/12/2012.

In addition, the opponent attached pictures of some products (cooked deboned duck, chicken yakitori, green curry chicken with rice, shrimp wonton soup, prawn wonton soup, chicken pho soup, aromatic crispy duck, flaming chicken and pad thai) under a figurative mark ‘CP’. The trade mark ‘CP’ is easily legible on the packaging of the products, along with the name of the product.

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 (Rule 22(6) EUTMIR). Taking into account the nature of the document which has not been translated and is considered relevant for the present proceedings, namely, a German promotional document, and its self-explanatory character, the Opposition Division considers that there is no need to request a translation.

As far as the statutory declaration is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(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 documents submitted (in particular, the invoices) refer to the territories of Germany, France, Spain, the United Kingdom and Belgium. This can be inferred from the language of the invoices (French, German, English and Spanish) and some addresses in France, Belgium, Germany, the United Kingdom and Spain. Therefore, the documents submitted prove that the place of use is Germany, France, Spain, the United Kingdom and Belgium.

As correctly pointed out by the applicant, some of the documents are undated. However, these documents, together with the remaining evidence dated in the relevant period, prove constant and widespread use of the opponent’s mark ‘CP’ in the European Union.

The invoices show sales of the aforementioned products for several thousands of euros. While it is true that the mark ‘CP’ does not appear on the invoices, it appears on the brochure and pictures of packaging material. In an overall assessment, and in the context of the other material submitted, such as pictures of the products, a sworn statement, packaging and advertising material, the Opposition Division considers this sufficient to prove genuine use.

The mark ‘CP’ appears together with the element ‘Authentic Asia’ on the boxes in which the food are sold. These additions might merely be an indication of the line of products or an indication that the products are Asian-prepared foods. In these circumstances, it must be held that the use of the word mark ‘CP’ together with other indications is irrelevant, as it does not alter its distinctive character within the meaning of Article 15(1)(a) EUTMR.

The documents filed, in particular the invoices and the pictures of the promoted products, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class  29:

Foods prepared from chicken, pork, fish and shrimp.

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 are the following:

Class  29:

Foods prepared from chicken, pork, fish and shrimp.

The contested goods are the following:

Class 29:

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

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.

The applicant’s goods meat, fish, poultry and game are all similar to a certain degree to the opponent’s foods prepared from chicken, pork, fish and shrimp. It is clear that the earlier goods have as their main ingredients the said contested goods, which are processed in a certain way and offered in a different form, and that all of them have the same purpose and can be provided to the same end-consumers, who can choose to prepare the meal themselves or to buy it already completely prepared or semi-ready for consumption. These goods are in competition and are sold in the same outlets. Therefore, the goods under comparison are similar.

The contested meat extracts are made from the essential constituents of meat and usually used to add meat flavour in cooking. They are dissimilar to the opponent’s foods prepared from chicken, pork, fish and shrimp. Although these goods have something in common, as both are connected with meat and fish, this is not sufficient to find them similar. The goods have different natures and purposes and they are not complementary or in competition with each other. Moreover, the usual commercial origins of the goods are different and they are not normally sold close to each other in shops.

The contested preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats have nothing relevant in common with the opponent’s goods. Although all the goods under comparison can be eaten or drunk, they have different natures and methods of use, are not complementary or in competition, and are placed in different sections in supermarkets. These goods are therefore dissimilar.

2. Relevant public — degree of attention

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

In the present case, the goods found to be similar are directed at the public at large. In the light of the nature of the goods, which are foodstuffs consumed on a daily basis, and are generally inexpensive, the attentiveness of the public is likely to vary from below average to average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a figurative mark composed of the verbal elements ‘CP’, written in white bold upper case letters and depicted on a black circle, encircled by a white line inside a black line.

The contested sign is a figurative mark composed of the verbal elements ‘CP’, written in black bold upper case letters on a red oval, encircled by a red thin line interrupted by the verbal element ‘ESTANCIAS’, written in red upper case letters, and by the verbal element ‘ARGENTINE BEEF’, written in red upper case letters.

The earlier mark has no elements that could be considered clearly more distinctive and more dominant (visually eye-catching) than other elements.

The element ‘ESTANCIAS’ of the contested sign will be understood by the Spanish-speaking part of the relevant public as ‘stays’ and is distinctive.

The element ‘ARGENTINE’ of the contested sign will be perceived as referring to the country ‘Argentina’. Bearing in mind that the relevant goods are meat, this element is weak for these goods, as it will be perceived as indicating the origin of the goods in question.

The verbal element ‘BEEF’ will not be understood by the Spanish-speaking part of the relevant public and is, therefore, a distinctive element.

The verbal element ‘CP’, present in both signs, is distinctive and is the dominant element in the contested sign, as it is the most eye-catching. This is justified by the size of the letters.

Visually, the signs coincide in the distinctive verbal element ‘CP’, present identically in both signs, and in the shape of the figurative elements. However, they differ in the additional verbal elements ‘ESTANCIAS’ and ‘ARGENTINE BEEF’ of the contested sign, which have no counterparts in the earlier sign, as well as in the colours of the signs (black and white for the earlier sign and black and red for the contested sign). Nevertheless, as stated above, the impact of these additional verbal elements is limited when assessing the likelihood of confusion between the marks at issue, as they are non-dominant and partly weak for the relevant goods.

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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CP’, present identically in both signs. The pronunciation differs in the sound of the additional verbal elements ‘ESTANCIAS’ and ‘ARGENTINE BEEF’ of the contested sign, which have no counterparts in the earlier sign. Therefore, the signs are similar to an average degree.

Conceptually, although the contested sign as a whole does not have any meaning for the public in the relevant territory, the elements ‘ESTANCIAS’ and ‘ARGENTINE’ in the contested sign will be associated with ‘stays’ and ‘Argentina’ respectively. The earlier sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are partly similar and partly dissimilar. The degree of the attentiveness of the public is likely to vary from below average to average.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).

The signs are visually and aurally similar to an average degree to the extent that they coincide in their distinctive element, ‘CP’, which is also dominant in the contested mark. Therefore, this coinciding element is particularly relevant when assessing the likelihood of confusion between the marks. Moreover, the signs coincide in the shape of the figurative elements.

The differences between the signs lie in the additional verbal elements ‘ESTANCIAS’ and ‘ARGENTINE BEEF’ of the contested sign, which have no counterparts in the earlier sign. However, their impact is limited when assessing the likelihood of confusion between the marks at issue, because they are depicted in a smaller typeface than the distinctive element, ‘CP’. Although the signs differ in their colours (black and white for the earlier sign and black and red for the contested sign), both signs contain a coloured round shape, encircled by a coloured line, and in the middle of the coloured shape is written ‘CP’ in bold upper case letters.

When regarded and compared as a whole, the differences between the signs are insufficient to completely counteract their similarities and the signs are, therefore, similar overall.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘CP’. In support of its argument, the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘CP’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 similar 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) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Janja FELC

Eamonn KELLY

Saida CRABBE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.