OPPOSITION No B 2 390 030

Bolton Cile España, S.A., Calle Ombu, 3 - Torre Urbis, Planta 13, 28045 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Theodor Rietmann GmbH, Grostrowstr. 1, 66740 Saarlouis, Germany (applicant), represented by BPSH Schrooten Haber Remus Patent- Und Rechtsanwaltspartnerschaft mbB, Mörsenbroicher Weg 191, 40470 Düsseldorf, Germany (professional representative).

On 21/07/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 390 030 is upheld for all the contested goods.

2. European Union trade mark application No 12 596 607 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 596 607. The opposition is based on Spanish trade mark registrations No 2 578 815, No 2 578 928 and No 3 075 100. The opponent invoked Article 8(1)(b) and 8(5) 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 marks on which the opposition is based, namely Spanish trade mark registrations No 2 578 815 and No 2 578 928.

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

The contested application was published on 14/05/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 14/05/2009 to 13/05/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Spanish trade mark registration No 2 578 815 for the word mark ‘PRIMA’

Class 29: Preserved foodstuffs in general, meat, fish, poultry and game; meat extracts; dried and cooked fruits and vegetables; jellies, jams; eggs; milk and milk products; edible oils and fats; salad dressings.

Class 30: Sauces and condiments; coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery; ices; honey, treacle; yeast, baking-powder; salt; mustard; pepper; vinegar; ice.

Spanish trade mark registration No 2 578 928 for the figurative mark

Class 32: Beers, mineral and aerated waters and other non-alcoholic beverages; syrups for making beverages, fruit juices, syrups.

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 30/03/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/05/2015 to submit evidence of use of the earlier trade marks. This time limit was extended until 30/07/2015. On 30/07/2015, 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:

• Document No 1. An affidavit signed by Mr Alessandro Coppola, managing director of the opponent’s company (Bolton Cile España, S.A.), dated 17/07/2015. This document is in Spanish and accompanied by an English translation. The affidavit declares that since 2006 the opponent’s company has sold a wide range of foodstuffs under the trade mark ‘PRIMA’, in particular different kinds of sauces, which are highly popular among consumers, thanks to their longstanding tradition, and have consolidated their position among the leading sauce brands in Spain.

According to what it is explained in the affidavit, the opponent also sells a wide range of vinegars, vinaigrettes and lemon dressings identified by the trade mark ‘PRIMA’. Albeit less successful than the opponent’s sauces, these goods have enjoyed a good market position in Spain, since the opponent has sold between 1.2 and 1.5 million units of these goods a year since 2009 (in 2009, 1 338 841 units; in 2010, 1 272 092 units; in 2011, 1 215 055 units; in 2012, 1 173 569 units; in 2013, 1 097 913 units and in 2014, 1 083 349 units of vinegar).

The affidavit also shows a considerable number of lemon dressings, oil and vinegar sachets, and single-serving salt and pepper sachets sold under the ‘PRIMA’ trade mark between 2009 and 2014.

In relation to ‘PRIMA’-branded syrups, Mr Coppola pointed to the high annual figures, showing that from 2009 until 2014 the opponent’s company sold between 33 587 and 45 687 units of the abovementioned goods.

According to the managing director, between 2005 and 2011 the opponent sold canned pineapple in pineapple juice under the ‘PRIMA’ trade mark.

The opponent’s company also sold canned palm hearts, natural crushed tomato, fried tomato and seasonings for rice and pasta salads under the ‘PRIMA’ trade mark, the sale of which was discontinued in 2008 as a result of their decreasing commercial impact.

The opponent sells crackers or savoury biscuits bearing the ‘PRIMA’ trade mark. The success of these products among consumers has been considerable (between 2009 and 2014, the opponent sold an average of 1 000 000 units a year), and the sale of these goods continues. The opponent’s company created a wide variety of ‘PRIMA’-branded crackers. The ‘PRIMA’-branded goods also cover flatbread crackers.

Moreover, the opponent sells flatbread crackers, a bread-based product employed to make and accompany tapas which have achieved a good level of sales among consumers between 2009 and 2014.

The affidavit is accompanied by the following attachments:

• Annexes 1-8. Copies of Bolton’s ‘General Catalogue’, seven of them undated and one dated in 2014. In all of them, among others, the trade mark appears as or mainly on the packaging of the goods such as various kinds of ketchup, mustard, mayonnaise, sauces and oils, vinegars, salt, pepper, seasonings, crackers, flatbread crackers, canned pineapple and palm hearts, and syrups.

• Annexes 9-14 Copies of the price lists published by the opponent between 2006 and 2014. All of them are related to the various ‘PRIMA’ goods (syrups, ketchup, mustard, mayonnaise, sauces, oils, vinegars, salt, pepper, crackers, canned pineapple and palm hearts, seasonings).

• Annex 15. Invoices (copies), approximately 400 items, issued between 24/01/2007 and 15/12/2014, addressed to customers in Spain, all of them referring to ‘PRIMA’-branded goods (ketchup, mayonnaise, mustard, aioli sauce, other sauces, vinegars, vinaigrettes and crackers among others).

• Annex 16. Invoices (copies), approximately 120 items, issued between 18/11/2008 and 31/12/2014, addressed to customers in Spain and showing sales, among others, of ‘PRIMA’-branded canned palm hearts, syrups, ketchup, mayonnaise, sauces, syrups, crackers, oils, vinegars and vinaigrettes.

• Annex 17. Invoices (copies), approximately 210 items, issued between 11/06/2007 and 31/12/2014, addressed to customers in Spain and related, among others, to the ‘PRIMA’ lemon dressings, ketchup, mayonnaise, other sauces, vinegars, vinaigrettes and crackers.

• Annex 18. Invoices (copies), approximately 230 items, issued between 16/04/2007 and 31/12/2014, addressed to customers in Spain and showing, inter alia, sales of pepper, salt, oils and vinegars bearing the trade mark ‘PRIMA’.

• Annexes 19 and 20. Invoices (copies), approximately 300 items, issued between 29/09/2008 and 31/12/2014, addressed to customers in Spain and showing, inter alia, sales of salt and pepper bearing the trade mark ‘PRIMA’.

• Annex 21. Invoices (copies), approximately 240 items, issued between 16/01/2007 and 22/12/2014, addressed to customers in Spain and showing, inter alia, sales of syrups marked as ‘PRIMA’.

• Annex 22. Invoices (copies), approximately 104 items, issued between 2/10/2006 and 29/11/2010, addressed to customers in Spain and showing, inter alia, sales of canned pineapple marked as ‘PRIMA’.

• Annex 23. Invoices (copies), approximately 150 items, issued between 21/07/2008 and 11/03/2008, addressed to customers in Spain and showing, inter alia, sales of canned palm hearts marked as ‘PRIMA’.

• Annexes 24 and 25. Invoices (copies), approximately 155 items, issued between 14/09//2006 and 10/08/2007, addressed to customers in Spain and showing, inter alia, sales of canned crushed tomato and fried tomato sauce marked as ‘PRIMA’. The opponent also submitted a copy of an extract from a catalogue (issued in 2006) showing these goods.

• Annex 26. Invoices (copies), approximately 75 items, issued between 04/12/2008 and 18/11/2008, addressed to customers in Spain and showing sales of, among others, ‘PRIMA’-branded seasonings for rice and pasta salads.

• Annex 27. Invoices (copies), approximately 290 items, issued between 02/10//2006 and 31/12/2014, addressed to customers in Spain and showing sales, among others, of ‘PRIMA’-branded crackers.

• Annexes 28. Invoices (copies), approximately 180 items, issued between 18/01/2008 and 29/12/2014, addressed to customers in Spain and showing sales, among others, of ‘PRIMA’-branded flatbread crackers.

• Document No 2. A wide range of invoices which also show the sales of all the goods mentioned in the affidavit. They are mainly from 2008–2014 and addressed to customers in Spain.

• Document No 3. A copy of a certificate issued by AECOC (the Spanish commercial coding association) on 17/12/2012. The document lists ‘PRIMA’ goods and the EAN codes used by the opponent to identify its goods in the invoices and price lists.

• Document No 4. A copy of an article published in the magazine Alimarket on 01/11/2006, mentioning, among others, the opponent’s ‘PRIMA’ goods, namely the salad garnish.

• Document Nos 5-14. Copies of certificates (originals in Spanish and English translation submitted) issued by different companies (a total of 9 companies) which, according to the opponent’s explanation and translation, confirm that they have supplied the opponent’s company, in particular between 2006 and 2012, with labels, packaging, tops and aluminium capsules, all of them marked as ‘PRIMA’ and used for the opponent’s goods such as ketchup, mustard, cocktail sauce, mayonnaise, vinegar of various types, different varieties of ketchup, barbecue sauce, hot sauce, aioli, sweet and sour sauce, yoghurt sauce, Caesar dressing, lemon dressing, honey and mustard sauce, white kebab sauce, red kebab sauce, syrups, salt, pepper and single-serving oil and vinegar sachets.

In addition, on 02/01/2015, to substantiate its claim of reputation as regards the goods in Classes 29 and 30 covered by the Spanish trade mark registration on which the opposition is based, the opponent submitted, inter alia, the following evidence, which will also be taken into account as proof of use:

• Document No 8. A declaration from the managing director of the opponent’s company, Bolton, dated 02/02/2012, stating the amounts invested in sponsorship activities in connection with the ‘PRIMA’ trade mark between 2007 and 2011 (more than EUR 1.5 million).

• Document No 9. A declaration from Mr Javier Barón Crespo, from InfoAdex S.A. – a company specialising in advertising investment (analysis and control) – dated 31/01/2012, disclosing amounts invested by the opponent in mass media campaigns advertising the ‘PRIMA’ trade mark between January 2005 and November 2011. Although the exact amount cannot be detailed due to the confidentiality claim, it can be stated that the amount consists of a significant sum.

• Document No 10. A declaration from Ms Azucena García Fernández, from InfoAdex S.A., dated 30/09/2013, disclosing amounts invested by the opponent in mass media campaigns advertising the ‘PRIMA’ trade mark between January 2012 and July 2013.

• Document Nos 11-26. Press articles concerning the sponsorship of Spanish sports figures such as Jorge Lorenzo (world champion motorcyclist in the 250 cc category in 2006 and 2007 and in the MotoGP category in 2010), Seville FC football team, the Spanish Under-21 football team (current European champions) and Valencia Basket Club S.A.D. The opponent’s company has sponsored these up-and-coming sporting talents with a view to encouraging youngsters and their families to adopt the values of healthy living based on sport.

• Document Nos 27-89. The opponent submitted a variety of press cuttings from different national newspapers and magazines such as ‘Lecturas’, ‘El País’, ‘El Día’, ‘Marca’, ‘As’, ‘Semana’, ‘Diez Minutos’, ‘La Razón’, ‘Gigantes’, ‘Tu Bebé’, ‘Casa Diez’, ‘Cocina Mia’, ‘Clara’, QMD!, Mujer hoy, ‘AR’, etc., published between 2006 and 2013 and promoting ketchup, mayonnaise, mustard, various kinds of sauces, vinegars and dressings – all of them bearing the ‘PRIMA’ trade mark.

• Document No 90. A declaration from the managing director of the opponent’s company (Bolton), dated 02/02/2012, containing information on sales volumes in Spain in relation to the ‘PRIMA’ marks. It shows the number of product units bearing the trade mark ‘PRIMA’ sold between 2005 and 2011 (the amounts of units sold varied from approximately 134 000 000 to approximately 209 000 000 (per year) between years 2005 and 2011

• Document No 91. An opinion survey conducted by the Agency M.B. Consultores among 300 housewives in the Autonomous Communities of Madrid, Catalonia, Andalusia, Valencia, Aragon, the Basque Country, Castilla-León, Galicia, Castilla-La Mancha and Extremadura in February 2012. This survey confirmed the conclusion of an identical survey conducted in 2010.

The conclusions of M.B. Consultores with regard to the survey conducted in 2012 are as follows:

- The fame of ‘PRIMA’ is extremely high at 96%, but even more important is the exceptional spontaneous recall of 61.3%.

- The level of awareness is mainly due to its ketchup (bottled) and mayonnaise (in sachets).

- On average, it has been known for seven years.

• Document No 92. The opponent also submitted a report containing an opinion poll conducted by M.B. Consultores in July 2010. According to this opinion poll, the extent to which ‘PRIMA’ is known is 95%, but more important is the level of spontaneous recall of 62%. The level of awareness is mainly due to ketchup and mayonnaise.

• Document Nos 93-94. The opponent stressed that entrepreneurs in the food industry in Spain are aware of the reputation of the ‘PRIMA’ trade mark. The association ‘Promarca’ includes the majority of the manufacturers of the leading brands in the food, beverage, household goods and perfumery sectors in Spain. This association has included the ‘PRIMA’ trade mark in its campaigns promoting the country’s leading brands. The opponent submitted samples of the advertising campaign run by Promarca on radio and TV in 2011 (a CD), in which the ‘PRIMA’ trade mark is identified as a mark with reputation.

All the documents show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely affidavit signed the managing director of the opponent’s company (Bolton), and the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, registered Spanish trade marks No 2 578 815 for the word mark ‘PRIMA’ and No 2 578 928 for the figurative mark have been used in the catalogues, packaging, invoices and certificates at least as a word mark, ‘PRIMA’, and as the figurative marks and .

Earlier mark No 2 578 928 is a figurative mark formed of the word ‘PRIMA’ in slightly stylised white letters within an oval black figure. This figurative element is a geometric background, similar to a label, which does not dominate the verbal element of the mark and will be perceived by the relevant public as being commonplace. Therefore, the documents presented as proof of use of the earlier mark as the word mark ‘PRIMA’ and as the figurative marks and can be accepted as use of the mark according to Article 15(2)(a) CTMR, as the omissions of this figurative element or its representation in other colours do not affect the distinctive character of the mark, which is dominated by the verbal element.

Earlier mark No 2 578 815 is the word mark ‘PRIMA’ and it is considered that its use as the figurative marks and fulfils the requisites of Article 15(2)(a) CTMR as well for the same reasons explained above.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) CTMR.

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).

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

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 marks for the following goods:

Spanish trade mark registration No 2 578 815

Class 29: Cooked fruits and vegetables; edible oils; salad dressings.

Class 30: Sauces and condiments; salt; mustard; pepper; vinegar; syrups.

In addition to the abovementioned goods in Classes 29 and 30, the earlier marks have also been used for preserved fruits and vegetables in Class 29 and crackers and flatbread crackers in Class 30.

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).

In the present case, the evidence also proves use for preserved fruits and vegetables in Class 29 for Spanish trade mark registration No 2 578 815. These goods can be considered to form an objective subcategory of preserved foodstuffs in general, namely preserved fruits and vegetables. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark for preserved fruits and vegetables in Class 29.

Moreover, the evidence proves use for crackers and flatbread crackers in Class 30, belonging to the following category in the specification: preparations made from cereals, namely cereal-based snack food. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier marks are registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for cereal-based snack food

Therefore, the Opposition Division will only consider the following goods of Spanish trade mark registration No 2 578 815 in its further examination of the opposition:

Class 29: Preserved fruits and vegetables; cooked fruits and vegetables; edible oils; salad dressing.

Class 30: Sauces and condiments; salt; mustard; pepper; vinegar; syrups and cereal-based snack food.

Spanish trade mark registration No 2 578 928

On the other hand, the evidence of use does not show that the mark has been used for any goods in Class 32 for which Spanish trade mark registration No 2 578 928 is registered. Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR as far as it is based on this earlier mark.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 3 075 100.

1. The goods

The goods on which the opposition is based 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.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; salad dressings; seasonings; syrups for food; sauces; mayonnaise.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

The contested goods are the following:

Class 5: Food supplements not adapted for medical use, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination; food supplements, not for medical purposes, with a base of proteins, fats, fatty acids, with added vitamins, minerals, trace elements, either singly or in combination.

Class 29: Fat-containing mixtures to be spread on slices of bread; dietetic food, not adapted for medical use, based on proteins, fats, with added vitamins, minerals, trace elements, fatty acids, either singly or in combination, included in class 29; fish; meats; fruit and vegetables (cooked, preserved and/or frozen); cheese products; milk beverages, milk predominating; edible oils; soup (preparations for making -).

Class 30: Tapioca, honey, syrups and treacles, salt, spices, flour and preparations made from cereals, ready-made baking mixtures; yeast and baking-powder; bakery goods, pastry confectionery, bread, hot-cross buns and sliced bread, including in baguette form and including topped with vegetables and/or fruit; cake dough, confectioneries; bases for baking, namely prepared flours; flavourings, other than essential oils, for cakes; maize flakes; dietetic foods, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination; drinking chocolate.

Class 32: Powders, granules and other preparations for making isotonic beverages; isotonic drinks.

Class 33: Alcoholic beverages (except beer); alcoholic fruit extracts; alcoholic milk beverages; alcoholic essences; wine and low-alcoholic wine; distilled beverages.

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 5

The opponent’s goods in Class 29 are mainly foodstuffs of animal origin as well as vegetables and other horticultural edible products which are prepared for consumption or conservation. The earlier goods in Class 30 are mainly foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavour of food. The opponent’s goods in Class 31 include mainly land products not having been subjected to any form of preparation for consumption, live animals and plants as well as foodstuffs for animals.

These goods have no sufficient connection with the contested goods in Class 5, namely, food supplements not adapted for medical use, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination; food supplements, not for medical purposes, with a base of proteins, fats, fatty acids, with added vitamins, minerals, trace elements, either singly or in combination. Indeed, the latter are very specific products elaborated for dietary purposes, such as appetite stimulant preparations, dietetic substances, or health food supplements. It is also considered that these goods have different purpose and method of use. They usually do not coincide in producers, relevant public and distribution channels and are usually neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 29

Fish; meat; fruit and vegetables (cooked, preserved and/or frozen); edible oils are identically contained in both lists of goods (including synonyms).

The contested cheese products; milk beverages, milk predominating are included in the broad category of the opponent’s milk products. Therefore, they are identical.

The contested fat-containing mixtures to be spread on slices of bread are included in the broad category of the opponent’s fats. Therefore, they are identical.

The contested dietetic food, not adapted for medical use, based on proteins, fats, with added vitamins, minerals, trace elements, fatty acids, either singly or in combination, included in class 29 overlap with the opponent’s milk and milk products since these goods contain proteins and fats and nowadays is usual to find different kinds of milk or milk products enriched with additives as vitamins or minerals. Therefore, they are identical.

The contested soup (preparations for making -) are similar to the opponent’s dried vegetables, since they can all be used as ingredients to make soups. The goods have the same purpose and can be in competition with each other.

Contested goods in Class 30

Tapioca, honey, syrups and treacles, salt, spices, flour and preparations made from cereals; yeast and baking-powder; pastry confectionery, bread are identically contained in both lists of goods and services (including synonyms).

The contested ready-made baking mixtures; bakery goods, hot-cross buns and sliced bread, including in baguette form and including topped with vegetables and/or fruit; cake dough, confectioneries; bases for baking, namely prepared flours; maize flakes are included in the broad category of the opponent’s flour and preparations made from cereals. Therefore, they are identical.

The contested drinking chocolate is included in the broad category of, or overlap with, the opponent’s cocoa. Therefore, they are identical.

The contested dietetic foods, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination are similar to the opponent’s bread, pastry and confectionery. The contested goods are foodstuffs which relate to special dietary requirements. However, they do not target people with health problems, who could require supervision by doctors or similar professionals. They are ordinary and common products that are manufactured in a particular way to alter their ingredients, for example their content of fats and sugar, or other similar features. Experience shows that for the last two decades these kinds of food products, also known as “light products”, have also been manufactured by producers of traditional food. It follows that these goods are often sold in the same sales outlets and distributed through the same distribution channels, including supermarkets. They have a similar nature to ‘normal’ foodstuffs and their consumers can be the average consumer of ordinary foodstuffs, who desires to control their weight or health.

The contested flavourings, other than essential oils, for cakes are dissimilar to all of the opponent’s goods. The contested goods have different commercial origin, they serve specific purposes and are in principle addressed to mainly companies operating in the food and beverage industry and, consequently, to specialised, different consumers than the opponent’s goods.

Contested goods in Class 32

The contested isotonic drinks and the opponent’s milk are, despite their different nature as products of different origin, considered to be similar to a low degree since they are goods in competition, directed at the same users and distributed through the same channels.

The contested powders, granules and other preparations for making isotonic beverages are dissimilar to all the goods protected by the earlier mark since they have a different nature and purpose, they are neither in competition with each other nor complementary. They are not manufactured by the same companies, distributed through the same channels and cannot be found in the same departments of a supermarket.

Contested goods in Class 33

The contested alcoholic beverages (except beer); wine and low-alcoholic wine are similar to a low degree to the opponent’s vinegar since they have the same nature and may target the same consumers.

The contested alcoholic fruit extracts; alcoholic milk beverages; alcoholic essences; distilled beverages are dissimilar to the opponent’s goods in Classes 29, 30 and 31. As the earlier goods are foodstuffs and the contested goods are various alcoholic extracts and milk or distilled beverages, they clearly differ in their natures since fall within a completely different field, being manufactured by different producers, do not have the same purpose and method of use, and are directed at different consumers. Furthermore, they are not in competition with each other.

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 identical or similar to various degrees are directed at the public at large. The degree of attention may vary from average to lower than average, these latter being goods such as milk products since they are cheap goods for daily consumption.

3. The signs

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 a figurative mark consisting of the word ‘PRIMA’ in slightly stylised black uppercase letters, being the letters ‘P’ and ‘A’ slightly bigger than the letters ‘RIM’ and having the letter ‘R’ its sloping stroke elongated beneath the letters ‘IM’.

The contested sign is a figurative mark composed of the verbal elements ‘PRIMA’ and ‘WELL’ in slightly stylised grey lower case letters being the verbal element ‘WELL’ in bold. The sign also depicts a fanciful figurative element consisting in coloured circles in green, yellow, blue, pink and purple.

The word ‘PRIMA’ included in both signs is a Spanish term which refers, among other meanings, to ‘female cousin’, ‘bonus payment’ or ‘first’.

The verbal element ‘WELL’ in the contested sign does not have any meaning for the relevant public.

Both marks have no element that could be considered more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘PRIMA’, element with a normal distinctiveness in the marks. However, they differ in the verbal element ‘WELL’ and the figurative element in the contested sign. The marks also differ in the colours and slightly stylised typeface in both signs.

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 syllables ‛/pri/ma/’, present identically in both signs, and forming the distinctive elements ‘prima’ within both marks. The pronunciation differs in the syllable ‘/well/’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are similar to an average degree.

Conceptually, the verbal element ‘PRIMA’ of both marks will be perceived by the public in the relevant territory as, among other meanings, ‘female cousin’, ‘bonus payment’ or ‘first’. The verbal element ‘WELL’ and the figurative element in the contested sign lack any meaning for the public in the relevant territory. As the signs will be associated with a similar meaning, to the extent that both contain the word ‘PRIMA’, which enjoys a normal degree of distinctiveness, and since the other elements in the contested sign have no meaning for the relevant public, the signs are conceptually highly 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 under comparison are partly identical, partly similar to various degrees and partly dissimilar and target the public at large, whose degree of attention may vary from average to lower than average when purchasing them.

The conflicting signs are visually, aurally and even conceptually similar insofar as they share the word ‘PRIMA’, which composes the earlier mark and is depicted at the beginning of the contested sign.

Thus, being at the beginning of the contested mark, this is the first element that consumers firstly perceive when seeing the marks. It should be taken into account that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the common word in the first elements of the marks at issue has to be taken into account when assessing the likelihood of confusion between the marks.

The marks differ in the verbal element ‘WELL’ in the contested sign, as well as in the respective colours and slight stylisations of both marks, and in the figurative elements in the contested sign.

However, the verbal element ‘WELL’ of the contested sign will not be sufficient to distract consumers’ attention from the fact that the only verbal element of the earlier mark are totally included in the contested sign.

As far as the stylisation of the marks is concerned, the different typefaces used are not particularly distinctive and do not contribute to differentiating the signs from one another.

Regarding the colour and figurative elements of the contested sign, it is recalled that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative components. 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.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place their trust in the imperfect picture of them kept in their mind (see judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26).

Moreover, it is not excluded that under the principle of interdependence set out above, the degree of similarity between the marks is sufficient to establish that the relevant consumers would think that the contested goods, even those which have been found to be similar to a low degree to the opponent’s goods, are manufactured by the same undertaking, or, as the case may be, by economically-linked undertakings. Taking into account the visual, aural and conceptual similarities between the marks, residing in the common and distinctive word ‘PRIMA’, it is likely that consumers in the relevant territory will assume the conflicting marks have the same commercial origin.

It constitutes a frequent practice nowadays for companies to make small variations of their trade marks (e.g. by altering their typeface or colour, or adding terms or elements to them) in order to name new lines of products, or to create a modernised version of it.

In this scenario, it is likely that part of the public perceives the contested mark as a variation or new version of the earlier mark, and therefore as coming from the same undertaking.

The applicant argues that since the word ‘PRIMA’ contained in both signs will, inter alia, be associated with ‘the first, the best, of the best quality or excellent’, the distinctiveness of the earlier mark must be seen as low for all the goods in question. However, in the Opposition Division opinion, this argument is not enough for considering that mark having a low degree of distinctiveness.

It should be noted that the word ‘PRIMA’ refers in Spanish to ‘first’ in the sense of sequence, but not having the connotation of ‘the first or of the best quality or excellent’ as pointed out by the applicant.

Moreover, not only the word ‘PRIMA’ refers to ‘first’ in Spanish but to ‘female cousin’ or ‘bonus payment’, among others, and, therefore, part of the public will associate this word with other meanings.

Therefore, as stated above the Opposition Division considers the earlier mark has a normal degree of distinctiveness.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various de 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) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade mark:

Spanish trade mark registration No 2 578 815 for the word mark ‘PRIMA’, in relation to which the Proof of Use was analysed above.

Since this mark covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Since the opposition is not entirely successful on the basis of the ground of Article 8(1)(b) EUTMR, it is necessary to examine the other ground of the opposition, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Spanish trade mark registration No 2 578 815 for the word mark ‘PRIMA’, for which the opponent claimed repute in Spain.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

PRIMA
Earlier trade mark	Contested sign

The relevant territory is Spain.

Visually, the signs are similar to the extent that they coincide in the word ‘PRIMA’. However, they differ in the verbal element ‘WELL’, figurative element and slightly stylised typeface in the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛/pri/ma/’, present identically in both signs. The pronunciation differs in the syllable ‘/well/’ of the contested sign, which has no counterpart in the earlier mark. Therefore, the signs are aurally similar to an average degree.

Conceptually, the verbal element ‘PRIMA’ of both marks will be perceive by the public in the relevant territory as, among other meanings, ‘female cousin’, ‘bonus payment’ or ‘first’. The verbal element ‘WELL’ and the figurative element in the contested sign lack any meaning for the public in the relevant territory. As the signs will be associated with a similar meaning, to the extent that both contain the word ‘PRIMA’, the signs are conceptually highly similar.

The signs under comparison are similar to the extent that they have in common the element ‘PRIMA’.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Spain.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 13/02/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation and has proved use, namely:

Class 29: Preserved fruits and vegetables; cooked fruits and vegetables; edible oils; salad dressing.

Class 30: Sauces and condiments; salt; mustard; pepper; vinegar; syrups and cereal-based snack food.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The evidence submitted by the opponent to prove the reputation and high distinctive character of the earlier trade mark has already been listed above under the Proof of use section.

The abovementioned documents indicate that the opponent’s trade mark has been subject to long-standing and intensive use (at least a seven-year presence in the market), and it is well known throughout the Spanish market, which has been attested to by various sources, including independent ones, in relation to sauces. The impressive sales figures and marketing expenditure given in the evidence, as well as the various references in the press, the market surveys, the relationships with sports teams and sports champions, and the huge number of advertisements, are all factors that show that the trade mark ‘PRIMA’ enjoys a high degree of recognition among Spanish consumers. The trade mark ‘PRIMA’ has been the object of many advertising campaigns focusing on the values of healthy living based on taking part in sports.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence relates mainly to sauces, whereas there is little or no reference to the remaining goods. This is clear, for example, from the advertisements, press clips and public surveys, in which only the former are mentioned.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Spain for sauces.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As regards the degree of similarity between the marks at issue, it is clear from the case-law that the more immediately and strongly the earlier mark is brought to mind by the later sign the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (see, to that effect, judgment of 27/11/2008, C‑252/07, ‘Intel’, paragraphs 67 to 69; and judgment of 18/06/2009, C‑487/07, ‘L’Oreal’, paragraph 44). Moreover, the stronger the distinctive character of the earlier mark, the more likely it is that, when encountering a later similar mark, the relevant public will associate it with that earlier mark.

Therefore, it is in the light of the abovementioned jurisprudence that the opponent’s claim must be examined.

In the present case, the signs are similar to the extent that they have the same letters, ‘PRIMA’, which comprise the only word of the earlier mark and the first letters of the contested sign; thus, the entire earlier mark is fully included in the contested sign. Therefore, the visual and aural similarity is encompassed in the beginning of the signs, which is the part of marks that consumers generally tend to focus on. The earlier mark has a reputation in a particular field; it is a leading brand in the field of sauces, and it is distinctive.

The remaining contested goods are the following:

Class 5: Food supplements not adapted for medical use, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination; food supplements, not for medical purposes, with a base of proteins, fats, fatty acids, with added vitamins, minerals, trace elements, either singly or in combination.

Class 30: Flavourings, other than essential oils, for cakes.

Class 32: Powders, granules and other preparations for making isotonic beverages.

Class 33: alcoholic fruit extracts; alcoholic milk beverages; alcoholic essences; distilled beverages.

These contested goods in Classes 5, 30, 32 and 33 are closely related to the goods protected by the earlier mark, and in respect of which the earlier mark enjoys reputation.

The applicants’ goods in Classes 5, 30, 32 and 33 are mainly food supplements, flavourings and preparations for making beverages, as well as alcoholic extracts and essences. The opponent’s sauces are eaten with food to enhance its flavour, so some of the contested goods can be used in combination, namely the contested goods in Class 5 or in competition, namely the contested goods in Class 30.

In addition, the goods under comparison are mainly foodstuffs, they can have the same distribution channels and they are targeted at the same end users. For those consumers familiar with the earlier mark, which is to say many consumers, the use of the contested sign on almost any product would cause them to bring to mind the earlier distinctive mark, which has a reputation.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following:

It has invested very large sums in promoting the ‘PRIMA’ trade marks by associating them with top-level Spanish sportsmen and that has encouraged consumers to associate ‘PRIMA’ goods with vitality, healthiness, dynamism, success, etc. Thus, consumers will mistakenly attribute to the goods of the applicant the standards of quality and other characteristics of the PRIMA goods, and the goods covered by the contested sign will take unfair advantage of the well-known nature of the earlier mark. On the other hand, the applicant claims alcoholic beverages in Class 33 which are goods that, due to their very nature and effects, convey values that are harmful to youngsters and opposed to those associated with the opponent’s mark such as sport, healthy living, friendship, vitality, dynamism, success, etc. Therefore the grant of the mark applied for in respect of alcoholic beverages would irretrievably damage the reputation of the opponent’s mark, prompting consumers to link or associate them with goods that have no health benefits, are harmful to youngsters and give rise to lack of vitality and dynamism. Moreover, the earlier mark is highly distinctive for the average Spanish consumer owing to the opponent’s unique originality in establishing a relationship between this particular word and food products. Additionally, with the significant sums invested by the opponent in advertising and promoting, the mark is unique, different, easily recalled, grasped and recognisable as belonging to the opponent, which leads to the earlier mark possessing a high degree of distinctive character. In this context the contested sign will inevitably take advantage of and dilute the distinctive character of the PRIMA trade mark

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:

Class 5: Food supplements not adapted for medical use, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination; food supplements, not for medical purposes, with a base of proteins, fats, fatty acids, with added vitamins, minerals, trace elements, either singly or in combination.

Class 30: Flavourings, other than essential oils, for cakes.

Class 32: Powders, granules and other preparations for making isotonic beverages.

Class 33: Alcoholic fruit extracts; alcoholic milk beverages; alcoholic essences; distilled beverages.

As seen above, the earlier trade mark was found to have a reputation for:

Class 30: Sauces

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 The signs are similar and the earlier mark is contained within the contested sign, and the goods and services are identical or extremely similar.

 Since the mark applied for covers foodstuffs that can be beneficial to health, consumers may think that it is a specific branch of the family of those marketed under the PRIMA trade marks intended to benefit the health of consumers.

 The opponent has invested very large sums in promoting its PRIMA trade mark by associating it with top-level sportsmen. It has thus managed to link the earlier mark with vitality, healthiness, dynamism, success, etc. Thus, consumers will mistakenly attribute to the goods of the applicant the standards of quality and other characteristics of the PRIMA goods.

 As a result, the applicant’s goods take unfair advantage of the well-known nature of the PRIMA trade marks and so are optimally positioned to penetrate the Spanish market, given that they will not have to overcome the reluctance of consumers to try an unknown product from a manufacturer for whom they have no references.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

The Opposition Division notes that the earlier mark is reputed for sauces. The images attributed to the earlier mark relate to healthy living. It is reasonable to assume that the earlier mark’s positive image would be transferred to those contested goods that imply a link with healthy living, either because these can be the essential characteristics of the goods as such, for example as regards the contested food supplements not adapted for medical use, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination; food supplements, not for medical purposes, with a base of proteins, fats, fatty acids, with added vitamins, minerals, trace elements, either singly or in combination in Class 5 and powders, granules and other preparations for making isotonic beverages in Class 32 or because they are prepared with healthy products such as flavourings, other than essential oils, for cakes in Class 30.

The relevant public will recognise the earlier mark, even outside its traditional market segment – sauces –, exactly because of its reputation, in the sense that it reflects good and attractive values, as set out above, which could positively influence the choice of the consumer as regards goods of other producers related to healthy living.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark as regards the above mentioned goods in Classes 5, 30 and 32.

As for the remaining goods in Class 33, there is no reason to presume that the use of the CTM applied for in respect of these goods will take unfair advantage of the reputation or distinctiveness of the earlier mark. The goods in question, i.e. alcoholic fruit extracts; alcoholic milk beverages; alcoholic essences; distilled beverages belong to the alcoholic beverages sector which is different from the opponent’s good. The Opposition Division fails to see, and the opponent did not provide evidence which would allow contrary conclusions to be drawn, how the use of the contested mark would benefit from the reputation of the earlier mark in market sector so remote from that of the world of sauces.

Detriment to repute (tarnishing)

Detriment to repute occurs where the goods or services covered by the contested trade mark appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished. There is a risk of such detriment occurring, inter alia, where the contested goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the contested trade mark (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 40, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 39).

In this respect the opponent argues the following.

 The applicant claims alcoholic beverages in Class 33. These goods representing values that are completely opposed to those associated with the earlier mark.

 Consumers identify the earlier mark ‘PRIMA’ with positive youthful values such as sport, healthy living, friendship, vitality, dynamism, success, etc.

• However, alcoholic beverages are goods that, due to their very nature and effects, convey values that are harmful to youngsters and opposed to those associated with the earlier mark.

• Therefore, granting the mark applied for in respect of alcoholic beverages would serve to tarnish all of the values that consumers link to the earlier mark and thus, would irretrievably damage the reputation of the earlier mark, prompting consumers to link or associate them with goods that have no health benefits, are harmful o youngsters and give rise to a lack of vitality and dynamism.

The Opposition Division can accept that reasoning in relation to the contested alcoholic fruit extracts; alcoholic milk beverages; alcoholic essences; distilled beverages in Class 33. Indeed, the positive images of sport, healthy living, friendship, vitality, dynamism and success attached to the applicant’s reputed sauce brand are not compatible with the perception of, or thoughts triggered by, the necessity of taking alcoholic substances. These contested goods rather have no health benefits, are harmful to youngsters and give rise to lack of vitality and dynamism, or at least evokes disorders of the human body. Therefore, it would be detrimental to the reputation of the earlier marks if the applicant used its similar mark for alcoholic fruit extracts; alcoholic milk beverages; alcoholic essences; distilled beverages.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to be detrimental to the repute of the earlier trade mark.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Karin KUHL

Victoria DAFAUCE MENÉNDEZ

Sigrid DICKMANNS

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.