OPPOSITION No B 2 372 418

DF World of Spices GmbH, Industriestr. 25, 49201 Dissen, Germany (opponent), represented by Meissner, Bolte & Partner GbR, Hollerallee 73, 28209 Bremen, Germany (professional representative)

a g a i n s t

Iulian Marinica, Soseaua Vitan Barzesti nr. 5, 042121 Bucharest, Romania (applicant), represented by Paula Adriana Acsinte, 17 Decebal, BL S16, Entrance 2, Floor AP 30, Sector 3, 030964 Bucharest, Romania (professional representative).

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

DECISION:

1. Opposition No B 2 372 418 is partially upheld, namely for the following contested goods:

Class 29: Processed meat, poultry and game in the form of ham, bacon, sausages and salami.

2. European Union trade mark application No 12 646 121 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 and services of European Union trade mark application No 12 646 121. The opposition is based on German trade mark registration No 30 601 970 for the word mark ‘FUCHS’ and international trade mark registration designating the European Union No 918 425 for the word mark ‘FUCHS’, with respect to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR; and European Union trade mark registration No 11 263 225 , with respect to which the opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the notice of opposition was not accompanied by any evidence regarding earlier international trade mark registration designating the European Union No 918 425 ‘FUCHS’ (word mark).

On 07/07/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 12/11/2014. However, due to various extensions, the time limit was further extended until 22/11/2015.

The opponent did not submit any evidence concerning the substantiation of the earlier international trade mark registration.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, 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 German trade mark registration No 30 601 970.

1. The goods and services

The goods on which the opposition is based are the following:

Class 1: Bakery improver and cooking improver used in industry; substances for preventing blood clotting for the food industry; iodized salt; preparations of bacteria (as far as included in class 1); meat pickling preparations used in industry; gelatine used in industry; taste conditioner for foodstuffs used in industry; stabilizing agents for re sanguining for the food industry; emulsifying agents for the food industry; agaragar; enzymes and enzymes preparations used in industry; chemical preservatives for foodstuffs; oils for preserving foodstuffs; microorganism cultures used in industry; chemical preparations for preserving and freshing foodstuffs.

Class 5: Pharmaceutical and veterinary products; non-prescription medicines; food supplements for medical purposes; dietetic nutriments, restoratives, dietary supplements for medical purposes; sedatives, nerviness, digestives, haematogen and depuratives; sweets and liquorice for medical and dietetic purposes; medicinal herbs and medicinal spices; medicinal herb and spice preparations; dried medicinal plants, medicinal plant preparations and medicinal herbs; herbal teas; food supplements not for medical use with a basis of vitamins, minerals, trace elements and sterols; beverages, teas, capsules, dragees, drops, juices, oils, sprays, ointments, lotions and powders for medical and dietetic purposes; vitamin and mineral preparations; drugs for medical purposes.

Class 21: Hand-operated spice mills for household purposes, graters (household article); squeezers (household article); spice castors and containers, household holders and racks for spice containers (as far as included in class 21); cruet stands for tables not made from precious metal or plated therewith; boxes and containers for household or kitchen (not made from precious metal); caps and lids for spice shakers and containers; vinegar and oil stands and cans (not made from precious metal); quick shakers not made from precious metal or plated therewith; spray bottles for oil and oil based preparations and vinegar.

Class 29: Dried herbs and mushrooms; food gelatine; algae extracts for nutrition purposes; prepared and semi-prepared meals, dry mixtures for prepared meals, soups, fillings and mixtures, mainly consisting of meat, fish, poultry, game, meat extracts, milk products, preserved, dried and cooked fruit and/or vegetables; meat extracts; meat, fish, fruit and vegetable jellies and pastes; meat, fish, fruit and vegetable preserves; fruit jams, meat, fish, fruit and vegetable salads; pickles; preserved, dried, frozen and cooked fruit and vegetables; processed chillies; piri (chilli); preparations for making bouillon, soups, meat broth and beef stocks; meat broth and bouillon concentrates; beef stocks, soups; preparations for soups; vegetable juices for cooking, oil for nutrition purposes; dips (as far as included in class 29), preparations for making dips (as far as included in class 29); gherkins (cornichons); chickpea paste (hummus); edible covering masses for foodstuffs; mushrooms (conserved).

Class 30: Spices, spice flavorings, spice flavored salts, spice essences, spice extracts, herbs, herbs in mil, spice mixtures, spiced oil, spice pastes, spice preparations, seasoned salts, condiments; seasoning, flavorings and seasoning (preparations), seasoning preparations for foodstuffs; soup seasoning and flavorings;

vegetable flavorings and essences for foodstuffs (as far as included in class 30), flavorings and baking flavorings (excluding essential and oils); salsas; sauces (as far

as included in class 30) (condiments); taste conditioners (condiments); taste conditioners for foodstuff (as far as included in class 30); dietetic nutriments, restoratives and dietary supplements for a special nutriment (as far as included in class 30); meat pickling preparations for household purposes; binding agents for cooking purposes; binding agents for sausages; vinegar; mustard; cooking salt; salt, flavoured salt, mayonnaise; capers; ketchup; adhesives for food purposes; preserving salts for foodstuff; mill products; flour and cereal preparations; breadcrumbs, bread flours; flour coatings; mustard flour; soy flour; tacos; tortillas; tapioca flour for nutrition purposes; sugar, fillings and snacks, chips and other products made of the afore-mentioned goods; dips (as far as included in class 30); preparations for making dips (as far as included in class 30); stocks; croutons; flour and cereal preparations; anise (grains); fruit jellies (sweets); cloves (spice); semolina;

yeast (as far as included in class 30); honey; ginger (spice); cocoa, decorations for cakes (edible); gingerbread; maize (as far as included in class 30); corn for human consumption; malt extract for nutrition purposes; almond paste; nutmegs; star aniseed; sweetening (natural); cake mixtures; glucose for food; vanilla (spice) and vanillin (vanilla replacement), cinnamon (spice); baking mixtures, including baking mixtures with spices and flavorings.

After a limitation of the list of goods and services of the contested sign which took place on 26/06/2014, the contested goods and services are the following:

Class 16: Money holders; paper and cardboard; printed matter; stationery and educational supplies; works of art and figurines of paper and cardboard, and architects’ models.

Class 29: Processed meat, poultry and game in the form of ham, bacon, sausages and salami.

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services.

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 16

The contested money holders; paper and cardboard; printed matter; stationery and educational supplies; works of art and figurines of paper and cardboard, and architects’ models are dissimilar to all of the opponent’s goods, which are various chemical substances, pharmaceuticals and dietary supplements, household articles designed or used for spices and condiments, and foodstuffs and food additives. They differ in their natures, purposes and methods of use. They do not have the same usual manufacturers, distribution channels or sales outlets. They are neither complementary to nor in competition with each other.

Contested goods in Class 29

The contested processed meat, poultry and game in the form of ham, bacon, sausages and salami are included in the broad category of the opponent’s meat in Class 29. Therefore, they are identical.

Contested services in Class 35

The contested advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services are very specific services aimed at supporting other businesses. They are dissimilar to any and all of the opponent’s goods, which are various chemical substances, pharmaceuticals and dietary supplements, household articles designed or used for spices and condiments, and foodstuffs and food additives. They differ in their natures, purposes and methods of use. They do not have the same usual manufacturers or providers, distribution channels or sales outlets. They are neither complementary to nor 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 are directed at the public at large. With regard to these goods, which may be bought on a daily basis and are relatively inexpensive, the degree of attention displayed by consumers will be average at best.

3. The signs

FUCHS
Earlier trade mark	Contested sign

The relevant territory is Germany.

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

The earlier mark is the word mark ‘FUCHS’.

The contested sign is a figurative mark containing the verbal element ‘FOX’, depicted in a bold red upper case typeface outlined in white and placed in a central position within the sign, and the verbal elements ‘salam sandwich toast’, depicted in a white lower case typeface outlined in dark green and placed at the bottom of the sign. All these elements are placed on a red label, outlined in white, green and gold, together with a figurative element depicting the head of a cartoon fox wearing a chef’s hat, which is placed above the verbal element ‘FOX’, and a figurative element in the form of a gold seal between two green leaves, containing the words ‘PRODUS FOX ORIGINAL’, which is placed above the verbal elements ‘salam sandwich toast’.

The earlier mark, consisting of only one word, has no dominant element.

The word ‘FUCHS’, meaning ‘fox’ in German, that is ‘a rather small carnivore with a reddish brown coat, a pointy muzzle, big, pointy ears and a bushy tail’ (information extracted from http://www.duden.de/rechtschreibung/Fuchs), has a normal degree of distinctiveness for the goods in Class 29.

Part of the relevant public will also understand the English word ‘FOX’ of the contested sign with the same meaning. This is because a high percentage of the German public knows that ‘fox’ is the English word for ‘Fuchs’, which both have the same Germanic origins of the Old Saxon ‘fuhs’ (12/09/2001, R 819/2000-3, Fox’s/Fuchs, § 20).

In the contested sign, the verbal element ‘FOX’ and the figurative depiction of the head of a cartoon fox wearing a chef’s hat, by virtue of their central position and size, are the dominant elements, as they are the most eye-catching.

Furthermore, regarding the distinctive character of the contested sign, the figurative elements in the form of green leaves will be associated with fresh or natural products. The figurative element depicting a gold seal will be associated with the quality or originality of the relevant goods (indicating that the goods are certified). Bearing in mind that the relevant goods are foodstuffs, it is considered that these elements are weak, since the public would perceive them as indicators of the goods’ authenticity (in the case of the seal) and of the natural ingredients used in the goods and/or their freshness (in the case of the green leaves).

The words ‘sandwich toast’ of the contested sign, even though they are English words, will be understood by the German consumer, as they are widely used internationally to refer to bread for making sandwiches or for toasting. As the relevant goods are foodstuffs, it is considered that these elements are weak, since the public would associate them with the intended purpose of the goods, namely for use in a sandwich or on toast. The word ‘salam’ will be perceived as an invented or an Arabic word.

Moreover, the red label and green and gold background behind the figurative depiction of a fox are of a purely decorative nature and, therefore, these figurative elements are considered less distinctive than the other elements of the sign. The other elements of the contested sign have a normal degree of distinctive character.

Visually, the signs coincide in the first letter of the earlier mark and of the first verbal element of the contested sign, namely ‘F’. They differ in the remaining letters of the earlier mark, ‘-UCHS’, and in the letters ‘-OX’ of the contested sign, as well as in the slight stylisation of the element ‘FOX’ in the contested sign. The marks also differ in the remaining elements of the contested sign, but, as most of these elements are in a subordinate position and lack distinctiveness, consumers will focus more on the more eye-catching elements, namely the word ‘FOX’ and the image of a fox. The figurative element depicting a fox will be linked to the earlier mark, and the part of the public that understands the word ‘FOX’ will also link that verbal element to the earlier mark, which consists of the German word for ‘fox’.

The slightly fanciful typeface in which the verbal elements of the contested sign are written must be considered not striking enough to distract consumers’ attention from the words they embellish.

Therefore, the signs are visually similar to a low degree.

Aurally, the signs are similar to the extent that they coincide in the first and last sounds of the earlier mark, /fuks/, and of the first element, /foks/, of the contested sign, that is, the sounds /f/ and /ks/. Moreover, the sounds /u/ and /o/ are pronounced very similarly, as they are both short, closed vowels. The Opposition Division considers it highly unlikely that the remaining verbal elements of the contested sign would be pronounced, due to the subordinate role they have in the overall impression created by the sign.

Therefore, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the earlier mark ‘FUCHS’ as meaning ‘fox’. Part of the relevant public will also understand the English word ‘FOX’ in the contested sign as having the same meaning as the earlier mark and will therefore perceive the earlier mark, ‘FUCHS’, and the element ‘FOX’ of the contested sign as referring to the same concept.

The figurative element depicting a fox’s head wearing a chef’s hat in the contested sign will be associated with the concept it depicts, that is, a fox that is a chef. Therefore, it reinforces the meaning of the word ‘FOX’. The fox’s hat associates it with the concept of a chef. The public will perceive the figurative elements depicting green leaves in the contested sign as such, and also as indicating that the goods are fresh or natural products.

However, these figurative elements in the contested sign have a limited impact on the overall impression created by the sign, due to their weak and secondary character. The words ‘salam sandwich toast’ of the contested sign refer to bread for making sandwiches or for toasting, as stated above. These elements will also have a limited impact, due to their secondary character and limited distinctiveness.

Consequently, to the extent that both marks will be associated with the concept ‘fox’, they 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 and services at issue are partly identical and partly dissimilar.

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case, the identical goods and the degree of similarity between the marks will have to be taken into account when assessing the likelihood of confusion between the marks.

The conflicting marks are similar, since the entire earlier mark and the contested sign’s dominant and distinctive figurative element both evoke the concept of a fox. Moreover, a part of the relevant public will also grasp this concept in the contested sign’s dominant and distinctive verbal element, ‘FOX, especially because the concept conveyed by the verbal element is also reinforced by the figurative element of a fox that is a chef.

Furthermore, the signs are aurally highly similar and visually similar to a low degree; however, this low degree of visual similarity is counterbalanced, for at least a part of the public, by the conceptual coincidences.

It should be pointed out that consumers do not generally encounter conflicting marks simultaneously. They are more likely, when encountering a sign, to compare it with their recollection of signs already known for the relevant area of goods. However, consumers do not clearly recollect every detail of signs. The sign at hand and an imperfect recollection of another sign are the basis on which consumers evaluate whether or not signs are the same or similar (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In view of all the relevant factors in the present case and the principle of interdependence between them, the relevant consumers might be led, as a result of the visual, aural and conceptual similarities between the marks, to believe that the identical goods covered by the marks come from the same undertaking or economically linked undertakings. Taking into account all the relevant circumstances, the differences between the signs are not sufficient to counteract their similarities and safely exclude a likelihood of confusion, even for that part of the public that pays an average degree of attention and is less vulnerable to confusion than the public with a lower level of attention. It can reasonably be concluded that consumers will not be able to distinguish the marks and will perceive them as having the same origin.

Considering all the above, and taking into account in particular the fact that the goods are partly identical, the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore, the opposition is partially well founded on the basis of the opponent’s German trade mark registration No 306 01 970. It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods and services 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 and services 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 or reputation as claimed by the opponent and in relation to identical 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 and services, 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 earlier European Union trade mark registration No 11 263 225 for the figurative mark . This earlier mark covers goods such as bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices in Class 3; pharmaceuticals, medical and veterinary preparations, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, food for babies, dietary supplements for humans and animals, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides in Class 5; and foodstuffs in Classes 29 and 30, all of which are clearly dissimilar to the remaining contested goods and services in Classes 16 and 35. The opponent’s goods and the contested goods differ in their natures, purposes and methods of use. They do not have the same usual manufacturers or providers, distribution channels or sales outlets. They are neither complementary to nor in competition with each other. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

Given that the opposition is not entirely successful under Article 8(1)(b) EUTMR for all the contested goods and services, it is necessary to further examine the remaining ground of the opposition, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent also based the opposition on Article 8(5) EUTMR with regard to German trade mark registration No 306 01 970, claiming reputation for goods in Classes 29 and 30.

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.

1. The signs

Earlier German trade mark registration No 306 01 970 has already been compared with the contested sign above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

The opponent filed a considerable amount of evidence in order to prove the reputation of the earlier mark. However, for reasons of procedural economy, it will be assumed that the evidence filed by the opponent to prove this claim is sufficient to demonstrate that the earlier mark has a reputation in the territory claimed, Germany, in connection with goods in Classes 29 and 30, without entering into an analysis of the evidence for any specific product in those classes.

3. The ‘link’ between the signs

As seen above, the earlier mark is assumed to have a reputation for goods in Classes 29 and 30, 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, C408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C252/07, 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.

In the present case, the examination of the opposition under Article 8(5) EUTMR concerns the contested goods and services for which the contested European Union trade mark application No 12 646 873 has not been rejected, namely:

Class 16: Money holders; paper and cardboard; printed matter; stationery and educational supplies; works of art and figurines of paper and cardboard, and architects’ models.

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services.

The goods in relation to which the earlier mark is assumed to be reputed are the following:

Class 29: Prepared and semi-prepared meals, dry mixtures for prepared meals, soups, fillings and mixtures, mainly consisting of meat, fish, poultry, game, meat extracts, milk products, preserved, dried and cooked fruit and/or vegetables; piri (chili); preparations for making bouillon, soups, meat broth and beef stocks; meat broth and bouillon concentrates; beef stocks, soups; preparations for soups.

Class 30: Spices, spice flavorings, spice flavored salts, spice essences, spice extracts, herbs, herbs in oil, spice mixtures, spiced oil, spice pastes, spice preparations, seasoned salts, condiments; seasoning, flavorings and seasoning (preparations), seasoning for foodstuffs (preparations); soup seasoning and flavorings; vegetable flavorings and essences for foodstuffs (included in this class), flavorings and baking flavorings (excluding ethereal oils), essences for nutrition purposes (excluding essential essences and oils); salsa being a sauce containing chillies and tomatoes; sauces (condiments); cooking salt; salt, flavoured salt; croutons; cloves (spice); ginger (spice); vanilla (spice) and vanillin (vanilla replacement), cinnamon (spice).

As seen above, the signs were found to be similar. However, the goods for which the opponent claims reputation are completely different from the remaining contested goods and services.

The earlier mark is assumed to be reputed for goods in Classes 29 and 30, which are various foodstuffs, including spices and flavourings. However, the contested goods that are the subject of the assessment under Article 8(5) EUTMR are stationery and educational articles, goods made of paper and cardboard, including works of art and printed matter, and architects’ models. The contested services are very specific services aimed at supporting other businesses, usually rendered by specialised companies and principally directed at a professional public.

These sets of goods and services belong to totally different and unrelated market sectors. Even if the relevant section of the public for the goods or services covered by the conflicting marks might be the same or may overlap to some extent, those goods or services are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

The differences in nature, purpose and method of use between the contested goods and services on the one hand and the goods for which a reputation has been assumed on the other, as well as the divergent distribution channels, sales outlets and producers/providers, make it highly improbable that the public would establish a link between the signs, which is essential for the application of Article 8(5) EUTMR. It is very unlikely that, when purchasing paper or cardboard articles or stationery or contracting a business analysis or market research under the contested sign, the consumer would be reminded of the earlier mark, which is assumed to have a reputation for foodstuffs.

At the same time, it must be emphasised that the issue here is not merely that the goods and services are dissimilar (Article 8(5) EUTMR specifically covers dissimilar goods and services). The Opposition Division points out the differing nature of the goods and services in order to challenge the plausibility of the claim that when consumers encounter the contested sign on the abovementioned goods, they would make a link with the earlier mark. Since the economic sectors of the opponent’s goods and the contested goods and services are totally different, it is too far-fetched to conclude that the consumer would be reminded of the earlier mark when seeing the contested sign.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

In view of the cumulative nature of the requirements of this provision there is no need to examine further the remaining factors. It follows that, given that reputation was assumed, there is no need to assess the evidence submitted in this regard, since it would not alter the outcome.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Natascha GALPERIN

Reiner SARAPOGLU

Dorothée SCHLIEPHAKE

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.