OPPOSITION No B 2 414 897

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

a g a i n s t

Lactinov, ZI Route de Vauchelles - BP 90524, 80143 Abbeville, France (applicant), represented by Novagraaf France Bâtiment, O2 - 2 rue Sarah Bernhardt CS 90017 92665 Asnières-sur–Seine, France (professional representative).

On 14/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 414 897 is partially upheld, namely for the following contested goods and services:

Class 5: Food for babies, namely: lacteal flour, soups, soups in dehydrated form, milks, powdered milk, fruit compotes, vegetable purees, vegetable purees in dehydrated form, fruit juices and vegetable juices, gruel, small prepared dishes containing essentially meat, fish, ham, poultry, rice, vegetables and/or pasta; Milk sugar.

2. European Union trade mark application No 12 871 505 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 871 505. The opposition is based on, inter alia, Cypriot trade mark registration No 51 077. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

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

The applicant requested that the opponent submit proof of use of Cypriot trade mark No 51 077.

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

The contested application was published on 01/07/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Cyprus from 01/07/2009 to 30/06/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely Cypriot trade mark No 51 077:

Class 5: Formula for older babies and little children.

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 04/05/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/07/2015 to submit evidence of use of the earlier trade mark. On 03/09/2015, after an extension of a deadline, 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:

• Images of products named ‘S26 PROMISE GOLD’ manufactured in 2009 and 2013, with expiration date in 2011 and 2015; from the images depicted it can be deducted that the products are baby nutrition products;

• 3 invoices, of 08/04/2013, 19/09/2013 and 24/04/202014 on ‘S26 PROMISE Gold’ selling baby formula in Cyprus;

• A report by a company measuring TV advertisement containing a Greek promotional leaflet for products ‘S26 PROMISE Gold’, for the year 2012;

• 2 TV spots for products referred to as ‘S26 PROMISE GOLD MILK’ in Cyprus, in the year 2009;

• Affidavit statement originating from the company Nestle Hellas S.A. claiming that ‘S-26 Promise Gold’ products have been sold in considerable amounts in the territory of Cyprus, in particular during the years 2013 and 2014.

The invoices and advertisements show that the place of use is Cyprus. This can be inferred from the language of the documents (‘Greek’ and ‘English’), the currency mentioned (‘EUR’) and some addresses in Cyprus. Therefore, the evidence relates to the relevant territory.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

Most of the evidence is dated within the relevant period.

The documents filed, namely invoices and advertisements provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. The invoices show sales of a considerable amount during a continuous period of five years, within the relevant time frame. It is also evident (by the invoices and the affidavit) that the goods were shipped and distributed in Cyprus.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

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

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. 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, the trade mark registered differs from the mark used, as demonstrated in the submitted evidence; it is used in the slightly modified varieties ‘S-26 PROMISE’ or ‘S-26 PROMISE GOLD’ . However, the Opposition Division considers that such use does not alter the distinctive character of the earlier mark. Regardless of the typescript stylisation, the representation of the mark remains the same and it does not alter the distinctive character of the mark in the form in which it was registered. The added verbal element “Gold” is devoid of distinctive character and the added letter/number combination S-26 may be seen as indicating one of the products sold under the umbrella of “Promise”-marks. It might also be seen as a descriptive indication of characteristics of the product sold under the “Promise” trade mark. In any case, none of the added elements mergers with the protected sign in a way that would alter its distinctive character.

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

The evidence shows that the mark has been used as registered for all the goods for which the mark is registered.

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).

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

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

1. The goods

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

Class 5: Formula for older babies and little children.

The contested goods are the following:

Class 5: Food for babies, namely: lacteal flour, soups, soups in dehydrated form, milks, powdered milk, fruit compotes, vegetable purees, vegetable purees in dehydrated form, fruit juices and vegetable juices, gruel, small prepared dishes containing essentially meat, fish, ham, poultry, rice, vegetables and/or pasta; Milk sugar.

Class 29: Sterilised UHT milk, fresh pasteurised milk, fromage frais, milk-based desserts, ripened cheeses, mature crème fraîche, crème fraîche, butter and butter products.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 contested food for babies, namely: powdered milk include, as a broader category, the opponent’s formula for older babies and little children or overlap with each other. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The remaining contested goods lacteal flour, soups, soups in dehydrated form, milks, fruit compotes, vegetable purees, vegetable purees in dehydrated form, fruit juices and vegetable juices, gruel, small prepared dishes containing essentially meat, fish, ham, poultry, rice, vegetables and/or pasta; milk sugar are all baby foods or ingredients/additives to baby foods and highly similar to the earlier formula for older babies and little children as these goods are in competition (feeding of babies), available via the same distribution channels (pharmacies and stores for babies), being bought by the same consumers and are produced by the same companies.

Contested goods in Class 29

The contested sterilised UHT milk, fresh pasteurised milk, fromage frais, milk-based desserts, ripened cheeses, mature crème fraîche, crème fraîche, butter and butter products are foodstuffs, dairy products, prepared for consumption and for the public at large whereas the opponent’s goods relate to baby food, from the pharmaceutical and medical field. These goods clearly differ in nature and in their specific purpose. Contrary to the opponent’s argumentation, they are not commonly manufactured/proposed by the same entities and are not offered through the same distribution channels. , They are not complementary or in competition with each other and are normally distributed through different channels, e.g. pharmacies or health sections of drugstores versus supermarkets and produced by different undertakings, e.g. pharmaceutical companies versus food companies etc. The mere fact that the opponent’s goods are used in some way in combination with, or as ingredient of the contested goods, is not in itself sufficient to find them similar. Consequently, the goods under comparison are considered dissimilar.

2. Relevant public – degree of attention

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

In the present case, the goods found to be identical and highly similar are directed at professionals with specific knowledge and expertise in the medical field and also at the public at large. The level of attention of the relevant public may vary from average to high as baby food is concerned where parents have a higher than average level of attention as they are important to the health of their children.

3. The signs

PROMISE
Earlier trade mark	Contested sign

The relevant territory is Cyprus.

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

The contested sign is a figurative mark, comprised of verbal element ‘PROMESS’, underlined with a short thickened white line, underneath the word ‘BABY’ is depicted in a slightly bolder white typeface; both verbal elements are included within a pink circle.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The element ‘BABY’ of the contested sign will be understood by the relevant public as ‘a newborn or recently born child; infant’ because it is a term commonly used throughout the Union. Bearing in mind that the relevant goods include food for babies, it is considered that this element is non-distinctive for these goods. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

The contested sign is composed of two verbal elements and a banal figurative element, namely a pink circle. The figurative element of a circle and stylisation of the verbal elements, namely the white line and typescript, are of purely decorative nature. Consequently, the additional graphic elements have only a limited impact when assessing the likelihood of confusion between the marks.

Both signs at issue have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of letters ‘PROM*S*’. However, they differ in their fifth letter ‘I’ versus ‘E’ and last letter ‘E’ versus ‘S’ respectively. They also differ in a second verbal element ‘BABY’ which is non-distinctive and in the figurative elements and stylisation of the contested sign.

The first parts of the conflicting marks are identical. 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.

Therefore, the signs are similar to an average degree, due to the fact that they share five out of seven letters, being in the same position.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘P-R-O-M*S’, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘I’ versus ‘E’ and letters ‘E’ versus ‘S’. Even if the pronunciation of the phonemes ‘I’ and ‘E’ in the given sequences of letters may slightly differ, this difference is hardly perceptible and therefore immaterial for the aural comparison, in particular since they are followed by the very similar sounds S/SS; they altogether result in the same rhythm and a similar pronunciation. The pronunciation differs in the syllables of the non-distinctive verbal element ‛BA‑BY’ of the contested sign which has no counterpart in the earlier mark.

Therefore, the signs are similar to a high degree.

Conceptually, the verbal element ‘PROMISE’, contained in the earlier mark has a meaning in English, which means ‘a declaration or assurance that one will do a particular thing or that a particular thing will happen’. Owing to the common use of the English language in Cyprus, this verbal element will be understood by a significant part of the public.

The word ‘BABY’ of the contested sign will be associated by the relevant public with ‘a newborn, infant’, which is considered non-distinctive as it indicates the intended purpose and the kind of goods at issue. The word “PROMESS” is meaningless in the relevant territory.

Therefore, the signs are conceptually dissimilar for the part of the public which understands “Promise” in the older. For the remaining part of the public which does not understand “Promise”, since one of the signs has no meaning, they signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning in relation to any of the goods at hand 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

According to case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.).

The conflicting goods are identical, highly similar and dissimilar. The signs are aurally and visually similar to different degrees. Some part of the public may not understand “Promise” and for this part of the public, there is a likelihood of confusion due to the fact that the verbal elements are similar and the differences lie in the non-distinctive or weak elements in the contested mark as well as a two letter difference between the similar verbal elements “Promise” and “PROMESS”. The visual difference in the letters ‘I’ versus ‘E’ and the last letter ‘E’ versus ‘S’, respectively, is considered insufficient to offset the similarities, in particular that the letters I/E placed at the fifth position, do not have a decisive differentiating effect given the phonetic proximity between them.

Furthermore, applying the principle of interdependence in this case, which means that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and services, and vice versa, since the goods at stake are found indeed to be partially identical and partially highly similar, and the signs at issue are considered to be similar, it must be concluded that a likelihood of confusion exists for the goods found to be identical or highly similar.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Cypriot public and therefore the opposition is partly well-founded on the basis of the opponent’s Cypriot trade mark registration No 51 077.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and highly similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the earlier European Union trade mark registration ‘PROGRESS’ No 325 523, covering the following goods in class 5: formula for older babies and toddlers.

Since this mark covers the same goods as the one which has been compared, 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.

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

Gregor SCHNEIDER

Lars HELBERT

Zuzanna STOJKOWICZ

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.