OPPOSITION No B 2 495 599

Grupo Ybarra Alimentación, S.L., Carretera Isla Menor, Km.1800, 41703 Dos Hermanas (Sevilla), Spain (opponent), represented by Clarke, Modet y CÍA. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

a g a i n s t

BVC Bodegas, 30 Calle Hermossilla, 28001 Madrid, Spain (applicant), represented by Lehmann & Fernandez S.L., Calle Alvarez de Baena, 4, 28006 Madrid, Spain (professional representative).

On 01/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 495 599 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 13 143 011 for the word mark ‘TORO LOCO’. The opposition is based on European Union trade mark registration No 2 780 526 for the figurative mark and on Spanish trade mark registration No 96 933 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 and services

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

European Union trade mark registration No 2 780 526:

Class 29: Olive oils.

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

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computers and software; legal services.

Spanish trade mark registration No 96 933:

Class 29: Olive oils.

Following a limitation made by the applicant and a partial refusal of the contested sign in the parallel opposition proceedings No 2 530 585, the contested goods are the following:

Class 1: Compositions for use in food and beverages.

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

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

The contested compositions for use in food and beverages consist of chemical and organic compositions for use in the manufacture of food and beverages.

Although these substances/compositions could be used in the production of some of the opponent’s goods in Classes 29 and 31, the latter do not have the same nature or purpose as the contested goods. Chemical/organic substances are used to give certain characteristics to a given product, in its manufacture process. On the other hand, the purpose of the opponent’s goods in Classes 29 and 31 is to feed and provide nutritional substances (for humans or animals), to quench the thirst, to provide seeds, flowers and plants, etc.

The mere fact that one product is used for the manufacture of another is not sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case law, raw materials that are subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of their nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53).

Therefore, contrary to the claims put forward by the opponent, the fact that some of the compositions of the applicant might be used during the manufacture of its finished products in Classes 29 and 31 does not determine that these goods are complementary; indeed, from a consumer perspective, these goods are fundamentally different, due to their different nature and purpose, as explained above.

This difference is even more evident as regards the opponent’s services in Class 42, since services are immaterial whereas goods are material. Furthermore, the opponent’s services consist of specialised scientific, technological, research and design services and of legal services. They are provided by scientists and technological experts, IT professionals and law firms, inter alia. It is clear that, compared to the contested goods, they have no relevant characteristics in common. They differ in nature, purpose and usual origin. They do not target the same consumers and they are neither complementary nor in competition.

In summary, the contested compositions for use in manufacturing processes in Class 1 cannot be considered to have the same public and distribution channels as the opponent’s goods and services. Raw chemical/organic material is in general intended for use in industry rather than for direct purchase by the final consumer. Consequently, the goods and services at issue target different publics and are manufactured/provided by different undertakings, through different commercial channels. Finally these goods and services are neither in competition with each other nor complementary. Therefore, the contested goods in Class 1 are considered dissimilar to all the goods and services of the earlier marks.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Manuela RUSEVA	Gueorgui IVANOV	Monika CISZEWSKA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.