DECISION

of the Second Board of Appeal

of 16 May 2017

In Case R 2597/2015-2

Perfetti Van Melle S.p.A.
Via XXV Aprile, 7 20020 Lainate (Milan) Italy	Applicant / Appellant

represented by Alessandro Biraghi, Perfetti Van Melle S.p.A., Via XXV Aprile, 7, 20020 Lainate (Milan), Italy

v

HelloFresh DE
Saarbrücker Str. 37 a (Backfabrik) 10405 Berlin Germany	Opponent / Respondent

represented by BIRD & BIRD LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany

APPEAL relating to Opposition Proceedings No B 2 461 070 (European Union trade mark application No 13 276 613)

The Second Board of Appeal

composed of H. Salmi as a single Member having regard to Article 135(2) and (5) EUTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the Second Board’s Resolution No 2014-1 of 3 June on decisions by a single Member

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 19 September 2014, Perfetti Van Melle S.p.A. (hereinafter ‘the applicant’) sought to register the word as amended

HI FRESH

for the following list of goods:

Class 30 - Caramels, candy, pastry, sweets, chewing gum, chocolate, jellies (confectionery), lollipops, toffee, candy mints, pastilles, liquorice [confectionery], sugar, coffee, cocoa.

2. The application was published on 1 October 2014.

3. On 2 January 2015, HelloFresh AG (hereinafter ‘the opponent’) filed an opposition against the registration of the published trade mark application for all as amendedgoods.

4. The grounds of opposition were those laid down in Article 8(1)(b) and Article 8(4) EUTMR.

5. The opposition was based on the following earlier rights:

• EUTM No 10 532 976

filed on 29 December 2011 and registered on 25 May 2012 for the following goods and services:

Class 16 - Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks, Vouchers, printed recipes;

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, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, pastry and confectionery, ices; Honey, treacles; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice;

Class 31 - Agricultural, horticultural and forestry products and grains, not included in other classes; Live animals; Fresh fruits and vegetables; Seeds, live plants and flowers; Foodstuffs for animals; Malt;

Class 32 - Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages;

Class 33 - Alcoholic beverages (except beers);

Class 35 - Advertising, arranging commercial transactions for others, including within the framework of e-commerce, trading, including via the Internet, in the fields of bleaching and other preparations for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, fuels (including motor spirit) and illuminants, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, disinfectants, preparations for destroying vermin, fungicides, herbicides, hand tools and implements (hand-operated), cutlery, apparatus for lighting, heating, cooking, refrigerating, drying apparatus, paper, cardboard and goods made from these materials, printed matter, photographs, stationery, materials for packaging, vouchers, serviettes, paper tablecloths, goods for decorating the table, goods of wood, cork, wicker, plastics, decoration accessories, decoration items and decoration material, seasonal decorations, celebration decorations, party and themed decorations, games and playthings, household and kitchen utensils and containers, combs and sponges, brushes, articles for cleaning purposes, glassware, porcelain and earthenware, yarns and threads, textiles and textile goods, bed and table covers, lace and embroidery, ribbons and braid, buttons, hook and eyes, pins and needles, artificial flowers, 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 edible fats, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauce (condiments), spices, ice, agricultural, horticultural and forestry products and grains, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, alcoholic and non-alcoholic beverages, syrups and other preparations for making beverages, smokers' requisites;

Class 43 - Services for providing food and drink; Temporary accommodation; Food preparation services featuring meals for delivery or pick-up; Providing a database in the field of recipes.

• Company name in Germany for the word sign ‘HelloFresh GmbH’ for the services:

‘Development, marketing and performance of internet services via subsidiaries within and outside of Germany (e-commerce---retailing and marketing of products, mainly in the field of food), performance of logistics services, digital services as well as payment services associated with the aforementioned purpose of the company, excluding those payment services, which require a permission under the act regulating banking and credit business or other legal regulations of the corresponding legal systems, and all further services associated with the aforementioned services’.

6. By decision of 11 November 2015 (hereinafter ‘the contested decision’), the Opposition Division upheld the as amended on its entirety.

7. On 23 December 2015, the applicant filed an appeal against the contested decision, requesting that the decision be as amended set aside. The statement of grounds of the appeal was received on 11 March 2016.

8. In its observations in reply received on 21 June 2016, the opponent requested that the appeal be dismissed.

9. The parties requested several suspensions to the proceedings, which were accepted by the Office.

10. On 27 April 2017, the applicant requested a limitation of its list of goods, which was accepted on 3 May 2017. The list of goods now reads as follows:

Class 30 - Chewing gum; Candy.

11. On 28 April 2017, the opponent withdrew its opposition and informed the Board that no decision on costs was needed. In accordance with the agreement come to by the parties, no decision should be issued relating to the costs.

Reasons

12. Article 58 EUTMR provides that an appeal before the Board has suspensive effect. It follows that an opposition may be withdrawn at any moment before the decision on the appeal becomes final. The Board hereby takes note of the withdrawal of the opposition and that, as a consequence, the appeal proceedings are terminated.

13. With the withdrawal of the opposition and, therefore, of the subject-matter of the opposition proceedings, the contested decision cannot take effect.

Costs

14. As to the costs of the proceedings, in accordance with the agreement come to by the parties no decision on costs is necessary.

Order

On those grounds,

THE BOARD

hereby:

1. Takes note of the limitation and the withdrawal of the opposition;

2. Takes note of the agreement on costs;

3. Declares the appeal and opposition proceedings closed;

4. Declares that the contested decision does not take effect.

Signed H. Salmi

Registrar: Signed H.Dijkema