OPPOSITION No B 2 461 955

Vega GmbH, Vega-Str. 2, 86637 Wertingen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

S.A.T. Campotejar del Segura Nº 9843, Ctra. Archena-Fortuna Km. 7, 30509 El Fenazar (Molina de Segura), Murcia, Spain (applicant), represented by Ars Privilegium S.L., Felipe IV 10, 28014 Madrid, Spain (professional representative).

On 06/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 461 955 is partially upheld, namely for the following contested services:

Class 35: Wholesaling and retailing in shops and via global computer networks of fresh fruits and vegetables.

2. European Union trade mark application No 13 313 011 is rejected for all the above services. It may proceed for the remaining goods and services.

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 13 313 011. The opposition is based on, inter alia, international registration designating the European Union No 883 583, German trade mark registration No 30 551 291, the German company name ‘VEGA Vertrieb von Gastronomiebedarf GmbH’ and German trade name . The opponent invoked Article 8(1)(b) and Article 8(4) 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.

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

The contested application was published on 03/11/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and in Germany from 03/11/2009 to 02/11/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the services on which the opposition is based, namely the following:

International registration No 883 583 designating the European Union

Class 35: Retail sales services and product ordering through mail for restaurant, catering and hotel establishments of products such as cutlery, household utensils, cooking pot sets, services (tableware), furniture, bed and table linen, working clothes.

German trade mark registration No 30 551 291

Class 35: Retail and mail order services for restaurant, catering and hotel business purposes, including cutlery, household utensils, cooking pot sets, services (tableware), furniture, bed and table linen, working clothes.

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 30/09/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/12/2015 to submit evidence of use of the earlier trade marks. The time limit was extended, as requested by the opponent, until 05/02/2016. On 28/01/2016, 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:

• Exhibit 22: declaration signed by Erwin Müller, CEO of E.M. Group Holding AG, owner of the trade mark registrations on which the opposition is based, in which he confirms that VEGA Vertrieb von Gastronomiebedarf GmbH has been the licensee of, among others, international trade mark registration designating the European Union No 883 583 and German trade mark registration No 30 551 291, since 2008. The declaration is dated 27/03/2015.

• Exhibit 23: affidavit, dated 27/05/2015, undersigned by the managing director of VEGA Vertrieb von Gastronomiebedarf GmbH, concerning the commercial activities of the company from 2008 to 2014, including sales turnover figures for retail sales services and for products – ordered by mail and through an online shop by restaurants, catering companies and hotels – such as those on which the opposition is based, namely cutlery, household utensils, cooking pot sets, tableware made of porcelain or glass, teapot warmers and table heaters, kitchen equipment and kitchen utensils, buffet accessories, folders for invoices, menu folders made of leather or artificial leather furniture, lighting apparatus, table decoration, artificial flowers, bed and table linen, cosmetics, linen goods. The turnover for each year amounts to an average of EUR 36 000 000.

• Exhibits 24-27: commercial product catalogues, dated 2010, 2011, 2012, 2013, which show the use of the mark ‘VEGA’ in relation, inter alia, to retailing of cutlery, tableware such as plates and underplates, platters, drinking glasses, bowls, tea cups, napkin rings, sugar bowls and tablecloths; furniture such as tables, chairs, stool, food displays, bottle ranks, candle holders, ashtrays and menu holders; kitchen equipment and utensils, such as pots, strainers and food containers; cooking apparatus; toiletries; and artificial flowers and artificial trees. The prices are displayed in euros. A German address and other contact details for VEGA GmbH are also indicated. The catalogues give the address of the online shop www.vega-direct.com.

• Exhibit 28: commercial product catalogue dated 2013, in English, which shows the use of the mark ‘VEGA’ in relation to sales of the abovementioned products. It indicates the methods of ordering available, namely by telephone, fax or through the online shop, and gives information about delivery. Moreover, the catalogue states that the company sells only to professionals, not private consumers.

• Exhibits 29a-29d: a set of about 50 invoices, dated from 2003 to 2013, showing the sign ‘VEGA’ in relation to the retailing of, inter alia, cutlery, drinking glasses, serving mixers, casters, griddles, meat tweezers, candles, tea lights, lanterns, ladles, universal forceps, ice scream spoons, cake shovels, raclette grills, fondue sets, salad spinners, egg pots, measuring cups, egg whisks, tin openers, silicone pastry brushes, kitchen sieves, roast scrapers, trays, bowls, plates, juice dispensers, buffet sideboards, cover hoods for buffets, toasters, vacuum jugs, napkins, paper napkins, tablecloths, toaster ovens, coffee machines, fryers, griddle plates, kitchen mixers, ashtrays, chairs, cushions, pans, serving pans, shampoos, shower gels, soaps, soap dispensers, towels, chalk markers, blackboards, stand-up displays, menu folders, menu cards, invoice folders, laurel ball trees, wreaths, table flower arrangements, wood flowers, felt flowers, felt scattered flowers, garlands, decorative balls, lamps and armchairs. Some of the invoices are addressed to hotels, restaurants, guest houses and catering services. All of the invoices are addressed to customers in Germany.

• Exhibit 30: copies of advertisements published in the German magazine First Class, dated April 2011, December 2012 and May 2013, showing the mark ‘VEGA’ used to refer to a supplier for the gastronomy, hospitality and catering sectors. The applicant submitted English translations of this evidence.

As far as the affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The invoices show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and some addresses in Germany. Therefore, the evidence relate to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely the affidavit and invoices, 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 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.

The evidence submitted by the opponent to prove genuine use of the earlier trade marks relates exclusively to Germany; this can be inferred from the invoices, the catalogues and the extracts from a magazine. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of earlier international registration designating the European Union No 883 583 and German trade mark registration No 30 551 291.

The evidence shows that the marks have been used as registered.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the services 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 international registration designating the European Union No 883 583 and German trade mark registration No 30 551 291 for the following services:

Class 35: Retail sales services and product ordering through mail for restaurant, catering and hotel establishment of products namely of cooking equipment and apparatus, food preparation implements, cutlery, tableware, furniture, candles, lightings, kitchen and table linen, bath linen, toiletries, bathroom articles, artificial flowers, table ornaments, ashtrays, invoices folders, chalk marker; blackboards, paper napkins.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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 international registration designating the European Union No 883 583.

1. The goods and services

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

Class 35: Retail sales services and product ordering through mail for restaurant, catering and hotel establishment of products namely of cooking equipment and apparatus, food preparation implements, cutlery, tableware, furniture, candles, lightings, kitchen and table linen, bath linen, toiletries, bathroom articles, artificial flowers, table ornaments, ashtrays, invoices folders, chalk marker, blackboards, paper napkins.

The contested goods and services are the following:

Class 31: Fresh fruits and vegetables and garden herbs.

Class 35: Wholesaling and retailing in shops and via global computer networks of fresh fruits and vegetables; Business management, in particular relating to a fruit and vegetable company; Import and export of fresh fruits and vegetables.

Class 39: Distribution, transport and storage of fresh fruits and vegetables.

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 31

Retail services relating to the sale of particular goods and other goods are not similar. It should be remembered that in principle goods are not similar to services. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Too broad a protection would be given to retail services if similarity were found where the goods sold at retail were only highly similar or similar to the goods covered by the other mark. The opponent did not prove that its retailing services relate to fresh fruits and vegetables and garden herbs; therefore, these contested goods are dissimilar to the opponent’s services.

Contested services in Class 35

Retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison have the same nature as both are retail services, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and they have the same method of use. Furthermore, depending on whether the goods in question are commonly retailed in the same outlets, they may have the same relevant public and distribution channels, in which case they must be considered similar.

Therefore, the contested retailing in shops and via global computer networks of fresh fruits and vegetables are similar to the opponent’s retail sale services and product ordering through mail for restaurant, catering and hotel establishment of products namely of cooking equipment and apparatus, food preparation implements, cutlery, tableware, furniture, candles, lightings, kitchen and table linen, bath linen, toiletries, bathroom articles, artificial flowers, table ornaments, ashtrays, invoices folders, chalk marker; blackboards, paper napkins. They have same nature as both are retail services, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and they have the same method of use. Moreover, they may have the same relevant public.

The contested wholesaling and in shops and via global computer networks of fresh fruits and vegetables are similar to the opponent’s retail sale services and product ordering through mail for restaurant, catering and hotel establishment of products namely of cooking equipment and apparatus, food preparation implements, cutlery, tableware, furniture, candles, lightings, kitchen and table linen, bath linen, toiletries, bathroom articles, artificial flowers, table ornaments, ashtrays, invoices folders, chalk marker; blackboards, paper napkins. They have same nature, purpose and method of use.

Business management is a service rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. The services include activities such as providing advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, etc.

The contested business management, in particular relating to a fruit and vegetable company does not have anything in common with the opponent’s retailing services. They have different purposes, different methods of use and different distribution channels. Moreover, they are not in competition or complementary. Therefore, these services are dissimilar.

Import and export services are not considered to be a sales service; they relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. They are considered to relate to business administration. These services do not relate to the retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods.

Therefore import and export of fresh fruits and vegetables are dissimilar to the opponent’s services. These services have a different nature and purpose, and they are offered by different companies. Moreover, they are not in competition or complementary.

Contested services in Class 39

Retail companies do not normally provide transportation services independently, but, rather, exclusively for the goods purchased at their premises. Transport of goods remains purely ancillary to their core activity of selling. One could not expect a retailer to satisfy one’s own private transportation needs. Conversely, transport companies do not sell goods at retail. The contested distribution, transport and storage of fresh fruits and vegetables are dissimilar to the opponent’s services. They have different natures, purposes and methods of use. Moreover, they are provided by different companies.

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 services found to be similar are directed at business customers with specific professional knowledge or expertise. The degree of attention will be average.

3. The signs

VEGA	VEGAFRUT
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public.

The earlier sign is a word mark, ‘VEGA’. The contested sign is a word mark, ‘VEGAFRUT’.

It should be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § x).

Therefore, although as a whole the contested mark does not have any meaning, the relevant public will split the verbal element ‘VEGAFRUT’ into two parts and perceive the element ‘VEGA’, which means ‘designation for floodplains and irrigated areas in the Iberian Peninsula’ (information extracted from Duden Dictionary at http://www.duden.de/rechtschreibung/Vega on 04/08/2016), and the element ‘FRUT’, which may be perceived as a misspelling of ‘FRUCHT’, which means ‘fruit’ (information extracted from Duden Dictionary at http://www.duden.de/rechtschreibung/Frucht on 04/08/2016). The word ‘FRUT’ is descriptive and therefore weak for wholesaling and retailing in shops and via global computer networks of fresh fruits in Class 35.

Visually, the signs coincide in the letters ‘VEGA’, present identically in both signs. The signs differ in the letters ‘FRUT’ of the contested mark, which have no counterpart in the earlier mark.

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. In the present case, the earlier sign constitutes the beginning of the contested sign.

Therefore, taking into account that the differing element is at the end of the contested sign and is weak for some of the services, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛VE-GA’, present identically in both marks. The pronunciation differs in the syllable ‛FRUT’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, for the same reasons explained above, the signs are aurally similar to at least an average degree.

Conceptually, the public in the relevant territory will perceive the earlier sign as a ‘designation for floodplains and irrigated areas in the Iberian Peninsula’. As explained, the contested sign contains the element ‘VEGA’, which will be perceived with the same meaning as the earlier mark, and the element ‘FRUT’, which will be associated with the concept of fruit. Therefore, the signs are conceptually similar to at least an average degree.

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 in Germany. 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 services 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 are partly similar and partly dissimilar. The signs are visually, aurally and conceptually similar to at least an average degree.

The services found to be similar target business professionals. The degree of attention will be average.

As stated above, 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. In the present case, the earlier sign constitutes the beginning of the contested sign.

The second part of the contested sign will be perceived by the German-speaking public as meaning ‘fruit’. This element is therefore weak for wholesaling and retailing in shops and via global computer networks of fresh fruits in Class 35, as it is descriptive of the nature of the goods sold. In relation to these services, the coinciding element of the signs is the most distinctive element of the contested mark.

The mark ‘VEGAFRUT’ may, therefore, induce consumers to think that it refers to a line of services relating to fruits provided by the opponent. It is not uncommon for producers and service providers to create lines of products or services by adding to their main mark an additional descriptive element, in order to differentiate categories of products or services.

On the other hand, even in relation to the services for which the element ‘FRUT’ would not be perceived as weak, namely wholesaling and retailing in shops and via global computer networks of vegetables, the earlier mark is completely included in the contested sign and the marks differ only in the last four letters, forming a single syllable, in the contested sign; the end of a sign is the part that is paid least attention by the public. Therefore, the dissimilarity in the verbal element ‘FRUT’ is not sufficient to exclude a likelihood of confusion.

In its observations, the applicant argues that the word ‘VEGA’ lacks distinctive character. However, the arguments presented by the applicant to prove the lack of distinctive character of the earlier mark cannot be endorsed. The applicant submitted an extract from Wikipedia.org to prove that the word VEGA has more than one meaning; however, none of those meanings is descriptive of the services for which the earlier mark is registered. Therefore, the word ‘VEGA’ has a normal degree of distinctive character.

The applicant also argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘VEGA’. In support of its argument the applicant refers to a search result from eSearch plus, which shows a number of trade marks starting with ‘VEGA’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘VEGA’. Under these circumstances, the applicant’s claims must be set aside.

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 services are similar and the signs are similar to at least an average degree. These similarities are sufficient to find a likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration designating the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be similar 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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent and in relation to identical and similar services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar 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 marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on German trade mark registration No 30 551 291 for the word mark ‘VEGA’. Since this mark includes the same verbal element, ‘VEGA’, as the one which has been compared and covers the same scope of services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent has also based its opposition on other signs used in the course of trade in Germany for services in Class 35, namely the following non-registered rights:

• German company name ‘VEGA Vertrieb von Gastronomiebedarf GmbH’;

• German trade name .

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 30/09/2014. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Germany prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for retail and mail order services for restaurant, catering and hotel business purposes with goods such as cutlery, household utensils, cooking pot sets, tableware made of porcelain for glass, furniture, bed and table linen, working clothes, cosmetics, artificial flowers, linen goods, table decoration, teapot warmers and table heaters, trays, wallets, folders for invoices, menu folders made of leather or artificial leather, lighting apparatus, kitchen equipment and kitchen utensils, buffet accessories.

On 25/06/2015 the opponent submitted evidence of use in the course of trade. 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 consists, in particular, of the following documents:

• Exhibit 1: official excerpt from Registry of Commerce of Augsburg (Germany), and an English translation thereof, proving that the company’s name changed to its current name, VEGA Vertrieb von Gastronomiebedarf GmbH, in 1997.

• Exhibit 2: the abovementioned affidavit, dated 27/05/2015, undersigned by the managing director of VEGA Vertrieb von Gastronomiebedarf GmbH concerning the commercial activities of the company from 2008 to 2014, including sales turnover figures for retail sales services and for goods – ordered by mail and through an online shop by restaurants, catering companies and hotels – such as those on which the opposition is based, namely cutlery, household utensils, cooking pot sets, tableware made of porcelain or glass, teapot warmers and table heaters, kitchen equipment and kitchen utensils, buffet accessories, folders for invoices, menu folders made of leather or artificial leather furniture, lighting apparatus, table decoration, artificial flowers, bed and table linen, cosmetics, linen goods. The turnover for each year amounts to an average of EUR 36 000 000.

• Exhibits 3-5a: the abovementioned commercial product catalogues, dated 2010, 2011, 2012, 2013, which show the use of the mark ‘VEGA’ in relation, inter alia, to retail of cutlery, tableware such as plates and underplates, platters, drinking glasses, bowls, tea cups, napkin rings, sugar bowls and tablecloths; furniture such as tables, chairs, stool, food displays, bottle ranks, candle holders, ashtrays and menu holders; kitchen equipment and utensils, such as pots, strainers and food containers; cooking apparatus; toiletries; and artificial flowers and artificial trees. The prices are displayed in euros. A German address and other contact details for VEGA GmbH are also indicated. The catalogues give the address of the online shop www.vega-direct.com. The catalogue dated 2013 indicates the methods of ordering available, namely by telephone, fax or through the online shop, and gives information about delivery. Moreover, the catalogue states that the company sells only to professionals, not private consumers.

• Exhibits 6a-6d: the abovementioned sets of invoices dated from 2003 to 2013, showing the sign ‘VEGA’ in relation to the retailing of, inter alia, cutlery, drinking glasses, serving mixers, casters, griddles, meat tweezers, candles, tea lights, lanterns, ladles, universal forceps, ice scream spoons, cake shovels, raclette grills, fondue sets, salad spinners, egg pots, measuring cups, egg whisks, tin openers, silicone pastry brushes, kitchen sieves, roast scrapers, trays, bowls, plates, juice dispensers, buffet sideboards, cover hoods for buffets, toasters, vacuum jugs, napkins, paper napkins, tablecloths, toaster ovens, coffee machines, fryers, griddle plates, kitchen mixers, ashtrays, chairs, cushions, pans, serving pans, shampoos, shower gels, soaps, soap dispensers, towels, chalk markers, blackboards, stand-up displays, menu folders, menu cards, invoice folders, laurel ball trees, wreaths, table flower arrangements, wood flowers, felt flowers, felt scattered flowers, garlands, decorative balls, lamps and armchairs. Some of the invoices are addressed to hotels, restaurants, guest houses and catering services. All of the invoices are addressed to customers in Germany.

• Exhibit 7: the abovementioned copies of advertisements published in the German magazine First Class, dated April 2011, December 2012 and May 2013, showing the mark ‘VEGA’ used to refer to a supplier for the gastronomy, hospitality and catering sectors. The applicant submitted English translations of this evidence.

The invoices show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and some addresses in Germany.

The evidence is mainly dated before the relevant date.

The evidence shows that the opponent’s signs have been used in the course of trade for retail and mail order services for restaurant, catering and hotel business purposes with goods namely, cooking equipment and apparatus, food preparation implements, cutlery, tableware, furniture, candles, lightings, kitchen and table linen, bath linen, toiletries, bathroom articles, artificial flowers, table ornaments, ashtrays, invoices folders, chalk marker, blackboards, paper napkins.

The invoices provide sufficient information concerning the commercial volume of use, the length of time of use and the frequency of use. It is clear from the evidence that the opponent’s trade under the signs at issue was of more than mere local significance as can be seen from the addresses indicated in the invoices.

Consequently, the Opposition Division concludes that the opponent’s signs have been used in the course of trade of more than local significance in Germany for retail and mail order services for restaurant, catering and hotel business purposes with goods namely, cooking equipment and apparatus, food preparation implements, cutlery, tableware, furniture, candles, lightings, kitchen and table linen, bath linen, toiletries, bathroom articles, artificial flowers, table ornaments, ashtrays, invoices folders, chalk marker, blackboards, paper napkins before the filing date of the contested trade mark.

2. The right under the applicable law

A company name is the official designation of an incorporated undertaking, in most cases registered in the respective national commercial register. If under national law registration is a prerequisite for protection, registration must be proven. Company names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

Trade names are the names used to identify businesses. Trade names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

In the present case, the opponent invokes the German Trademark Act, namely:

Section 5

1. Company symbols and titles of works shall enjoy protection as business signs.

2. Company symbols are signs used in the course of trade as a name, company names or special designation of business operation or an enterprise. Business symbols and other signs intended to distinguish the business operation from other business operations which are regarded as symbols of the business operation within involved trade circles shall be deemed equivalent to the special designation of a business operation.

Section 15

1. The acquisition of protection of the protection of a business sign shall grant to its proprietor an exclusive right therein.

2. Third parties shall be prohibited from using the business sign or a similar sign in the course of trade without authorization in a manner liable to cause confusion with the protected designation.

3. If the business sign is a business sign which has a reputation in this country, third parties shall be furthermore prohibited from using the business sign or a similar sign in the course of trade if there is no likelihood of confusion within the meaning of subs. 2, insofar as the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the business sign.

The opponent argues that, according to these provisions, the exclusive right can be enforced only where a likelihood of confusion with the business sign arises; therefore, a likelihood of confusion exists where ‘1.the sign is used by third parties in the course of trade as a designation of origin; 2. the sign used by the third party is similar to the business sign whereas similarity must be assessed in the same way as in the comparison of two trademarks; 3. the sign is used in a close business area’.

Regarding the assessment of a use in ‘close business areas’ the opponent submitted an extract from a decision of the German Federal Supreme Court, ‘Metrobus’, in which the Court held that ‘the assessment of a use in close business areas primarily depends on the product ranges and business areas which are typical for the parties from the viewpoint of the relevant public. Indications may be points of contact between the goods and services of the parties on the market as well as commonalities in the distribution channels an in the possible use of the goods and services’.

3. The opponent’s right vis‑à‑vis the contested trade mark

According to the German Trademark Law, Section 15(2), third parties shall be prevented from using, without authority, the trade name or a similar sign in the course of trade in a manner that may lead to its being confused with the protected designation.

Therefore, the conditions to be met are that the signs are confusingly similar, that the areas in which the businesses operate are similar and that the sign is used in a manner that may lead to its being confused with the protected designation. Therefore, a comparison of the signs and a comparison of the goods and services and the business activities of the companies are required to establish whether there is a likelihood of confusion.

Likelihood of confusion

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 signs 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 right, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The opposition is directed against the following remaining goods and services of the contested trade mark:

Class 31: Fresh fruits and vegetables and garden herbs.

Class 35: Business management, in particular relating to a fruit and vegetable company; Import and export of fresh fruits and vegetables.

Class 39: Distribution, transport and storage of fresh fruits and vegetables.

The opponent’s company name is used for retail and mail order services for restaurant, catering and hotel business purposes with goods namely, cooking equipment and apparatus, food preparation implements, cutlery, tableware, furniture, candles, lightings, kitchen and table linen, bath linen, toiletries, bathroom articles, artificial flowers, table ornaments, ashtrays, invoices folders, chalk marker, blackboards, paper napkins.

The goods and services have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings.

As seen above, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the business activities for which the opponent has proven use of more than local significance are clearly dissimilar to the contested goods and services, one of the necessary conditions is not fulfilled, and the opposition based on Article 8(4) EUTMR must be rejected.

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

Victoria DAFAUCE MENÉNDEZ

Agueda MAS PASTOR

Andrea VALISA

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.