OPPOSITION No B 2 505 082

Pawan Kumar Bhandari, Berliner Str. 7, 64546 Moerfelden, Germany, (opponent), represented by Tergau & Walkenhorst - Patentanwälte Rechtsanwälte, Eschersheimer Landstraße 105-107, 60322 Frankfurt am Main, Germany (professional representative)

a g a i n s t

AFN Enterprises, 63-II Lane-15, Khayabane-Badban Phase-VII DHA, Karachi, Pakistan (applicant), represented by Polopatent, Dr. Fleming 16, 28036 Madrid, Spain (professional representative).

On 17/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 505 082 is partially upheld, namely for the following contested goods:

Class 30: Rice

2. European Union trade mark application No 13 595 814 is rejected for all the above contested goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 595 814, namely against all the goods in Class 30. The opposition is based on European Union trade mark registration No 4 203 964. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

According to Rule 15 (3) (a) EUTMIR the notice of opposition shall contain the indication of the goods and services, against which the opposition is directed. It has to be noted that the opponent directed in its notice of opposition of 08/04/2015 the opposition against the goods in Class 30 of the contested application only, namely : Rice; Coffee, tea, cocoa and artificial coffee; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice and based its opposition on all its goods in Class 30. In its brief of 27/07/2015, one might understand that it expanded the scope of the opposition against the goods in Classes 29 and 32 as if the opposition was directed against all the goods of the contested application. However, the broadening of the scope of the opposition is not admissible after the end of the three month opposition period for reasons of legal certainty. Indeed such a broadening of the scope of the opposition would harm the interests and rights of the applicant without any legitimate reason. Therefore the Opposition Division will examine the opposition only with respect to those goods which were indicated in the notice of opposition of 08/04/2015.

In its submission of 23/06/2016, the opponent limited the basis of its opposition to rice in Class 30.

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 mark on which the opposition is based, European Union trade mark No 4 203 964.

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

The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 26/01/2010 to 25/01/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 30: Rice.

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 26/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/01/2016 to submit evidence of use of the earlier trade mark. On 25/01/2016, 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:

Item 1: 30 invoices in euros issued by a German company, Global Foods Trading GmbH, to various clients in Denmark, Germany, Spain, France, the Netherlands and Austria between January 2013 and June 2015. The invoices reflect sales of, inter alia, ‘HEER’ products in relation to various kinds of rice in packages of 5, 10 or 20 kg. The invoices show considerable amounts of sales of rice products under the trade mark ‘HEER’.

Item 2: seven invoices in euros issued by a German company, Global Foods Trading GmbH, to various clients in Germany between February and November 2014. The invoices reflect sales of, inter alia, ‘HEER’ products in relation to minced ginger, minced garlic, minced red chilli, tamarind and date sauce, mint chutney, crushed chillies, chilli powder – extra hot, sweet mango chutney and chapatti atta flour. The prices and amounts of sales have been hidden. They show low sales volumes of the various spices and sauces, which are presented in packages of a few grams or millilitres, as well as of chapatti atta flour, which is presented in packages of 10 kg.

Item 3: 25 leaflets from Global Foods Trading GmbH containing special offers for food products for Germany and Spain for periods between May 2012 and February 2015. Although the opponent mentions 26 leaflets in its observations, one leaflet is repeated. Among the products offered there are various kinds of rice under the trademark ‘HEER’.

Item 4: five undated pictures of packaged products stacked on pallets in a warehouse. Some stacks have place indications in Austria and Germany (Wien and Paderborn). The pictures show goods under, inter alia, the trade mark ‘HEER’ for basmati rice. This item also includes an internal document from Global Foods Trading GmbH dated 19/06/2015, showing the shipment of various kinds of rice under the trade mark ‘HEER’.

Item 5: an internal document from Global Foods Trading GmbH, dated 19/06/2015, listing deliveries of various kinds of rice under the trade mark ‘HEER’ during the years 2013 to 2015 to clients in, inter alia, Germany, Spain, France and Austria.

Item 6: 20 undated sheets containing seven advertising posters showing rice goods under the trade mark ‘HEER’, a picture of a truck with this trade mark and rice products depicted on it, and 12 images of the products and their packaging in relation to various kinds of rice under the trade mark ‘HEER’. The indications of the product, ingredients, best-before date and cooking instructions printed on the packaging appear in several languages such as Dutch, English, French, German, Italian, Portuguese and Spanish.

Item 7: an extract from the Commercial Register dated 01/07/2015 regarding the enterprise Global Foods Trading GmbH, showing that the EUTM proprietor is the owner of the company.

Three undated images of the packaging of food products, namely tamarind and date chutney (240 ml), chilli powder – extra hot (100 g) and superior Indian atta wheat flour (10 kg), under the trade mark ‘HEER’. The indications of the product, ingredients and best-before date printed on the packaging appear in several languages such as Dutch, English, French, German, Italian, Portuguese and Spanish.

The invoices, leaflets, delivery list and pictures of the products and their packaging show that the place of use is mostly Germany and Spain, but also several other EU countries such as Denmark, France, the Netherlands and Austria. This can be inferred from the addresses and currency of the invoices, the indication of the countries of destination in the leaflets, the pictures of products packaged to be shipped and the list of deliveries, as well as from the language of the indications that appear on the packaging of the goods. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the EUTM proprietor’s mark within the relevant period. This is because it refers to use of the trade mark within the period, namely the internal document from Global Foods Trading GmbH showing deliveries of various kinds of rice, or because the use to which it refers is very close in time to the relevant period, namely some invoices and leaflets.

There are also some undated documents, in particular the pictures of the products and the advertising posters, but the opposition division considers that these contribute to determining the nature of the use made during the relevant period.

Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use which falls into the relevant period.

The documents filed, namely invoices, leaflets, delivery lists and pictures of the products and their packaging provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Concerning the nature of use, this requires in the context of Rule 22(3) EUTMIR further evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 15(1) (a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

The denominative trade mark ‘HEER’ appears as such in the invoices and delivery list, while in the remaining documents showing the trade mark on the products it is depicted as follows, or with slight variations as regards the colours and positions of its constituent elements:

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

It is appropriate to consider whether the form in which the earlier trade mark is used contains differences which affect its distinctive character or whether, despite the differences, the figurative mark used and the earlier right have the same distinctive character. First, the distinctive character of the earlier right must be clarified. Then, it must be considered whether or not the mark as used alters this distinctive character.

Although the use of the earlier mark varies and in certain items of evidence takes a different form from that registered as a denominative sign (consisting of the denominative element ‘HEER’), this does not affect its distinctive character, as the element ‘HEER’ is visually eye-catching because of its large, black lettering and because the two figures are depicted in a lighter, less eye-catching colour.

Furthermore, this figurative depiction may be perceived as a reference to the origin of the product, that is, Pakistan or the Indian subcontinent. In such a scenario, this figurative element is weak for the relevant goods and secondary to the dominant verbal element ‘HEER’. Consequently, use is shown of the earlier right in a form which does not alter its distinctive character.

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).

The evidence filed by the opponent does show genuine use of the trade mark for the goods on which the opposition is based, namely rice in Class 30.

Based on the above analysis the Opposition Division comes to the conclusion that the opponent successfully proved the genuine use of the earlier mark for rice.

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 30: Rice

The contested goods are the following:

Class 30: Rice; Coffee, tea, cocoa and artificial coffee; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.

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.

Rice is identically contained in both lists of goods in Class 30 and therefore identical.

The mere fact that the contested goods and the goods protected by the earlier mark are foodstuffs is not necessarily sufficient for a finding of similarity, as neither is the mere fact that one ingredient is needed for the preparation of a foodstuff, as those circumstances will generally not be sufficient in themselves to show that the goods are similar, even though they all fall under the general category of foodstuffs (26/10/2011, T‑72/10, Naty’s, EU:T:2011:635, § 35-36). When comparing their specific nature and specific purpose, i.e. rice on the one hand and on the other the contested goods they might be all foodstuffs, however, this slight connection, does not preclude that their nature is different. Rice is a basic foodstuff of plant origin which requires prior preparation before it is in a form to be consumed. The same applies to the purpose; the intended purpose should not be defined as “human consumption” which is the general purpose that all foodstuffs share.

These considerations apply to the remaining goods, namely Coffee, tea, cocoa and artificial coffee; Tapioca and sago; Flour; Bread, ; Sugar, honey; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); they all are different products and have a different purpose as rice. Furthermore they differ in their method of use, are to be found in different sections of supermarkets and have different producers. Therefore they are dissimilar to rice.

Concerning preparations made from cereals; pastry and confectionery; Ices; Ice; treacle and spices it has to be noted that even if they are all for a general human consumption purpose, again they are all different products and are by definition of a different nature as rice. The purpose of spices is “everyday seasoning” or as regards preparations made from cereals their purpose is “cereal consumption”. Pastry and confectionery; Ices; Ice; treacle are different in nature as well, as they are “sweet desserts” and not a basic plant foodstuff. Additionally those goods do not usually coincide in producers, are not placed in the same spots of distribution channels and are not in competition. They are therefore dissimilar.

1. 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. The degree of attention is considered to be low, as rice is a cheap good for daily consumption.

2. The signs

HEER
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 Spanish-speaking part of the relevant public.

The earlier mark is a word mark.

The contested sign is a figurative mark. It consists of the white letters HEER and some seemingly white Arabic signs, put in a red kind of ribbon which is on its lower side adorned with red dots. Above the ribbon a woman in a blue dress with a red coat also covering her hair is depicted, and she holds a kind of a jar in her hands. To the left and the right side of the woman, what seem to be rice paddies are depicted.

The verbal element ‘HEER’ does not have, for the relevant Spanish-speaking public, any meaning that could convey information about the nature, qualities, commercial origin or other characteristics of the goods concerned. The element ‘HEER’ is perceived as a fanciful word, completely arbitrary per se and, in particular, in relation to the goods concerned.

However, given that the contested sign should be used for rice, the rice paddies are of weak distinctive character, and the red ribbon as well as it is of commonplace nature.

The contested mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs have a certain degree of similarity because the letters ‘HEER’ of the earlier right are identically contained in the contested sign. However, they differ with regard to all the other elements of the contested sign which do not have any counterpart in the earlier right. While the opponent’s trade mark is composed of a single word, the contested mark is a complex label that is characterised by one verbal and several figurative elements that have no counterpart in the earlier mark.

Account must be taken of the fact that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Furthermore, the word element ‘HEER’ is placed at the left side of the contested sign and since consumers start to read from left to right, their attention will first be captured by this verbal element.

Therefore, the signs are visually similar to an average degree, as the earlier right is identically contained in the contested sign and is clearly visible at the beginning of the contested sign and the further elements of it are of decorative nature.

Aurally, the pronunciation of the signs by the Spanish-spaking public coincides in the sound of the letters ‛HEER’, present identically in both signs.

The word ‘HEER’ of the contested sign is clearly separate from the other elements and the Arabic signs will not be pronounced by the relevant public.

Therefore, the signs are aurally identical.

Conceptually, the public in the relevant territory will perceive the verbal element ‘HEER’ contained in both signs, and which is the only coinciding element, as an invented word; it is therefore meaningless for the Spanish-speaking public.

The figurative elements of the contested sign will be associated with the meanings as described above. Since the earlier sign lacks any meaning in that territory and will not be associated with any meaning, the 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.

3. 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 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.

4. Global assessment, other arguments and conclusion

The opponent’s mark ‘HEER’ is included in the contested sign.

The word ‘HEER’ is clearly visible as an independent and autonomous element in the contested sign. Some of the figurative elements of the contested sign are either of commonplace nature or of weak distinctive character, as seen above.

Therefore, they cannot overshadow or eclipse the word ‘HEER’. The possibility that consumers will perceive this element and associate it with the earlier sign remains unaltered. It is therefore likely that consumers will be confused about the commercial origins of the goods due to the presence in the signs of the distinctive word ‘HEER’.

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).

Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The goods are partly identical and partly dissimilar.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As part of the goods are identical and due to the visual similarity and aural identity, a likelihood of confusion exists, as Spanish-speaking consumers could be led to assume that there is an economic connection between the parties. It is not unlikely, considering the facts and arguments presented above, that the Spanish consumer would believe that there was a licence (or some kind of endorsement or other commercial agreement) between the parties. The position and size of the word ‘HEER’ in the contested label could warrant this assumption.

The differences between the signs are confined to weak or secondary elements and aspects.

Considering all the above the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration concerning the identical goods. 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. However this only holds true for the goods found to be identical, namely rice.

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)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

It follows from the above that the contested trade mark application must be rejected for the goods found to be identical to those of the earlier trade mark, namely rice.

For those goods which were found to be dissimilar, the opposition has to be rejected.

For the sake of completeness it should be added that the opponent invoked in its notice of opposition also Article 8(1)(a) EUTMR. However, since the signs are obviously not identical, this ground of opposition must fail.

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

The Opposition Division

Plamen IVANOV

Karin KLÜPFEL

Ana MUÑIZ RODRÍGUEZ

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.