OPPOSITION No B 2 525 353

Flying Trade Limited, 4 Europa House, Europa Way, Harwich, Essex CO12 4HA, United Kingdom (opponent), represented by Kennedys Law LLP, 25 Fenchurch Avenue, London EC3M 5AD, United Kingdom (professional representative)

a g a i n s t

Przedsiębiorstwo Produkcyjno-Handlowo-Usługowe ‘Konspol-Bis’ Spółka Z Ograniczoną Odpowiedzialnością, ul. Poznańska 39, 62 400 Słupca, Poland (applicant), represented by Łukasz Andrzejczak, ul. Burakowska 16 lok. 253, 01-066 Warszawa, Poland (professional representative).

On 20/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 525 353 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 13 731 823 for the word mark ‘SALAAM FOODS’. The opposition is based on United Kingdom trade mark registration No 2 416 763 for the word mark ‘SALAAM’. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

The contested sign was published on 18/02/2015 and the opposition period lapsed on 18/05/2015. The opponent filed the notice of opposition on 15/05/2015, indicating that the opposition is based on its earlier United Kingdom trade mark registration No 2 416 763. In its later submissions of 07/10/2015, the opponent indicated that it is also the owner of earlier European Union trade mark registration No 11 830 122 and that this does not require substantiation.

Considering that the opponent mentioned its earlier European Union trade mark registration for the first time after the opposition period had lapsed, this earlier right is inadmissible as a basis for 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.

1. The goods

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

Class 30: Rice and rice products.

The contested goods are the following:

Class 29: Smoked meats; mincemeat [chopped meat]; salted meats; sausage meat; dried meat; meat, tinned [canned (am.)]; fresh meat; frozen meat; fried meat; meats; turkey meat; meat boiled down in soy sauce (tsukudani meat); sliced meat; prepared meat; canned cooked meat; prepared meals made from meat [meat predominating]; chicken; fried chicken; cooked chicken; dehydrated chicken; chicken pieces; deep frozen chicken; chicken salad; chicken nuggets; pieces of chicken for use as a filling in sandwiches; prepared meals containing [principally] chicken; cooked dish consisting primarily of chicken and ginseng (samgyetang); cooked dish consisting primarily of stir-fried chicken and fermented hot pepper paste (dak-galbi).

Class 30: Pies containing meat; meat pies; meat pies [prepared]; pot pies; fajitas; sandwiches containing chicken; sauces for chicken.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 opponent’s goods include rice, which is a cereal grain used for food; as the type of rice is not specified, this includes any type of rice. The opponent’s rice products are goods made of any type of rice. The contested goods in Class 29 are various kinds of meat products and meals that mainly consist of meat, and the contested goods in Class 30 are prepared meat and meat-based meals and sauces for meat. These goods, despite all being foodstuffs, have different natures (grain and grain products versus meat products and sauces), have different usual commercial origins (different sectors of agriculture and food processing companies), are not interchangeable or in competition with each other and are sold either in different specialist shops or on different shelves in retail outlets. They are therefore considered dissimilar.

The opponent puts forward arguments about the actual use of the goods; however, for the purposes of comparison of the goods, they have to be compared as registered and applied for, as the actual use is a business choice and can be changed at any time. Therefore, the opponent’s argument that all the goods in question belong to the same market segment of ‘world foods’ or target consumers belonging to certain ethnic and religious groups and are, therefore, similar, does not convince the Opposition Division. The fact that some shops sell various goods from specific countries or for a certain group of consumers does not mean that all those goods are similar. Consumers who purchase goods in such shops or from ‘world food’ sections are aware that the goods sold in such shops or sections do not usually originate from the same company, despite being sold in the same place.

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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods are obviously not identical.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent also based its opposition on the ground of Article 8(5) EUTMR, claiming repute in the United Kingdom for its earlier United Kingdom trade mark registration No 2 416 763, ‘SALAAM’.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the United Kingdom.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 11/02/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based, namely the word mark ‘SALAAM’, had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 30: Rice and rice products.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 26/05/2015, the opponent was invited to submit documents to substantiate its claims until 07/10/2015. On 07/10/2015, the opponent submitted the evidence listed below. Any later evidence to prove the reputation of the earlier mark cannot be taken into account, as it was submitted outside the time limit (according to Rule 19(4) EUTMIR).

Appendix 3: a one-page document entitled ‘Scans/copies of Salaam branded promotional and marketing materials (posters, sales brochures, etc.)’. The document shows three promotional posters or flyers offering rice under the earlier trade mark. The document shows a price in pounds sterling (GBP) but it bears no indication of source or date and there is no information about how, where or to what scale these items have been distributed to reach customers.

Appendix 4: an article from ‘The Grocer’s Top Products Survey 2014’ (www.thegrocer.co.uk), dated 20/12/2014, where it is indicated that ‘Salaam’ is in ninth position among rice brands, with sales amounting to GBP 2.3 million, whereas the market leader achieved sales amounting to GBP 136.6 million. This appendix also includes a document entitled ‘The shops/outlets in which Salaam branded goods are sold’. This document states that the opponent has 2 000 customers as well as large United Kingdom supermarkets, but there is no indication of the source of the information and the document is undated.

Appendix 5: four pages of evidence consisting of:

• Two pages, entitled ‘Scans/copies of Salaam branded promotional and marketing materials (posters, sales brochures, etc.)’. The first page shows a poster offering rice for sale under the earlier trade mark. The second page is the same as Appendix 3.

• One page, entitled ‘Salaam Rice’, showing packages of rice bearing a figurative version of the earlier trade mark and, in some cases, a price in pounds sterling.

• One page, which appears to be a flyer, entitled ‘Rice Deals’, showing packages of rice from several producers, including one package bearing a figurative version of the earlier trade mark. All the packages are marked for sale in pounds sterling.

None of these pages are dated or carry an indication of whether or not and how those materials were used and distributed to the relevant public. Furthermore, these items of evidence bear no indication of their source.

Appendix 6: a two-page list of search results from Google.co.uk, which shows the relationship between the search term ‘salaam rice’ and the opponent, dated 06/10/2015.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Despite showing some indications of the presence and use of the trade mark on the market, the evidence provides little information on the extent of such use. The only documents that are dated and contain source indications are the article about sales (Appendix 4) and the list of internet search results (Appendix 6, which, however, is dated outside the relevant period). The remaining documents are of low probative value, as they are undated and the source is not indicated. Although the abovementioned article indicates the sales volumes of the opponent’s company for rice and it can be seen that the opponent’s rice is in ninth position in the market, the information also shows that these sales constitute a market share of 0.58%. From this information alone, the Opposition Division cannot judge if the sales involve a significant part of the relevant public. Indeed, the sales numbers are not, per se, conclusive for the conclusion on whether the mark has a reputation or not and the opponent did not submit any other documents that could allow the Opposition Division to conclude with certainty that the opponent’s mark has a reputation. There is no indication regarding the extent to which the opponent’s trade mark has been promoted (the promotional material is not dated and there is no indication when it reached the consumers, if at all).

As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition 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.

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Martin MITURA

Vita VORONECKAITE

Ric WASLEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.