OPPOSITION No B 2 557 687

OPPOSITION DIVISION

OPPOSITION No B 2 557 687

ABO Holding Zrt. (private limited company by shares), Nyíregyháza, Simai u. 6., 4400, Hungary (opponent), represented by Zsolt Salamon, ABO Holding Zrt. (private limited company by shares), Nyiregyhaza, Napfeny u. 41., 4400, Hungary (employee representative)

a g a i n s t

SC Atifco Fine Food SRL, Soseaua de Centura Nr. 2-8, 77025 Bragadiru, Romania (applicant).

On 04/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 557 687 is partially upheld, namely for the following contested goods and services:

Class 30: Processed grains, starches, and goods made thereof, baking preparations and yeasts; Cereals; Flour; Adlay flour for food; Barley flour [for food]; Barley meal; Bean meal; Buckwheat flour [for food]; Cake flour; Cereal flour; Cereal powders; Chinese batter flour; Corn flour; Corn flour [for food]; Corn, milled; Crushed barley; Deproteinised flour for use in the production of beer; Dough flour; Enriched farina [meal]; Farina [meal]; Farinaceous food pastes for human consumption; Flour based chips; Flour based savory snacks; Flour concentrate for food; Flour for doughnuts; Flour for making dumplings of glutinous rice; Flour mixes; Flour of millet; Flour of oats; Flour of rice; Flour ready for baking; Groats for human food; Kasha [meal]; Mixed flour for food; Mustard meal; Nut flours; Oilseed flour for food; Pizza flour; Potato flour; Pulse flour for food; Rice starch flour; Rye flour; Semolina; Soya flour; Soya flour for food; Sweet potato starch for food; Tapioca flour; Unsorted wheatflour; Vegetable flour; Wheat flour; Wheat flour [for food]; Wheat starch flour; Barley flakes; Barley prepared for human consumption; Bran preparations for human consumption; Bread improvers being cereal based preparations; Cereal based foodstuffs for human consumption; Cereal seeds, processed; Cereals for use in making pasta; Cereals prepared for consumption by humans; Corn starch [for food]; Corn starch derivatives in powder form for making into drinks; Couscous [semolina]; Dried pieces of wheat gluten (fu, uncooked); Extruded food products made of maize; Extruded food products made of wheat; Extruded snacks containing maize; Flaked wheat; Foods produced from baked cereals; Foodstuffs made from cereals; Foodstuffs made from maize; Foodstuffs made from oats; Glazed popcorn; Gruel, with a milk base, for food; Husked barley; Maize (Processed -) for consumption by humans; Malted barley prepared for human consumption; Malted wheat; Modified corn starch; Oat-based food; Oatmeal; Oatmeal for human consumption; Oats for human consumption; Pearl barley [prepared]; Polenta; Popcorn; Pounded wheat; Processed corn; Processed oats; Processed oats for food for human consumption; Processed semolina; Processed teff; Processed wheat; Rolled oats and wheat; Rye full grain grist; Sago; Wheat germ; Wheat germ [other than a dietary supplement]; Wheat germ for human consumption; Whole wheat grains being cooked; Whole wheat grains being dried; Whole wheat grains being precooked; Whole wheat grains being preserved; Corn flakes; Red bean porridge (patjuk); Ready-to-eat cereals; Porridge oats; Muesli desserts; Muesli consisting predominantly of cereals; Muesli; Instant porridge; Hot breakfast cereals; Hominy; Food mixtures consisting of cereal flakes and dried fruits; Breakfast cereals made of rice; Breakfast cereals flavoured with honey; Breakfast cereals containing honey; Breakfast cereals containing fruit; Breakfast cereals containing fibre; Breakfast cereals containing a mixture of fruit and fibre; Breakfast cereals; Breakfast cereals, porridge and grits; Cereal-based snack food; Cereal snack foods flavoured with cheese; Corn, roasted; Flour of corn; Corn, milled; Cornmeal; Cornflour; Cornflakes; Flaked corn; Flakes (Corn -); Corn flour; Corn (Processed -); Corn (Pop -); Fried corn; Processed corn; Corn meal; Corn flakes; Kettle corn [popcorn]; Corn starch flour; Snack foods made from corn; Seaweed flavoured corn chips; Vegetable flavoured corn chips; Snack foods made from corn and in the form of puffs; Snack foods made from corn and in the form of rings.

Class 35: Retail services in relation to foodstuffs; Retail services in relation to baked goods; Retail services relating to food; Wholesale services in relation to foodstuffs.

2. European Union trade mark application No 13 959 821 is rejected for all the above goods and services. It may proceed for the remaining 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 13 959 821, namely goods and services in Classes 30, 35 and 39. The opposition is based on Hungarian trade mark registration No 209 287 and Hungarian and Rumanian non-registered trade marks. The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR in relation to the Hungarian trade mark registration and Article 8(4) EUTMR in relation to the Hungarian and Rumanian non-registered trade marks.

Earlier trade marks

(registered and non-registered)

Contested sign

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, namely Hungarian trade mark registration No 209 287.

According to Article 42(2) and (3) EUTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

In the present case the contested trade mark was published on 07/05/2015, whilst the earlier Hungarian trade mark registration No 209 287 was registered on 23/05/2012.

Therefore, the request for proof of use is inadmissible because it concerns a mark that, at the date of publication of the contested trade mark, had not been registered for at least five years.

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 goods and services

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

Class 30: Corn grit; food preparation and meal based on maize.

The contested goods and services are the following:

Class 35: Advertising, marketing and promotional services; Product demonstrations and product display services; Advertising, marketing and promotional consultancy, advisory and assistance services; Advertising; Advertising and marketing; Advertising in periodicals, brochures and newspapers; Advertising in the popular and professional press; Advertising of the goods of other vendors, enabling customers to conveniently view and compare the goods of those vendors.; Advertising relating to transport and delivery; Arrangement of advertising; Arranging and placing of advertisements; Arranging of product launches; Banner advertising; Digital advertising services; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Commercial trading and consumer information services; Retail services in relation to foodstuffs; Retail services in relation to baked goods; Retail services relating to food; Wholesale services in relation to foodstuffs.

Class 39: Packaging and storage of goods; Transport; Crating of goods; Filling of containers; Food storage services; Packing of food; Storage; Storage and delivery of goods; Storage of agricultural foodstuffs; Storage of commercial goods; Subdividing and repackaging of goods; Transportation and storage; Wrapping and packaging of goods; Wrapping of goods; Arranging the shipping of goods; Arranging transportation of goods; Delivery by road; Delivery of goods; Delivery of goods by rail; Delivery services; Distribution [transport] of goods by road; Distribution [transport] of goods by sea; Distribution services; Distribution [transport] of goods by air; Distribution [transport] of retail goods; Food delivery services; Forwarding of goods; Loading of goods; Transport of goods; Truck transport; Transportation and delivery services by air, road, rail and sea; Transportation of food; Food transportation services.

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.

Contested goods in Class 30

The earlier right has protection for ground corn maize (corn grits) and food preparations and meal based on maize.

The contested processed grains and starches; corn, milled; cereals prepared for consumption by humans; maize (processed -) for consumption by humans; processed corn; corn, milled; corn (processed -); processed corn include, as broader categories, the opponent’s corn grits. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested goods made thereof [processed grains and starches]; baking preparations; cereals; flour; cake flour; cereal flour; cereal powders; dough flour; farinaceous food pastes for human consumption; flour based chips; flour based savory snacks; flour concentrate for food; flour for doughnuts; flour mixes; flour ready for baking; mixed flour for food; pizza flour; bread improvers being cereal based preparations; cereal based foodstuffs for human consumption; cereal seeds, processed; cereals for use in making pasta; foods produced from baked cereals; foodstuffs made from cereals; ready-to-eat cereals; hominy; food mixtures consisting of cereal flakes and dried fruits; hot breakfast cereals; breakfast cereals; breakfast cereals and grits; cereal-based snack food; cereal snack foods flavoured with cheese include, or overlap, as broader categories, the opponent’s food preparations based on maize. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested enriched farina [meal]; farina [meal] include, as broader categories, the opponent’s meal based on maize. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested corn flour; corn flour [for food]; corn starch [for food]; corn starch derivatives in powder form for making into drinks; extruded snacks containing maize; extruded food products made of maize; foodstuffs made from maize; glazed popcorn; modified corn starch; popcorn; corn flakes; corn, roasted; flour of corn; cornmeal; cornflour; cornflakes; flaked corn; flakes (corn -); corn flour; corn (pop -); fried corn; corn meal; corn flakes; kettle corn [popcorn]; corn starch flour; snack foods made from corn; seaweed flavoured corn chips; vegetable flavoured corn chips; snack foods made from corn and in the form of puffs; snack foods made from corn and in the form of rings are all food preparations made from corn. They are, therefore, included in the opponent´s food preparations based on maize and are considered identical to the opponent’s goods.

The contested adlay flour for food; barley flour [for food] ; buckwheat flour [for food] ; chinese batter flour; deproteinised flour for use in the production of beer; flour for making dumplings of glutinous rice; flour of millet; flour of oats; flour of rice; nut flours; oilseed flour for food; potato flour; pulse flour for food; rice starch flour; rye flour; soya flour; soya flour for food; tapioca flour; unsorted wheatflour; vegetable flour; wheat flour; wheat flour [for food]; wheat starch flour are similar to the opponent’s food preparations based on maize as they have a similar nature (the contested goods are all flours whilst the earlier goods includes corn flour) and purpose and are likely to come from similar manufacturers. Furthermore, they will be available via the same distribution channels and can be interchangeable or in competition with one another.

The contested barley meal; bean meal; kasha [meal]; mustard meal; oatmeal; oatmeal for human consumption are similar to the opponent’s meal based on maize as they have a similar nature (they are all the edible whole or coarsely ground grains) and purpose and are likely to come from similar manufacturers. Furthermore, they will be available via the same distribution channels and can be interchangeable or in competition with one another.

The contested crushed barley; groats for human food; semolina; sweet potato starch for food; barley flakes; barley prepared for human consumption; bran preparations for human consumption; couscous [semolina]; dried pieces of wheat gluten (fu, uncooked); extruded food products made of wheat; flaked wheat; foodstuffs made from oats; gruel, with a milk base, for food; husked barley; malted barley prepared for human consumption; malted wheat; oat-based food; oats for human consumption; pearl barley [prepared]; polenta; pounded wheat; processed oats; processed oats for food for human consumption; processed semolina; processed teff; processed wheat; rolled oats and wheat; rye full grain grist; sago; wheat germ; wheat germ [other than a dietary supplement]; wheat germ for human consumption; whole wheat grains being cooked; whole wheat grains being dried; whole wheat grains being precooked; whole wheat grains being preserved; red bean porridge (patjuk); porridge oats; muesli desserts; muesli consisting predominantly of cereals; muesli; instant porridge; breakfast cereals made of rice; breakfast cereals flavoured with honey; breakfast cereals containing honey; breakfast cereals containing fruit; breakfast cereals containing fibre; breakfast cereals containing a mixture of fruit and fibre; breakfast porridge are all goods consisting of, or based on, ground cereals or other plants. They are considered to be similar to the opponent’s food preparations based on maize as they have a similar nature (the earlier goods include the same food items which only differ in the use of corn) and purpose and are likely to come from similar manufacturers. Furthermore, they will be available via the same distribution channels and can be interchangeable or in competition with one another.

Finally, the contested yeasts are considered to be similar to the opponent’s food preparations based on maize (which includes corn flour) as they can coincide in producer, end user and distribution channels.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services in relation to foodstuffs; retail services in relation to baked goods; retail services relating to food; wholesale services in relation to foodstuffs are similar to a low degree to the opponent’s corn grit; food preparation and meal based on maize, as these goods must be considered to be included in the opponent’s broad categories of foodstuffs, baked goods and food.

However, the contested advertising, marketing and promotional services; product demonstrations and product display services; advertising, marketing and promotional consultancy, advisory and assistance services; advertising; advertising and marketing; advertising in periodicals, brochures and newspapers; advertising in the popular and professional press; advertising of the goods of other vendors, enabling customers to conveniently view and compare the goods of those vendors.; advertising relating to transport and delivery; arrangement of advertising; arranging and placing of advertisements; arranging of product launches; banner advertising; digital advertising services; publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; commercial trading and consumer information services are either advertising services or the provision of commercial or consumer information. These services have the purpose of assisting others in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity or the provision of information.

When compared with the opponent’s goods it is clear they are dissimilar. The nature of these goods and services is different since services are intangible whereas goods are tangible. Furthermore the purpose of the goods (for nourishment, to serve as an ingredient) is clearly very different from the services (to promote the sale of goods and services or provide information). Furthermore, these goods and services do not have a similar method of use, do not come from the same providers (agricultural companies vs. advertising agencies, business consultants) nor are they available through the same distribution channels. It is true that the opponent’s goods may appear in advertisements or be the subject of publicity events. However, this is insufficient by itself to find these services similar to these goods because consumers will not associate the goods that appear in the advertisements as being related to the provider of the advertising services. Consequently, these contested services are dissimilar to the opponent’s goods.

Contested services in Class 39

As already stated above the opponent’s trade mark has protection for ground corn maize (corn grits) and food preparations and meal based on maize.

The contested services in Class 39 are all related to transport, packaging and storage of goods. Obviously the opponent’s goods will be packed, stored and transported as some stage. However, this is insufficient to find these services similar to these goods. The nature of these goods and services is different since services are intangible whereas goods are tangible. Furthermore, the purpose of the goods (for nourishment, to serve as an ingredient) is clearly very different from the services (to move or securely and safely keep items). Furthermore, these goods and services do not have a similar method of use, do not come from the same providers (agricultural companies vs. freight companies) nor are they available through the same distribution channels. Consequently, all the contested services in Class 39 are dissimilar to the opponent’s goods.

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 are services found to be identical and similar to various degrees are directed at the public at large and at professionals who may also purchase ingredients such as flour. However, bearing in mind the type of goods and services in question, namely foods, food ingredients and services related to selling, the Opposition Division finds that the degree of attention will be average.

The signs


Earlier trade mark	Contested sign

The relevant territory is Hungary.

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 earlier mark is a figurative mark. It consists of a central device combining verbal and figurative elements which is then mirrored on the horizontal axis resulting in an inverted representation appearing beneath it. The elements of this central element are, from top to bottom, a figurative letter ‘A’, ‘Agri-mill’, ‘e0,5 kg’, ‘Kukoricadara’ in orange and, in a much smaller font size, ‘Eleimezesi ceira’. All these elements are placed on a beige background. This central device appears surrounded by a white rectangle which in turn is flanked on its vertical sides by two decorative borders each consisting of the following elements (described from the edges going inwards) a smudgy pale grey band, a continuous black line, an intermittent black line and another continuous black line.

The contested sign is also a figurative mark. It consists of a central device combining verbal and figurative elements which is then mirrored on the horizontal axis resulting in an inverted representation appearing beneath it. The elements of this central element are, from top to bottom, a verbal and figurative oval device (see below for a description of this device), ‘Kukoricadara’ in red and, in a much smaller font size, ‘Eleimezesi ceira’. The verbal and figurative oval device consists of the words ‘Atifco foods’, written one above the other with the first element larger than the second one, three mountain peaks located above and behind the word ‘Atifco’ and the elements are bordered or enveloped by a ribbon. All these elements are placed on a beige background. This central device appears surrounded by a white rectangle which in turn is flanked on its vertical sides by two decorative borders each consisting of the following elements (described from the edges going inwards) a smudgy pale beige band, a continuous black line, an intermittent black line and another continuous black line.

The words ‘Kukoricadara’ and ‘Eleimezesi ceira’, present in both signs, will be understood by the relevant public as meaning, respectively, grits and for human consumption. Bearing in mind that some of the goods are grits or other similar milled corn preparations and even more are for human consumption they are considered non-distinctive for the goods and services in question. The ‘e0,5 kg’ present in the earlier mark, will be understood as an indication of weight, and therefore will be non-distinctive for the goods and services in question.

The figurative elements of the sign are in general decorative elements, for example the lines and beige backgrounds, and these elements will be weak as consumers are used to seeing signs with such decorative elements and will pay them less attention.

The dominant element in both signs is, given their size, position and colour, the verbal element ‘Kukoricadara’ and its inverted mirror image.

Visually, the signs have obvious similarities in that the layout and presentation of the elements that make up the signs, including the use of colour, are very similar. Against this it must however be remembered that the majority of these elements (‘Kukoricadara’, ‘Eleimezesi ceira’ and the figurative elements) are either non-distinctive or weak for the reasons described above, and the most distinctive elements, namely the figurative devices consisting of the figurative ‘A’ and ‘Agri-mill’ in the earlier mark and the oval device including the words ‘Atifco foods’ in the contested sign are the most distinctive elements. However, these elements are clearly not the most dominant elements of the signs.

Bearing in mind the above, the Opposition Division finds that the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the words ‘Kukoricadara’ and ‘Eleimezesi ceira’ present identically in the signs. The pronunciation differs in the sound of the elements ‘A’, ‘Agri-mill’ and ‘e0,5 kg’ in the earlier mark and ‘Atifco foods’ in the contested sign. However, bearing in mind the distinctiveness and visual impact of the various verbal elements, the Opposition Division finds that the signs are aurally dissimilar as the earlier mark will be referred to as ‘Agri-mill’ whilst the contested sign will be referred to as ‘Atifco foods’.

Therefore, the signs are aurally dissimilar.

Conceptually, the similarity of meaning engendered by the presence of ‘Kukoricadara’ and ‘Eleimezesi ceira’ in both signs is tempered by the level of distinctiveness that these elements have as detailed above. Therefore, the similarity caused by these elements has little impact on the relevant consumer. Likewise, the conceptual difference introduced by the presence of the non-distinctive ‘e0,5 kg’ also has little impact on the relevant consumer. The only other clearly perceived concept is that of the mountains in the oval device of the contested sign although this is rather small so it is unlikely it will be perceived by the entire public. Consequently, either one of the signs will have a partial meaning, attributed to the figurative mountains, in which case the signs are not conceptually similar or neither of the signs will have a meaning in which case a conceptual comparison is not possible and therefore the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 trade mark has a reputation in Hungary in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence to support the claim of reputation:

Appendix 1: A one page document entitled “AGRI-MILL KUKORICADARA Sales Data”. It shows yearly sales ranging from EUR 245,819 to EUR 1,738,199. The document appears as an internal document (spreadsheet) in English. The trade mark as such does not appear nor is there any information regarding the place of sales.

Appendix 2: Two documents (with translations) from Romanian clients listing quantities of AGRI-MILL Corn grits. The quantities are in the hundreds of thousands of kilos and the figures provided come from 2005 and 2007 up to 2015. The trade mark does not appear.

Appendix 3: Three export contracts between customers in Romania and the opponent or the opponent’s predecessor. The contracts are dated 05/01/2007, 11/06/2012 and 03/09/2012, show that the goods concerned are corn grits and two of the contracts state that the packaging is “0,5kg/unit, BOPP foil packaged, Agrimill mark”. However, the mark as registered does not appear.

Appendix 4: Trade mark consent agreement in Hungarian with translation into English, dated 10/02/2011. The agreement is between the opponent and ‘predecessor’ and refers to the mark as registered. The agreement states the following:

that the predecessor is the exclusive beneficiary of the trade mark;
that it has been used without registration in Hungary and Romania on Class 30 corn flour/corn meal since 06/11/2004;
that the parties know the mark and sign represents significant distinctiveness among customers in Hungary and Romania due to intensive use and marketing.

Appendix 5: Seven invoices showing the sale of maize grits to one customer in Romania. The invoices are dated from 02/09/2004 to 03/03/2006 and shows sales of EUR 65,500 in total. The mark as registered does not appear, but the invoices refer to Agrimill.

Appendix 6: A one page document entitled “ABO Holding ZRT and Predecessor Purchase of AGRIMILL Packaging foil”. The document shows the years 2005 to 2015, two suppliers and two items and then a number (usually in the thousands) for each of these elements. The exact nature of the number is not explained but presumably it shows either the number of packing items purchased or the value of the items purchased. The document appears as an internal document (spreadsheet) in English. The trade mark as such does not appear nor is there any information regarding the place of operation.

Appendix 7: A four page document from Kajári és Fia Kft (one of the suppliers that appears in Appendix 6) listing billings made to the opponent and its predecessor from 2004 to 2012. The billings amount to a total of approximately 114 million Hungarian Forint, but there is no indication of the goods or services provided.

Appendix 8: Resolution on change of company name of the predecessor company from 04/05/2005. It does not refer to the goods or the mark and only corroborates the relationship between the opponent’s predecessor companies.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through its use.

Enhanced distinctiveness requires recognition of the mark by the relevant public for the goods and/or services it covers.

In the present case the evidence consists of documents from the opponent, documents showing sales to customers in Romania and documents from suppliers. The only document which refers to an enhanced distinctiveness directly is the opponent’s Trade mark consent agreement (appendix 4) which makes a broad statement that mark and sign has significant distinctiveness among customers in Hungary and Romania due to intensive use and marketing. This is not backed up by the other documents. The evidence which has been filed, whilst showing clients and suppliers, does not show the scale of the use, such as evidence regarding market shares, the size of the investment made to promote the trade mark (invoices from advertising agencies or examples of advertising) or evidence from independent sources show the public awareness, such as evidence to provide indications as regards the market share of the trade marks or that the trade marks are known by a significant part of the relevant public.

Therefore, the evidence does not provide any indications as to the degree of recognition achieved by the mark. It should also be mentioned, for completeness, that the mark as registered appears only once in the evidence, in appendix 4. For the opponent’s claim to an enhanced degree of distinctiveness to be proved, it would be reasonable to expect that the opponent should have been able to present more instances of the registered mark in situations where it would appear in front of the relevant consumer such as brochures, price lists, advertisements, third part reviews, etc.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on their distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory, despite the presence of non distinctive elements as mentioned in section c) above. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (20/09/1998, C-39/97, Canon, EU:C:1998:442, § 17 et seq.). This is of importance to the current case, as the services are either only similar or similar to a low degree but the signs are visually and conceptually highly similar.

As has been concluded above, the contested goods and services are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods. They are directed at the public at large and at professionals who may also purchase ingredients and the degree of attention will be average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness, at least by a part of the relevant public, and the marks in dispute have been found to be visually highly similar and aurally dissimilar.

Account must also be 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).

Furthermore, the visual similarity between signs may also have an increased importance where the goods are ordinary consumer products that are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided more by the visual impact of the mark they are looking for. The goods in this case are such goods.

Bearing in mind the above, the Opposition Division finds that the overall high degree of visual similarity between the signs will cause a likelihood of confusion on the part of the relevant public. This is even bearing in mind that some of the elements that appear visually similar are non distinctive or weak for some of the goods. The signs have such a similar composition that the average consumer would confusion the signs.

Therefore, the opposition is partially well founded and the contested sign must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark. In addition, given the high degree of similarity between the signs it must also be rejected for the services found to be similar only to a low degree.

The rest of the contested 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 services cannot be successful.

The Opposition Division will now continue the examination on the ground of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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.

Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above the evidence was insufficient to prove enhanced distinctive character and as reputation requires a higher threshold this evidence must also be considered insufficient to prove the reputation of the earlier mark. In view of the cumulative nature of this provision, it is redundant to analyse any further given that this condition has not been fulfilled.

Therefore, the opposition is not well founded under Article 8(5) EUTMR.

The Opposition Division will now continue the examination on the ground of Article 8(4) EUTMR.

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

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.

The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide the EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis‑à‑vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the earlier non-registered trade marks. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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

Tobias KLEE

Ric WASLEY

Begoña URIARTE VALIENTE

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.

Latest News

FEDERAL CIRCUIT AFFIRMS TTAB DECISION ON REFUSAL
May 28, 2021
For the purpose of packaging of finished coils of cable and wire, Reelex Packaging Solutions, Inc. (“Reelex”) filed for the registration of its box designs under International Class 9 at the United States Patent and Trademark Office (“USPTO”).
THE FOURTH CIRCUIT DISMISSES NIKE’S APPEAL OVER INJUNCTION
May 27, 2021
Fleet Feet Inc, through franchises, company-owned retail stores, and online stores, sells running and fitness merchandise, and has 182 stores, including franchises, nationwide in the US.
UNO & UNA | DECISION 2661950
May 22, 2021
Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom (professional representative)