OPPOSITION No B 2 687 211

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte PARTGMBB, Maximiliansplatz 14, 80333 München, Germany (professional representative)

a g a i n s t

K&A Strategic Ltd, Capital City Building PO Box 1388. Victoria, Mahé, Seychelles, and Katherine Harsant, 16 Culford Gardens, London SW3, United Kingdom (applicants).

On 30/10/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 687 211 is upheld for all the contested goods, namely:

Class 30: Cereal-based snack food, excluding rice; pasta dishes.

2. European Union trade mark application No 14 982 301 is rejected for all the contested goods. It may proceed for the remaining non-contested goods and services.

3. The applicants bear the costs, fixed at EUR 620.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 982 301 for the word mark ‘The House’, namely against some of the goods in Class 30. The opposition is based on European Union trade mark registration No 4 255 105 for the word mark ‘THE HOUSE OF RICE’ for goods in Class 30. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 4 255 105.

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 relevant date mentioned above.

The date of filing of the contested application is 07/01/2016. 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 07/01/2011 to 06/01/2016 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 Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 21/11/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 26/01/2017 to submit evidence of use of the earlier trade mark. On 26/01/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• A print-out from the homepage www.norma-online.de, mentioning four countries of the opponent’s market presence and a print-out from the German website www.lebensmittelzeitung.net with a ranking of the top 6 German discounters in 2014, showing that the opponent, Norma, is one of the biggest discounter supermarkets in Europe and ranking number 5 in Germany. It sells the goods in more than 1400 branch stores in Germany, Austria, the Czech Republic and France. Furthermore, for Germany, in 2013, there was a turnover of more than 3000 million euro and more than 1280 stores.

• An Affidavit, dated 08/12/2016, from Mr Wolfgang Stutz, head of the centralized purchasing department of the opponent, Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, confirming that for the years 2012 to 2015 several types of rice were sold in Germany, Austria, France and the Czech Republic. The opponent sold in Germany more than 6.3 million packages of rice, in Austria more than 62.000 packages, in France more than 580.000 packages and in the Czech Republic more than 260.000 packages. The number of products indicated and sold by the opponent in the years between 2012 and 2015 exceeded 7.2 million packages of sold rice, marked ‘THE HOUSE OF RICE’.

• Four sample packages for different sorts of rice, namely long grain rice, basmati rice, round grain rice and boil-in-the-bag long grain rice, mentioning the marks: , , , , as they are sold in Germany, Austria, France and the Czech Republic, as can be seen on the back of the packages (product information in German for Germany and Austria, in French for France, and in Czech for the Czech Republic).

• An invoice from IMEX Handels GmbH to Norma Lebensmittelfilialbetrieb GmbH & Co. KG, dated 06/01/2014, for 1008 packages of ‘boil-in-the-bag rice’ mentioning the trade mark ‘THE HOUSE OF RICE’.

• An invoice from IMEX Handels GmbH to Norma Lebensmittelfilialbetrieb GmbH & Co. KG, dated 18/08/2015, for 2016 packages of ‘boil-in-the-bag rice’ and 1680 packages of ‘round grain rice’ mentioning the trade mark ‘THE HOUSE OF RICE’.

• An invoice from IMEX Handels GmbH to Norma Lebensmittelfilialbetrieb GmbH & Co. KG, dated 07/12/2015, for 1008 packages of ‘boil-in-the-bag rice’ and 800 packages of ‘basmati rice’ mentioning the trade mark ‘THE HOUSE OF RICE’.

• An invoice from IMEX Handels GmbH to the opponent’s logistic centre in Aichach, Germany in 2015 for 1008 packages of ‘boil-in-the-bag rice’ and for 800 packages of ‘basmati rice’ under the trade mark ‘THE HOUSE OF RICE’.

• An invoice from CURTI s.r.l. to the opponent’s Czech subsidiary and delivered to their logistic centre in Prague, Czech Republic, dated 27/10/2015, for 11088 packages of ‘boil-in-the-bag-rice’ mentioning the trade mark ‘THE HOUSE OF RICE’.

• Five advertisement flyers by the opponent, taken of the year 2014 (the date of issuance of the flyer is shown) for Germany, Austria and the Czech Republic. These advertisement flyers were laid out in more than 1400 stores and indicate upcoming offers. Such advertising is not only done online on the national websites in the countries mentioned, but also consists of paper brochures that are available each week in all the stores, as well as posters in the points of sale or ads in different newspapers, this all according to the opponent. Furthermore, these flyers reach many millions of households and consumers each week. The flyers mention the mark ‘THE HOUSE OF RICE’ and the products, namely ‘round grain rice’, ‘long grain rice’, ‘boil-in-the-bag rice’, for example, in the following ways: , , , .

• A copy of page 48 of the German consumer magazine ‘OEKOTEST’, dated 08/2014 in which the test results for various foodstuffs of various discount supermarkets are published, inter alia, of the opponent’s ‘THE HOUSE OF RICE’ for ‘long grain rice’ .

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).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

As far as the Affidavit is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred

to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(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 sample packages, invoices, advertisement flyers and the Affidavit show that the places of use are Germany, Austria, France and the Czech Republic. This can be inferred from the language of the documents (German, French and Czech), the abbreviations of the countries (at the back side of the packages also), the prices are in Euros and the addresses on the invoices are in Germany and the Czech Republic. In this sense, according to Article 18(1) and Article 47(2) EUTMR, if the earlier mark is a European Union mark, it must be used in the Union. However, genuine use with the meaning of Article 18 EUTMR may also be found when the criteria of that article have been complied with in only one part of the European Union, such as in a single Member State or in a part thereof. Therefore, it is considered that the evidence proves that the mark has been used in the relevant territory.

As previously mentioned, the opponent was required to prove that the trade mark on which the opposition is based was put to genuine use during the period from 07/01/2011 to 06/01/2016. The invoices, the sample packages, advertisement flyers and the numbers of sold packages during several years, as mentioned in the Affidavit, are dated inside of the relevant period. Therefore, in the view of the Opposition Division, the evidence of use filed by the opponent contains sufficient indications concerning the time 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.

Apart from the invoices in which a total amount of 17.600 packages of all kinds of rice is indicated, the opponent also mentions in the Affidavit that the total number of various rice products sold, amounts to a very considerable number of sales (see for the numbers above), to clients in Germany, Austria, France and the Czech Republic, during almost the whole five-year period, and provide the Opposition Division with sufficient information concerning the commercial volume, territorial scope, duration, and frequency of use and give sufficient indications concerning the extent of the use of the earlier mark.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

Regarding the nature of use, the Opposition Division points out the following: In the present case, the earlier mark ‘THE HOUSE OF RICE’ is a word mark. However, in some of the evidence, such as the packages, it appears as a figurative mark as displayed above, while in other evidence, for example the invoices, it is also mentioned as just a word mark. However, as can be seen from the above paragraphs, use of the mark in a form different from the one registered still constitutes use of the trade mark, as long as it does not alter the distinctive character of the trade mark. This means that differences between the form in which the mark is used on the market and the registered form are acceptable as long as the distinctive character of the mark is not altered. The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006), T-194/03, Brainbridge, EU:T:2006:65, § 50). Nevertheless, in this case the alterations confined to the stylisation of the script and ‘colours’ do not constitute an alteration of the distinctive character of the word mark ‘THE HOUSE OF RICE’. Therefore, there is sufficient use of the mark as registered or of a variation thereof.

The evidence shows that the mark has been used as registered for all the goods, namely rice in Class 30, for which the mark is registered, as in the evidence all kinds of rice are mentioned.

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, after a restriction by the applicant on 07/03/2017, the following:

Class 30: Cereal-based snack food, excluding rice; pasta dishes.

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.

When comparing the contested cereal-based snack food, excluding rice in Class 30 with the opponent’s goods, even though the applicant expressly excludes rice, there is still a low degree of similarity with the opponent’s goods. These goods have the same method of use, distribution channels and they target the same public.

When comparing the contested pasta dishes with the opponent’s rice in Class 30, these goods are also similar to a low degree for the same reasons as mentioned above; they have the same method of use, distribution channels and also the public they target is the same.

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 goods found to be similar to a low degree are directed at the public at large whose level of attention is average.

3. The signs

THE HOUSE OF RICE	The House
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. The elements ‘THE HOUSE OF RICE’ of the earlier mark and ‘The House’ of the contested sign are understood in certain territories, for example, in those countries where English is spoken or understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The words ‘THE HOUSE OF’ mean ‘a definite article and is used at the beginning of a noun’ (THE), ‘a building in which people live, usually the people belonging to one family’ (HOUSE), ‘a preposition used after words and phrases referring to quantities or groups of things to indicate the substance or thing that is being measured; used after a count noun and before an uncount noun when you want to talk about an individual piece or item’ (OF) and the word ‘RICE’ refers to ‘white or brown grains taken from a cereal plant, which you cook and usually eat with meat or vegetables’ (see Collins English Dictionary online). Regarding the goods at stake, the words ‘THE HOUSE OF’ of the earlier mark and the words ‘The House’ of the contested sign are normally distinctive. However, the word ‘RICE’ of the earlier mark is a non-distinctive element, as it refers to the nature of the goods. The public will not pay much attention to this non-distinctive element.

Both the earlier mark and the contested sign are word marks. In case of word marks, the word itself is protected, not its written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.

Visually, the signs coincide in the words ‘THE HOUSE’. In the earlier mark these words form also two of the most distinctive verbal elements and in both marks these elements are also placed at the beginning, where the consumer normally focuses more. On the other hand, the marks differ in all the remaining elements, namely ‘OF RICE’ of the earlier mark of which the word ‘RICE’ is even non-distinctive.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the elements /THE/ /HOUSE/, present identically in both signs. The marks differ in the sound of the words /OF/ /RICE/ of the earlier mark, which are anyway in the third and fourth position and the word ‘RICE’ is also non-distinctive for the relevant goods. The marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. The element ‘RICE’ of the earlier mark is understood. As pointed out above, however, this concept is non-distinctive. Therefore, it has no impact on the conceptual comparison. Furthermore, the marks coincide in the distinctive concepts of ‘THE HOUSE’; the element ‘OF’ only slightly changes the concept. Consequently, the marks are conceptually similar to a high 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.

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, despite the presence of a non‑distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found to be similar to a low degree, while the level of attention is average. The earlier mark as a whole has a normal degree of distinctiveness.

The marks have been found visually, aurally and conceptually similar to a high degree.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar only to a low degree. The high similarity of the signs outweighs the low similarity of the goods.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 4 255 105. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Richard BIANCHI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.