OPPOSITION No B 2 711 862

BB Services Limited, 93, Mill Street, Qormi, QRM 3102 Malta (opponent), represented by Václav Müller, Filipova 2016, 148 00 Prague 4, Czech Republic (professional representative)

a g a i n s t

AGUS Sp. z o.o., Pl. Piłsudskiego 3, 00-078 Warsaw, Poland (applicant), represented by Kulikowska & Kulikowski SP.J., ul. Nowogrodzka 47A, 00-695 Warsaw, Poland (professional representative).

On 04/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 711 862 is partly upheld, namely for the following contested goods in Classes 20 and 30:

Class 20 (in its entirety): Closures of plastics for containers and packaging; Closures, not of metal, for containers and packaging.

Class 30: Pastries (sweet or savoury), Sweet or savoury puffs, Foodstuffs made from cereals, Ready meals, made wholly or partially of baked goods, Bread, Sweet or savoury snacks made of biscuits, baked goods, dough or batter; Pastry and confectionery; Dairy confectionery, Chocolate, Candy; Crisps made of cereals; Chocolate spreads for use on bread, Fruit cake snacks; Corn flakes; Preparations made from cereals; Breakfast cereals products; Snack food products made from cereal flour; Breakfast cereals, Breakfast cereals containing a mixture of fruit and fibre; Muesli; Flaked wheat; Barley flakes; Oat flakes; Maize flakes; Snack foods consisting mainly of confectionery; cereal bars and energy bars; porridge and grits; mixes for the preparation of bread, Buns, Baguettes.

2. European Union trade mark application No 15 016 801 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. 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 of European Union trade mark application No 15 016 801 (word mark: “Crocodile”), namely against all the goods in Classes 20 and 30. The opposition is based on the following earlier trade marks:

1. European Union trade mark registration No 10 118 875 (figurative mark:
   “ ”) for goods in Classes 20 and 30;

2. European Union trade mark registration No 10 119 469 (figurative mark:

“ ”) for goods in Classes 16, 20 and 30;

3. European Union trade mark registration No 10 637 833 (figurative mark:
   “ ” for goods in Classes 16, 20 and 30.

4. International trade mark registration No 883 139 (word mark: ”CROCODILLE”) designating Spain, Portugal, Austria, Bulgaria, Slovakia, Poland, Italy, Hungary, Benelux, Germany and France for goods in Classes 16, 20 and 30.

5. International trade mark registration No 885 357 (figurative mark:
   “ ”) designating Spain, Austria, Latvia, United Kingdom, Italy, Benelux, Bulgaria, Slovakia, Poland, Hungary, Greece, Croatia, Germany and France for goods in Classes 16, 20 and 30;

6. Czech trade mark registration No 205 536 (figurative mark:
   “ ”) for goods in Class 30.

7. Czech trade mark registration No 267 319 (word mark: “CROCODILLE”) for goods in Classes 16, 20 and 30;

8. Czech trade mark registration No 267 320 (figurative mark:
   “ ”) for goods in Classes 16, 20 and 30;

9. Czech trade mark registration No 300 009 (figurative mark:
   “ ” for goods in Class 30.

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE for earlier trade marks No 4-9

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.

In the present case, the date of filing of the contested trade mark is 19/01/2016.

The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the above cited territories from 19/01/2011 to 18/01/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

International trade mark registration No 883 139

Class 16: Covers (paper products), especially for food products, clingfilms for packing, cardboard products, cardboard boxes or paper ones, bags as wrapping (of paper or plastic).

Class 20: Plastic cases (boxes) and plastic containers, especially for foodstuff, non-metal transport pallets.

Class 30: Bakery products with meat filling, meat pies, popcorn (cereal flakes), open baguettes, hamburgers - fresh, chilled, frozen, sugar, sweetmeat, confection, tea, chocolate, cakes, mustard, rolls, bread, fine pastry, yoghurt ice-cream, cocoa, cocoa drinks, toffees, coffee, ketchup, biscuits, cakes, spice, crackers, grain, kitchen salt, yeast, yeast in tablets for non-medical purposes, baking powder, ice natural or artificial, ice for refreshing, puff paste, mayonnaise and mayonnaise salads, dressings, macaroni, almond batter, marzipan, marinades (flavouring additives), buttery oily paste, matters for meat tenderization for household, meat pastes in dough, meat pies baked in dough, honey, honeycakes, gingerbreads, nutritional flour and products made of flour, muesli, muesli bars, corn flakes, chocolate drinks, cocoa, coffee, drink preparations, non-leavened bread, noodle, vinegar, wafers, gruel, foodstuff based on oat, oat flakes, edible decorations on cakes, pancakes and pizzas: fresh, chilled and frozen, chocolate bonbons, ice cream ingredients, puddings, tomato sauce, ravioli, rolls, rice and products made from rice, rice cakes, fresh filled sandwiches, chilled, frozen, biscuits, biscuits, biscuits, sherbert, preparations used for whipped cream toughening, spaghetti, gravies except for dressings, doughs, pastas, hair noodles, flakes, desserts, sauces for seasoning, ice cream, ice-cream sundaes, fruit jelly, rolls, dumplings, soya flour.

International trade mark registration No 885 357

Class 16: Packaging (stationery), especially for foodstuffs, silver paper for packaging purposes, viscose sheets for wrapping, cardboard packing, cardboard or paper boxes, paper or plastic sachets, sleeves and pouches for packaging purposes.

Class 20: Plastic packaging containers, especially for foodstuffs, metallic drinking straws, non-metallic transport pallets, tables on wheels.

Class 30: Pop corn, sugar, confectionery, sugar confectionery, tea, chocolate, tarts, mustard, bread rolls, bread, pastries, frozen yoghurt (edible ices), cocoa, cocoa-based beverages, caramels (sweets), coffee, ketchup (sauce), petits fours (pastries), pies, spices, crackers, semolina, cooking salt, yeast in pill form not for medical use, natural or artificial ice, ice for refreshment, pastry, mayonnaise, macaroons (pastries), almond paste, marzipan, chow-chow (condiment), meat tenderizers, for household purposes, honey, gingerbread, edible flours, flour-milling products, muesli, beverages made with chocolate, cocoa, coffee, flavourings, other than essential oils, for beverages, unleavened bread, noodles, vinegar, waffles, oat-based food, oat flakes, edible decorations for tarts, pancakes (foodstuffs), pizzas, pralines, binding agents for edible ices, puddings, tomato sauce, ravioli, rice, fruit cakes wild rice, sandwiches, rusks, biscuits, sorbets (edible ices), products for stiffening whipped cream, spaghetti, sauces (condiments) excluding dressings, pasta, noodles, dried cereal flakes, cakes, sauces (condiments), ice-creams, sorbets (edible ices), brioches, patties made from vegetable products, soya flour, meat gravies (sauces).

Czech trade mark registration No 205 536

Class 30: Open sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, bakery products, chocolate, coffee, coffee substitutes, tea, mustard, oat flakes, dough, sauces, spice, sugar, confection.

Czech trade mark registration No 267 319

Class 16: Covers (paper products), especially for food products, aluminium foils for food packing, clingfilms.

Class 20: Plastic cases (boxes) and plastic containers, especially for foodstuff, straws, non-metal transport pallets, tea trolleys.

Class 30: Bakery products with meat filling, meat pies, popcorn (cereal flakes), open baguettes, hamburgers - fresh, chilled, frozen, sugar, sweetmeat, confection, tea, chocolate, cakes, mustard, rolls, bread, fine pastry, yoghurt ice-cream, cocoa, cocoa drinks, toffees, coffee, ketchup, biscuits, cakes, spice, crackers, grain, kitchen salt, yeast, yeast in tablets for non-medical purposes, baking powder, ice natural or artificial, ice for refreshing, puff paste, mayonnaise and mayonnaise salads, dressings, macaroni, almond batter, marzipan, marinades (flavouring additives), buttery oily paste, matters for meat tenderization for household, meat pastes in dough, meat pies baked in dough, honey, honeycakes, gingerbreads, nutritional flour and products made of flour, muesli, muesli bars, corn flakes, chocolate drinks, cocoa, coffee, drink preparations, non-leavened bread, noodle, vinegar, wafers, gruel, foodstuff based on oat, oat flakes, edible decorations on cakes, pancakes and pizzas: fresh, chilled and frozen, chocolate bonbons, ice cream ingredients, puddings, tomato sauce, ravioli, rolls, rice and products made from rice, rice cakes, fresh fillled sandwiches, chilled, frozen, biscuits, biscuits, biscuits, sherbert, preparations used for whipped cream toughening, spaghetti, gravies except for dressings, doughs, pastas, hair noodles, flakes, desserts, sauces for seasoning, ice cream, ice-cream sundaes, fruit jelly, rolls, dumplings, soya flour.

Czech trade mark registration No 267 320

Class 16: Covers (paper products), especially for food products, aluminium foils for food packing, clingfilms for packing, cardboard products, cardboard boxes or paper ones, bags as wrapping (of paper or plastic).

Class 20: Plastic cases (boxes) and plastic containers, especially for foodstuff, non-metal transport pallets.

Class 30: Bakery products with meat filling, meat pies, popcorn (cereal flakes), open baguettes, hamburgers - fresh, chilled, frozen, sugar, sweetmeat, confection, tea, chocolate, cakes, mustard, rolls, bread, fine pastry, yoghurt ice-cream, cocoa, cocoa drinks, toffees, coffee, ketchup, biscuits, cakes, spice, crackers, grain, kitchen salt, yeast, yeast in tablets for non-medical purposes, baking powder, ice natural or artificial, ice for refreshing, puff paste, mayonnaise and mayonnaise salads, dressings, macaroni, almond batter, marzipan, marinades (flavouring additives), buttery oily paste, matters for meat tenderization for household, meat pastes in dough, meat pies baked in dough, honey, honeycakes, gingerbreads, nutritional flour and products made of flour, muesli, muesli bars, corn flakes, chocolate drinks, cocoa, coffee, drink preparations, non-leavened bread, noodle, vinegar, wafers, gruel, foodstuff based on oat, oat flakes, edible decorations on cakes, pancakes and pizzas: fresh, chilled and frozen, chocolate bonbons, ice cream ingredients, puddings, tomato sauce, ravioli, rolls, rice and riceproducts, rice cakes, open sandwiches, fresh, chilled, frozen, biscuits, biscuits, biscuits, sherbert, preparations used for whipped cream toughening, spaghetti, gravies except for dressings, doughs, pastas, hair noodles, flakes, desserts, sauces for seasoning, ice cream, ice-cream sundaes, fruit jelly, rolls, dumplings, soya flour.

Czech trade mark registration No 300 009

Class 30: Bakery products with meat filling, meat pies, popcorn (cereal flakes), open baguettes, hamburgers - fresh, chilled, frozen, sugar, sweetmeat, confection, tea, chocolate, cakes, mustard, rolls, bread, fine pastry, yoghurt ice-cream, cocoa, cocoa drinks, toffees, coffee, ketchup, biscuits, cakes, spice, crackers, grain, kitchen salt, yeast, yeast in tablets for non-medical purposes, baking powder, ice natural or artificial, ice for refreshing, puff paste, mayonnaise and mayonnaise salads, dressings, macaroni, almond batter, marzipan, marinades (flavouring additives), buttery oily paste, matters for meat tenderization for household, meat pastes in dough, meat pies baked in dough, honey, honeycakes, gingerbreads, nutritional flour and products made of flour, muesli, muesli bars, corn flakes, chocolate drinks, cocoa, coffee, drink preparations, non-leavened bread, noodle, vinegar, wafers, gruel, foodstuff based on oat, oat flakes, edible decorations on cakes, pancakes and pizzas: fresh, chilled and frozen, chocolate bonbons, ice cream ingredients, puddings, tomato sauce, ravioli, rolls, rice and products made from rice, rice cakes, fresh fillled sandwiches, chilled, frozen, biscuits, biscuits, biscuits, sherbert, preparations used for whipped cream toughening, spaghetti, gravies except for dressings, doughs, pastas, hair noodles, flakes, desserts, sauces for seasoning, ice cream, ice-cream sundaes, fruit jelly, rolls, dumplings, soya flour; meat juices (sauces), donuts.

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 15/03/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 20/05/2017 to submit evidence of use of the earlier trade marks. This time limit has been extended until 20/07/2017 (see letter of the Office of 15/05/2017). On 19/07/2017, 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, in particular, the 115 invoices to clients in the Czech Republic, Spain, Germany, Lithuania, Slovakia, Austria, Estonia and Germany (Evidence No 1) between 2011 and 2016. The pricelists under Evidence 2 for the same period of time are intended for markets in Czech Republic, Poland, Hungary and Germany. The pictures correspond with the names of the products in the invoices. Also the names in the pricelists correspond to those in the invoices. The rest of the Evidences No 3-17, such as the company presentation, the catalogue sheet, product packaging, websites, photographs and advertising for some of the products, give no further information as regards the extent of use of the marks. Therefore, they can only be taken into as additional evidence, but no as meaningful documents to prove the use of the earlier trade marks.

In particular, the above cited complementary information in Evidences 1 and 2 provides sufficient information on the extent of use of the marks
“ ” in the Czech Republic, Poland, Hungary and Germany and
“ ” in the Czech Republic. Although the invoices are also partly directed to clients in different countries, the analysis of the documents in their entirety, taking into account the reciprocal references between the invoices on the one hand, and the other documents such as price lists during the relevant period of time, on the other hand, shows a clear use in these territories. Contrary to the applicant's view, the information provided is therefore sufficient to provide proof of use. It should also be borne in mind that the requirements for proof of use of a trade mark must not be set too high. Only once, one version of the earlier trade mark
“ ” appears in the evidence. The other trade marks do not appear in the invoices and/or a clear relationship to the rest of the evidence is missing.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the other earlier trade marks (with the exception of the two marks “ ” and
“ ”) during the relevant period in the relevant territories.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the two above cited two marks “ ” and “ ” in the appropriate territories for the following goods in Class 30:

Pastries, such as baguettes, sandwiches, rolls, bread, cakes; bakery products with meat filling, open baguettes, fresh filled sandwiches.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically‑linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 119 469.

1. The goods

The goods in Classes 16, 20 and 30 on which the opposition is based are the following:

Class 16: Packaging (stationery), in particular for foodstuffs; Viscose sheets for wrapping; Cardboard articles; Boxes of cardboard or paper; Paper; Bags (envelopes, pouches) of paper or plastics, for packaging.

Class 20: Packaging (boxes) and containers of plastics, in particular for foodstuffs; Straws for drinking; Pallets, not of metal (transport-); Tea trolleys.

Class 30: Pasty; Filled baguettes, fresh, refrigerated, frozen, baked; Baked pastries with meat filling; Baked pastries with vegetable filling; Baked pastries with salami filling; Baked pastries with cheese filling; Baked ciabatta bread.

The contested goods in Classes 20 and 30 are the following:

Class 20: Closures of plastics for containers and packaging; Closures, not of metal, for containers and packaging.

Class 30: Coffee, Vegetal preparations for use as coffee substitutes, Tea, Cocoa, Pastries (sweet or savoury), Sweet or savoury puffs, Cookies, Foodstuffs made from cereals, Ready meals, made wholly or partially of baked goods, Puddings in powder form, Bread, Mixes for the preparation of bread, Buns, Baguettes, Scones, Bagels, Sponge cake, Rusks, Biscuits (sweet or savoury), Wafer biscuits, Pancake waffles; Sweet or savoury snacks made of biscuits, baked goods, dough or batter; Pastry and confectionery; Dairy confectionery, Cake powder, Cake mixes, Bakery desserts, Chocolate, Mousses (Chocolate -), Filled sweetmeats, Chocolate products, Candy, Hard and soft caramels (candies), Filled caramels, Foamed sugar sweets, Sugarless sweets, Gum sweets or Lozenges having liquid fruit fillings, Flavored gelatine desserts, Confectionery chips for baking, Corn chips, Rice crisps; Crisps made of cereals; Chocolate-based and cocoa-based beverages, Edible ices, Ice creams, Sweet sauces, Ice cream desserts, prepared deserts, Chewing gum, not for medical purposes, Lollipops, Ice lollies, Ice beverages with a coffee base, chocolate or cocoa, Coffee beverages with or without milk, chocolate beverages with or without milk, Chocolate spreads for use on bread, Paste for making coffee beverages, flavoured topping for desserts, Fruit cake snacks; Corn flakes; Preparations made from cereals; Breakfast cereals products; Cereal bars and energy bars; Snack food products made from cereal flour; Breakfast cereals, porridge and grits; Breakfast cereals containing a mixture of fruit and fibre; Candy bars; Chocolate bars; Ice cream stick bars; Muesli bars; Confectionery bars; Granola-based snack bars; Seed based snack bars; Snack bars containing a mixture of grains, nuts and dried fruit; Ice milk bars; Muesli; Flaked wheat; Barley flakes; Oat flakes; Maize flakes; Dairy confectionery; Snack foods consisting mainly of confectionery.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term “in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 20

The contested Closures of plastics for containers and packaging; Closures, not of metal, for containers and packaging are highly similar to Packaging (boxes) and containers of plastics, in particular for foodstuffs as they have the same purpose. They usually coincide in producer, relevant public, distribution channels and method of use. Furthermore they are in competition.

Contested goods in Class 30

Pastry is identically contained in both lists of goods (including synonyms).

The contested Pastries (sweet or savoury) are included in the broad category of the opponent’s Pasty. Therefore, they are identical.

The contested Foodstuffs made from cereals; Ready meals, made wholly or partially of baked goods include, as broader categories, the opponent’s Baked pastries with meat filling. 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 Bread; Preparations made from cereals include, as broader categories, or overlap with the opponent’s Filled baguettes, fresh, refrigerated, frozen, baked. 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 Sweet or savoury puffs; Sweet or savoury snacks made of biscuits, baked goods, dough or batter; Cookies are similar to Pasty as they usually coincide in relevant public, distribution channels and method of use. Furthermore they are in competition.

The contested Breakfast cereals products; mixes for the preparation of bread, Buns, Baguettes; confectionery; Chocolate; Candy; Crisps made of cereals; Chocolate spreads for use on bread; Fruit cake snacks; Corn flakes; Snack food products made from cereal flour; Breakfast cereals; Breakfast cereals containing a mixture of fruit and fibre; Muesli; Flaked wheat; Barley flakes; Oat flakes; Maize flakes; Dairy confectionery; Snack foods consisting mainly of confectionery; Cereal bars and energy bars; porridge and grits are similar to Filled baguettes, fresh, refrigerated, frozen, baked as they usually coincide in relevant public, distribution channels and method of use. Furthermore they are in competition.

The remaining contested Coffee, Vegetal preparations for use as coffee substitutes; Tea; Cocoa; Puddings in powder form, Mixes for the preparation of Scones, Bagels, Sponge cake, Rusks, Biscuits (sweet or savoury), Wafer biscuits, Pancake waffles; Cake powder, Cake mixes, Bakery desserts; Mousses (Chocolate -), Filled sweetmeats, Chocolate products; Hard and soft caramels (candies), Filled caramels, Foamed sugar sweets, Sugarless sweets, Gum sweets or Lozenges having liquid fruit fillings, Flavored gelatine desserts, Confectionery chips for baking, Corn chips, Rice crisps; Chocolate-based and cocoa-based beverages, Edible ices, Ice creams, Sweet sauces, Ice cream desserts, prepared deserts, Chewing gum, not for medical purposes, Lollipops, Ice lollies, Ice beverages with a coffee base, chocolate or cocoa, Coffee beverages with or without milk, chocolate beverages with or without milk, Paste for making coffee beverages, flavoured topping for desserts; Candy bars; Chocolate bars; Ice cream stick bars; Muesli bars; Confectionery bars; Granola-based snack bars; Seed based snack bars; Snack bars containing a mixture of grains, nuts and dried fruit; Ice milk bars have different natures from the opponent’s goods. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods come from the same or economically linked undertakings. The fact that they also belong to food is not sufficient for a similarity, because of the above cited relevant differences between them. Therefore, they are dissimilar.

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 identical or similar to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to low for the food, because they are consumed or purchased on a daily basis.

3. The signs

	Crocodile
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 “FRESH” and “COMPANY” of the earlier trade mark are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as United Kingdom.

The earlier mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The earlier trade mark is a figurative mark within a kind of a green label. The word “crocodille” is in the middle and bigger than the other two word elements which are above (FRESH) and below (COMPANY).

The contested sign is a word mark, which is protected in all different typefaces.

The contested sign will be understood with this meaning by the relevant public. Since it is not in any way descriptive in respect of the goods, it is distinctive. The same applies for the word “crocodille” of the earlier trade mark which will be recognized as an obvious misspelling of “crocodile”.

The element “COMPANY” of the earlier sign will be associated with this meaning. It will be understood in a sense that the goods will be offered by a company and is, therefore, non-distinctive.

The element “FRESH” of the earlier sign will be associated with this meaning. Bearing in mind that the relevant goods are food and packaging/boxes for food, this element is non-distinctive for all these goods because they indicate a characteristic of the goods - that they are fresh (Class 30) - or that will be used (Classes 16 and 20) to keep the goods in Class 30 fresh. The same applies for the basic figurative elements of the earlier trade mark, which are also non-distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

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).

Visually and aurally, the contested sign is completely included as the biggest element in the earlier trade mark, even written slightly different and with the additional letter “l”. The other different elements of the earlier trade mark are non-distinctive or secondary and can, therefore, not be taken into account in a relevant manner. The signs have a similar sound, rhythm and pronunciation. They are aurally and visually similar to an average degree.

Conceptually, the signs have the same meaning as regards their words “crocodile/crocodille”. The other different elements of the earlier trade mark are non-distinctive and can, therefore, not be taken into account in a relevant manner. Therefore, the signs are conceptually 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 some non-distinctive elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly identical, partly similar to different degrees and partly dissimilar. The signs are visually and aurally similar to an average degree and conceptually similar to a high degree.

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

Taking into account the visual and aural similarities to an average degree, the conceptual similarity to a high degree, the average degree of distinctiveness of the earlier trade mark, the not more than average degree of attentiveness of the public and the identity or similarity between the goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This applies even more so when the degree of attention of the public is only low.

In contrast to the opinion of the applicant, the differences between the signs are not sufficient to distinguish them clearly from each other. They will be taken into account as coming from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

The opponent has also based its opposition on the above cited earlier trade marks No 1 and No 3. Since these marks cover the same or a narrower scope of goods and have further word and figurative elements, which are less similar to the contested sign, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. For the other earlier trade marks No 4-9 the proof of use has been analysed above and therefore the use has been only proven for the goods in Class 30, which means a narrower scope of protection. Therefore, no likelihood of confusion exists with respect to those goods.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Begoña URIARTE VALIENTE

Peter QUAY

Alexandra APOSTOLAKIS

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.