OPPOSITION No B 2 768 540

Meica Ammerländische Fleischwarenfabrik Fritz Meinen GmbH & Co. KG, Meicastr. 6, 26188 Edewecht, Germany (opponent), represented by Glawe, Delfs, Moll, Rothenbaumchaussee 58, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Angulas Aguinaga S.A.U., C/Laskibar Bailara 5, 20271 Irura, Spain (applicant), represented by S. Orlando Asesores Legales y en Propiedad Industrial S.L., C/ Castelló 20 4ºD, 28001 Madrid, Spain (professional representative).

On 14/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 768 540 is upheld for all the contested goods.

2. European Union trade mark application No 15 431 901 is rejected in its entirety.

3. The applicant bears 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. 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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods of European Union trade mark application No 15 431 901 for the word mark ‘KING ALASKA’, namely against all the goods in Class 29. The opposition is based on, inter alia, European Union trade mark registration No 2 885 077 for the word mark ‘Curry King’. 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, inter alia, European Union trade mark registration No 2 885 077 for the word mark ‘Curry King’.

The date of filing of the contested application is 13/05/2016. 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 13/05/2011 to 12/05/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered on 25/05/2004, that is, more than five years prior to the relevant date mentioned above.

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

Class 29: Ready-to-cook or ready-to-eat meals or snacks, mainly consisting of charcuterie; all the aforesaid goods with, or for use with, curry.

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 07/07/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 07/09/2017 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended, at the opponent´s request, until 07/11/2017. On 06/11/2017, within the time limit, the opponent submitted evidence of use.

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

• Sworn statement by Mr. Michael März, managing director of the opponent, attesting that the opponent has produced and distributed a sausage-based convenience food since 2002 under the trade mark ‘Curry King’ and giving specific sales and advertising figures for the relevant period.

• 11 invoices or delivery notes containing the trade mark ‘Curry King’, dated between 19/10/2011 and 18/04/2016 (within the relevant period), and one invoice also containing the abovementioned trade mark dated slightly outside the relevant period. These invoices and delivery notes are regularly spaced throughout the relevant period.

• Labels for the products marketed under the trade mark ‘Curry King’ dated 2012 and 2013, showing that these goods are sausage-based convenience food.

• 9 invoices for the TV advertising campaigns of 2014 and 2015, containing detailed information on the time and channel of each broadcast during January, February, July, August and December 2014, and January, July, August and December 2015, accompanied by an example of an advert from 2015 (translated).

• Extract from a survey carried out by Ipsos GmbH in August 2015 showing a brand awareness for the trade mark ‘Curry King’ for sausages and sausage products in Germany of 57,4% (out of 1000 persons of age 14+).

The invoices, labels and survey show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (Euro) and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. The evidence dated shortly after the end of the relevant period is also relevant since it can relate to sales made as a result of promotional activity carried out during the relevant period.

The documents filed, namely the invoices, labels and survey, supported by the sworn statement from the opponent, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

As regards the sworn statement, 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. In this case it is clear that the contents of the declaration are supported by the other items of evidence.

Although the evidence provided does not prove a high commercial volume (not all the invoices/delivery notes include the price of the items sold, and the largest amount shown in any one invoice is approximately 2000 euros) or an extensive territorial scope (the evidence show sales in Germany – only one Member State), it is true that the duration and the frequency of use are continuous and regular throughout the relevant period.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145 and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The evidence shows that the mark has been used in accordance with its function and as registered for all the goods for which it is registered, namely ready-to-cook or ready-to-eat meals or snacks, mainly consisting of charcuterie; all the aforesaid goods with, or for use with, curry.

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 earlier trade mark during the relevant period in the relevant territory.

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 2 885 077.

1. The goods

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

Class 29: Ready-to-cook or ready-to-eat meals or snacks, mainly consisting of charcuterie; all the aforesaid goods with, or for use with, curry.

The contested goods are the following:

Class 29: Fish and fish substitutes.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested fish and fish substitutes are similar to an average degree to the opponent’s ready-to-cook or ready-to-eat meals or snacks, mainly consisting of charcuterie; all the aforesaid goods with, or for use with, curry since they are all foodstuffs made of animal origin and, therefore, they are in competition with each other, have the same purpose, share the same method of use and target the same public.

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 are directed at the public at large.

In the light of the nature of the goods, which are foodstuffs consumed on a daily basis, some of which are relatively inexpensive, the attentiveness of the public may vary from below average (for example for ready-to-eat snacks) to average (for example for fish).

3. The signs

Curry King	KING ALASKA
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).

Both marks are word marks. In case of word marks it is irrelevant whether they are written in lower or upper case letters or in a combination thereof since it is the words as such that are protected and not their written form (31/01/2013, T-66/11, ‘Babilu’, EU:T:2013:48, § 57).

The element ‘CURRY’ of the earlier mark will be understood by the relevant public as a ‘dish of meat, vegetables, etc., cooked in an Indian-style sauce of strong spices and typically served with rice’ or to ‘prepare or flavour with a sauce of hot-tasting spices’ (see Oxford Dictionary online). It will be understood by the relevant public in the whole EU, since this word is also used in the languages of the Member States. Within the context of the goods at stake, this element is directly descriptive of either the type of the food being produced or served, or its flavour.

The element ‘KING’ contained in both marks is a basic, commonly used English word which (apart from referring to a male monarch or animals and plants that are particularly large, e.g. king cobra) means ‘a person or thing regarded as the finest or most important in their sphere or group’ (see Oxford Dictionary online) and as such it will be understood by the relevant public. This word is mostly used as a laudatory term in the sense of ‘the best in one area’ in relation to any goods or services (see judgement of 20/09/2011, T-99/10, Tofuking, EU:T:2011:497, § 26). Thus, this element most likely will be perceived by the relevant public as rather weak in relation to the goods at stake.

The element ‘ALASKA’ of the contested sign will be understood by the relevant public as referring either to the geographical origin of the contested goods (fish) or directly to the goods themselves (Alaska pollock being a type of fish) and to that extent it is descriptive of the relevant goods.

Consequently, the most distinctive part of the marks under comparison is the word ‘KING’ which, although weak, has a stronger distinctive character than the words ‘CURRY’ or ‘ALASKA’ respectively. Neither of the trade marks at issue have any element which is more dominant or visually eye-catching than others.

Visually, the signs coincide in the element ‘KING’ which, although rather weak itself, constitutes the most distinctive element in both signs as it has a higher distinctiveness than the other (descriptive) elements of the signs. They differ in the additional terms ‘CURRY’ of the earlier mark and ‘ALASKA’ of the contested sign, both being descriptive in relation to the goods at stake, and in the position of the common element ‘KING’ within each one of the marks.

Even taking into consideration the previous assertions regarding the distinctiveness of the various elements of the marks, the differences between the marks under comparison cannot overcome the finding of an average degree of visual similarity between the signs.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the term ‘KING’, which constitutes the most distinctive element of the marks. The pronunciation differs in the sound of the descriptive terms ‘CURRY’ and ‘ALASKA’ (both of which have a limited impact on the comparison as such), and in the position of the common element ‘KING’ within each one of the marks.

Therefore, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concept evoked by the coinciding word ‘KING’ and are therefore conceptually similar to an average degree. The additional elements of the marks, i.e. ‘CURRY’ and ‘ALASKA’, due to their non-distinctive character, cannot offset the conceptual similarity of the marks.

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.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness in Germany as a result of its long standing and intensive use in connection with all the goods for which it is registered, namely ready-to-cook or ready-to-eat meals or snacks, mainly consisting of charcuterie; all the aforesaid goods with, or for use with, curry. 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, in particular, the following evidence:

• Surveys on the earlier mark’s recognition carried out by Ipsos GmbH in 2011 and 2015, showing a brand awareness for the trade mark ‘Curry King’ for sausages and sausage products in Germany of 58,3% (2011) and 57,4% (2015) out of 1000 persons of age 14+.

• A report by Nielsen (market research institute) showing the market share of sausages with curry seasoning sold under the earlier trade mark in 2005 and 2006 in Germany of over 60%.

• Sworn statement by the former managing director of the opponent, Dr. Jochen Kahmann dated 09/09/2009, attesting to very high sales and advertising and promotional activity and spending from 2004 to 2008 of products under the trade mark ‘Curry King’. The content of the statement is supported by further evidence (TV spots, invoices, delivery notes, labels, etc).

• Sworn statement by Mr. Michael März dated 17/02/2017, managing director of the opponent, attesting that the opponent has produced and distributed a sausage-based convenience food from 2002 to 2010 under the trade mark ‘Curry King’ and giving specific sales and advertising figures for the relevant period. The content of the statement is supported by further evidence (TV spots, invoices, delivery notes, labels, etc).

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market in Germany. The evidence provides a clear indication of the degree of recognition of the trade mark by the German public. Furthermore, the evidence indicates the sales volumes, the market share of the trade mark and the extent to which the trade mark has been promoted. To be specific, the evidence shows that the trade mark is known by a significant part of the relevant public (58,3 – 58,4%) and has a significant market share in Germany (over 60%).

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.

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

The goods and services have been found similar to an average degree. The signs are visually, aurally and conceptually similar to an average degree. The relevant public is the public at large whose level of attention is, at most, average.

Although the earlier mark is composed of a descriptive element (‘CURRY’) and a weak element (‘KING’), the earlier mark has been found to have a high degree of distinctiveness in Germany as a result of its long standing and intensive use in connection with all the goods for which it is registered. 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 signs coincide in the element ‘KING’, which, although weak, is the most distinctive element of both signs due to the descriptive character of the remaining elements. A coincidence in an element with a low degree of distinctiveness will not normally lead to likelihood of confusion on its own. However, in this case, the earlier mark has been found to have a high degree of distinctiveness in Germany, which raises the risk of likelihood of confusion with similar marks for similar goods.

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

In this case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers may reasonably assume that the signs at stake distinguish different lines of goods provided by the same undertaking or from connected entities sharing the element ‘KING’.

In view of all the relevant factors in the present case, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 885 077. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 2 885 077 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Begoña URIARTE VALIENTE

Helen Louise MOSBACK

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.

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.