OPPOSITION No B 2 771 320

Mateo S.A., Paseo Can Feu, 82-88, 08205 Sabadell (Barcelona), Spain (opponent), represented by Manresa Industrial Property, Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative).

a g a i n s t

DF World of Spices GmbH, Industriestr. 25, 49201 Dissen, Germany (applicant), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Hollerallee 73, 28209 Bremen, Germany (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 771 320 is upheld for all the contested goods.

2. European Union trade mark application No 15 455 009 is rejected for all the contested goods. It may proceed for the remaining goods.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 should 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 15 455 009 (NEOLI), namely against some of the goods in Class 29. The opposition is based on Spanish trade mark registration No 324 693 (TEOLI). The opponent invoked Article 8(1) (b) EUTMR.

SUBSTANTIATION

The applicant disputes the substantiation of the earlier right, however the opponent furnished evidence of an up to date certificate of renewal of the mark together with a translation all of which show the existence, scope and validity of the mark, which was (published as) registered more than five years prior to the relevant date mentioned above. As the renewal certificate contains all the necessary data that confirms the scope of protection of the mark, it suffices to file it without a copy of the registration certificate. In this instance, the registration date is missing. However, having been validly renewed, the Office is in a position to infer that the mark has been registered for more than five years. The mark itself, its proprietor and its scope of protection is clear from both the original certificate of renewal exhibited and the updated version furnished on 01/06/2018 at the request of the Office.

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, Spanish trade mark No 324 693.

The date of filing of the contested application is 20/05/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 20/05/2011 to 19/05/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was duly substantiated.

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

Class 29: All kinds of olive oil.

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 22/03/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 27/05/2017 to submit evidence of use of the earlier trade mark, duly extended by a two-month extension to 27/07/2017. On 24/07/2017, within the time limit, the opponent submitted evidence of use

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

• Invoices: Three 2011 invoices to a Spanish client for the purchase of TEOLI olive oil (pomace), fourteen invoices in respect of two clients dating from 2012 for the same products, two from 2014, four from 2015 and four of the same from 2016.

• Certificates and translations: issued by clients of the opponent averring continuous purchase and sale of the opponent´s TEOLI products within the relevant period,

• Turnover and sales figures: A certificate from the opponent attesting to its total invoicing expenses (approx. €200,000 p.a in respect of each year from 2011 to 2016 inclusive), and its advertising expenses (approx. €15,500 over the relevant period) in relation to the TEOLI trade mark during the relevant period in Spain

• Online pictures of the TEOLI olive oil products sold

• Wholesale catalogues from the relevant period showing pictures of the TEOLI olive oil products for sale.

The invoices show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (Euro) and the Spanish addresses. Therefore, the evidence relates to the relevant territory, and is corroborated by the certificates.

All of the invoices date from within the relevant period, and the certificates aver to continuous sales throughout the relevant period. They corroborate sufficiently the duration of the use throughout the relevant period.

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, and its commercial volume, duration and frequency.

The documents filed, namely the invoices as corroborated by the other documentation, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the mark TEOLI in respect of olive oil products, despite the misgivings of the applicant in respect of the year-to-year commercial volume demonstrated.

As correctly pointed out by the opponent, use of the mark need not be quantitatively significant for it to be deemed genuine. In any event, a turnover average of €200,000 per annum is not insignificant, even in respect of mass consumption items like olive oil (sold by the litre).

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).

All of the documentation, whether by way of image or description, evidences use of the trade mark TEOLI on olive oil products on a continuous basis throughout the relevant period and territory. There is no question of token use. The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa.

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 (Spain) in respect of olive oil (if not all kinds of olive oil).

Therefore, in the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 29: Olive oil.

The Opposition Division will now consider the abovementioned goods in its further examination of the opposition.

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

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

1. The goods

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

Class 29: Olive oil.

The contested goods are the following:

Class 29: Edible oils and fats; Oils, including seasoning oils, mushroom oils, herbal oils, fruit oils, vegetable oils, berry oils, garlic oils, kernel oils, nut oils, truffle oils, olive oils, spiced oils; Including all the aforesaid goods being preserves or being prepared and semi-prepared products, including in frozen form, including being dietetic foodstuffs and including being encapsulated or microencapsulated or having a reduced germ count.

The term ‘including’, used in the applicant’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).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods

The opponent´s goods olive oil are included in the broad category of the applicant´s edible oils and fats. Therefore, they are identical.

The contested oils, including seasoning oils, mushroom oils, herbal oils, fruit oils, vegetable oils, berry oils, garlic oils, kernel oils, nut oils, truffle oils, olive oils, spiced oils; Including all the aforesaid goods being preserves or being prepared and semi-prepared products, including in frozen form, including being dietetic foodstuffs and including being encapsulated or microencapsulated or having a reduced germ count are identical to the opponent’s olive oil because the opponent’s goods are included in the contested goods.

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 are directed at the public at large.

The degree of attention will be at most average, as they are goods of mass consumption.

3. The signs

TEOLI	NEOLI
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 with no meaning for the relevant public. They are both distinctive in respect of the goods in question. Being word marks, there are no dominant elements.

Visually, the signs coincide in four out of their five letters ‘_ E O L I’. They differ in their respective first letter only.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘_ E O L I’. They differ in their respective first letter only.

Therefore, the signs are highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. The applicant maintains that the relevant public will see the first three letters of each sign as a suffix, however this would only be the case if the remaining letters formed a word capable of being suffixed. The respective word marks will instead be seen as a fanciful word which will not be dissected by the relevant public.

Since a conceptual comparison is not possible, 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.

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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

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 are identical, the earlier sign is distinctive and the signs are visually and aurally similar to a high degree. There are no dominant or non-distinctive elements in the signs, and they do not convey any meaning that could allow consumers to distinguish between them.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145).

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

Therefore, the opposition is well founded on the basis of Spanish trade mark registration No 32 46 93. 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

Natascha GALPERIN

Keeva DOHERTY

Plamen IVANOV

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.