OPPOSITION No B 2 975 038

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

Coffee King Limited, Clifton House Ashville Point, Sutton Weaver, Runcorn, Cheshire West and Chester WA7 3FW, United Kingdom (applicant), represented by Sean Le. Tissier, Clifton House Ashville Point, Sutton Weaver, Runcorn, Cheshire West and Chester WA7 3FW, United Kingdom (employee representative).

On 11/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 975 038 is partially upheld, namely for the following contested services:

Class 43: Provision of food and drink.

2. European Union trade mark application No 16 186 413 is rejected for all the above services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 186 413 (figurative mark ) namely against all the goods and services in Classes 30 and 43. After partial refusal of the contested mark in Opposition No 2 973 835 the opposition is still directed against all the remaining goods and services in Classes 30 and 43. The opposition is based on, inter alia, German trade mark registration No 30 404 434 (word mark ‘KING’). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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 German trade mark registration No 30 404 434.

1. The goods and services

The goods on which the opposition is based are the following in Classes 29 and 30:

Meat and charcuterie, poultry and game, also in ready-to-eat, preserved, marinated and deep-frozen form; meat extract; jellies; food preserves, snacks, also suitable for microwave, mainly containing meat and sausages; food in ready-to-cook, ready-to-grill or ready-to-eat form, also suitable for microwave, mainly containing meat and sausages, poultry and game, sausage products in dough, hot dogs.

The remaining contested goods and services are the following:

Class 30: Coffee.

Class 43: Provision of food and drink.

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

The term ‘also’, 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).

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.

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

Contested goods in Class 30

The contested goods coffee are dissimilar to the opponent’s goods in Classes 29 or 30. They are directed at different consumers and neither share producers, distribution channels nor purpose. They are also not in competition to each other and are not complementary.

Contested services in Class 43

The contested provision of food and drink are lowly similar to the opponent’s food in ready-to-cook, ready-to-grill or ready-to-eat form, also suitable for microwave, mainly containing meat and sausages, poultry and game, sausage products in dough, hot dogs as they usually coincide in producer and distribution channels. Furthermore they are complementary.

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 and services found to be lowly similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

King
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark, in which it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether a word mark is presented in upper or lower case characters.

The word ‘KING’, included in both signs, besides also having the same meaning as in English, namely a male sovereign ruler of an independent state or people, is also frequently used in Germany to denote something having a superior quality and, therefore, has a laudatory connotation. Bearing in mind that the relevant goods are foodstuffs and the provision of foodstuffs, it is considered that this element is rather weak (20/09/2011, T‑99/10, Tofuking, EU:T:2011:497, § 26).

In the contested sign, the word ‘KING’ is preceded by the word ‘COFFEE’, both words being slightly stylised, in white and black. ‘COFFEE’ will be universally understood to refer to the hot drink. This word immediately informs consumers about the services provided — namely that they offer coffee — and is therefore non-distinctive in relation to the services found to be lowly similar. Above the verbal elements of the contested sign there is a depiction of a crown with a coffee bean at each point of the crown, thus emphasising the concepts of the verbal elements. The depiction of a Crown is considered to be laudatory and only of limited distinctiveness.

Visually, the signs coincide in the verbal element ‘KING’ which constitutes the earlier mark and is placed in second position in the contested mark. However, they differ in the non-distinctive additional word ‘COFFEE’ in the first position of the contested mark as well as the depiction of the Crown. They also differ in the slight stylisation of ‘KING’ in the contested mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛KING’, present identically in both signs, which constitute the earlier mark, and are entirely reproduced in second position in the contested sign. The pronunciation differs in the verbal element ‘COFFEE’ of the contested mark, which is considered to be non-distinctive and which has no counterpart in the earlier mark.

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

Conceptually, the public in the relevant territory will perceive the earlier sign as a male sovereign ruler. The public is very likely to perceive the expression ‘Coffee King’ as a whole as a King/Master in the field of Coffee. As the signs will be associated with similar meanings, the signs are conceptually highly similar.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all of the goods in question.

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 and services are lowly similar. The earlier mark as a whole is of lower than average distinctiveness. The signs are visually similar to an average degree, aurally to a high degree and conceptually highly similar. The relevant public is the public at large, whose degree of attention is average.

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).

Indeed, 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Even though the beginnings of the signs differ, there is still likelihood of confusion as the earlier trade mark ‘KING’, which is a registered and valid trade mark, is entirely integrated into the mark applied for, thus it will be perceived as a combination of the company identifier and the product identifier (14/02/2017, R 469/2016-1, PLUIMERS HR ISOZELL, § 51). Although the coinciding verbal element is weak for all relevant goods, on account of the reproduction of the earlier mark in its entirety in the contested mark, albeit it is of low distinctive character, consumers could still assume there is a connection between these two marks, the contested being a variation of the earlier one.

The Court has emphasised on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (judgment of 13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70). The only differing verbal element ‘COFFEE’ in the contested mark is entirely devoid of distinctiveness. The additional representation of a Crown is of limited distinctiveness.

Bearing in mind the structure of the conflicting marks and the coincidence in the (lowly, but still) distinctive element ‘KING’, likelihood of confusion, which includes likelihood of association, on the relevant public cannot be excluded. In particular, the consumer may think that ‘COFFEE’ is a product line offered by the same undertaking (04/05/2017, R 1803/2016-1, MARUJA KING, § 30).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 30 404 434.

It follows from the above that the contested trade mark must be rejected for the services found to be lowly similar to the goods of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 2 885 077 for the word mark ‘Curry King’ for the following goods in 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.

• International trade mark registration No 1 285 017 designating the European Union for the word mark ‘Curry King’ for the following goods in Classes 29 and 30: Meat products; sausage products; vegetarian sausage products; prepared dishes consisting primarily of meat products and/or sausage products and/or meat substitute products and/or vegetarian sausage products and/or vegetables and/or mushrooms and/or pulses and/or soy products, in particular tofu, and/or potatoes, and/or dairy products and/or egg products and/or edible oils (Class 29); Prepared dishes, consisting primarily of cereals and/or rice and/or corn and/or pasta and/or dumplings and/or sauces and/or spices (Class 30).

Since these marks do not cover a broader scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods. Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of these opposing marks in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks, namely European Union trade mark registration No 2 885 077 and International trade mark registration No 1 285 017 designating the European Union have a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 20/12/2016. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

• European Union trade mark registration No 2 885 077 for the word mark ‘Curry King’ for the following goods in 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.

• International trade mark registration No 1 285 017 designating the European Union for the word mark ‘Curry King’ for the following goods in Classes 29 and 30:

29 Meat products; sausage products; vegetarian sausage products; prepared dishes consisting primarily of meat products and/or sausage products and/or meat substitute products and/or vegetarian sausage products and/or vegetables and/or mushrooms and/or pulses and/or soy products, in particular tofu, and/or potatoes, and/or dairy products and/or egg products and/or edible oils.

30 Prepared dishes, consisting primarily of cereals and/or rice and/or corn and/or pasta and/or dumplings and/or sauces and/or spices.

The opposition is still directed against the following goods:

Class 30: Coffee.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 27/02/2018 the opponent submitted 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+. The question asked to participants was: which one of the following brands do you know in the field of sausages?

• Sworn statements by the former managing director of the opponent, Dr. Jochen Kahmann dated 09/09/2009 and 19/11/2013, attesting to very high sales and advertising and promotional activity and spending from 2002 to 2012 of products under the trade mark ‘Curry King’. He states that in the years 2008-2012 extensive efforts were made to advertise the trade mark ‘Curry King’. The content of the statement is supported by further evidence (TV spots, invoices, delivery notes, labels, etc) and a table with data from the year 2006 in relation to curry sausages which seems that CurryKing had a market share of 60% (territory not specified).

• 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).

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Most of the documents submitted, such as product labels, copywriting and invoices, do not indicate the degree to which the brand is known in the European Union.

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.

In the present case, the opinion poll submitted is not sufficient to demonstrate reputation in Germany. This is because the participants were not asked an open question (which trade marks do you know about sausage products?); instead different trade marks were mentioned and then the participants were asked if they knew them or not. Even if such a survey does not lack any evidential value, it is not sufficient to prove the reputation of the earlier marks; it may be that the people who have been called have said yes for a variety of reasons when they were asked if they knew the Curry King brand (to appear nice or not looking unknowledgeable etc.) but not because they really knew the brand. This could only be achieved by means of an open question as explained above.

The other documents are also not suitable to prove the reputation. Other documents include invoices, product labels, advertising texts, etc., which also contain no information on the recognition by the relevant public and are not sufficient to prove the reputation. The information on advertising activities is not confirmed by third parties, but comes solely from the opponent.

Although the evidence shows some use of the mark, it contains little information on the extent of that use besides the invoices submitted which cover the time period 2010-2016. However, these documents contain hardly any usable information on the brand awareness of the relevant public. In addition, there are no independent disclosures on the level of sales, the market share of the mark at the time of filing the contested mark, and independent information on the extent to which the mark was advertised. Consequently, the evidence does not show that the mark is known to a significant part of the relevant public. Therefore, the Opposition Division concludes that the opponent did not succeed in establishing the reputation of its trade marks.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected, insofar it is based on this ground.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tu Nhi VAN

Lars HELBERT

Octavio MONGE GONZALVO

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.