OPPOSITION No B 2 890 146

Esteban Banús Ricoma and Fernando Banús Ricoma, Profesor Mario Vega Artiles, 3, 35250 Ingenio, Las Palmas, Spain (opponents), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Spendrup Brands AB, Arenavägen 41, 121 77 Johanneshov, Sweden (applicant), represented by Awa Sweden AB, Jakobsbergsgatan 36, 111 44 Stockholm, Sweden (professional representative).

On 25/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 890 146 is rejected in its entirety.

2. The opponents bear the costs, fixed at EUR 300.

REASONS

The opponents filed an opposition against all the goods of European Union trade mark application No 16 305 815 for the figurative sign . The opposition is based on Spanish trade mark registration No 972 591 for the word mark ‘BANANITA’. The opponents 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 opponents submit proof of use of the trade mark on which the opposition is based namely, Spanish trade mark No 972 591 for the word mark ‘BANANITA’.

The date of filing of the contested application is 02/02/2017. The opponents were therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 02/02/2012 to 01/02/2017 inclusive.

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

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

Class 33: Wines and liqueurs.

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 05/12/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponents until 10/02/2018 to submit evidence of use of the earlier trade mark. On 09/04/2018, after an extension was granted and within the time limit, the opponents submitted evidence of use.

The evidence to be taken into account is the following:

 Annex 1: Copy from 09/04/2018 of the inscription in the Spanish Commercial Registry of the society ‘Cogrami Canarias Sociedad Limitada’ owned by Esteban and Fernando Banús Ricoma, the opponents.

 Annex 2: 22 invoices in Spanish issued by ‘Cogrami Canarias S.L’ to two clients in Las Palmas (Spain) between 09/01/2013 to 08/02/2017. The invoices contain, inter alia, references to ‘BANANITA CREAM 1L’.

 Annex 3: Undated copy of a screenshot from an internal database of the opponents showing the turnover for ‘Bananita Cream 1L’ from 2013 to 2018 and stating the quantities of ‘Bananita cream 1L’ that were sold and its commercial volume, namely, EUR 8 344.44 for 2013, EUR 8 874.36 for 2014, EUR 6 271.20 for 2015, EUR 7 718.40 for 2016 and EUR 7 755.00 for 2017.

 Annex 4: Samples of product labels, namely and and a picture of a bottle, . The documents are undated.

Time and place of use:

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 addresses in Spain appearing in the invoices. Therefore, the evidence relates to the relevant territory.

Almost all the invoices are dated within the relevant period. Although the labels are undated and have no time reference, they mostly serve the purpose of establishing the nature of use as explained below and, therefore, a date on the labels is not necessary in terms of time of use.

Extent of use:

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

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. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices and the internal turnover, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. In particular, the invoices relate to almost the whole relevant period and the turnover shows an average total amount of sales from 2013 to 2017 of 2 424 units per year and EUR 5 992.28 per year.

Therefore, the Opposition Division considers that the opponents have provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use:

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

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

In the present case, the mark as used does not alter the distinctive character of the mark in the form in which it was registered. In this regard, the earlier word mark ‘BANANITA’ appears in the invoices as such and accompanied by descriptive terms, namely ‘creams’ and ‘1L’. Therefore, these additional elements do not alter the distinctive character of the mark in the form in which it was registered. As regards the labels, the term ‘BANANITA’ is presented in a slightly stylised and colourful typeface and, accompanied by verbal or figurative elements that do not alter the distinctive character of the sign either. In all cases the only distinctive element in the marks is the verbal element ‘BANANITA’. The words ‘Cream’, ‘Islas Canarias’, ‘Crema de banana’, ‘20%vol. or 100ml’ and a bar code are purely descriptive as they refer to the kind and the origin of the goods or inform that the goods are being commercialised. The depiction of bananas, a banana tree, and a recipient just reinforce the abovementioned verbal elements and are not strong enough to alter the distinctive character of the mark.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR and in accordance with its function.

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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponents 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.

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

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.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for ‘banana cream’ , which can be considered to belong to the objective subcategory of cream liqueurs. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for cream liqueurs.

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.

a) The goods

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

Class 33: Banana cream

The contested goods are the following:

Class 33: Alcoholic beverages (except beers)

The contested alcoholic beverages (except beers) include, as a broader category, the opponents’ banana cream. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponents’ goods.

b) 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.

It is settled case-law that, firstly, the goods at issue, which are all alcoholic beverages, are for everyday consumption and are normally widely distributed, in places ranging from the food section of supermarkets, department stores and other retail outlets to restaurants and cafes, and that, secondly, the consumer of alcohol is a member of the general public, who will demonstrate an average level of attention when purchasing such goods (19/01/2017, T‑701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 22 and the case-law cited therein).

c) The signs

BANANITA
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).

As a starting point, it is important to keep in mind that in the relevant language, the suffix ‘–ita’ is used as a diminutive. As a consequence, both ‘BANANITA’ and ‘BANANA’ of the earlier and contested signs respectively will be perceived as a long curved fruit which grows in clusters and has soft pulpy flesh and yellow skin when ripe. Bearing in mind that the conflicting goods may potentially contain banana or have a banana flavour, this element has, at most, a low degree of distinctiveness.

In the contested sign, the word ‘BANANA’ is shown on a colourful label with a depiction of a banana that reinforces the said concept and occupies a good part of the sign. Distributed over three lines, ‘BANANA’ is preceded by the verbal elements ‘THE’ and followed by ‘PROJECT’, all depicted in slightly stylised upper case letters but in greatly different sizes, with ‘BANANA’ being significantly bigger. The sign also contains leaves and botanical drawings with no concrete or obvious meaning in relation to the relevant goods and which are, therefore, distinctive to an average degree.

As it is a basic English word, recognised as such in the relevant territory, the verbal element ‘THE’ will be perceived as the English definite article. This is of quite low distinctive character as it has a merely syntactic function and defines the noun that follows it.

Despite its English origin, the verbal element ‘PROJECT’ will be understood by the relevant public due to its closeness to the equivalent word in Spanish, namely, proyecto, that is ‘a specific plan or design’. The term is not considered to have any specific meaning when allied with any of the contested goods and is, therefore, distinctive to an average degree.

In the contested sign the banana device and the verbal component ‘BANANA’ are the most eye-catching elements as they overshadow the verbal elements ‘THE’ and ‘PROJECT’ (which are depicted in a very small size), as well as the rest of the botanical representations.

Visually, the signs coincide in the string of letters ‘BANAN***’ and their ending letter ‘A’, which represents five out of the eight letters of the earlier mark and the majority of one of the most dominant elements in the contested one. They differ, however, in the earlier mark’s sequence of letters, namely ‘*****IT*’’ and in the presence in the contested sign of the additional verbal elements ‘THE’ and ‘PROJECT’, the figurative devices and the colours used, as explained above.

According to the explanations above, together with the fact that the coincidence resides in an element with, at most, a low distinctive character (and therefore with a reduced or limited impact in the comparison), the signs are visually similar to a low degree.

Aurally, the signs coincide in the sound of the letters /BANAN*/ and their last letter ‘A’ and differ in the earlier mark’s letter sequence /*****IT*/ .The signs also differ in the sound of the additional verbal elements /THE/ and /PROJECT/.

Taking into account the distinctiveness issues (examined above) and the fact that the figurative elements will not be pronounced, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Due to the presence of quasi-identical elements ‘BANANITA / BANANA’, which are, however, at most of a weak distinctiveness, the signs are considered conceptually similar to, at most, a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 opponents did not explicitly claim that their 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 low for all the goods in question, namely banana cream in Class 33.

e) 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).

First, account is taken of the fact that a finding of a low or even a very low (minimal) degree of distinctiveness for a trade mark may have an impact on the likelihood of confusion. In general, this finding is an argument against likelihood of confusion. It must however be balanced with the other factors, like the degree of similarity of the signs and the goods or services, as well as the level of attention and sophistication of the relevant public.

Second, a coincidence in an element with a low degree of distinctiveness will not normally, on its own, lead to likelihood of confusion. There may be a likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar. There may also be a likelihood of confusion if the overall impression of the marks is highly similar or identical.

In the present case, it has been established that the signs are visually, aurally and conceptually similar to a low degree. The goods have been found to be identical. The relevant public is the general public showing an average degree of attention.

The earlier mark has, at the most, a low degree of distinctiveness.

It should also be noted that ‘assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole’ (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 41). Furthermore, although a company is certainly free to choose a trade mark with a low degree of distinctiveness and to use it on the market, it must accept that, in doing so, competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011-5, 4REFUEL (fig.) / REFUEL, § 15; 18/09/2013, R 1462/2012-G, ULTIMATE GREENS / ULTIMATE NUTRITION (FIG. MARK) et al., § 59; and 13/05/2015, T‑608/13, easyAir-tours (fig.) / international airtours (fig.) et al., EU:T:2015:282, §§ 38 and 63).

Therefore, given that there are sufficient differences produced by the signs and that the similarities are focused on elements of lower distinctiveness, the Opposition Division considers that the public is not likely to believe that the conflicting goods come from the same undertaking or from economically-linked undertakings.

In view of the above, there is no likelihood of confusion. This is because the similarities between the marks concern an element that is, at most, of low distinctiveness together with the fact that the contested sign possess additional elements that are sufficiently distinctive (the word ‘PROJECT’) or are capable of creating an important distance between the signs (figurative aspects, composition of the sign). Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, even if the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponents are the losing party, they must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Alicia BLAYA ALGARRA

Alexandra APOSTOLAKIS

Vít MAHELKA

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.