OPPOSITION No B 2 913 567

De Longhi Benelux S.A., 49, boulevard du Prince Henri, 1724 Luxembourg, Luxembourg (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative)

a g a i n s t

MYRA Products GmbH, Beim Strohhause 31, 20097 Hamburg, Germany (applicant).

On 07/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 913 567 is rejected in its entirety.

2. The opponent bears the 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. 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 all the goods of European Union trade mark application No 16 458 101 for the figurative mark . The opposition is based on European Union trade mark registration No 3 086 527 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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 above mentioned 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 mark

According to the opponent, the earlier trade mark has 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 09/03/2017. Therefore, the opponent was required to prove that the trade mark 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:

Class 7: Electromechanical apparatus for the kitchen; machines to cut, mince, knead, mix, beat, centrifuge, grate foodstuffs; electric fruit presses; polishers, electric floor cleaners, cleaning appliances utilizing steam, vacuum cleaners, electric vacuum brushes, steam ironing appliances (all for household purposes).

Class 8: Depilation appliances.

Class 9: Electric flat irons, steam irons, scales (all for household purposes).

Class 11: Air conditioning apparatus, heaters, fans, air conditioners, humidifiers; apparatus for cooking and treating foodstuffs, electric toasters, griddles, grills and ovens, fryers, electric egg boilers, coffee machines, cooking apparatus, ice cream makers, yoghurt makers; gas lighters; saunas, hair dryers, (all for domestic purposes).

Class 21: Household and kitchen utensils and containers; combs, brushes, electric toothbrushes.

The opposition is directed against the following goods:

Class 30: Coffee, teas and cocoa and substitutes therefor; Salts, seasonings, flavourings and condiments; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Rice; Brown rice.

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.

The opponent submitted on 31/10/2017 evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept 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 consists of the following documents:

• Annex 1: ‘Ariete’ products sales figures in the EU countries from 2010 to 2017. The document reflects sales of, inter alia, air conditioning/treatment apparatus, coffee makers, electric ovens, floor care devices, irons or kitchen machines. The sales are particularly relevant in Italy, Spain and Portugal, but they refer also to all the other EU countries. The document is undated and unsigned, and does not indicate the source of the information, but it seems to be an internal record from the opponent.

• Annex 2: ‘Ariete’ Point of Purchase (POP) materials guidelines / marketing manual 2014. This document, from the Ariete Marketing Department, aims to allow the ‘Ariete’ distributors to reproduce POP materials with the right structure and appearance everywhere, for brand use consistency in the advertisement and sale of in-store goods.

• Annex 3: ten ‘Ariete’ brochures in Italian and English in relation to a range of household appliances (e.g. sandwich and hot dog makers, coffee and tea makers, vacuum cleaners, electric warming plates and mixers, toasters, food processors, irons, ice-cream makers, etc.). Although the opponent indicates that the brochures are from 2014 to 2016, four of them (purportedly from 2014, 2015 and 2016) are undated, and there are only references to the years 2015 and 2016 in the remaining six brochures.

• Annex 4: 29 invoices issued by the opponent to various clients in the European Union (namely, in France, Germany, Italy, Spain and the United Kingdom) regarding sales of ‘Ariete’ products from 2012 to 2017. Among the products that appear in the invoices, there are coffee makers, steam irons, food processors, electric woks, spin juicers, toasters, yogurt makers, ice-cream makers, grill barbecues, electric ovens, pasta makers, water dispensers, cookers, sandwich makers, dry vacuum cleaners, floor steam cleaners, blenders, bread makers, water kettles or fans.

• Annex 5: links to the corporate website of ‘Ariete’ in various EU countries (France, Greece, Poland, Portugal and Spain) as well as the ‘Ariete’ YouTube channel.

• Annex 6: extract from the ‘Ariete’ webpage showing pictures of ‘Ariete’ IFA Berlin exhibitor in September 2016 (trade show for consumer electronics and home appliances) and extract from the IFA Berlin website regarding the participation of ‘Ariete’ as exhibitor of household appliances in the trade fair of 2017.

• Annex 7: ‘Ariete’ products catalogues in Italian or English regarding coffee and tea makers, food mixers, meat mincers, vacuum and steam cleaners, ironing steam stations, coffee grinders, kettles and other kitchen appliances. Although the opponent indicates that these catalogues are from 2011 to 2017, only one is dated in 2012.

• Annex 8: seven ‘Ariete’ advertising leaflets for the European Union, namely for the Czech Republic, Slovakia, Finland and Poland, regarding cleaning appliances utilizing steam, kettles, coffee makers, hamburger makers, popcorn poppers, hot dog makers, yoghurt makers, ice-cream makers, donut, muffin and waffle makers or electric flat irons. Although the opponent indicates that these leaflets are from 2014 to 2016, most of them are undated, two refer to the year 2016 and one to June 2017.

There are also two pictures showing ‘Ariete’ electric toasters and other kitchen appliances on the shelves of stores (only one picture has a printed date on it, namely 19/06/2015), two undated pictures showing cars with the ‘Ariete’ logo on them (with Polish and Spanish plates) and one undated press release for Spain.

• Annex 9: ‘Ariete’ Baltics marketing executions report 2016 containing advertisements (most of them undated) and pictures of goods in stores regarding a range of household appliances (most of them with a date in 2016 printed on them).

• Annex 10: extract of the section ‘ABOUT US’ of ‘Ariete’ website, with a copyright indication of 2017.

According to the opponent, ‘Ariete’ is a leading Italian company in the household appliances sector, established in 1964. The opponent also argues that ‘Ariete’ is recognised as one of the most well-known and popular brands among consumers in Italy, the European Union and the rest of the world, operating in the national (Italian) and international market and exports representing over 60% of total sales.

The opponent claims that essentially, the evidence (principally the high sales figures reached) highlights the extensive use of the mark ‘Ariete’ for coffee makers, tea makers, chocolate makers and electromechanical apparatus for the kitchen, in particular with regard to Italy, Spain and Portugal.

The opponent also contends that in advertising, POP materials are used to promote a product and make it stand out from the competitors at the point of sale and that this fact demonstrated the energy and determination that the owner employs in creating public awareness around its brand ‘Ariete’.

In assessing reputation, account should be taken, in particular of the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

In the present case, having examined the material listed above, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

A major part of the evidence consists of documents originating from the opponent itself, namely the sales figures, invoices, marketing manual, leaflets, brochures and catalogues, extracts or links to corporate websites of the opponent, etc. Even if these documents present some data regarding the turnover figures generated by the sales of household appliances in several countries of the European Union, the data must be supported by other independent information able to bring some light regarding the knowledge threshold of the public in the relevant territory.

Furthermore, regarding the marketing manual, leaflets, brochures and catalogues, as well as the advertisements, the opponent did not submit any information as to the audience rates or circulation figures attained by the relevant publications. Consequently, the submitted evidence can give little information as to the level of recognition of the earlier mark.

In this regard, despite showing some use of the trade mark, the evidence provides no information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public.

Therefore, in the absence of any evidence that can clearly prove the extent of recognition amongst the relevant public such as a survey on the mark’s recognition, opinion polls or other means of evidence such as sworn or affirmed statements, facts and figures originating from independent sources such as auditors or chambers of commerce, decisions of Courts or administrative bodies, bearing in mind the above analysis of the submitted documents as a whole and the probative value of the evidence and information contained therein, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark is known by such a significant part of the relevant public so as to reach the threshold necessary for a finding of reputation or even highly distinctive character.

It must be recalled that, as follows from Article 95(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R-0437/2014-1, SALSA/SA SALSA (fig. mark) et al.).

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 as far as this ground is concerned.

The Opposition Division will continue with the examination of the remaining ground of the opposition, namely Article 8(1)(b) 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.

1. The goods

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

Class 7: Electromechanical apparatus for the kitchen; machines to cut, mince, knead, mix, beat, centrifuge, grate foodstuffs; electric fruit presses; polishers, electric floor cleaners, cleaning appliances utilizing steam, vacuum cleaners, electric vacuum brushes, steam ironing appliances (all for household purposes).

Class 8: Depilation appliances.

Class 9: Electric flat irons, steam irons, scales (all for household purposes).

Class 11: Air conditioning apparatus, heaters, fans, air conditioners, humidifiers; apparatus for cooking and treating foodstuffs, electric toasters, griddles, grills and ovens, fryers, electric egg boilers, coffee machines, cooking apparatus, ice cream makers, yoghurt makers; gas lighters; saunas, hair dryers, (all for domestic purposes).

Class 21: Household and kitchen utensils and containers; combs, brushes, electric toothbrushes.

The contested goods are the following:

Class 30: Coffee, teas and cocoa and substitutes therefor; Salts, seasonings, flavourings and condiments; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Rice; Brown rice.

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 goods in Class 30 consist mainly of foodstuffs and are dissimilar to all the opponent’s goods which include mainly kitchen apparatus and machines, as well as polishing, cleaning and ironing machines (goods in Class 7), hair cutting and removal implements (goods in Class 8), appliances for pressing cloths and linens, and weight measuring instruments (goods in Class 9), cooking, refrigerating, heating, drying, ventilating, air conditioning and air treatment equipment, as well as sanitary installations (goods in Class 11) and small, hand-operated utensils, and containers for household and kitchen use, as well as toilet utensils (goods in Class 21).

As a preliminary remark, it should be pointed out that the Office’s practice in comparing specific goods and services is reflected in the Similarity Tool for the comparison of goods and services. This is a search tool to help and support examiners in assessing the similarity of goods and services and serve to harmonise practice on the assessment of similarity of goods and services and to guarantee the coherence of opposition decisions. The Similarity Tool must be followed by examiners. The Similarity Tool is constantly updated and revised as necessary in order to create a comprehensive and reliable source of reference.

In this regard, even if some of the opponent’s goods, as for example coffee machines in Class 11, are apparatus the use of which could be linked to the consumption of foodstuffs, as they are necessary for the transformation or presentation of meals and beverages (coffee in this example), contrary to the opponent’s arguments (backed with a reference to judgement T-545/15 of 26/11/2016, ‘PRESSO’, ECLI:EU:T:2016:680), according to the current Office’s practice as stablished in the above-mentioned Similarity Tool, the Opposition Division does not consider that these opponent’s goods and the contested coffee are usually marketed by the same undertakings nor that they have the same purpose (for example, the purpose of coffee is to quench thirst or act as a stimulant, whereas coffee machines are used to prepare coffee by brewing coffee grounds). Furthermore, these goods do not have the same nature. Thus, even if it was to be considered that they could be complementary or used in combination, this is not sufficient for a finding of similarity, since it is not considered that the goods have the same usual commercial origin. The contested goods are even further removed from the remaining opponent’s goods in terms of the relevant criteria defined above. Namely, they differ in their natures, purposes, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kinds of undertakings. Therefore, they are dissimilar.

The same reasoning applies to the remaining contested goods in Class 30, namely teas and cocoa and substitutes therefor; salts, seasonings, flavourings and condiments; processed grains, starches, and goods made thereof, baking preparations and yeasts; rice; brown rice, since they do not coincide in any of the relevant criteria specified above that can result in a degree of similarity between them and, consequently, they are dissimilar to all the opponent´s goods.

2. Conclusion

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

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness, given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark. In any case, the evidence submitted by the opponent in this respect has already been examined above under the grounds of Article 8(5) EUTMR and it has been concluded that the earlier trade mark does not enjoy a highly distinctive character.

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 opponent is the losing party, it 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Lucinda CARNEY

Eva Inés PEREZ SANTONJA

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.