OPPOSITION No B 3 011 650

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

Sabah Nissan Holding B.V., Amstelboulevard 86, 1096 HJ Amsterdam, Netherlands (applicant), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage Anna van Buerenplein 21A, 2595DA Den Haag, Netherlands (professional representative).

On 25/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 011 650 is partially upheld, namely for the following contested goods:

Class 29: Egg; Vegetable-based snack foods; the aforesaid products also frozen.

Class 30: Bread; Sandwiches; Baguettes; Bread based snack foods; Ready meals, namely filled pitta breads; preparations made from cereals, bread.

2. European Union trade mark application No 17 038 415 is rejected for all the above goods. It may proceed for the remaining goods and services.

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 17 038 4155 for the word mark ‘SABICH KING’, namely against some of the goods and services in Classes 29, 30, 43. The opposition is based on German trade mark registration No 30 404 434 ‘King’ (word mark) and international registration designating the European Union No 1 285 017 ‘Curry King’ (word mark). The opponent invoked Article 8(1)(b) EUTMR for both earlier marks and in relation to the international registration also Article 8(5) EUTMR.

1. 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 ‘King’.

1. The goods and services

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

Class 29: Meats 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 charcuterie; food in ready-to-cook, ready-to-grill or ready-to-eat form, also suitable for microwave, mainly containing meat and charcuterie, poultry and game.

Class 30: Charcuterie products in dough rolls, hot dogs.

The contested goods and services (after the limitation) are the following:

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, dried and cooked vegetables; Tinned meat, fish, poultry and game; Vegetable-based snack foods; Egg, milk and dairy products; Edible oils and fats; The aforesaid products also frozen.

Class 30: Bread; Sandwiches; Croissants; Baguettes; Muffins; Baked dishes Cakes; Small cakes; Waffles; Quiches; bread based snack foods; Ready meals, namely filled pitta breads; Flour and preparations made from cereals, bread; sauces (condiments); Fruit sauces; Spices.

Class 43: Food and beverage services (providing of food and beverages); Catering for the provision of food and beverages; restaurant services; Fast-food restaurant services; Preparing of snack food products; Services for providing food and drink; The aforesaid services, also being provided via the internet.

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

The term ‘also’ and ‘mainly’ used in both lists of goods and services, indicates that the specific goods and services 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).

The term ‘namely’, used in the applicants list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 29

The contested meat, poultry and game; meat extracts are identically contained in both lists. The contested aforesaid products also frozen [meat, poultry and game] are as well identically contained as to the ones of the earlier trade mark, namely meats, poultry and game, also in deep-frozen form.

The aforesaid products also frozen [meat extracts] overlap with the meat extracts, and are therefore identical.

The contested tinned meat, poultry and game; the aforesaid products also frozen overlap with meats, poultry and game, also in preserved form and are, therefore, identical.

The contested vegetable-based snack foods, the aforesaid products also frozen are highly similar to snacks, also suitable for microwave, mainly containing meat and charcuterie as they coincide in producers, distribution channels, relevant public and are in competition.

The contested fish; tinned fish; the aforesaid products also frozen are similar to the opponent’s meats, also in deep-frozen form as they have the same nature and they usually coincide in producer, relevant public and distribution channels.

The contested preserved, dried and cooked vegetables; the aforesaid products also frozen are lowly similar to jellies as they usually coincide in producer, relevant public and distribution channel.

The contested egg; the aforesaid products also frozen are lowly similar to meat as they usually coincide in producer, relevant public and distribution channels.

The contested milk and dairy products, edible oils and fats; the aforesaid products also frozen are dissimilar to the opponent’s goods in Classes 29 and 30. Even though they might have the same public, and are used as ingredients to some of the goods of the earlier mark, this is not sufficient to find similarity in the trade mark sense. They differ in the producers and in the distribution channels and are neither complementary nor in competition to each other.

Contested goods in Class 30

The contested spices are similar to the opponent’s meat extracts in Class 29 as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested fruit sauces are similar to jellies in Class 29 as they coincide in relevant public, distribution channels and method of use. Furthermore, they are in competition.

The contested bread (listed twice); baguettes; croissants; muffins; baked dishes; cakes; small cakes; waffles; pastry and confectionery; sandwiches; quiches are at least similar to hot dogs as they have the same nature. They usually coincide in producer, relevant public and distribution channels and can be in competition.

The contested bread based snack foods; ready meals, namely filled pitta breads are similar to snacks, also suitable for microwave, mainly containing meat and charcuterie as they coincide in producers, distribution channels, relevant public and are in competition.

The contested preparations made from cereals are similar to hot dogs as they have the same nature. They usually coincide in producer, relevant public and distribution channels.

The contested sauces (condiments) is lowly similar to the opponent’s meat extract in Class 29 as they have the same purpose. They usually coincide in relevant public and distribution channels.

The contested flour is dissimilar to the earlier goods in Classes 29 and 30. They have another purpose, are produced by different producers and over different channels.

Contested services in Class 43

The contested food and beverage services (providing of food and beverages); catering for the provision of food and beverages; restaurant services; fast-food restaurant services; preparing of snack food products; services for providing food and drink; the aforesaid services, also being provided via the internet are lowly similar to e.g. the opponent’s charcuterie products in dough rolls, hot dogs in Class 30 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 found to be identical or similar to various degrees are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

KING	SABICH 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 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, it is considered that this element is weak (20/09/2011, T‑99/10, Tofuking, EU:T:2011:497, § 26).

The word ‘SABICH’ will be understood by at least a substantial part of the relevant public as an Israeli sandwich with fried vegetables that is especially know in the food sector and is in trend the last couple of years in Europe, as well in Germany. This element is considered to be non-distinctive in relation to some the goods and services at hand. These goods encompass the main and essential ingredients to the dish and/or serve as a base for the dish. The element is purely descriptive in relation to these goods and services. For the remaining goods ‘SABICH’ has no direct meaning and is of normal distinctiveness, namely for

Class 29: Meat, fish, poultry and game; Meat extracts; Tinned meat, fish, poultry and game; The aforesaid products also frozen.

Class 30: Croissants; Baguettes; Muffins; Gateaux; Cakes; Small cakes; Waffles; Quiches; sauces (condiments); Fruit sauces; Spices.

However, for the part of the public who does not grasp the idea of ‘SABICH’, this element is considered to be of normal distinctiveness.

Visually, the signs coincide in the verbal element ‘KING’ which constitutes the earlier mark in its entirety. However, they differ in the additional word ‘SABICH’, which is the initial verbal element of the contested mark, and that is for a part of the goods and services non-distinctive.

The level of similarity varies depending on whether the word element ‘SABICH’ is non-distinctive for the goods and services or not. In case it will be understood and non-distinctive, the verbal element ‘KING’ is considered the most distinctive element in the mark. In case the element ‘SABICH’ will not be understood or does not describe the relevant goods and services, it is normally distinctive, this element is the most distinctive element of the mark.

Therefore, the signs are visually similar to at most a low degree in case the term ‘SABICH’ is normally distinctive and average when the element ‘SABICH’ is non-distinctive.

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 the contested sign. The pronunciation differs in the verbal element ‘SABICH’ of the contested mark which has no counterpart in the earlier mark. It is undeniable that the marks overlap in the pronunciation of the common word ‘King’. The marks, therefore, have at least a below-average degree of phonetic similarity between them (02/10/2019, R 2356/2018-5, Nordic King, § 46). The similarity is average in case that the element ‘SABICH’ will be perceived as non-distinctive.

Conceptually, the public in the relevant territory will perceive the earlier sign as a male sovereign ruler. Part of the public is very likely to perceive the expression ‘SABICH KING’, taken as a whole, as a ‘King of SABICH’. However, another part will only understand the verbal element ‘King’ as referring to a male sovereign ruler or denoting something of better quality. As the signs will be associated with similar meanings as they both refer to a male sovereign ruler, the signs are conceptually similar to at least an average degree for the part that understands the element ‘SABICH’ and for which it will be perceived in a non-distinctive manner, and for the rest lowly 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.

On 30/04/2018 the opponent submitted evidence in relation to the earlier marks. However, enhanced distinctiveness or reputation in relation to the earlier trade mark ‘KING’ has not been claimed at any point. In its arguments the opponent refers only to the earlier mark ‘Curry King’ when claiming that this mark enjoys reputation and enhanced distinctiveness. The earlier mark ‘King’ is not included in such claim.

The earlier mark ‘King’ is protected as a valid German trade mark registration. It is necessary to acknowledge that a national mark, on which an opposition to the registration of an EU trade mark is based, has a certain degree of distinctiveness (24/05/2012, C 196/11 P, F1-Live, EU:C:2012:314, § 47, 08/11/2016, C-43/15 P, compressor technology (fig.) / KOMPRESSOR et al., EU:C:2016:837, § 67). The evaluation of the degree of distinctiveness of the earlier national mark cannot culminate in a finding that that sign has no distinctive character, since such a finding would not be compatible with the coexistence of EU trade marks and national trade marks or with Article 8(1)(b) and Article 8(2)(a)(ii) EUTMR (24/05/2012, C 196/11 P, F1-Live, EU:C:2012:314, § 42, 44).

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 weak for all of the goods in question in Class 29 and 30.

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 earlier mark is of weak distinctiveness. The earlier mark ‘King’ is completely reproduced in the contested mark and will be perceived as such in the contested mark. In this regard, it needs to be recalled that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. The fact that a mark consists exclusively of the other mark, to which another word has been added, is an indication that the two trade marks are similar (07/03/2013, T 247/11, Fairwild, EU:T:2013:112, § 31).

The relevant public is the public at large, whose degree of attention is considered to be average in relation to the goods and services at stake.

The goods at issue are partially identical, partially similar to different degrees, and partially dissimilar.

In the first constellation, in which the element ‘SABICH’ is non-distinctive in relation to some goods and services, the signs have been found similar to an average degree visually and aurally and conceptually similar to at least an average degree. In relation to this constellation, the following degree of similarity for the relevant contested goods and services has been found:

Low degree of similarity:

Class 29: Preserved, dried and cooked vegetables; egg; the aforesaid products also frozen.

Class 43: Food and beverage services (providing of food and beverages); catering for the provision of food and beverages; restaurant services; fast-food restaurant services; preparing of snack food products; services for providing food and drink; the aforesaid services, also being provided via the internet.

Average degree of similarity:

Class 30: Bread (listed twice); sandwiches; baguettes; bread based snack foods; ready meals, namely filled pitta breads; preparations made from cereals.

High degree of similarity:

Class 29: Vegetable-based snack foods; the aforesaid products also frozen.

Despite the inherent weakness of the common element ‘King’, it has to be acknowledged that the term ‘King’ is still more distinctive than the additional components in the contested mark (02/10/2019, R 2356/2018-5, Nordic King, § 51) for the aforementioned goods and services for which the element ‘SABICH’ has been considered non-distinctive.

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). In this case it is likely that the relevant public will perceive the contested trade mark as a subcategory of the earlier trade mark in this case the vegetable line of the brand.

Even though the contested sign includes additional verbal elements there is still likelihood of confusion as the earlier trade mark ‘KING’, which is a valid trade mark, is entirely integrated as a separate element into the mark applied for. Although the coinciding verbal element is weak for all relevant goods and services, on account of the reproduction of the earlier mark in its entirety in the contested mark together with the fact that ‘KING’ is the most distinctive element of the marks, consumers could still assume that 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 the case at hand, the only differing verbal element ‘SABICH’ in the contested mark also is considered to be non-distinctive. The figurative element that is reinforcing the verbal message is also only of weak distinctiveness.

Considering all the above, the Opposition Division finds that in the first constellation, there is a likelihood of confusion on the part of the relevant public for these goods in Classes 29 and 30, which have been found similar and highly similar, namely vegetable-based snack foods; the aforesaid products also frozen in Class 29 and bread; sandwiches; baguettes; bread based snack foods; ready meals, namely filled pitta breads; preparations made from cereals, bread in Class 30.

However, the goods and services that have been only found only lowly similar there is no likelihood of confusion based on the German earlier trade mark, ‘as the similarities between the signs are rather low together with a low degree of similarities between the goods and services, the signs and products are safely apart from each other for the relevant consumer with an average degree of attention to confuse them.

In the second constellation, in which the verbal element ‘SABICH’ has been found normally distinctive, the similarity found in relation to these goods varies between lowly similar to identical. In relation to these goods there is no likelihood of confusion even taking into account that some of the goods are identical. Considering the distinctiveness of the verbal element ‘SABICH’ the signs are visually similar to at most a low degree, aurally, to at least a below-average degree and conceptually lowly similar.

As the element ‘SABICH’ is the most distinctive element in this constellation in the contested trade mark, this striking difference will prevent the relevant public from confusing the signs.

As the similarity of the goods is a requirement of Article 8 (1)(b), there is no likelihood of confusion for the dissimilar goods.

As the aforementioned earlier right ‘KING’, namely the German word mark registration No 30 404 434, only leads to the success of the opposition in relation to some goods, the examination will proceed based on the further earlier right invoked.

2. International registration designating the European Union No 1 285 017 ‘Curry King’

a) The goods and services

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

Class 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.

Class 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 remaining contested goods and services where in relation to the earlier trade mark ’KING’ no likelihood of confusion has been found, are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked vegetables; Tinned meat, fish, poultry and game; Egg, milk and dairy products; Edible oils and fats; The aforesaid products also frozen.

Class 30: Croissants; Muffins; Gateaux; Cakes; Small cakes; Waffles; Quiches; Flour,; sauces (condiments); Fruit sauces; Spices.

Class 43: Food and beverage services (providing of food and beverages); Catering for the provision of food and beverages; restaurant services; Fast-food restaurant services; Preparing of snack food products; Services for providing food and drink; The aforesaid services, also being provided via the internet.

The term ‘in particular’ used in the opponent´s list of goods indicates 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).

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 29

The contested meat, poultry and game, tinned meat, poultry and game; the aforesaid products also frozen are similar to the opponent’s meat products.

The contested fish, tinned fish; the aforesaid products also frozen are similar to the opponent’s meat products as they usually coincide in relevant public and method of use. Furthermore they are in competition.

The contested egg; milk and dairy products; edible oils and fats; the aforesaid products also frozen are similar to the opponent’s prepared dishes consisting primarily of dairy products and/or egg products and/or edible oils as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested meat extracts; the aforesaid products also frozen are dissimilar to the earlier goods in Classes 29 and 30 as they do not coincide in producer and distribution channels and are directed to different public. Moreover, they are not in competition.

The contested preserved, dried and cooked vegetables; the aforesaid products also frozen are dissimilar to the earlier goods in Classes 29 and 30 as they differ in producers, distribution channels and public. Furthermore, they are of different nature.

Contested goods in Class 30:

The contested flour is similar to a low degree to prepared dishes, consisting primarily of cereals as they usually coincide in relevant public, distribution channels and method of use.

The contested sauces (condiments); spices, fruit sauces are at least similar to a low degree to the opponent’s prepared dishes, consisting primarily of cereals and/or rice and/or corn and/or pasta and/or dumplings and/or sauces and/or spices usually coincide in relevant public, distribution channels and method of use.

The contested croissants; muffins; cakes; small cakes; waffles, quiches, are cereal products therefore, they are at least similar to the opponent’s prepared dishes, consisting primarily of cereals as they coincide in producers are distributed over the same distribution channels and directed to the same public. Moreover, they are in competition.

Contested services in Class 43

The contested food and beverage services (providing of food and beverages); catering for the provision of food and beverages; restaurant services; fast-food restaurant services; preparing of snack food products; services for providing food and drink; the aforesaid services, also being provided via the internet are lowly similar to meat products as they usually coincide in producer and distribution channels. Furthermore they are complementary.

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 and services found to be similar to various degrees are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

Curry King	SABICH KING
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘King’ is meaningful in certain territories, for example in those countries where English is understood. However, the meaning of this element depends as well on the perception in the different languages. Hence, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public as the common element ‘King’ will be understood by the German-speaking public as the term has been integrated into the German vocabulary and the perception of the element by the German public has been already defined in several Court decisions.

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, it is considered that this element is weak (20/09/2011, T‑99/10, Tofuking, EU:T:2011:497, § 26). However, in relation to the further elements ‘SABICH’ in the contested and ‘Curry’ in the earlier sign, this term is still more distinctive in relation to same of the goods and the services , as the aforesaid elements in case ‘SABICH’ will be understood, purely descriptive describing the origin and purpose of the goods or the kind of flavour (curry) (see 02/10/2019, R 2356/2018-5, Nordic KING (fig.) / Curry King et al §40).

As seen in the above assessment in relation to the earlier trade mark ‘King’, the word ‘SABICH’ will be understood by at least a substantial part of the relevant public. This element is considered to be non-distinctive in relation some of the goods and services, namely egg; the aforesaid products also frozen (in Class 29) and in relation to all the services in Class 43 distinctive. In relation to the further goods in Class 29 and all the goods in Class 30, the element ‘SABICH’ is considered to be distinctive.

However, for the part of the part of the public who does not grasp the idea of ‘SABICH’, this element is considered to be of normal distinctiveness.

For the part of the public and in relation to the goods that ‘SABICH’ is normal distinctive, the element ‘King’ will not be the most distinctive element.

The word ‘Curry’ will be understood by at least a substantial part of the relevant public as an indication of an Indian flavour or dish and has been integrated into German vocabulary and as such related to this meaning. In relation to the goods, the element is non-distinctive as it describes the flavor of the goods.(see as well 13/12/2011, T-61/09, Schinken King,/Curry King, §50 ). However, for the part of the public who does not grasp the idea of ‘Curry’, this element is considered to be of normal distinctiveness.

For procedural economy, the further examination will focus on the substantial part of the German public that will understand the element ‘Curry’ and will be non-distinctive as the likelihood of confusion is higher for this part of the public.

In such case, the visual, aural and conceptual similarity cannot be higher than the one found in relation to the trade mark ‘King’ above, due to the non-distinctive element ‘Curry’. The level of similarity varies depending on whether the word element ‘SABICH’ is non-distinctive for the goods and services or not.

In case the element ‘SABICH’ will be understood and non-distinctive, the verbal element ‘KING’ is considered the most distinctive element in the mark. In case the element ‘SABICH’ will not be understood and its normal distinctive, this element is the most distinctive element of the mark.

Therefore, the signs are visually similar to at most a low degree in relation to the goods the term ‘SABICH’ is normally distinctive and average for the goods and services for which the element ‘SABICH’ is non- distinctive.

The marks, therefore, have at least a below-average degree of phonetic similarity between them (02/10/2019, R 2356/2018-5, Nordic King, § 46). The similarity is higher, namely average, in case that the element ‘SABICH’ will be understood and is therefore non-distinctive.

The signs are conceptually similar to at least an average degree for the part that understands the element ‘SABICH’, and for the rest lowly similar.

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.

According to the opponent, the earlier mark ‘Curry King’ enjoys a high degree of recognition among the relevant public in connection with the goods of Class 29, for which it is registered. 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 enhanced distinctiveness of the earlier trade mark should exist as well at the time of the filing of the contested EUTM application (26/07/2017) as well as at the time of the decision.

On 30/04/2018 the opponent submitted the following evidence to prove the claimed reputation/enhanced distinctiveness:

 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: [… ] I will now name for you some brands or manufacturers of sausages. Which of these brands or manufactures do you know for sausages, even if only by the name?

 In total three sworn statements

2 sworn statements by the former managing director of the opponent with supporting documents. First sworn statement dated 09/09/2009 with supporting documents. The statement attests the number of the sold products under the trade mark ‘Curry King’ form 2004-2008 (split by years) as well as a sample for the use of the trade mark in form of the lids used on packaging from 2004-2008 . As further support of the production sales correspondence with German retailers consisting of two orders, three invoices and one packing slips added. Furthermore, the statement refers to the advertising of the product, with information to the frequency of the broadcasted spots as well as the spending in Euro, split for the years 2004-2008, based on an information sheet from the research Institute Nielsen as well as the broadcasted spots. Moreover, the statement refers to a table from Nielsen, a market research Institute, showing the market shares of ‘Currywurst’ sausage with curry seasoning for the first half of 2006 stating a level of above 60% by mid 2006. The relevant parts of the documents are translated into English.

Second sworn statement by the former managing director, dated 19/11/2013. The statement attests very high sales (more than 10 million units) of the product in the years 2004 to 2008 as well as advertising and promotional activity and spending from 2008 to 2012 on products under the trade mark ‘Curry King’. Copies of lids and labels as well as orders and invoices from the time 2009-2012 (referring to Curry King) in relation to retailer customs are attached. Additionally, he states that in the years 2008-2012 extensive efforts were made to advertise the trade mark ‘Curry King’.

 Sworn statement by the current managing director of the opponent [at the time] dated 17/02/2017, attesting that the opponent has produced and distributed a sausage-based convenience food from 2002 to 2016 under the trade mark ‘Curry King’ in Germany. To support the statement, copies from labels as an example for the labelling during the years 2012 and 2013 as well as sales correspondence for the years 2010 and 2016 relating to the product sold under the trade mark are added. The statement includes as well information regarding advertising expenses as well as stating coverage for TV spots for the years 2010 to 2016 as well as examples for advertising.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired enhanced distinctiveness or even reputation as claimed by the opponent neither for Germany nor for any other country in the EU.

Most of the documents submitted, such as product labels, copywriting and invoices do not indicate the degree to which the brand is known in Germany, which is the essential factor to prove as regards the claim that has been made.

As far as affidavits are concerned, according to Article 97(1)(f) EUTMR these written statements are admissible means of proof. 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 (e.g. which trade marks do you know in the field of sausages?); instead different trade marks as well as different manufacturers 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. This could only be achieved by means of an open question as explained above. Moreover, it should be mentioned that the manufacturer Meica was also named among the manufacturers so that there was also in this aspect a further aide in the poll.

The further documents are also not suitable to prove the enhanced distinctiveness or reputation. These 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 German relevant public. Furthermore, the trade mark is mostly presented together with the trade mark ‘Meica’ so that’s it’ is doubtful if the distinctiveness of ‘Curry King’ can be augmented when it’s always presented along with the manufacturer Meica.

Therefore, the Opposition Division concludes that the opponent did not succeed in establishing the enhanced distinctiveness or reputation of its trade mark.

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 weak for all of the goods in question in Class 29 and 30.

e) 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 earlier mark is of lower than average distinctiveness. The most distinctive part of the earlier mark, namely ‘King’ is completely reproduced in the contested mark and will be perceived as such in the contested trade mark. In this regard, it needs to be recalled that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. The fact that a mark consists exclusively of the other mark, to which another word has been added, is an indication that the two trade marks are similar (07/03/2013, T 247/11, Fairwild, EU:T:2013:112, § 31).

The relevant public is the public at large, whose degree of attention is considered to be average in relation to the goods and services at stake.

The goods at issue are, partially similar to different degrees and partially dissimilar.

The signs are of average similarity visually and phonetically and conceptually at least average for the below mentioned goods and services for which the element SABICH is non-distinctive, namely the following:

Class 29: Egg; the aforesaid products also frozen.

Class 43 Food and beverage services (providing of food and beverages); Catering for the provision of food and beverages; restaurant services; Fast-food restaurant services; Preparing of snack food products; Services for providing food and drink ;The aforesaid services, also being provided via the internet .

Egg; the aforesaid products also frozen have been found similar to the goods of the earlier mark and the services in Class 43 as mentioned above have been found similar to a low degree.

Following the same arguments as in relation to the above examined ‘KING’ trade mark, the likelihood of confusion only exists in this constellation for in relation to these goods and services, that have been found similar.

In this case here, only the goods in Class 29 namely egg, the aforesaid products also frozen have been found similar. The services in Class 43 have only found similar to a low degree.

Therefore, due to the average similarity visually and phonetically and as well the conceptual similarity with an at least average degree, for egg, the aforesaid products also frozen there is likelihood of confusion.

In relation to the services found to be similar to a low degree, there is no likelihood of confusion.

In relation to the remaining goods in relation to which the element ‘SABICH’ is found distinctive and the coinciding element ‘King’ as explained will not be the most distinctive element, the result can also not be different from the assessment made before relating to the other earlier trade mark ‘King’. The same applies, in case the element ‘Curry’ will not be understood and therefore fully distinctive.

Therefore, in relation to these remaining goods (that have been stated to be similar to similar and lowly similar), as explained in relation to the previous trade mark, there is no likelihood of confusion.

As the aforementioned earlier right ‘Curry King’ leads to the success of the opposition only to some goods, for the remaining goods and services the examination will continue on the basis of Article 8(5) EUTMR.

3. 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.

1. Reputation of the earlier trade mark

According to the opponent, its international registration designating the European Union No 1 285 017 ‘Curry King’ has a reputation in Germany.

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.

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.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR in section 2.d) of this decision. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Conclusion

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.

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

The Opposition Division

Renata COTTRELL

Claudia MARTINI

Astrid WÄBER

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.