OPPOSITION No B 3 022 566

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

Agrupapulpi S.A., Ctra. De Pulpi – Terreros, Km. 0'7 04640 Pulpí (Almería), Spain (applicant), represented by Luis Salomón Ela Ayacaba, Avda. General Primo de Rivera, 9, entlo. C, 30008 Murcia, Spain (professional representative).

On 18/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 022 566 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 182 114 (figurative mark ), namely against some of the goods in Class 31 and part of the services in Class 35. The opposition was also directed against the goods in Class 29, however on 25/06/2018 the applicant deleted the entire Class 29 from the application. The opposition is based on German trade mark registration No 30 404 434 (word mark ‘KING’) and international trade mark registration No 1 285 017 designating the European Union (word mark ‘Curry King’). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR, the latter one only in relation to international trade mark registration No 1 285 017.

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 and services

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

German trade mark registration No 30 404 434 (word mark ‘KING’) for the following goods in Classes 29 and 30:

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

International trade mark registration No 1 285 017 designating the European Union (word mark ‘Curry King’):

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 are the following:

Class 31: Agricultural, horticultural and forestry products, grains; vegetables; Fresh vegetables; fresh vegetables.

Class 35: Import, export, retailing, wholesaling and sale via global computer networks, of agricultural products.

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 31

The contested goods in this class are agricultural, horticultural and forestry products while the opponent’s goods are prepared dishes, meat products, jellies and food preserves. The contested goods in this Class are clearly dissimilar to all the opponent’s goods in Classes 29 and 30 because they have different natures and purposes. They do not have the same method of use. They are neither complementary nor in competition. They do not target the same end users, do not have the same producers and are generally distributed through different channels.

Contested services in Class 35

Retailing of agricultural products and the opponent’s goods in Classes 29 and 30 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not identical.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesaling and sale via global computer networks in Class 35.

Import and export services are not even considered to be a sales service and thus cannot be subject to the same arguments as the comparison of goods with retail services.

Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods in question are the same is not a relevant factor for finding similarity.

b) 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 and services 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 marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

 The signs must be either identical or similar.

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

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

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

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

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark, namely international trade mark registration No 1 285 017 designating the European Union 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.

In the present case, the contested trade mark was filed on 07/09/2017. 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 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.

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

On 30/05/2018 the opponent submitted the following evidence:

 Surveys on the earlier mark’s recognition carried out by Ipsos GmbH in 2011 and 2015, showing a brand awareness for the trade mark ‘Curry King’ for sausages and sausage products in Germany of 58,3% (2011) and 57,4% (2015) out of 1000 persons of age 14+. The question asked to participants was: which of the following trade marks do you know in the field of sausages?

 Sworn statements by the former managing director of the opponent, Dr. Jochen Kahmann dated 09/09/2009 and 19/11/2013, attesting to very high sales and advertising and promotional activity and spending from 2002 to 2012 of products under the trade mark ‘Curry King’. He states that in the years 2008-2012 extensive efforts were made to advertise the trade mark ‘Curry King’. The content of the statement is supported by further evidence (TV spots, invoices, delivery notes, labels, etc) and a table with data from the year 2006 in relation to curry sausages which seems that CurryKing had a market share of 60% in Germany.

 Sworn statement by Mr. Michael März dated 17/02/2017, managing director of the opponent, attesting that the opponent has produced and distributed a sausage-based convenience food from 2002 to 2010 under the trade mark ‘Curry King’ and giving specific sales and advertising figures for the relevant period. The content of the statement is supported by further evidence (TV spots, invoices, delivery notes, labels, etc).

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

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

As far as affidavits are concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

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

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

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

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

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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.

The Opposition Division

Tu Nhi VAN

Lars HELBERT

Octavio MONGE GONZALVO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.