OPPOSITION No B 3 015 438

El Corte Inglés, S.A., C/ Hermosilla 112, 28009 Madrid, España (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, España (professional representative)

a g a i n s t

AIL International Inc., 13 Silvershore Drive, Sackville E1G 1G8 Sackville, Canada (applicant), represented by Kilburn & Strode LLP, Laapersveld 75, 1213 VB Hilversum, Netherlands (professional representative).

On 27/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 015 438 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 310 608 for the word mark ‘SUPER-COR’. The opposition is based on the following Spanish trade mark registrations:

 No 2 090 579 for the word mark ‘SUPERCOR’, covering goods in Class 6,

 No 2 090 602 for the word mark ‘SUPERCOR’, covering services in Class 35,

 No 2 306 585 for the word mark ‘SUPERCOR EXPRES’, covering services in Class 35,

 No 2 090 604 for the word mark ‘SUPERCOR’ covering services in Class 37,

 No 2 090 608 for the word mark ‘SUPERCOR’ covering services in Class 42

 No 2 096 219, No 2 096 250 and No 2 2 096 255, all the latter three for the figurative mark covering goods in Class 6, services in Class 37 and in Class 42, respectively.

The opponent invoked Article 8(5) EUTMR in relation to the two Spanish trade mark registrations that cover Class 35 services and Article 8(1)( b) EUTMR in relation to the other six marks listed.

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 opponent submit proof of use of all the trade marks on which the opposition is based.

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

On 20/02/2018 the opponent was given two months to file the requested proof of use. Subsequently, further to a request for the extension of the cooling-off period, followed by an opting out and a unilateral request for an extension, this term ̶ together with the term to file further material in support of the opposition and to prove the existence and validity of its earlier rights ̶ was extended, until 06/09/2018. On 06/09/2018, within the time limit, the opponent replied that it did not consider it necessary to provide proof of use of the earlier trade marks as “these trade marks are very well known and reputed in Class 35 in Spain” but at the same time filed evidence in order to prove the reputation. On 11/09/2018, the Office informed the parties that it will take into account the submitted evidence both for the purpose of substantiation of the opposition according to Article 7(1) EUTMDR and as evidence for proof of use according to Article 10 EUTMDR.

The date of priority of the contested application is 07/07/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 07/07/2012 to 06/07/2017 inclusive.

Furthermore, the evidence must show use of the trade marks for all the goods and services on which the opposition is based, namely the following:

Spanish trade mark registration No 2 090 579 SUPERCOR

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Spanish trade mark registration No 2 096 219 SUPERCOR (figurative)

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; ores.

Spanish trade mark registration No 2 090 602 SUPERCOR

Class 35: Advertising; business management; business administration; office functions.

Spanish trade mark registration No 2 306 585 SUPERCOR EXPRESS

Class 35: Advertising; business management; business administration; office functions; retail sale in commerce.

Spanish trade mark registration No 2 090 604 SUPERCOR

Class 37: Building construction; repair, installation services.

Spanish trade mark registration No 2 096 250 SUPERCOR (figurative)

Class 37: Installation, repair, commercial maintenance.

Spanish trade mark registration No 2 090 608 SUPERCOR

Class 42: Providing of food and drink; temporary accommodation; medical care; hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming.

Spanish trade mark registration No 2 2 096 255 SUPERCOR (figurative)

Class 42: Providing of food and drink; temporary accommodation; medical care; hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming.

According to Article 10(3) EUTMDR, 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.

The evidence to be taken into account is the following:

 Extracts of annual reports for the years 2012 – showing ‘SUPERCOR’ and ‘SUPERCOR EXPRES’ in relation to supermarkets and retail sale of foodstuffs, cleaning and personal hygiene products, perfumery and cosmetics and newspapers (with an annual turnover of between around 400 to 600 million euros in the period 2011 – 2016 throughout Spain (Annexes 1-5)

 Document dated 21/06/2016 showing the presence of a total of 174 SUPERCOR and SUPERCOR EXPRES stores throughout Spain (Annex 6)

 14 press articles dated between 12/06/2012 and 19/09/2018 mentioning the expansion of SUPERCOR EXPRES stores and SUPERCOR as the largest local store player in Spain and their strength as local retail shops for foodstuffs and drinks, showing the use of SUPERCOR and SUPERCOR EXPRES in relation to supermarkets and retail sale of mainly daily (fast moving) consumer goods (Annex 7)

 Two declarations from the legal representative of the opponent

(i) dated 13/07/2018, stating, inter alia,

- that in Spain there are 108 SUPERCOR EXPRES shops,

- the turnover per year of those shops, in the years 2013 – 2017,

- the number of clients per year of those shops, in the years 2013 -2017 (around between 29 to 30 million customers),

- the amounts invested in advertising for the SUPERCOR EXPRES, per year, in the years 2013 – 2017 (between 0,6 to 1,1 million Euros);

(ii) dated 06/06/2013, stating, inter alia,

- that in Spain and Portugal there are 78 SUPERCOR shops,

- the turnover per year of those shops, in the years 2007 - 2012

(it is not clear whether these numbers refer to the territories of Spain and Portugal together) (Annex 8)

 Supermarket brochure extracts (Annex 9) in Spanish, dated in the period 11/07/2013 - 13/12/2017 showing the SUPERCOR EXPRES mark as depicted, in relation to retail sale of a wide variety of household goods (mainly foodstuffs and drinks, but also some kitchen utensils, personal hygiene products, cosmetics and clothing items) :

 Internet extract (Annex 10) dated 31/07/2018 listing the SUPERCOR EXPRES and SUPERCOR shops in Spain, showing their presence in almost all Spanish regions and distributed throughout the country and showing the marks as word marks ‘SUPERCOR Expres’ and ‘SUPERCOR’ as well as in the figurative versions, as depicted below

 Extracts of promotional flyers (Annex 11) dated between 15/08/2003 - 12/03/2009 showing the mark in relation to retail sale of mainly foodstuffs and drinks, as depicted below:

 Sales report taken from an independent source Einforma, made by Deloitte S.L. in 2017, dated 04/09/2018 stating a sales amount of SUPERCOR SA of around 650 million euros in 2017 (Annex 12).

First of all, it is very clear from the evidence, as correctly stated by the applicant, that the submitted evidence only refers to retail sale in commerce of a variety of goods, namely mainly of foodstuffs and beverages in Class 35. Furthermore, there is little or no reference whatsoever, not even taking into account the evidence as a whole, to any of the other goods or services mentioned by the opponent in the evidence filed. 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.

Furthermore, these services are only covered by earlier Spanish trade mark registration No 2 306 585 ‘SUPERCOR EXPRES’ that covers retail sale in commerce in Class 35 and for which a reputation in Spain is claimed.

Therefore, the opposition must be rejected as far as it is based on all the other marks and grounds.

The examination of the opposition, of the proof of use and the evidence of reputation, will proceed hereunder in relation to these services in Class 35 only.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely, the supermarket brochure extracts (Annex 9), and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The applicant also contests a part of the evidence filed by the opponent, namely the Einforma sales report (Annex 12), on the grounds that it does not concern the opponent another company, SUPERCOR SA. According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). Furthermore, the report (page 1) shows that the company SUPERCOR SA is located on the same address as the opponent, owner of the earlier ‘SUPERCOR’ mark, and that the sector in which SUPERCOR SA is active is retail sales of mainly foodstuffs and drinks and tobacco articles (page 5 of report). Finally, from the extract of Einforma filed by the opponent on 22/03/2019 (filed by the opponent in reply to the applicant’s observations in which the applicant disputed the initial evidence submitted by the opponent), it can be seen that SUPERCOR SA belongs to the opponent’s company group. It follows that this contested document filed by the opponent relates to the opponent so that this claim of the applicant is unfounded.

As far as the declarations 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 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.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the services for which the earlier mark are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The documents filed show that the place of use is Spain. This can be inferred from the Spanish language of the documents, the currency mentioned (‘Euro’) and the addresses listed of the stores throughout Spain. Therefore, the evidence relates to the relevant territory.

As regards the time of use, evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because it refers in any event to the use of the trade marks ‘SUPERCOR’, ‘SUPERCOR expres’ and the figurative ‘SUPERCOR’ mark that is close in time to the relevant period.

Furthermore, with reference to the 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.

The Opposition Division notes that the figurative versions in which the SUPERCOR EXPRES word mark is used do not alter the distinctive character in the form in which it was registered since the verbal elements are in any event the dominant component within the figurative versions as used. The General Court has already mentioned that strict conformity between the sign as used and the sign registered is not necessary. The Court also held that if the addition is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.). Therefore, it is considered that the evidence shows that the SUPERCOR EXPRES mark has been used in accordance with its function and as registered.

Finally, 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. Use of the mark need not be quantitatively significant for it to be deemed genuine. 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 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).

The documents filed, as a whole, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of earlier Spanish trade mark No 2 306 585 SUPERCOR EXPRES during the relevant period in Spain.

Consequently, in the present case, the Opposition Division concludes that the evidence shows genuine use of the trade mark for retail sale in commerce of foodstuffs and beverages. As mentioned above, according to Article 47(2) EUTMR, if the earlier mark has been used in relation to only some of the 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 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 thus proves genuine use only for retail sale in commerce of foodstuffs and beverages, which can be considered to form an objective subcategory of retail sale in commerce, in Class 35.

Furthermore, the same evidence was filed for the assessment of reputation and within the time limit to file further facts and evidence. Having examined the material listed above, the Opposition Division concludes that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public for supermarket retail sale in relation to certain daily and fast moving consumer goods, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation in Spain in relation to retail sale in commerce of foodstuffs and beverages in Class 35.

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. Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, when viewed in conjunction, the materials offer important, indirect information in the sense that they prove a high turnover and intense presence on Spanish territory of the mark in the supermarket retail sector of foodstuffs and beverages which has a high turnaround.

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

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 sign. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation character of the earlier trade marks has already been examined above under the proof of use section. Reference is made to those findings.

b) The signs

SUPERCOR EXPRES	SUPER-COR
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).

Both signs are word marks: the sole earlier mark for which genuine use and a certain degree of recognition of certain services has been proven, consists of the verbal component ‘SUPERCOR EXPRES’; the contested sign consists of the verbal component ‘SUPER-COR’.

Although it is acknowledged that the earlier mark’s first verbal element consists of a single string of letters, account must be taken of the fact that, indeed, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The beginning ‘SUPER’ of both signs under comparison will be perceived as having the meaning ‘premium, extra special’ and is, therefore, of (at best) weaker distinctiveness. The remaining element ‘COR’ does not convey any clear concept for the majority of the relevant public; in any case, it must be noted that the inherent distinctiveness of this element, and hence of ‘SUPER(*)COR’ as a whole, is normal regardless of the particular perception of the public.

It must also be borne in mind that the above considerations regarding the distinctiveness are rather immaterial, since due to the almost identically contained expression, ‘SUPER(-)COR’ (the presence of the hyphen in the contested sign having a minor impact), these verbal components in the signs are both on equal footing as concerns their distinctiveness.

The additional term ‘EXPRES’ of the earlier mark will be understood by the relevant public as referring to something fast, or faster than usual; hence it is of limited distinctiveness as it will be perceived as alluding to, if not descriptive of, a characteristic of the services (e.g. the speed of the assistance in the shop, or a store for speedy grocery shopping or where the products for sale can be obtained quickly and easily).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs above. Since they will be associated with the same concept of ‘premium, extra special’, the signs are conceptually similar to a low degree, at best. The additional term ‘EXPRES’ in the earlier mark is indeed at best of limited distinctiveness, if not descriptive, so that it is not capable of creating a significant conceptual distance between the signs.

Visually and aurally, the signs coincide in the distinctive component ‘SUPER(*)COR’, which has a normal degree of distinctiveness as a whole and forms the beginning as well as the more distinctive component of the earlier mark and the entire contested sign. The signs merely differ in the hyphen (‘-’) in the middle of the contested sign (which will not be pronounced), and in the additional but (at best) weak term ‘EXPRES’.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Hence, the marks are found visually and aurally similar to a high degree.

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

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to the extent that they have in common the element ‘SUPER(*)COR’. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods (or services) covered by the trade marks in dispute are the same or overlap to some extent. In the present case, the earlier mark enjoys a certain degree reputation for retail sale of foodstuffs and drinks. Furthermore, it is inherently distinctive to a normal degree for these services.

The signs are similar due to the fact that the contested sign is practically entirely included in the earlier mark, of which it also forms the more distinctive as well as first element. It is possible that the relevant section of the public for the goods and services covered by the conflicting signs is the same. Simply put, all the earlier services directed at the public at large may be offered to professional customers buying the contested goods and services, which are the following, specialist goods for use in the field of construction and engineering as well as construction related and engineering design services:

Class 6: Structural and corrugated metal plates, arches rounds and ellipses; structural steel plates; structural metal panels and corrugated steel plates for use in infrastructure construction; deep-corrugated, galvanized steel; structural shaft liners; metal mine shafts; metal road and rail underpasses; stockpile tunnels; metal panels and metal pipes for constructions of bridges, tunnels, grade separations, stream crossings, portals, canopies, underpasses and underground storage; box culverts.

Class 37: Construction, project management and consulting services in the fields of bridge construction, mining, forestry, public works, oil and gas, and railways; construction planning services; construction supervision services in the fields of bridge construction, mining, forestry, public works, oil and gas, and railways.

Class 42: Engineering design services in the fields of bridge construction, mining, forestry, public works, oil and gas, and railways; civil engineering services.

Nevertheless, as for the proximity of the market sectors, even if the relevant section of the public as regards the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 49).

It is in the light of the above jurisprudence that the opponent’s claim has been examined.

In the present case it cannot be concluded that such a link will exist with respect to any of the contested goods and services:

Class 6: Structural and corrugated metal plates, arches rounds and ellipses; structural steel plates; structural metal panels and corrugated steel plates for use in infrastructure construction; deep-corrugated, galvanized steel; structural shaft liners; metal mine shafts; metal road and rail underpasses; stockpile tunnels; metal panels and metal pipes for constructions of bridges, tunnels, grade separations, stream crossings, portals, canopies, underpasses and underground storage; box culverts.

Class 37: Construction, project management and consulting services in the fields of bridge construction, mining, forestry, public works, oil and gas, and railways; construction planning services; construction supervision services in the fields of bridge construction, mining, forestry, public works, oil and gas, and railways.

Class 42: Engineering design services in the fields of bridge construction, mining, forestry, public works, oil and gas, and railways; civil engineering services.

These goods and services are not only dissimilar to the opponent’s retail sale of foodstuffs and drinks, but they also pertain to market sectors which are very far apart and not connected in any plausible way; the contested goods and services are so different from the Class 35 services for which the earlier mark is to a certain extent reputed that, in spite of the possible overlap between the marks’ targeted publics, the later mark is unlikely to bring the earlier mark to the mind of the relevant public. The opponent’s supermarket retail services are directed at the average public and relate to fast moving consumer goods which are daily used. It is very unlikely that the opponent would expand its business by also entering the contested specialist goods and services in the field of construction and engineering design and that consumers would believe that certain of these goods and services would come from the opponent or would establish a mental ‘link’ between the signs when confronted with these specialist goods/services. Therefore, given the enormous cleavage between these goods for which the opponent has demonstrated only a certain degree of repute, the Opposition Division does not consider it plausible that the relevant consumer would make any link to the earlier mark if the contested sign were used in relation to these goods/services merely because of the (albeit not overly) repute of the earlier mark and the established degrees of similarity between the signs.

Whilst it is true that Article 8(5) EUTMR is applicable to situations of dissimilar goods and services, this provision does not give blanket protection but rather depends on the interplay of the relevant factors. The further apart the goods, such as in the case at hand, the more similar the marks and the stronger the reputation will need to be in order for the relevant public to associate the marks. As argued above, the sectors in which the goods and services pertain are far-removed and there is no market reality that would indicate otherwise. In this sense, it also has to be borne in mind that the consumer is reasonably observant and circumspect and will clearly be aware of the market reality and as such would not see any association between the marks and the goods at issue.

In the present case, it is is not plausible that the public would be reminded of the earlier mark when purchasing the contested goods/services bearing the contested sign. In this regard the Court has stressed that one factor when considering a link must be ‘the nature of the goods or services for which the conflicting marks were registered, including the degree of … dissimilarity between those goods or services, and the relevant section of the public’ (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42). The different nature of goods/services at issue as well as the completely divergent distribution channels must be taken into account. The goods/services not only lack similarity but on the contrary there is a very high degree of dissimilarity, and this large gap makes it unlikely in the view of the Opposition Division that the contested sign would remind the relevant consumer of the earlier mark

The Opposition Division also notes that the opponent has not adduced any particularities that would alter this finding.

Taking into account and weighing up all the relevant factors of the present case, given that the relevant section of the public of these contested goods and services is unlikely to establish a link between the signs in dispute, such a link being a precondition for the application of Article 8(5) EUTMR (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 30–31), the Opposition Division concludes that the opposition is not well founded under Article 8(5) EUTMR and 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 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

Justyna GBYL

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.