OPPOSITION No B 3 051 080

Star Stabilimento Alimentare S.p.A., Via Matteotti, 142, 20041 Agrate Brianza (Milano), Italy (opponent), represented by Garreta I Associats Agència de La Propietat Industrial, S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative)

a g a i n s t

STAR-MIX Meat Technology GmbH, Rienshof 2, 49439 Steinfeld-Mühlen, Germany (applicant), represented by Jabbusch Siekmann & Wasiljeff, Hauptstr. 85, 26131 Oldenburg, Germany (professional representative).

On 23/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 080 is partially upheld, namely for the following contested goods:

Class 30: Spices; condiments; barbecue spices; seasonings for making meat-based products; salt for preserving foodstuffs, marinades for foodstuffs, in particular meat.

2. European Union trade mark application No 17 592 924 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 592 924 ‘MilkStar’, namely against some of the goods in Class 30. The opposition is based on international trade mark registration No 810 042 designating Benelux; Austria; Bulgaria; Czech Republic; Denmark; Estonia; Finland; France; Germany; Portugal; Romania; Sweden; United Kingdom; Malta; Ireland and on Italian trade mark registration No 891 647 both for the figurative trade mark . The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely international trade mark registration No 810 042 designating Benelux; Austria; Bulgaria; Czech Republic; Denmark; Estonia; Finland; France; Germany; Portugal; Romania; Sweden; United Kingdom; Malta; Ireland and Italian trade mark registration No 891 647.

As a preliminary remark it must be noted that the opponent based the opposition on, inter alia, the Maltese designation of international trade mark registration No 810 042 and submitted evidence of use in relation to Malta. However, the submitted certificate of registration and the relevant online official Wipo database do not show any reference that the subject international trade mark registration No 810 042 has a Maltese designation. Therefore, the subject designation and the evidence of use in relation to Malta must be disregarded.

The date of filing of the contested application is 13/12/2017. The opponent was therefore required to prove that the subject trade marks on which the opposition is based were put to genuine use in Benelux; Austria; Bulgaria; Czech Republic; Denmark; Estonia; Finland; France; Germany; Portugal; Romania; Sweden; United Kingdom; Ireland and Italy from 13/12/2012 to 12/12/2017 inclusive.

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

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based.

In this regard, it must be stressed that some designations of International trade mark registration No 810 042 have been subject to total or partial refusals of protection. At this stage , the Opposition Division will assume that the subject designations cover all the goods in Class 30 mentioned by the opponent in the notice of opposition. The specific scope of protection of the single designations will be addressed after the evaluation of the evidence of use. It follows that the relevant goods are the following:

International trade mark registration No 810 042:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flours and cereal preparations, bread, pastry and confectionery, edible ice; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice for refreshment.

Italian trade mark registration No 891 647:

Class 30: Sauces (condiments); spices.

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.

On 23/11/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 28/01/2019 (term further extended until 28/03/2019) to submit evidence of use of the earlier trade marks. On 28/03/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex 1: An extract of the opponent’s corporate Italian website www.star.it displaying several foodstuff products such as bouillon cubes, broths, a variety of tomato and meat sauces, ready to made risottos and pizzas and tomato concentrates.

• Annex 2: An article reporting the opening in Milan of ‘Temporary Star’ – a space where show cooking, workshop and cooking experiences were performed – from June 7 to July 1, 2015.

• Annex 3: A series of pictures displaying stands placed in Slovenia in 2015 of several product bearing the opponent’s trademark. More specifically, the document displays some ragout sauces.

• Annex 5: One invoice addressed to a customer in Luxemburg and issued on 06/04/2017. The document refers to bouillon cubes and sauces and reports amounts varying from approximately EUR1600 to 3800. The opponent’s trademark is displayed in the heading of the invoice and in the product description, abbreviated as ‘STR’.

• Annex 6: Several invoices addressed to customers in Italy and issued within 25/03/2014 and 09/10/2017. The majority of the documents refers to bouillon cubes, broths and sauces. In addition, the invoices refer to sufficient amounts of units sold and turnover. For instance, invoice nº 7515228626 refers to 10080 units of mushrooms bouillon cubes for an amount of approximately EUR 9000 and to 1496 units of ragout for an amount of approximately EUR 2500. The opponent’s trademark is displayed in the heading of the invoice and in the product description, sometimes abbreviated as ‘STR’.

• Annex 7: Several invoices addressed to customers in the United Kingdom and issued within 11/12/2014 and 17/10/2017. The majority of the documents refers to bouillon cubes and sauces. In addition, the invoices refer to sufficient amounts of units sold and turnover. For instance invoice nº 7517320203 refers to 6600 units of ragout sauces for an amount of approximately EUR 6500 and to 70560 units of bouillon cube for an amount of approximately EUR 20.000. The opponent’s trademark is displayed in the heading of the invoice and in the product description, abbreviated as ‘STR’.

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

Assessment of genuine use — factors

Place of use

The evidence must show genuine use of the earlier trade marks within the relevant territories, namely Benelux; Austria; Bulgaria; Czech Republic; Denmark; Estonia; Finland; France; Germany; Portugal; Romania; Sweden; United Kingdom; Ireland and Italy.

However, the evidence submitted exclusively refers to Luxemburg, the United Kingdom and Italy.

Time of use

The evidence must show genuine use of the earlier trade mark within the relevant period.

Most of the invoices are dated within the relevant period, as they were issued between 2014 and 2017.

It follows that the evidence of use submitted by the opponent contains sufficient indications concerning the time of use of the earlier sign.

Extent of use

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

The invoices submitted provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use in the United Kingdom and Italy.

In particular, these items of evidence show continuous use of the sign ‘STAR’ in the market. In addition, the amounts in the invoices for the goods in question provide sufficient information regarding the continuous use and the commercial volume of the use of the trade mark.

It is clear from the evidence that the opponent distributed or provided goods bearing or sold under the ‘STAR’ trade mark in the relevant markets. The Opposition Division, therefore, has sufficient information regarding the opponent’s commercial activities during the relevant period. In particular, the information contained in the invoices proves that the use of the sign in the United Kingdom and in Italy has been more than mere token use. Consequently, these documents prove the duration and frequency of use of the earlier marks.

Contrariwise, the presence of only one invoice issued in 2017 for EUR 8.505,11 deriving from the sale of ragouts and bouillon cubes is deemed not sufficient to demonstrate use in the Benelux. Account is also taken of the fact that the relevant goods are intended for daily use and available at a very affordable price.

Nature of use — use as a trade mark

Nature of use requires, inter alia, that the trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods of different providers.

A joined reading of the submitted evidence shows that the trade mark ‘STAR’ is mostly mentioned in relation to bouillon cubes and a variety of sauces. Even if in some of the invoices the opponent’s trademark seems abbreviated as ‘STR’, it must be noted that the trademark is often reproduced in the heading of the invoices. In addition, other piece of evidence show some of the relevant products bearing the subject trademark . Therefore, a link can be established between the sign and the goods themselves.

The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Nature of use — use of the mark as registered

Article 18 and Article 47(2) EUTMR require proof of genuine use in connection with the goods or services for which the trade mark is registered and which the opponent cites as justification for its opposition. Therefore, the opponent must demonstrate that the mark has been used as a trade mark on the market. As the function of a trade mark is, inter alia, to operate as a link between the goods and services and the person or company responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Article 10(4) EUTMDR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T 105/13, TrinkFix, EU:T:2014:1070, § 28-38). The use of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

A substantial part of the evidence submitted (inter alia, the invoices, pictures and the website links) clearly refers to the subject trade mark, in either its denominative form or as registered.

Therefore, the Opposition Division concludes that the mark has been used in accordance with Article 18(1)(a) EUTMR.

Use in relation to the registered goods

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although it is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in some of the relevant territories, namely the United Kingdom and Italy. As far as the other territories are concerned, no or insufficient evidence were provided.

However, the evidence filed by the opponent does not show genuine use for all the goods covered by the earlier trade marks.

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.

In the present case, the evidence shows genuine use of the International trade mark registration No 810 042 designating the United Kingdom and of Italian trade mark registration No 891 647 for the following goods:

Class 30: Sauces (condiments).

As outlined above, the International trade mark registration No 810 042 was subject to several total or partial refusal. As far as the relevant United Kingdom designation is concerned, the Opposition Division notices that the goods in Class 30 are limited to: sugar, rice, tapioca, sago; flours and cereal preparations, bread, pastry and confectionery, edible ice; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice for refreshment. Since sauces (condiments) is clearly mentioned in the subject list of goods it must be concluded that the submitted evidence show use in relation to goods which are validly covered by the subject designation.

In addition, it must be stressed that the submitted evidence also shows certain use of bouillon cubes and broths. However, the goods in Class 30 on which the opposition is based does not include or constitute a subcategory of the subject product. Specifically, it must be stressed that the version of the Nice classification in force when the relevant International trade mark registration No 810 042 designating the United Kingdom and of Italian trade mark registration No 891 647 were filed i.e. the eight edition includes broth / bouillon goods within Class 29, which was not claimed as basis of the current proceedings. It follows that bouillon cubes and broths cannot be taken into account since the opposition is not based on these goods.

Therefore, the Opposition Division will only consider sauces (condiments) in its further examination of the opposition.

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 International trade mark registration No 810 042 designating the United Kingdom.

1. The goods

The goods on which the opposition is based, and for which use has been proven, are the following:

Class 30: Sauces (condiments).

The contested goods are the following:

Class 30: Spices; condiments; barbecue spices; seasonings for making meat-based products; salt for preserving foodstuffs, marinades for foodstuffs, in particular meat, meat tenderizers.

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 30

The contested spices; condiments; barbecue spices; seasonings for making meat-based products; salt for preserving foodstuffs, marinades for foodstuffs, in particular meat are at least similar with the opponent’s sauces (condiments) as they can coincide, at least, in producer, relevant public and distribution channels.

The contested meat tenderizers are products which are able to make the meat softer. Specifically they are enzymatic substances that break down the peptide bonds between the amino acids found in complex proteins. These goods do not have anything in common with the opponent’s ones. In particular, they have clearly different nature, purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

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 at least similar are mainly directed at the public at large. The degree of attention is rather low taking into consideration that they are intended for daily use and available at a very affordable price.

3. The signs

	MilkStar
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Taking this principle into account, the relevant English-speaking consumers will perceive the contested application as a combination of the words ‘milk’ and ‘star’.

Regarding the word ‘STAR’, included in both signs and constituting the sole verbal element of the earlier mark, the General Court has already held that the English word ‘star’ is generally understood as a laudatory term which emphasises the quality of the goods or as a reference to a star or a famous person (07/07/2015, T-521/13, A ASTER / A-STARS, EU:T:2015:474, § 45, 48 and the case law cited therein). Thus, this element has a low degree of distinctiveness for the relevant public, due to its purely laudatory connotation.

The contested sign’s additional verbal element ‘MILK’ will be perceived as such by the relevant consumers. The subject component also detains a low degree of distinctiveness since it might inform consumers that the relevant goods contains milk as ingredient or are particularly suitable for milk and milk products. For instance, this element might suggest that a marinade contains milk, or that some seasoning and spices are suitable for flavouring milk. In addition, it might refer to a salt used for preserving milk derived products.

Background elements such as those in the earlier mark are commonplace in trade and merely serve to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to them (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27).

Visually, aurally and conceptually the signs coincide in the element (and its sound and meaning) ‘STAR’ whereas they differ in the contested application verbal element (and its sound and meaning) ‘MILK’. The signs also differ, visually only, in the earlier mark graphical element and stylizations.

Therefore, also taking into account the above assessment on the degree of distinctiveness of the sign’s elements, they are similar to an average degree.

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.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case the goods have been found at least similar. They mainly target the general public that will pay a low degree of attention.

The signs under comparison have been found similar to an average degree insofar as the earlier trade mark is entirely reproduced within the contested application.

When the marks share an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks, as previously assessed in the comparison of signs. That assessment takes into account the similarities/differences and distinctiveness of the non-coinciding components.

A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness.

In the instant case, the additional element ‘MILK’ in the contested application detains the same low degree of distinctiveness than the common component ‘STAR’ (if not a lower one), thus not being able to differentiate the signs sufficiently. In addition, the earlier mark graphical element and slight stylization are commonplace and not particularly striking.

Taking all the above into account, the Opposition Division considers that the differences between the signs are not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to at least similar goods are likely to think that they come from the same undertaking or from economically linked undertakings. This especially taking into account the low degree of attention paid pay the relevant consumers.

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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49) for example opponent’s goods containing milk derivatives or lactose.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s International trade mark registration No 810 042 designating the United Kingdom.

It follows from the above that the contested trade mark must be rejected for the goods found to be at least similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• Italian trade mark registration No 891 647

Since this mark is identical to the one which has been compared and use was proved for the same goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs are obviously not identical.

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

Riccardo RAPONI

Aldo BLASI

Sandra IBAÑEZ

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.