OPPOSITION No B 3 052 537

Deroni, blvd. Suedinenie 86, 6300 Haskovo, Bulgaria (opponent), represented by Bojinov & Bojinov Ltd., 38 Alabin Str., 1000 Sofia, Bulgaria (professional representative)

a g a i n s t

Yezyl Holdings Limited, Oresti Makri nr. 4, Kapsalos, 3082 Limassol, Cyprus (applicant), represented by Paul Cosmovici, Cosmovici Intellectual Property, Eschersheimer Landstraße 42, 60322 Frankfurt am Main, Germany (professional representative).

On 30/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 537 is upheld for all the contested goods.

2. European Union trade mark application No 17 785 908 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 785 908 for the figurative mark . The opposition is based on, inter alia, Bulgarian trade mark registration No 93 930 for the figurative mark , in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. In relation to other earlier rights, the opponent invoked Article 8(5) EUTMR only.

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.

In its observations of 30/09/2019, the applicant stated: ‘[i]n the first response submitted on 16.04.2019 at EUIPO, we required that DERONI, the Opponent, demonstrates the actual, serious and constant use of their trademark.’ However, as correctly noted by the opponent, no such request for proof of use nor reference to Article 47(2) EUTMR can be found in the applicant’s observations of 16/04/2019. In the observations, the applicant merely referred to the fact that the opponent has produced proof of use of its prior rights for some goods, which are the basis of the opposition (i.e. evidence of reputation submitted by the opponent), and the applicant concluded that the opponent cannot oppose the contested sign on the basis of all the goods of its earlier marks, because it did not use them for all these goods. The applicant did comment on the evidence submitted by the opponent, but in no part of its observations did it request the opponent to prove use of these marks.

According to Article 47(2) EUTMR, use of the earlier mark to needs be shown — and only be shown — if the applicant requests proof of use. The institution of proof of use is, therefore, designed in opposition proceedings as a defence plea of the applicant. The Office may neither inform the applicant that it could request proof of use nor invite it to do so. Article 47(2) EUTMR is not applicable when the opponent, on its own motion, submits material relating to use of the invoked earlier mark

According to the Office’s practice, a request for proof of use has to be explicit and unambiguous. Pursuant to Article 10(1) EUTMDR, a request for proof of use shall be admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office pursuant to Article 8(2) of this Regulation. The request for proof of use must be made within the first time limit for the applicant to reply to the opposition under Article 10(2) EUTMDR.

The applicant did not request, in due time, that the use of the earlier marks is proven. At the very least, the applicant’s statement included its observations of 16/04/2019 is not explicit and unambiguous enough. Moreover, it has not been submitted in a separate document. Therefore, it is inadmissible. As a consequence, the opponent was under no obligation to submit proof that its earlier trade marks had been put to genuine use and these earlier marks will be considered to cover all the goods for which they were registered and on which the opposition is based.

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 Bulgarian trade mark registration No 93 930.

a) The goods

The goods on which the opposition is based is, inter alia, the following:

Class 30: Rice.

The contested goods are the following:

Class 30: Rice.

Rice is identically contained in both lists of goods.

In its observations of 16/04/2018, the applicant argued that while the opponent’s earlier mark is protected for most goods in Class 30, the marketing behaviour of most companies in the FMCG field shows that they rarely manufacture and distribute such a wide range of goods. Moreover, the applicant mentions other considerations as regards the goods that are actually produced by the opponent and the alleged dissimilarity of commercial fields in which the applicant and the opponent actually operate in the marketplace.

In this regard, it should be noted that the goods that are actually produced/provided by the opponent are not relevant for the comparison of the goods in the context of the present decision. Since the proof of use of the earlier rights has not been (successfully) requested, the comparison of the goods must be based on the wording indicated in the lists of goods.

Any actual or intended use not stipulated in these lists is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T 487/08, Kremezin, EU:T:2010:237, § 71).

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 found to be identical are directed at the public at large.

The degree of attention is average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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 earlier trade mark is a figurative mark composed of the word ‘DERONI’, written in slightly stylised white upper-case letters, the number ‘1991’ underneath, written in a smaller size. The figurative element above is depicted as a person on a carriage and an ox ploughing the land, in gold. All these elements are against a red label-shaped background with a green, gold and white border.

The contested trade mark is a figurative mark composed of the rectangular label on which the word ‘Deroni’ is depicted three times in different locations (in the middle, lower and upper parts) and in an italic slightly stylised typeface, against a dark green ecliptic background. On this label there are four smaller rectangles, two dark green, one orange (radiating towards red) and one white. Moreover, two yellow ecliptic lines are placed next to the two ‘Deroni' depictions in the upper and lower parts, as if extending from their dark green backgrounds. Moreover, inside the white rectangular shape, there is a figurative element composed of a few ears of wheat extending from some figurative elements against an orange background.

The opponent argued that the word ‘DERONI’ derives from the name of a tribe from the Ancient Thrace region (known as Derrones, Deroni or Derroni). However, the Opposition Division is of the opinion that (at least) a substantial part of the relevant public, rice consumers, will not associate this element with any meaning(s). The Opposition Division will focus the examination on this part of the public. Consequently, the coinciding word ‘DERONI’ is meaningless and it is, therefore, inherently distinctive to an average degree for the relevant goods.

The earlier mark’s number ‘1991’ will most likely be perceived as the starting year of production or the year of foundation of the company responsible for the goods, as this is a common practice in the relevant market. Therefore, the number ‘1991’ is non-distinctive. The earlier mark also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The figurative elements of the person and ox ploughing in the earlier mark and a few ears of wheat in the contested sign are allusive of the natural origin of the goods in question and/or the way in which they are cultivated. The signs’ remaining figurative elements, namely their stylisations, backgrounds (labels), shapes and colours, are largely decorative and common elements in relation to the goods in question. Rectangular or ecliptic backgrounds are simple geometrical shapes that are commonly used in trade to highlight the information contained within; consumers do not usually attribute any trade mark significance to such shapes (15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27). Therefore, all of these elements are of limited distinctiveness, if any. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

No elements of the signs are clearly more eye-catching than the other elements. Therefore, there are no dominant elements within the signs.

Account is also taken of the fact that, in general terms, 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 (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30).

Visually, the signs coincide in the verbal element ‘DERONI’, which is the most distinctive element of the earlier mark and the sole verbal element of the contested sign, although in the latter it is depicted in a slightly different stylisation and repeated twice. The marks differ in all their remaining elements, as described above, all of which are less distinctive (or non-distinctive) than the normally distinctive coinciding element ‘DERONI’. Therefore, the signs are visually similar to an average degree.

Aurally, the word ‘DERONI’ constitutes the only element of the signs that is likely to be pronounced. The earlier mark’s element ‘1991’ will not be pronounced, because it is non-distinctive and the public normally refers to a sign orally by some of its elements and omits words/letters that are descriptive or less distinctive (03/07/2013, T 206/12, LIBERTE american blend, EU:T:2013:342). Likewise, although the word ‘DERONI’ is repeated twice in the contested sign, the public is likely to pronounce it only once. The marks’ figurative elements are not subject to a phonetic assessment. Therefore, the signs fully coincide in their pronunciation and are aurally identical.

Conceptually, the public in the relevant territory will perceive different concepts evoked by the number ‘1991’, a person on a carriage and an ox ploughing in the earlier mark and that of a few ears of wheat in the contested sign, while the remaining elements do not evoke any clear concepts. Therefore, the signs are conceptually not similar. However, this difference should not be overestimated as these differing elements are of limited distinctiveness (or non-distinctive).

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 has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for the opponent’s goods, namely rice, from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non‑distinctive or (at most) weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, 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).

The earlier mark has an inherent normal degree of distinctiveness.

The relevant public is the public at large and the degree of attention is average.

In the cases, like in the present one, where the goods are identical, the differences between the signs should be significant and relevant to a degree that will allow consumers, especially those displaying an average degree of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The signs are visually similar to an average degree, and they are aurally identical. Although the signs are conceptually not similar, the impact of this fact is limited as the conceptual differences between the marks originate from elements with either no or limited inherent distinctiveness.

There is no doubt that the coinciding and normally distinctive word ‘DERONI’ (although repeated twice in the contested sign) will be perceived by the relevant public as the main commercial identifier of both signs in question.

Contrary to the applicant’s assertions, the Opposition Division is of the opinion that the differing figurative elements between the signs are not sufficient to enable the consumers to distinguish between different commercial origins in relation to the identical goods. All of these elements are less distinctive (or non-distinctive). Therefore, the public will pay less attention to them than to the coinciding and normally distinctive word ‘DERONI’.

Moreover, although the public will not overlook figurative differences between the signs, it has to be noted that a likelihood of confusion covers situations where consumers directly confuse the trade marks themselves, or where consumers make a connection between the conflicting signs and assume that the services covered are from the same or economically linked undertakings. Therefore, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when average consumers, although aware of the differences between the signs, nevertheless assume due to use of the same word ‘DERONI’ for identical goods, that they are derived from the same undertaking or an economically linked undertaking.

Indeed, it is a common practice for manufacturers of goods in Class 30 to make variations in their trade marks, for example by altering the typeface of the verbal elements, adding, refreshing or replacing certain figurative elements to endow the trade mark with a new, modern image. Therefore, consumers may perceive the contested sign as a sub-brand of the earlier mark, using the same distinctive word ‘DERONI’ (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

For the sake of completeness, the applicant argued that its owns the earlier ‘DERONI’ trade mark in Romania where it has been active for many years. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering the above, the relevant public might be led to believe that the contested goods come from the same or economically linked undertakings. Consequently, a likelihood of confusion, in the form of a likelihood of association, on the part of the public in Bulgaria is inevitable. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Bulgarian trade mark registration No 93 930. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Bulgarian trade mark registration No 93 930 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Liliya YORDANOVA

Jakub MROZOWSKI

Reiner SARAPOGLU

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.