OPPOSITION No B 3 055 173

Marcos Larrañaga y Cia, S.A., Barrio San Juan, s/n, 20570 Bergara - Guipuzcoa, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Mercantum Deutschland GmbH, Sofienstr. 2, 76646 Bruchsal, Germany (applicant),

On 28/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 173 is partially upheld, namely for the following contested goods:

Class 11: Barbecues; cooking grills; broiling pans; roasting spits; grill heating plates; barbecue starters; electric rotisseries; barbecue apparatus; barbecue smokers; electric broilers; roasting apparatus; cookers incorporating grills; roasting spits [electric] for use with electricity; roasting spits [electric] for use with gas; rotisseries; roasting spits for cooking ovens; lava rocks for use in barbecue grills; gas cooking apparatus incorporating cooking grills; domestic rotisseries [electric]; electric outdoor grills; electric indoor grills; roasting spits [electric] for use with barbecues; ceramic briquettes for use in barbecue grills [non-flammable]; baking ovens [for household purposes]; automatic bread-making machines for domestic use; bread baking machines; bread toasters; steam cookers; camping stoves; domestic autoclave pressure cookers [electric]; roasting jacks; fruit roasters; egg cookers; ice cream makers; electric ovens; electric espresso machines; electric bottle heaters; deep fryers, electric; electric food warmers; electric beverage heaters; electric domestic cooking appliances; electric hotplates; electric appliances for making yogurt; coffee machines, electric; electrical cooking apparatus; electric cooking pots [for household purposes]; kitchen machines (electric -) for cooking; electric refrigerators [for household purposes]; electric food dehydrators for household purposes; electric popcorn making machines; electric rice cookers; electric sandwich toasters; electric sandwich makers; pressure cooking saucepans, electric; sous-vide cookers, electric; electric toasters; waffle irons, electric; pans (electric cooking -); fondues [cooking apparatus]; apparatus for making foam while heating milk; apparatus for heating milk; installations for heating foodstuffs; food warmers; appliances for cooking foodstuffs; appliances for smoking foodstuffs; air fryers; induction ranges; electric coffee brewers; water filtration jugs; cooking hobs; multiple cooking plates; microwave ovens [cooking apparatus]; pizza ovens; raclette sets; table top ovens; waffle irons; grates; electric ranges; electric cooktops; electric coffee filters; apparatus for dispensing chilled beverages; ice cube making machines; cool boxes, electric; deep freezing apparatus; chest freezers; beverage cooling apparatus; combinations of refrigerators and freezers; refrigerating cabinets.

2. European Union trade mark application No 17 880 522 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 all the goods of European Union trade mark application No 17 880 522 for the word mark ‘Wagner’. The opposition is based on German trade mark registration No 39 616 252 for the figurative mark . The opponent invoked Article 8(1)(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 mark on which the opposition is based, namely German trade mark No 39 616 252 for the figurative mark .

The date of filing of the contested application is 26/03/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 26/03/2013 to 25/03/2018 inclusive.

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

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 11: Cooking apparatus.

Class 21: Utensils, vessels and other household containers.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 11/12/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 16/02/2019 to submit evidence of use of the earlier trade mark. This time limit was extended until 16/04/2019. On 18/02/2019, within the extended time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Annex 1: 38 similar invoices and two additional invoices issued by the opponent to various clients in Germany dated between 30/04/2015 and 31/01/2018 (within the relevant period). They contain references to the sign such as:

.

The reference number in the invoice can be found in the product list in Annex 2, see the picture below as an example in which ‘50025W’ is mentioned along with a picture of some of the opponent’s goods in terms of a pot:

• Annex 2: an extract from a catalogue and a product list regarding the opponent’s goods. The catalogue contains the earlier mark ( ) and the reference numbers in the product list can be found in the invoices as mentioned above. The goods depicted in the extract and in the product list are pots, casseroles, dishes, pans and lids for pots, as demonstrated in the catalogue: , , , , , , , , , . Furthermore, this annex contains a picture of a package that includes the earlier mark, , and an indication of what the package contains (i.e. a kind of pan) .

• Annex 3: an email in German, which, according to the opponent, is targeted at a client of the opponent company. The email is dated 19/04/2018 and signed by an employee of the opponent. It contains a reference to the earlier mark in the signature:

Place

The invoices, extract from a catalogue and the product list show that the place of use is Germany. This can be inferred from the language of the documents (inter alia in German), the currency mentioned (euros) and some addresses in Germany (in the invoices). Therefore, the evidence relates to the relevant territory.

Time

Most of the evidence is dated within the relevant period.

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 the use it refers to is very close in time to the relevant period (i.e. the email in Annex 3 is dated shortly after the relevant period).

Extent

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.

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 documents filed, namely the invoices along with the additional evidence, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Although the total amounts of the invoices are not visible, it is relevant to note that use of the mark need not be quantitatively significant for it to be deemed genuine. In the present case, the amount of invoices displays a rather frequent sale of the goods between 2015 and 2018.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature

The evidence shows that the earlier mark has been used in accordance with its function.

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.

In the present case, the earlier mark was registered as the figurative mark . The evidence shows that the trade mark was used both as a word mark in the invoices submitted in Annex 1 mainly as, e.g. ‘ ’ (Fleischtopf o.D. means casserole without lid and is, therefore, descriptive as well as the measures and numbers) and as the registered figurative mark in the catalogue, packaging and email in Annexes 2 and 3. As seen in the invoices, the entire verbal element of the earlier mark is used in relation to the sold goods. Moreover, the catalogue, packaging and email (although not all in colour) show use of the figurative mark as registered. Therefore, the distinctive character of the earlier mark in the form in which it was registered is not altered.

In view of the above, the Opposition Division considers that the evidence shows use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

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).

Overall assessment

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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

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 trade mark for the following goods:

Class 21: Utensils, vessels and other household containers.

However, the evidence does not prove that the mark has been used in relation to cooking apparatus in Class 11. Consequently, the examination of the opposition will proceed on the basis of the abovementioned goods in Class 21 only.

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.

1. The goods

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

Class 21: Utensils, vessels and other household containers.

The contested goods, after a restriction on 20/09/2018, are the following:

Class 11: Barbecues; cooking grills; broiling pans; roasting spits; grill heating plates; barbecue starters; electric rotisseries; barbecue apparatus; barbecue smokers; gas fired broilers; electric broilers; roasting apparatus; cookers incorporating grills; roasting spits [electric] for use with electricity; roasting spits [electric] for use with gas; rotisseries; roasting spits for cooking ovens; lava rocks for use in barbecue grills; gas cooking apparatus incorporating cooking grills; domestic rotisseries [electric]; electric outdoor grills; electric indoor grills; roasting spits [electric] for use with barbecues; ceramic briquettes for use in barbecue grills [non-flammable]; chimney extractors; fire grates (domestic -) of metal; fireplace inserts in the nature of solid fuel burners; grates; fire pits; portable fire pits; firing grates for solid fuel; electric ranges; electric cooktops; electric heating fans; electric immersion heaters; electric water heating apparatus; electric furnaces; heating apparatus for use in the home; hot water heaters; hearths; air reheaters; mobile heating apparatus; hot water apparatus; installations for the cooling of air; air-conditioning installations; air conditioning installations for household purposes; mobile air conditioning apparatus; ventilating fans for household use; roof fans; extractors [ventilation or air conditioning]; electrically powered fans for ventilation purposes; ventilating fans; extractor hoods for kitchens; baking ovens [for household purposes]; automatic bread-making machines for domestic use; bread baking machines; bread toasters; steam cookers; camping stoves; domestic autoclave pressure cookers [electric]; roasting jacks; range hoods; fruit roasters; egg cookers; ice cream makers; electric ovens; electric espresso machines; electric coffee filters; electric bottle heaters; deep fryers, electric; electric food warmers; electric beverage heaters; electric domestic cooking appliances; electrical heating elements; electric hotplates; electric appliances for making yogurt; coffee machines, electric; electrical cooking apparatus; electric cooking pots [for household purposes]; kitchen machines (electric -) for cooking; electric refrigerators [for household purposes]; electric food dehydrators for household purposes; electric popcorn making machines; electric rice cookers; electric sandwich toasters; electric sandwich makers; pressure cooking saucepans, electric; sous-vide cookers, electric; electric toasters; waffle irons, electric; pans (electric cooking -); fondues [cooking apparatus]; apparatus for making foam while heating milk; apparatus for heating milk; installations for heating foodstuffs; food warmers; appliances for cooking foodstuffs; appliances for smoking foodstuffs; apparatus for dispensing chilled beverages; air fryers; induction ranges; electric coffee brewers; water filtration jugs; cooking hobs; multiple cooking plates; microwave ovens [cooking apparatus]; pizza ovens; raclette sets; table top ovens; waffle irons; ice cube making machines; cool boxes, electric; deep freezing apparatus; chest freezers; beverage cooling apparatus; combinations of refrigerators and freezers; refrigerating cabinets; bed warmers; hand-held electric hair dryers; heating cushions, electric, not for medical purposes; electric hot air hand dryers; blankets, electric, not for medical purposes; fan heaters; hair dryers; clothes dryers; luminaires; lamp shades; LED luminaires; decorative lights; electric lamps; lights for track mounting; lamps for festive decoration; Christmas tree ornaments for illumination [electric lights].

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested barbecues; cooking grills; broiling pans; roasting spits; grill heating plates; barbecue starters; electric rotisseries; barbecue apparatus; barbecue smokers; electric broilers; roasting apparatus; cookers incorporating grills; roasting spits [electric] for use with electricity; roasting spits [electric] for use with gas; rotisseries; roasting spits for cooking ovens; lava rocks for use in barbecue grills; gas cooking apparatus incorporating cooking grills; domestic rotisseries [electric]; electric outdoor grills; electric indoor grills; roasting spits [electric] for use with barbecues; ceramic briquettes for use in barbecue grills [non-flammable]; baking ovens [for household purposes]; automatic bread-making machines for domestic use; bread baking machines; bread toasters; steam cookers; camping stoves; domestic autoclave pressure cookers [electric]; roasting jacks; fruit roasters; egg cookers; ice cream makers; electric ovens; electric espresso machines; electric bottle heaters; deep fryers, electric; electric food warmers; electric beverage heaters; electric domestic cooking appliances; electric hotplates; electric appliances for making yogurt; coffee machines, electric; electrical cooking apparatus; electric cooking pots [for household purposes]; kitchen machines (electric -) for cooking; electric refrigerators [for household purposes]; electric food dehydrators for household purposes; electric popcorn making machines; electric rice cookers; electric sandwich toasters; electric sandwich makers; pressure cooking saucepans, electric; sous-vide cookers, electric; electric toasters; waffle irons, electric; pans (electric cooking -); fondues [cooking apparatus]; apparatus for making foam while heating milk; apparatus for heating milk; installations for heating foodstuffs; food warmers; appliances for cooking foodstuffs; appliances for smoking foodstuffs; air fryers; induction ranges; electric coffee brewers; water filtration jugs; cooking hobs; multiple cooking plates; microwave ovens [cooking apparatus]; pizza ovens; raclette sets; table top ovens; waffle irons; grates; electric ranges; electric cooktops; electric coffee filters; apparatus for dispensing chilled beverages; ice cube making machines; cool boxes, electric; deep freezing apparatus; chest freezers; beverage cooling apparatus; combinations of refrigerators and freezers; refrigerating cabinets in Class 11 are similar to the opponents utensils, vessels and other household containers in Class 21, because they are sold through the same distribution channels, target the same end users and may be produced by the same undertakings.

The remaining contested goods are mainly burners, boilers and heaters; flues and installations for conveying exhaust gases; fireplaces; sanitary installations, water supply and sanitation equipment; heating, ventilating, and air conditioning and purification equipment (ambient); personal heating and drying implements; drying installations; lighting and lighting reflectors; and accessories for the mentioned categories. The opponent’s goods are only cooking equipment for food. These goods have no relevant points in common, since they have a different nature, purpose and method of use. They are, moreover, neither complementary nor in competition. Furthermore, they are usually sold through different distribution channels and are likely to be produced by different undertakings. Even if they in some situations could be bought in the same places that circumstance is not sufficient for a finding of similarity. 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 similar are directed at the public at large and business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

	Wagner
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The signs’ common element, ‘WAGNER’, is a German name. It follows that it has no meaning in relation to the relevant goods and, therefore, is distinctive.

Part of the public will perceive the earlier mark’s left-hand side figurative element as an axe, while another part will perceive it as the letter ‘T’. In any case, it will not be perceived as having any meaning in relation to the relevant goods. Therefore, it is distinctive.

The remaining figurative elements and colours in the earlier mark are of a rather standard decorative nature and, for this reason, have less impact on the consumers. It follows that these elements are weakly distinctive.

The verbal element, ‘WAGNER’, in the earlier mark is the dominant element, as it is the most eye-catching, due to its length and the space that it occupies compared to the additional elements in the mark.

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). Therefore, the differences in the typeface and in the figurative elements of the earlier mark will remain of lower impact in the overall impression that the sign gives.

Visually, the signs coincide in ‘WAGNER’. They differ in the earlier marks’ figurative elements including the depiction of an axe/the letter ‘T’.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of ‛WAGNER’, present identically in both signs. Only for the part of the public that perceives the left-hand side figurative element as the letter ‘T’, the pronunciation differs in the sound of that letter and to the extent this component is referred to aurally. If the element is perceived as an axe, it will not be pronounced.

Therefore, the signs are aurally similar to a high degree, if not identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the concepts that the figurative element may convey in the earlier mark (axe/’T’), the signs will be associated with the same name. Therefore, the signs are conceptually highly similar.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claims that ‘WAGNER’ has a high degree of distinctiveness in relation to the relevant goods.

The Opposition Division notes that any higher degree of distinctiveness acquired by the earlier mark has to be proven by its proprietor by submitting appropriate evidence. A mark will not necessarily have a higher degree of distinctiveness just because there is no conceptual link to the relevant goods and services (16/05/2013, C 379/12 P, H/Eich, EU:C:2013:317, § 71). The opponent did not submit any convincing evidence in this regard.

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 any of the goods in question 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 weak figurative elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

As concluded above, the goods are partly similar and partly dissimilar, and they target the public at large and professionals with a degree of attention that may vary from average to higher than average. The signs are visually and conceptually similar to a high degree and aurally similar to a high degree, if not identical, and the degree of distinctiveness of the earlier mark is average.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 German trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be 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.

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

Sofía SACRISTÁN MARTÍNEZ

Mads Bjørn Georg JENSEN

Manuela RUSEVA

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.