OPPOSITION No B 3 066 614

BI.CI. S.R.L., Via Natale Ambrogi, 8, 06065, Passignano Sul Trasimeno (PG), Italy (opponent), represented by Luca Pierannunzio, Via Carlo Collodi n. 5, 06012, Città di Castello (PG), Italy (professional representative)

a g a i n s t

Georg Schwinn, Piperweg 53, 33813 Oerlinghausen, Germany (applicant), represented by Demin und Kollegen, Frauentorgraben 43, 90443 Nürnberg, Germany (professional representative).

On 26/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 614 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 of European Union trade mark application No 17 928 008 ‘SNIK’, namely against goods in Classes 29 and 30. The opposition is based on European Union trade mark registration No 15 084 106, . The opponent invoked Article 8(5) EUTMR.

PRELIMINARY REMARK

According to Article 2(2)(b) EUTMDR, the notice of opposition must contain a clear identification of the earlier mark or right on which the opposition is based. In particular, the earlier marks or rights are to be considered properly identified if the relevant boxes in the notice of opposition form are filled in.

According to Article 5(3) EUTMDR, if the notice of opposition does not clearly identify at least one earlier mark or right on which the opposition is based in accordance with Article 2(2)(b) EUTMDR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

On 16/10/2018, the opponent filed notice of opposition against the contested application. The opponent properly indicated that the opposition was based on the earlier mark identified above and indicated Article 8(5) EUTMR as the ground for opposition. The notice of opposition was not accompanied by any arguments from the opponent.

On 07/03/2018, the opponent filed arguments to substantiate its opposition and mentioned that ‘it was the owner also of EUTM No 15 382 609 ‘SNIK SUN COSMETICS’ and international trade mark No 226 315 ‘SNIK’. The opponent also filed copies of their relevant registration certificates.

This invocation of new earlier marks as basis of the opposition cannot be taken into account, because the opponent failed to identify them in the notice of opposition and this was not remedied before the expiry of the opposition period, namely until 17/10/2018.

Therefore, the opposition must be rejected as inadmissible, as far as it is based on earlier EUTM No 15 382 609, ‘SNIK SUN COSMETICS’ and international trade mark No 226 315, ‘SNIK’.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

 The signs must be either identical or similar.

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

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

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

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

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union and ‘in particular in Austria and Italy’.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 06/07/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely: articles of skin and body care, in particular protection sun creams.

The term ‘in particular’ indicates that the specific sun creams are only examples of items included in the category of articles of skin and body care. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The opponent’s goods belong to Class 3 such as toiletries, body cleaning and beauty care preparations, soaps and gels, oral hygiene preparations, cleaning and fragrancing preparations, animal grooming preparations, essential oils and aromatic extracts, and abrasives and many of them are articles of skin and body care.

The full list of the opponent’s goods is not reproduced here due to its length. It can be found in the notice of opposition, which can be accessed through https://euipo.europa.eu.

The opposition is directed against the following goods:

Class 29: Fish, seafood and molluscs; meats; dairy products and dairy substitutes; soups and stocks, meat extracts; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs and egg products; oils and fats.

Class 30: Ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; salts, seasonings, flavourings and condiments; processed grains, starches, and goods made thereof, baking preparations and yeasts; sugars, natural sweeteners, sweet coatings and fillings, bee products; bread; pastries, cakes, tarts and biscuits (cookies); cereal bars and energy bars; sweets (candy), candy bars and chewing gum; bakery goods; pelmeni [dumplings stuffed with meat]; dried and fresh pastas, noodles and dumplings; vareniki [stuffed dumplings]; pancakes; chocolate; chocolate pastries; chocolate candies; deep frozen pasta; confectionery in frozen form; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; pasta containing stuffings; chocolate-coated bars.

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

On 07/03/2019 the opponent submitted the following evidence:

Before proceeding to list the evidence of reputation, it is noted that the opponent requested to keep the evidence confidential vis-à-vis third parties. The Opposition Division cannot accept this request as no reason or justification has been given as to why the documentation must remain confidential. Moreover, the evidence consists of information that is already in the public domain (available to the public via the catalogues of the opponent). Therefore, this evidence is not confidential and will not be treated as such.

 Annexes 1 and 2: registration certificates of the opponent’s EUTM No 15 382 609 ‘SNIK SUN COSMETICS’ and international trade mark No 226 315 ‘SNIK’.

 Annex 3: an undated document in Italian and copies of postcards dated 1960 and 1964 respectively, where the marks and are visible.

 Annex 4: undated pictures of sports courts where advertisements of the marks and are shown on protective barriers and athletes’ T‑shirts. The sponsorship agreement, in Italian with a translation into English, between the opponent and Sir Safety Umbria Volley Perugia to promote the opponent’s mark on t-shirts of the ‘LIBERO’ players and on the signage animation during the sports competitions from October 2016 to June 2017.

 Annex 5: a number of catalogues for ‘SNIK’ sun tanning creams, in Italian and German. Most are undated, however one bears the date 2003-2004 and another 2016. Two include text in English.

 Annex 6: undated pictures and advertisements of the opponent’s ‘SNIK’ sun tanning creams offered in chemists. Web screenshots in Italian and German of chemists offering the opponent’s ‘SNIK’ sun tanning creams. Press clippings, some undated, some from 1967, 2018 and 2019, in Italian. Pictures (some hardly legible) with advertisements for ‘SNIK’ creams. The cover and some pages from the No 1 96/97 magazine Austria Sky in German, where the opponent’s mark is not shown. The covers and some pages of the magazine Top Sport of 1997 and 1998 in Italian with advertisements for ‘SNIK’ creams.

 Annex 7: A number of invoices bearing the mark , dated 2018 and 2019, for ‘SNIK’ (for various of the opponent’s products for clients in Austria and Italy).

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

The evidence shows use of the trade mark since 1959, but does not provide any indication of the extent of recognition by the relevant public. Most of the evidence is undated. Although such evidence cannot be completely ignored, it does not demonstrate the reputation of the trade mark. The evidence concerning advertising is not put into the context of the relevant market and competitors. The only exception is in annex 6.17, where of the three pages showing undated advertisements of ‘SNIK’, one (for suntan creams), is in English and is accompanied by the slogan ‘world famous suntan creams from Austria’.

Therefore, despite showing long use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

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

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

Rasa BARAKAUSKIENE

Loreto URRACA LUQUE

Birute SATAITE-GONZALEZ

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.