OPPOSITION No B 3 071 719

Grupo Bimbo, S.A.B. de C.V., Prolongación Paseo de la Reforma No. 1000, Colonia Peña Blanca Santa Fé, Delegación Álvaro Obregón, 01210 Mexico, Mexico (opponent), represented by Lerroux & Fernández-Pacheco, Claudio Coello, 124, 4º, 28006 Madrid, Spain (professional representative)

a g a i n s t

Magkoutis-Produits De Grece, 8 Rue Des Bois, 68170 Rixheim, France (applicant), represented by Maria Chairetaki, Akadimias 18, 106 71 Athens, Greece (professional representative).

On 17/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 719 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 17 951 813 for the word mark ‘CRETAKIS’. The opposition is based on, inter alia, European Union trade mark registration No 1 612 084 for the word mark ‘TAKIS’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 1 612 084 for the word mark ‘TAKIS’ for which the opponent claimed repute in the European Union.

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.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

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 07/09/2018. 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:

Class 29: Snack products, consisting of dried, roasted, salted and/or spiced peanut kernels, nuts, almonds, cashew nut kernels and/or dried fruit; potato products for snacks.

Class 30: Cereal, rice and/or maize products for snacks; savoury pastries.

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 22/07/2019, the opponent submitted the following evidence:

• Annex 3: certificate, in Spanish, dated 15/03/2017 by the Chief Financial Officer of one of the opponent’s companies specifying the amounts invoiced by the opponent for the sale of ‘TAKIS’ products in Spain during 2015 (EUR 1 635 685), 2016 (EUR 2 073 042) and during the months of January and February 2017 (EUR 362 206). However, the specific goods are not indicated.

• Annex 4: certificates issued by third parties, Optimum Media Direction, S.L.U., giving the amounts spent on media advertising space (internet, social media and TV) in Spain for ‘TAKIS’ campaigns during 2015 (more than EUR 1 million); and Social Laboratories, S.L. for campaigns during 2016.

• Annexes 5-15: various screenshots from YouTube referring to ‘Takis Espana’, according to the opponent, most of them also broadcast on TV and some of them involving famous Spanish YouTubers. For example, the following spots: ‘Takis Guiño’, dated 2015, showing 790 117 views and the products ; ‘Takis Idiomas’, dated 2015, showing 80 880 views; ‘Takis Mordida’, dated 2015, showing 117 492 views; ‘Takis Ojos’, dated 2015, showing 270 108 views; ‘Takis Selfie’, dated 2016, showing 141 020 views; ‘Takis — Conviértete en #TakisTuber’, dated March 2017, showing 419 313 views; ‘Takis Zombie — Sofa’, dated October 2017, showing the goods ; ‘Takis Zombie — Playstation’, dated October 2017, showing 582 106 views; spot ‘Takis Zombie — Parque’, dated October 2017, showing 190 571 views; ‘takismiquis o tiquismiquis?’, dated October 2018, showing 645 918 views, and a screenshot from the YouTube channel showing ‘TAKIS Spain’, with 2 058 suscribers, referring to a promotional campaign in 2019.

• Annexes 16-22: various screenshots dated 2014-2016 from ‘YouTube ES’, showing millions of views per video, and, according to the opponent, involving some famous YouTubers with many suscribers (such as ‘AuronPlay’, ‘mangelrogel’ and ‘Rincon De Giorgio’). For example, a screenshot of a 20-minute video uploaded by the YouTuber ‘AuronPlay’, dated April 2015, showing 7 768 915 views, although in the screenshot there is no reference to the goods under the ‘TAKIS’ mark, and in the video it is only mentioned among many other things; and a screenshot of YouTube videoclip for the Justin Bieber song ‘Confident’, dated January 2014, showing a person holding a bag of ‘TAKIS’, 259 702 426 views.

• Annex 23: links to ‘TAKIS’ social networks, Facebook showing 4 144 650 likes, ‘Twitter’ showing 29 700 followers and Instagram showing 11 800 followers. It can be noted that the extract from Facebook submitted by the opponent refers to www.takis.com.mx, so to Mexico and not to the European Union.

• Annex 24: pictures, according to the opponent, from the webpage www.gamergy.es, in which ‘TAKIS’ appears as a sponsor together with other well-known marks, such as ‘El Corte Inglés’ and ‘Nintendo’. According to the opponent, Gamergy is the most important eSports event in Spain, organised by IFEMA and the Professional Videogames League (LVP), it is held twice a year and brings together some of the most relevant amateur competitions in Spain, as well as the finals of the professional competitions of League of Legends, Counter Strike Global Offensive and Clash Royale. The ninth edition of this event took place in June 2018.

• Annex 25: several articles from LVP’s website about the mark ‘TAKIS’ (dated between 06/06/2016 and 26/10/2018), in Spanish. Some of the articles show some promotional pictures of the ‘TAKIS’ mark.

• Annex 26: press review from www.marketingdirecto.com, dated 04/10/2015, in Spanish, on the partnership between the NBA Global Games 2015 (basketball matches between NBA teams and other teams) and the ‘TAKIS’ brand, which appeared on the advertising panels of the match between Real Madrid and Boston Celtics on 08/10/2015, as well as in the Oklahoma Thunder matches against Real Madrid and F.C. Barcelona on 3 and 5/10/2016. In the article it is stated how ‘TAKIS’ would be promoted during this event and that the matches are broadcast by ‘Movistar+’. There is, however, no information showing how ‘TAKIS’ was promoted during the event, nor how many people attended the event and how many people might have seen the event on ‘Movistar+’.

• Annex 27: press article, dated 27/07/2016, in www.marca.com, according to the opponent, the most important newspaper in Spain and also the the most widely read overall, entitled ‘The big marks want to be in eSports’ and referring to ‘TAKIS’.

• Annex 28: press article on www.gameit.es, explaining that companies invest more and more in gaming events and ‘eSports’, referring to ‘TAKIS’ as an example.

• Annex 29: pictures of various events and acts in different cities in Spain in which ‘TAKIS’ has been a sponsor in recent years, for example, ‘Xtreme Barcelona 2015’, ‘NBA Torneos 3X 2015’, ‘Gamergy 2016’, ‘Dreamhack 2016’, ‘Festival 4Every1’ (no year mentioned), ‘Youplanet Festival’ (no year mentioned), ‘NBA Zone 2016’, ‘NBA Global Games’ (no year mentioned), and a table showing their impact on social media.

Despite showing some use of the trade mark on YouTube, social media and in the sponsoring of certain events, the evidence provides little information on the extent of such use. First of all, although the spots on YouTube might have gathered a considerable number of views, it is not clear how those views are calculated (counted only after a certain time, or as soon as you open it, all views counted or only individual views). Furthermore, even if the screenshots are from ‘YouTube ES’, they are accessible for everyone, so it cannot be excluded that they were viewed outside the European Union, in Spanish-speaking non-European countries. Therefore, the number of views is not reliable for assessing reputation. The opponent argued that most of the spots on Youtube were also broadcast on television, however, apart from the very general information in Annex 4, no specific information was given as to when, where and to what extent this was done.

Furthermore, despite giving some turnover and advertising spend figures, the evidence does not indicate the market share of the trade mark or concrete information on the specific advertisement channels (no information on broadcasting TV spots nor information on events sponsored, etc.), that would allow the Opposition Division to put this information into the context of the market, competitors and consumers in question.

It can also be seen from the evidence that the opponent sponsored some events in Spain. However, the evidence consists mainly of pictures that cannot be linked to the specific events and some vague references in online press articles. Even if the opponent was present at the events indicated, there is no information on the importance of such events; it is, for example, unclear how many people attended those events or watched them on television, and how intensively they were promoted. For some of them, it is also unclear how exactly the earlier mark was promoted, and when and how many times the opponent participated as a sponsor, etc. Therefore, this evidence is lacking too much information to draw any pertinent conclusions from it.

As a result, the evidence does not show that the earlier mark is known by a significant part of the relevant public, as it does not give sufficient information on the recognition of the mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation, or even an enhanced degree of distinctiveness. Indeed, the nature, factors, evidence and assessment of enhanced distinctiveness are the same as for reputation. However, a finding of reputation requires that a certain threshold of recognition be met, whilst the threshold for a finding of enhanced distinctiveness may be lower. Any higher degree of distinctiveness (enhanced distinctiveness, reputation) is related to actual recognition of the mark by the relevant public, which cannot be established in the present case for the reasons set out above.

As the evidence submitted is the same for all other earlier marks invoked, the same conclusion can be taken in relation to all those earlier marks, no reputation, nor enhanced distinctiveness, has been proved.

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 as far as it is based on this ground.

The examination of the opposition will now continue based on the other ground invoked by the opponent, namely Article 8(1)(b) EUTMR.

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 European Union trade mark registration No 1 612 084 for the word mark ‘TAKIS’.

1. The goods

The goods on which the opposition is based are the following:

Class 29: Snack products, consisting of dried, roasted, salted and/or spiced peanut kernels, nuts, almonds, cashew nut kernels and/or dried fruit; potato products for snacks.

Class 30: Cereal, rice and/or maize products for snacks; savoury pastries.

The contested goods are the following:

Class 29: Olive oil; extra virgin olive oil for food; olive oil for food; olives, [prepared]; cooked olives; dried olives; olives, preserved; canned processed olives; fish, not live; fish, tinned; seafood preserves; processed seafood; yoghurt; oils and fats.

Class 30: Honey; natural honey; vinegar; flavoured vinegar; wine vinegar; dried herbs; seaweed [condiment]; processed herbs; flavourings for foods; food flavourings, other than essential oils; salts, seasonings, flavourings and condiments.

Class 31: Olives, fresh; unprocessed olives; fresh fruits, nuts, vegetables and herbs.

Some of the contested goods are similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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

The degree of attention is average.

3. The signs

TAKIS	CRETAKIS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 mark ‘TAKIS’ will be perceived by the Greek-speaking public as a common male name while the remaining part of the public will see it as meaningless. In any case, it is distinctive in relation to the relevant goods.

The contested sign ‘CRETAKIS’ will be perceived by the entire relevant public as meaningless and distinctive. Any dissection of the mark would be artificial, even for the Greek-speaking public.

Visually and aurally, the signs coincide in ‘TAKIS’, pronounced in two syllables, and differ in the first part ‘CRE’, pronounced in one syllable, of the contested sign.

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

Therefore, in the overall impression of the signs, the attention paid to the element ‘CRE’ will tend to neutralise the effect of the common element ‘TAKIS’. Furthermore, the signs have a different length (five versus eight letters), and a different rhythm and intonation as they have a different number of syllables (two versus three).

Therefore, the signs are visually similar to a low degree and aurally similar to an average degree.

Conceptually, although the Greek-speaking part of the public in the relevant territory will perceive the meaning of the earlier mark as a common male name, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for the Greek-speaking public.

For the remaining part of the relevant public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the opponent, the earlier trade mark has a reputation, and therefore enhanced distinctiveness, in the European Union in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted to support this claim has already been analysed above and it was concluded that the earlier trade mark has not acquired a high degree of distinctiveness through its use on the market.

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.

5. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has an average degree of distinctiveness. The relevant public is the public at large, and the degree of attention is average.

The goods are assumed to be identical.

The signs are visually similar to a low degree and aurally similar to an average degree. For part of the public the signs are conceptually not similar, and for the remaining part of the relevant public the conceptual aspect does not influence the assessment of the similarity of the signs.

The additional letters ‘CRE’ at the beginning of the contested sign are clearly perceivable and have a considerable impact on the overall impression of the signs, creating a low degree of visual similarity and counterbalancing to a large extent their similarities. The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). Therefore, the differences between the signs, in particular the visual differences, are considered sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the common letters ‘TAKIS’ play no independent role in the contested sign and, when perceived as a whole, any dissection of the contested sign would be artificial.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings as the marks in those cases are not comparable to the marks in the present case. For example, in 28/08/2019, B 3 061 440, all elements of the signs were meaningful for the relevant public so that the coinciding elements would be easily dissected. In addition, the coinciding elements were distinctive while the differing element was weak, unlike in the present case. In 16/08/2019, B 3 048 100, the coinciding elements of the signs would also be dissected due to the use of different colours in one of the signs.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

• European Union trade mark registration No 13 466 669 for the word mark ‘TAKIS DELICIOSAMENTE PICANTE’ (Classes 29, 30, 31);

• European Union trade mark registration No 14 052 989 for the figurative mark (Classes 29, 30, 31);

• European Union trade mark registration No 15 333 751 for the figurative mark (Classes 29, 30);

• Spanish trade mark registration No 3 531 533 for the word mark ‘TAKIS FUEGO’ (Classes 29, 30);

• International trade mark registration designating the European Union No 1 157 976 for the word mark ‘TAKIS’ (Class 29).

Since some of these marks are identical to the one that has been compared, the outcome cannot be different with respect to goods for which the opposition has already been rejected, this even assuming that all the relevant goods would be identical. Therefore, no likelihood of confusion exists with respect to those goods.

Other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative or verbal elements, which are not present in the contested trade mark. Therefore, even assuming that the contested goods are also identical to all the goods protected by these earlier rights, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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, 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

María del Carmen SUCH SÁNCHEZ

Saida CRABBE

Marta GARCÍA COLLADO

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.