OPPOSITION No B 3 076 374

Υιοι ν. Βενερη Αρτοποιια Ηρακλειου, 20 στεργιογιαννη, ηρακλειο κρητησ, Greece (opponent), represented by D N Economou & Associates, 33 Lambrou Katsoni Street, Kifissia, 145 61 Athens, Greece (professional representative)

a g a i n s t

Βενερησ Ικε, ΒΙΠΕ 9Α 71601 Heraklion, Crete, Greece (applicant).

On 16/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 374 is partially upheld, namely for the following contested goods and services:

Class 29: All the contested goods applied for.

Class 30: All the contested goods applied for.

Class 40: Food treatment.

Class 43: All the contested services applied for.

2. European Union trade mark application No 17 975 624 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 975 624 for the figurative sign . The opposition is based on, inter alia, Greek trade mark registration No N 228 965 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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 Greek trade mark registration No N 228 965.

a) The goods and services

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

Class 29: Meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, oils and fats for food.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago (slicing flour), artificial coffee, flour and preparations made from cereals, bread, pastries and confectionery, ice cream, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces and other condiments, spices, ice (frozen water).

Class 35: Advertising, business management, business administration, office functions.

Class 43: Services for providing food and drink, temporary accommodation.

The contested goods and services are the following:

Class 29: Dairy products and dairy substitutes; processed fruits, fungi and vegetables (including nuts and pulses).

Class 30: Bread; cereal bars and energy bars; pastries, cakes, tarts and biscuits (cookies); sweets (candy), candy bars and chewing gum; aerated chocolate; almond confectionery; almonds covered in chocolate; apple fritters; bakery goods; bars of sweet jellied bean paste (yohkan); biscotti dough; boiled confectionery; bread pudding; butterscotch chips; cakes of sugar-bounded millet or popped rice (okoshi); canapes; candy; cheese-flavored biscuits; chocolate; chocolate bark containing ground coffee beans; chocolate based products; chocolate bunnies; chocolate coated fruits; chocolate coated macadamia nuts; chocolate-based spreads.

Class 40: Food and beverage treatment.

Class 43: Services for providing food and drink; provision of food and drink.

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 29

The contested processed fruits and vegetables (including nuts and pulses) are identical to the opponent’s preserved fruits and vegetables because the opponent’s goods overlap with the contested goods.

The contested dairy products are identical to the opponent’s milk and milk products because they are identically contained in both lists, being synonyms.

The contested dairy substitutes are highly similar to the opponent’s ice cream in Class 30 as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested processed fungi are similar to the opponent’s preserved vegetables in Class 29 as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

Contested goods in Class 30

Bread and pastries are identically contained in both lists of goods.

The contested biscuits (cookies); cheese-flavored biscuits; cakes of sugar-bounded millet or popped rice (okoshi) are identical to the opponent’s preparations made from cereals because the contested goods are included in the broad category of the opponent’s goods.

The contested cakes, tarts; sweets (candy); aerated chocolate; almond confectionery; almonds covered in chocolate; apple fritters; boiled confectionery; butterscotch chips; chocolate; chocolate bark containing ground coffee beans; chocolate based products; chocolate bunnies; chocolate coated fruits; chocolate coated macadamia nuts; chocolate-based spreads; candy are included in the broad category of the opponent’s pastries and confectionery. Therefore, these goods are identical.

The contested bakery goods; bread pudding include, or overlap with, the opponent’s bread. Therefore, these goods are identical.

The contested canapes are similar to the opponent’s bread as they have the same nature. They usually coincide in producer, relevant public and distribution channels. The contested biscotti dough are similar to the opponent’s flour. They usually coincide in producer, relevant public and distribution channels.

The contested cereal bars and energy bars; candy bars and chewing gum; bars of sweet jellied bean paste (yohkan) are similar to the opponent’s confectionery. They have the same purpose and are in competition. Furthermore, they usually coincide in producer, relevant public and distribution channels.

Contested services in Class 40

The contested food treatment is similar to a low degree to the opponent’s meat in Class 29. They usually coincide in producer, relevant public and distribution channels. Food treatment services cover processing of meat to prepare meat or meat products that then will be put on sale.

By contrast, the contested beverage treatment is dissimilar to all the opponent’s goods and services, as it has a different nature, purpose, method of use and is neither complementary nor in competition. Furthermore, it differs in distribution channels, the relevant public and the usual producer of the goods. In particular, the activities included in beverage treatment are carried out by specialised companies, which are fundamentally different from the companies that manufacture and put on the market the goods in Class 30 or offer the services in Classes 35 and 43 of the earlier mark. Moreover, the commercial channels through which the goods and services reach the public are also different. The sections of the public are different, the nature of the goods and services is not the same, and they are neither in competition nor complementary.

Contested services in Class 43

Services for providing food and drink, provision of food and drink are identically contained in both lists of goods (including slightly different wording).

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.

The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (15/01/2013, T‑451/11, Gigabyte, EU:T:2013:13, § 36; 01/07/2008, T‑328/05, Quartz, EU:T:2008:238, § 23).

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Greece.

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 common verbal element of the signs, ‘ΒΕΝΕΡΗΣ’, is meaningless for the relevant public and is, therefore, distinctive in relation to the goods and services.

The elements ‘ΑΡΤΟΠΟΙΙA’ of the earlier mark and ‘ΦΟΥΡΝΟΣ’ of the contested sign are synonyms and they will be understood as ‘bakery’ by the relevant public. Therefore, these elements are non-distinctive for the goods and services in question because they provide information on the nature or ingredients of the goods and services concerned or they indicate where the goods are sold (for example for processed fruits and vegetables).

The earlier mark is a figurative mark. It is composed of the verbal elements ‘ΒΕΝΕΡΗΣ’, ‘ΑΡΤΟΠΟΙΙA’ and ‘est 1967’. This last element is considered negligible due to its very small size and illegibility. Therefore, it will likely go unnoticed or disregarded by the relevant public and it will not be taken into account in the comparison. The earlier mark is also composed of figurative elements such as a basic depiction of a chef with a hat located at the centre of the mark. Bearing in mind that the relevant goods and services can be used/prepared or offered by a cook, this element is weak for all the goods and services at issue. The black and pink circles have a purely decorative nature and, therefore, are non-distinctive.

The contested sign is a figurative sign composed of the verbal elements ‘ΒΕΝΕΡΗΣ’ and ‘ΦΟΥΡΝΟΣ’, placed one on the top of the other. Above these verbal elements there is a depiction of a generic man’s face with a beard. Since it does not relate to the relevant goods and services, it is distinctive. All the above elements are included in a basic hexagonal shape crossed in the centre by the depiction of a rolling pin used as a background. The hexagonal shape and the rolling pin device have a purely decorative nature. Therefore, these figurative elements are non-distinctive.

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 figurative elements have less impact in the overall assessment.The signs have no elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the distinctive verbal element ‘ΒΕΝΕΡΗΣ’ and its sound. However, they differ in their figurative elements: the weak depiction of a chef in the earlier mark and the distinctive human face in the contested sign. These elements are not pronounced. Furthermore, the signs differ in the non-distinctive verbal elements ‘ΦΟΥΡΝΟΣ’ and ‘ΑΡΤΟΠΟΙΙA ‘ and their sound and in some other figurative elements, which, however, are non-distinctive, as indicated above.

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

Conceptually, neither of the signs has a meaning as a whole. Although the synonyms ‘ΑΡΤΟΠΟΙΙA’ of the earlier mark and ‘ΦΟΥΡΝΟΣ’ of the contested sign will evoke a concept, it is not sufficient to establish any conceptual similarity, as these elements are non-distinctive and cannot indicate the commercial origin. Furthermore, the weak figurative element of the earlier mark, resembling a chef with a hat, will be perceived as such by the relevant public, while the distinctive figurative element of the contested sign will bring to mind a man’s face. Although the signs are conceptually not similar because of the generic face, the weight of this element is not strong conceptually as it is not a specific and known person with a strong impact.

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 any of the goods and services 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 a non‑distinctive 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, inter alia, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all the 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 goods and services are partly identical and similar to varying degrees and partly dissimilar. They target the public at large and business customers with an average degree of attention. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually similar to an average degree and aurally highly similar. They coincide in the distinctive verbal element ‘ΒΕΝΕΡΗΣ’. They also coincide in the meaning of the non-distinctive verbal elements ‘ΦΟΥΡΝΟΣ’ and ‘ΑΡΤΟΠΟΙΕΙΟ’, despite the different sounds. Finally, they differ in their figurative elements. However, these elements have a limited impact because most of them are non-distinctive or weak. Even the distinctive figurative element in the contested sign has a limited impact, as the relevant consumer will refer to the sign by its verbal elements.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or similar goods and services, is likely to think that they come from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested services 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.

Since the opposition is partially 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 as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade mark: Greek trade mark registration No D 203 702 for the figurative mark .

Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

Since the opposition is not totally successful under the ground of Article 8(1)(b) EUTMR, the examination will continue under the ground of 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 opponent’s the Greek trade mark registration No  228 965, for which the opponent claimed repute in Greece.

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 Greece.

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 28/10/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Greece prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 29: Meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, oils and fats for food.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago (slicing flour), artificial coffee, flour and preparations made from cereals, bread, pastries and confectionery, ice cream, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces and other condiments, spices, ice (frozen water).

Class 35: Advertising, business management, business administration, office functions.

Class 43: Services for providing food and drink, temporary accommodation.

After the analysis of the opposition based on Article 8(1)(b), the opposition is directed against the following services:

Class 40: Beverage treatment.

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 10/09/2019, the opponent submitted evidence to support this claim.

The opponent indicated that its submissions of 10/09/2019 were ‘Confidential’, thus expressing a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Opposition Division does not consider these submissions confidential. In any event, the Opposition Division will describe the evidence in general terms, without disclosing commercially potentially sensitive information.

The evidence consists of the following documents:

 Enclosure 4: affidavit, dated 06/09/2019, signed by the opponent’s president. He made a declaration regarding, inter alia, the company turnover from 2008 to 2019 and the advertising efforts. This document has been translated into the language of the proceedings.

 Enclosure 5: printout from the website of the domain provider ‘dnhost’ that proves that the opponent has been the owner of the domain name www.fournosveneri.gr since 2014. It is not translated into the language of the proceedings.

 Enclosure 6: invoices dated in 1990, 1992, 2002-2008 and 2012-2019, addressed to Greek companies. Some of these documents bear the earlier mark. Some others bear a different sign, namely .. However, the translation of the goods or services has not been provided.

 Enclosure 7: some invoices, dated between 1976 and 2017, addressed to the opponent by advertising companies. However, the translation of the products or services has not been provided.

 Enclosure 8: some invoices, dated between 1976 and 2015, addressed to the opponent by other companies. However, the translation of the products or services has not been provided.

 Enclosures 9 and 10: document showing the articles of the opponent’s company association and the change of its denomination. The translation is not provided.

 Enclosures 11 to 13: printouts from the opponent’s official website www.fournousveneri.gr and its social media web pages. They show a bakery and some products such as bread and cake. They are self-explanatory.

 Enclosures 14 to 17: promotional letters showing that the opponent sponsored and supported some Crete and Greek institutions to perform certain events. The translation is not provided and it is not indicated which events have taken place.

 Enclosures 18 to 31: several tables showing the opponent’s annual turnover from 2005. Again, no translations of these documents have been provided.

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

The nature of the evidence submitted by the opponent, despite showing some use of the trade mark, does not provide any indication of the degree of recognition of the trade mark by the relevant public. In particular, the opponent provided only seven dated invoices displaying the earlier mark. Other invoices just indicate the opponent’s name. Therefore, they are not sufficient to prove the large amount spent by the opponent on advertising and the high sales in Greece, as claimed by the opponent. Only the affidavit shows relevant data on company turnover and the opponent’s advertising efforts. However, there is no information from independent sources that could serve to corroborate the opponent’s statements on brand awareness and reflect in a clear and objective manner the degree of recognition of the earlier mark among the relevant public. The same reasoning is applicable to the relevance of the social media web pages (Enclosures 11 to 13) that show the use of the earlier mark in relation to a bakery and bakery products, such as bread, cakes and confectionery.

Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted in relation to the relevant services. As a result, the evidence does not show the degree of recognition of the trade mark 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.

The opponent has also based its opposition on another earlier Greek trade mark, as stated in section e).

Since the claim of reputation regarding this other earlier mark covers a narrower scope of goods and services and refers to the documents submitted by the opponent already analysed in detail above, the outcome cannot be different with respect to the goods and services for which the opposition has already been rejected under Article 8(5) EUTMR.

In any case, the Opposition Division also notes for the sake of completeness that the opponent did not provide any facts, arguments or evidence that could support the conclusion that the 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. Accordingly, Article 8(5) EUTMR cannot apply and the opposition must be rejected on that basis.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Birgit FILTENBORG

Riccardo RAPONI

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.