OPPOSITION No B 3 097 266

Sysco S.R.L., Str. Negru Voda nr. 2, bloc C4, parter, sector 3, Bucharest, Romania (opponent), represented by S.C. Weizmann Ariana & Partners Agentie de Proprietate Intelectuala S.R.L., Vivando Building 51 11 IUNIE street, 1th floor, offices 14-15 sector 4, 040171 Bucharest, Romania (professional representative)

a g a i n s t

Sysco Corporation, 1390 Enclave Parkway, 77077-1390 Houston, United States of America (applicant), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative).

On 13/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 097 266 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 051 422 ‘SYSCO AT THE HEART OF FOOD AND SERVICE’ (word mark). The opposition is based on the Romanian company name ‘SYSCO’. The opponent invoked Article 8(4) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) The right under the applicable law

A company name is the official designation of an incorporated undertaking, in most cases registered in the respective national commercial register. If, under national law, registration is a prerequisite for protection, registration must be proven. Company names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

In the present case, according to the opponent, the applicable law in Romania in the field of trade mark registration and protection is the Law no 84/1998, republished regarding trade marks and geographical indications.

Art. 6 (4) b) and Art. 6 (4) (c) from the Law no 84/1998 republished read as follows:

(4) Registration of a trademark shall also be refused or, if registered, shall be susceptible of being cancelled if:

(b) rights arising from an unregistered trademark or another sign used in the commercial activity were acquired prior to the date of the application for registration of the subsequent trademark, or prior to the priority date claimed by the application for the registration of the subsequent trademark, and if that unregistered trademark or used sign confer to its owner the right to prohibit the use of the subsequent trademark;

(c) there is an earlier right, other than those covered by paragraph (2) letter (d), in particular, a right to name, to image, a copyright, an industrial property right;

The opponent also claims that under the category ‘an industrial property right’ also trade names and company names are included and it results therefrom that the company name is recognized as being a protected industrial property right which may be opposed to the registration of a trade mark.

Also Art. 8 from the Paris Convention provides that “a trade name shall be protected in all the countries of the Union”. Romania is a signatory part to the Paris Convention which has been ratified by the Parliament. According to Art. 11(2) from the Constitution of Romania the international treaties ratified by the Parliament become part of the internal legislation. Therefore, the provisions of Art. 8 from the Paris Convention are directly applicable in Romania. The earlier registered and used company name may be invoked as earlier right in an opposition or appeal procedure against the registration of a trademark in Romania.

As pointed out by the opponent, the conditions which apply are the following:

 Earlier right – the company name must be registered and/or used before the deposit date of the contested trade mark application.

 The company name must be used.

 There must be identity or similarity between the contested trade mark application and the earlier company name.

 The goods and services must be identical or highly similar.

b) The opponent’s right vis-à-vis the contested trade mark

The Opposition Division is then required to check whether the conditions set by the law governing the earlier sign are met vis-à-vis the contested trade mark.

The aforesaid conditions are cumulative. The Opposition Division will start with a comparison between the contested services and the services and business activities for which the opponent has claimed the company name has been used.

The services

The opposition is directed against the following services of the contested trade mark:

Class 35: Wholesale services in relation to foodstuffs, drinks, catering supplies in the nature of food and beverage containers, cutlery, cups, beverage glasses, food plates and food platters, kitchen utensils, paper napkins and paper towels for restaurants, hospitals, schools and other institutions which prepare food for carry out or consumption away from home; all provided by a distributorship.

The opponent’s company name is claimed to have been used for the following:

 Activities regarding information technology; repair of communications equipment; repair of computers and peripheral equipment; other forms of education; other information service activities; web portal activities; data processing, web page management and related activities; other service activities regarding information technology; management activities (management and operation) of the means of calculation; information technology consultancy activities; custom software development activities (customer oriented software); editing of other software products; retail sale of telecommunications equipment in specialized stores; retail sale of computers, peripheral units and software in specialized stores; wholesale of other office machinery and equipment; wholesale of electronic and telecommunications components and equipment; intermediation in trade in cars, industrial equipment, ships and airplanes; freight transport by road.

Firstly, it is important to recall the fact that when comparing wholesale services the same principles apply to retail services, since they all consist exclusively of activities revolving around the actual sale of goods.

Retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between retail of specific goods on the one hand and retail of other goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors.

The contested wholesale services in relation to foodstuffs, drinks, catering supplies in the nature of food and beverage containers, cutlery, cups, beverage glasses, food plates and food platters, kitchen utensils, paper napkins and paper towels for restaurants, hospitals, schools and other institutions which prepare food for carry out or consumption away from home; all provided by a distributorship concerns goods that are not commonly sold in the same places and do not target the same public as the opponent’s retail sale of telecommunications equipment in specialized stores; retail sale of computers, peripheral units and software in specialized stores; wholesale of other office machinery and equipment; wholesale of electronic and telecommunications components and equipment.

As regards activities regarding information technology; repair of communications equipment; repair of computers and peripheral equipment; other forms of education; other information service activities; web portal activities; data processing, web page management and related activities; other service activities regarding information technology; management activities (management and operation) of the means of calculation; information technology consultancy activities; custom software development activities (customer oriented software); editing of other software products; intermediation in trade in cars, industrial equipment, ships and airplanes; freight transport by road, not only these services and business activities have different distribution channels and relevant public, but they also have different nature, purpose and method of use. Neither are these services complementary or in competition.

In view of the fact that, as already pointed out, the goods involved in the services under comparison are not commonly sold together and they target different publics and also considering, as regards the remaining services, that they do not display any point of contact, it can be safely concluded that the services and business activities used under the company name on one hand and the services covered by the trade mark application are dissimilar.

c) Conclusion

As seen above, the identity or similarity of the services is a condition according to the applicable law. Since the services and business activities are clearly dissimilar, one of the necessary conditions is not fulfilled, and the opposition is not well founded under Article 8(4) EUTMR and it 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

María Clara IBÁÑEZ FIORILLO

Andrea VALISA

Aurelia PÉREZ BARBER

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.