OPPOSITION Nо B 3 095 952

 

Owens-Brockway Glass Container Inc., One Michael Owens Way, 43351 Perrysburg, United States of America (opponent), represented by Blumbach • Zinngrebe Patentanwälte Partg mbB, Alexandrastr. 5, 65187 Wiesbaden, Germany (professional representative) 

 

a g a i n s t

 

Kerry Luxembourg S.à.r.l., 17 Rue Antoine Jans, 1820 Luxembourg, Luxembourg (applicant), represented by  FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative).

On 01/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

		1.	Opposition No B 3 095 952 is partially upheld, namely for the following contested goods:
	Class 7: Beverage processing machines; beverage preparation machines; beverage mixing machines; beverage dispensing systems; machines for adding flavourings, syrups, sugar bases or other ingredients to beverages; all of the foregoing being for commercial use.   2. European Union trade mark application No 18 056 318 is rejected for all the above goods. It may proceed for the remaining goods (namely for all the goods in Class 11, i.e. for Coffee machines; coffee makers; all of the foregoing being for commercial use and none of the aforesaid being coffee percolators or coffee pots).   3. Each party bears its own costs.

REASONS

 

On 26/09/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 056 318 for the figurative mark . The opposition is based on EUTM registration No 11 914 512, 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 its European Union trade mark on which the opposition is based.

 

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.

 

The date of filing of the contested application is 26/04/2019. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 26/04/2014 to 25/04/2019 inclusive.

 

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

 

Class 21:   Bottles made of glass sold empty.

 

According to Article 10(3) EUTMDR, 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 01/04/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 01/06/2020 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended, until 01/11/2020. On 30/10/2020, within the time limit, the opponent submitted evidence of use.

 

The evidence to be taken into account is, in particular, the following:

 Press article in German, dated 17/06/2013, which appears to be issued in France and relates to a launch of a new wine bottle with threaded neck, for easier opening and re-closure, called ‘helix’ (English translation is provided). The article also mentions inter alia that the opponent is the world’s largest manufacturer of glass packaging, employing in 79 plants in 21 countries (annex 1).

 Promotional brochures (some of them dated, in 2014 and 2015) and presentations (which according to the opponent is dated December 2015) in English, showing promotional and technical information (technical sheet showing date of March 2016) on different types of the ‘HELIX’ bottle, and showing the earlier mark as registered. In the materials can also be seen some professional clients (wineries) in France, Italy, Portugal and Spain (also selling in Germany as detailed in annexes 12-23) using the ‘HELIX’ bottle (more information on the wineries commercialising their wine in the ‘HELIX’ bottles is filed as annexes 12- 23). The presentation and some of the brochures also mention several awards granted to the ‘HELIX’ bottle in, inter alia, Italy, France, Portugal and Spain, in 2014 and 2015 as well as the opponent’s participation with the bottle in trade fairs in, amongst others, France, Germany and Italy (annexes 2-3 and 9a-9b).

 Print outs of screenshots of the opponent’s website, in English, dated March – December 2017, March – December 2018 and February – April 2019 showing the earlier mark as registered for the ‘HELIX’ wine bottle and compatible ‘HELIX’ cork (annexes 4-6).

 Print outs of screenshots of videos published in 2013 and 2017, respectively, by the opponent on YouTube, showing the earlier mark as registered on a bottle (annexes 7-8).

 Sales figures (internal document) including for the period 2014-2019, in Austria, France, Italy, Portugal and Spain, showing relevant sales of different HELIX bottles in these Member States in the relevant period (annex 10).

 Affidavit dated 29/09/2020 signed by the Assistant Secretary of the opponent, stating that the sales figures for the period 2014- 2019, in Austria, France, Italy, Portugal and Spain, as filed in annex are correct (annex 11).

The applicant has not contested the proof of use. Furthermore, the evidence filed show that the place of use is France, Germany, Italy, Portugal and Spain. This can be inferred from the languages and references to cities on some of the documents. Therefore, the evidence relates to the relevant territory.

 

Most of the evidence is also dated within the relevant period. The undated evidence merely confirms that the earlier mark was used and the real intentions of the EUTM proprietor.

The evidence also clearly shows that the mark has been used in accordance with its function and as registered, for bottles, in particular for wine bottles.

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. Furthermore, 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. Use of the mark need not be quantitatively significant for it to be deemed genuine. 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).

 

From the evidence filed, that confirms a public and outward use, follows that it cannot be concluded that the use of the earlier mark was merely token or that the earlier mark would be used exclusively in the private sphere. The materials and awards confirm the sale of at least several types of bottles for wines in several Member States. Therefore, in light of all the foregoing, despite the evidence not being particularly exhaustive, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier 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 mainly genuine use of the trade mark for different types of lighters. According to case-law, when applying the abovementioned provision, the following should be considered:

 

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

 

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

 

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

 

In the present case, the evidence proves sufficient use only for bottles for wine. These goods can be considered to form an objective subcategory of the goods covered by the earlier mark as claimed by the opponent, namely bottles made of glass sold empty. In light of all the above, the Opposition Division considers that the evidence shows genuine use of the trade mark only for this subcategory. Therefore, the Opposition Division will only consider bottles for wine made of glass sold empty, in its further examination of the opposition.

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.

 

a) The goods

 

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

 

Class 21: Bottles for wine made of glass sold empty.

The contested goods, following a limitation by the applicant on 18/11/2019, are the following:

 

Class 7: Beverage processing machines; beverage preparation machines; beverage mixing machines; beverage dispensing systems; machines for adding flavourings, syrups, sugar bases or other ingredients to beverages; all of the foregoing being for commercial use.

Class 11: Coffee machines; coffee makers; all of the foregoing being for commercial use and none of the aforesaid being coffee percolators or coffee pots.

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.

 

Contested goods in Class 7  

 

The contested beverage processing machines; beverage preparation machines; beverage mixing machines; beverage dispensing systems; machines for adding flavourings, syrups, sugar bases or other ingredients to beverages; all of the foregoing being for commercial use in this Class are considered at least similar to a low degree to the opponent’s bottles for wine made of glass sold empty in Class 21.

The opponent’s goods may be part of the machines designed for the distribution and preparation of beverages covered by the contested sign. Consequently, these products may be also used as bottles independently of the machines. Furthermore, the bottles have to fit the machines, which means that the producer may produce both parts.

Therefore, their producers, distribution channels, method of use as well as relevant public may coincide.

Contested goods in Class 11  

On the other hand, the contested coffee machines; coffee makers; all of the foregoing being for commercial use and none of the aforesaid being coffee percolators or coffee pots in Class 11 are dissimilar to the opponent’s goods, since besides differing in nature, purpose and method of use, they also do not necessarily coincide in their usual distribution channels or points of sale. In addition, they are neither complementary nor in competition and are not produced by the same kinds of undertakings.

 

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.

 

In the present case, the goods found to be similar to at least a low degree are mainly directed at a professional public with specific professional knowledge although they also may be purchased by the general public that may buy them for household use or in a domestic kitchen.

The degree of attention is considered to vary from average to above average depending on the price, frequency of purchase, (specialised) nature and conditions of the provided goods.

c) The signs

 

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

The verbal element of the marks are not meaningful for a substantial part of the relevant public in certain territories. In the present case, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

Both marks are figurative marks containing the identical string of letters ‘helix’, which has no meaning for the relevant public taken under analysis. Therefore, their coinciding verbal element is distinctive to a normal degree.

In the earlier mark, the verbal element is preceded by a figurative device representing an abstract depiction of a bottle, the neck of which is represented by a spiral. In the contested sign, the verbal element (depicted in an almost identical font as in the earlier mark) is depicted in a black, standard square background and above its letter ‘i’ is also depicted a spiral, in a fairly big size; the dot on the letter ‘I’, upon a more closer look, could be seen as an abstract depiction of a coffee bean by part of the public, or as slightly stylised - since constituted by two vertical lines – by another part of the public, while for the remaining (and substantial part of the) public it will go easily unnoticed due to its small size within the contested sign as a whole.

The stylisation of the letters in both signs is fairly standard and thus will be perceived as being of a rather decorative nature. The image of a bottle, albeit slightly stylised, is directly descriptive of the goods (bottles) of the opponent so that it can be hold, at most, of very weak distinctiveness, and in any event will be of reduced impact. The depiction of the spiral in the earlier mark (as the neck of the bottle) as well as in the contested sign is not directly allusive or otherwise descriptive to a characteristic of the goods. While it is thus not devoid of distinctiveness, account must be taken of the fact that 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, in the present case, the distinctive verbal element, ‘helix’ will undoubtedly have a stronger impact on the relevant public, that will certainly refer to signs by their verbal component, rather than by describing their figurative aspects.

Visually, the signs coincide in the distinctive verbal element ‘HELIX’ which forms the sole verbal element, of average distinctiveness, and with a stronger impact, in both signs. The signs merely differ in their additional figurative aspects of, which, however, not only are quite similar (the letters’ font being almost identical and both signs recalling the image of a spiral) but also, as detailed above, are of much less impact.

Therefore, from a visual point of view, the signs are to be considered similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories now taken into account, the pronunciation of the signs is identical.

Therefore, aurally the signs are identical.

Conceptually, neither of the signs’ verbal element has a meaning for the public in the relevant territories taken under analysis, so that a conceptual comparison between these verbal components is not possible. Although the bottle in the earlier mark will evoke the concept of a bottle, this is not sufficient to establish any significant conceptual distance, as this element is only very weakly distinctive, if not descriptive, in relation to the goods (bottles). The image of a spiral, albeit of less impact (as seen above) may evoke the same concept in both signs, and to this extent the signs are to be considered conceptually similar to a low degree.

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.

 

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any substantial evidence in order to prove such a claim. In any event, for reasons of procedural economy, 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 in question from the perspective of the public in the relevant territory taken under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an (at best) weaker element in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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 covered are from the same or economically linked undertakings.

In the present case, the goods are partially similar to at least a low degree and partially dissimilar. The marks coincide in the element ‘HELIX’, which constitutes the entire and sole verbal element of both signs, and which is also distinctive to a normal degree for (at least) the part of the public under analysis. The differences between the signs are confined to their additional figurative aspects of less impact. In addition, part of these figurative aspects in the contested sign strongly recall those present in the earlier mark, the font of their letters being almost identical and considering the presence of a spiral device – which is not devoid of distinctiveness - in both signs.

In the Opposition Division´s opinion, this is clearly not sufficient to exclude the likelihood of confusion.

The relevant public will, if not directly confuse the marks, associate them and believe that the goods that have been found to be similar, even if only to a low degree, come from the same undertaking or economically linked undertakings. The prominent visual similarities between the marks, in conjunction with their aural identity, indeed, sufficiently counterbalance the lower degree of similarities between the goods.

In the present case, it is indeed highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a mere variation of the earlier mark, configured in a different way according to the type of goods or product line that it designates (bottles versus beverage related machines).

Considering all the above, and taking into account the principle of interdependence mentioned above as well as the fact that consumers rarely compare marks directly but rather rely on their imperfect recollection of them, the Opposition Division considers that the degree of similarity between the marks, as set out above, leads to a likelihood of confusion on the part of the public. Even consumers who pay a higher degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In light of all the foregoing, the Opposition Division finds that there is a likelihood of confusion on the part of the public taken under analysis and therefore the opposition is partly well-founded on the basis of the opponent’s earlier EUTM compared above.

As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested sign 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 the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

Since the opposition is successful for the similar goods on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the opponent’s claim of an enhanced degree of distinctiveness. The result would indeed be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

 

 

Claudia ATTINÁ

Edith Elisabeth VAN DEN EEDE

Gonzalo BILBAO TEJADA

 

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.