OPPOSITION Nо B 3 109 766

Industrias Lácteas Asturianas, S.A., Calle Velázquez, 140, 28006 Madrid, Spain (opponent), represented by Juan Carlos Riera Blanco, Avda. Concha Espina, 8 - 6º D, 28036 Madrid, Spain (professional representative)

a g a i n s t

Qingdao United Dairy Co., Ltd, 15A Tianzhi Mansion, Qingdao Free Trade Zone, People’s Republic of China (applicant), represented by Joep Mens Trademark Company B.V., Slotlaan 379, 3701 GZ Zeist, Netherlands (professional representative).

On 23/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 109 766 is rejected in its entirety.

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

REASONS

On 24/01/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 126 515 ‘NAMLAC’ (word mark), namely against some of the goods in Class 5 and all the goods in Class 29. The opposition is based on Spanish trade mark registration No 2 330 289 (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 Spanish trade mark registration No 2 330 289 (figurative mark).

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 23/10/2019. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 23/10/2014 to 22/10/2019 inclusive.

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

Class 5: Infant milk.

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 05/11/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 10/01/2021 to submit evidence of use of the earlier trade mark. On 01/12/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Items 1-3: copies of three undated catalogues, in Spanish, with partial translation into English, containing information about the opponent’s group of companies – founded in 1960 with factories in Zamora, Madrid and Asturias (Anleo and Siero) (Spain) – and the opponent’s products. The catalogues include, inter alia, images of the packaging of a range of powdered milks for infants with information as to their nutritional characteristics, size or weight (900g). Some of them bear the figurative sign in different colours with different numbers, indicating the age of the children for which the product is recommended.

Analac 1 powdered milk for infants up to four months	Analac 2 powdered milk for infants from five months and older	Analac cacao

The catalogues also incorporate other signs such as , which, according to the opponent’s explanations, also pertains to its trade mark portfolio.

 Item 4: copies of 34 invoices, dated between 13/02/2014 and 11/09/2019, in Spanish (with partial translation of the information contained therein), issued by the opponent (with an indication of its business address) and addressed to four companies located in Spain, Portugal and the People’s Republic of China. The place of delivery of the goods is indicated as Spain, Portugal or the People’s Republic of China.

Each invoice contains a reference to the opponent’s products, namely ‘ANALAC 2’, ‘ANALAC 1 CHINA’, ‘ANALAC 2 CHINA’ or ‘ANALAC 3 CHINA’, and corresponding reference numbers (96665, 96279, 96280, 96274, etc.). The invoiced amounts vary from EUR 780 to EUR 134,120.70 (VAT included) for each invoice.

 Item 5: a copy of an internal document (in Spanish and English), describing the sales volume of some of the opponent’s products (identified by their name and product reference number) in the period 2014-2019 (in Spanish and English), some of them being the same as those described in the invoices listed in item 4. For example, ‘ANALAC 2’ (96665), ‘ANALAC 1 CHINA’ (96279), ‘ANALAC 2 CHINA’ (96280) or ‘ANALAC 3 CHINA’ (96274). The total sales amount to 440,882 units.

The document contains the opponent’s stamp.

 Item 6: a copy of an internal document (in Spanish and English), describing the price list of some of the opponent’s products (identified by their name and product reference number) in the period 2014-2019, some of them being the same as those described in the invoices listed in item 4. For example, ‘ANALAC 2’ (96665), ‘ANALAC 1 CHINA’ (96279), ‘ANALAC 2 CHINA’ (96280) or ‘ANALAC 3 CHINA’ (96274).

The document contains the opponent’s stamp.

 Item 7: copies of five invoices, issued by two companies/providers with a business seat in Spain (Mivisa Envases, S.A.U. and Crown Foods España, S.A.U.) to the opponent between 07/11/2014 and 15/11/2018 (in Spanish). The amounts invoiced vary from EUR 8,326.94 to EUR 194,112.06. In the majority of the cases, the invoice expressly states that the place of delivery is Asturias (Spain).

According to the opponent’s explanations, these invoices refer to expenses regarding the packaging, cans and lids used in the manufacturing of its products.

The units are expressed, inter alia, in ‘bottles’, ‘pack’ and ‘cap’. In addition, the descriptions of some invoices contain references to ‘ANALAC 1’, ‘ANALAC 2’ or ‘ANALAC 1 CHINA’.

 Item 8: images of the packaging of some of the opponent’s products which incorporate the sign in different colours.

Analac 1	Analac 2	Analac 1, 2 and 3

The packaging indicates ‘infant formula milk’ (‘ANALAC 1’), ‘follow-on milk’ (‘ANALAC 2’) and ‘growing up’ (‘ANALAC 3’). In some cases, the packaging includes the Spanish flag or the indication ‘made in Spain’. In general, the images are not dated. The only two images which incorporate the production date and the expiry date of the bottle do not contain any reference to the relevant sign.

 Item 9: links and screenshots of the English version of the website of two companies where, according to the opponent’s explanations, the opponent’s powdered milk for infant can currently be purchased. The screenshots are not dated and do not contain any date reference.

 Item 10: copies of six press articles, dated 2017 (in Spanish, but partly translated into English), which refer to the agreement reached by the opponent and the government of the People’s Republic of China for the distribution of powdered milk for infants and confirm that the opponent is located and produces its products in Asturias. However, the opponent has included the links of the home webpage of each website or newspaper rather than the one corresponding to each article.

Assessment of the evidence

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.

Regarding the place of use, although (as indicated by the applicant) the price sales volume and price list in items 5 and 6 do not contain information as to the place of sales, the invoices (item 4) show that the opponent’s powdered milk for infants were manufactured in Spain and sold, inter alia, in Spain and Portugal. This can be inferred from the language of the invoices (Spanish), the currency mentioned (Euro) and the addresses.

It is also confirmed by (a) the Spanish brochures included in item 1-3 which contain information about the opponent’s place of business, including four factories in Spain, (b) the Spanish flag and the expression ‘Made in Spain’ contained in certain packaging (item 8); (c) the place of delivery of the invoices issued by the opponent’s providers (item 7); as well as (d) the press articles (item 10).

Regarding exports to China, according to Article 18(1), second subparagraph, point (b), EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes.

Consequently, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

As regard the time of use, a relevant part of the evidence (and, in particular, the invoices listed in items 4 and 7) is dated within the relevant period (i.e. 23/10/2014 to 22/10/2019).

It is true some invoices included in item 4 are out of the relevant period. However, almost all invoices submitted as evidence of use are dated within the relevant period and the remaining invoices were issued immediately before (i.e. in February and June 2014). Taken together, these additional invoices are therefore conclusive supplementary and indirect proof allowing to conclude that the trade mark was used during the relevant period (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 31).

Despite the applicant’s argument that part of the evidence is undated (mainly the catalogues/brochures), the material submitted without any indication of date of use may, in the context of an overall assessment, still be relevant and taken into consideration in conjunction with other pieces of evidence that are dated (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 33). In the present case, a combination of the abovementioned items of the evidence that are admittedly undated, and the evidence that is dated within the relevant period (the invoices), allows the Opposition Division to examine the evidence as a whole and determine the relevant factors of use, particularly time of use. It is, therefore, considered that the evidence relates to the relevant period.

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. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Furthermore, it is important to bear in mind that the purpose of Article 47(2) and (3) EUTMR is not to assess commercial success or to review the economic strategy of an undertaking, nor is it to restrict trade mark protection to only large-scale commercial use of the marks (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 32; 08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

In the present case, contrary to the applicant’s view, it is clear that the use of the sign was not merely token. On the contrary, the evidence shows continuous and frequent use of significant amounts of units throughout the relevant period and in different countries.

In particular, the invoices show the sale of goods for considerable amounts. Considering that the goods are powdered milk for infants, this indicates a high volume of goods sold. This is also confirmed by the sales volume and price list data provided by the opponent (items 5 and 6) which, despite being internal documents, should be considered because they contained references to other relevant documents (e.g. the invoices listed in item 4).

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark (in particular, the commercial volume, the territorial scope, the duration, and the frequency of use).

In the context of Article 10(3) EUTMDR, the expression nature of use includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. There is no doubt that the mark has been used as a trade mark and this has not been disputed by the applicant.

As to use as registered, according to Article 18(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the evidence of use refers, inter alia, to

Registered form	Actual use 1 ANALAC 1	Actual use 2 ANALAC 2	Actual use 3 ANALAC 3

The Opposition Division considers that these forms do not alter the distinctive character of the earlier mark and this has not been disputed by the applicant. This is true because (a) they merely constitute an alteration in colour and the addition of verbal elements, which are descriptive of the characteristics of the goods; and (b) the verbal element ‘Analac’ coincides and is the main distinctive element; and (c) the contrast of shades is respected.

The sign is sometimes used together with other opponent’s signs, such as . Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T‑463/12, MB, EU:T:2014:935). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (07/08/2014, R 1880/2013‑1, HEALTHPRESSO / PRESSO, § 32).

Finally, the evidence shows that the mark has been used for all the goods for which it is registered, namely infant milk.

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. 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).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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 5: Infant milk.

The contested goods are the following:

Class 5: Food for babies; lacteal flour for babies; milk sugar for pharmaceutical purposes; lactose for pharmaceutical purposes; dietetic beverages adapted for medical purposes; dietetic beverages for babies adapted for medical purposes; dietetic foods adapted for medical purposes; dietetic substances adapted for medical use; protein dietary supplements; nutritional supplements; glucose dietary supplements; enzyme dietary supplements; mineral food supplements; mineral supplements to foodstuffs; health food supplements made principally of minerals.

Class 29: Butter; cream [dairy products]; cheese; milk; yoghurt; milk beverages, milk predominating; whey; milk products; condensed milk; buttercream; albumin milk; protein milk.

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 5

The contested food for babies; dietetic beverages adapted for medical purposes; dietetic beverages for babies adapted for medical purposes; dietetic foods adapted for medical purposes include, as a broader category, the opponent’s infant milk. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested lacteal flour for babies; milk sugar for pharmaceutical purposes; lactose for pharmaceutical purposes; dietetic substances adapted for medical use; protein dietary supplements; nutritional supplements; glucose dietary supplements; enzyme dietary supplements; mineral food supplements; mineral supplements to foodstuffs; health food supplements made principally of minerals are ingredients or supplements which are at least similar to the opponent’s infant milk as they have the same purpose (i.e. feeding babies) and they coincide in their producers and distribution channels (i.e. pharmacies and specialised stores or sections for babies in supermarkets).

Contested goods in Class 29

The contested butter; cream [dairy products]; cheese; milk; yoghurt; milk beverages, milk predominating; whey; milk products; condensed milk; buttercream; albumin milk; protein milk are regular dairy products for consumption by the public at large whereas the opponent’s goods relate to infant milk, from the pharmaceutical and medical fields.

In particular, infant milk is a simulation (formula) of human milk and is intended for special dietary use. Regular dairy products (cheese, yoghurt or cream) are not interchangeable with this formula. These goods come from entirely different industries: infant milk is synthesised in laboratories and approved by nutritionists and paediatricians, whereas regular milk products are natural (agricultural) products. Whilst they have to comply with food safety standards, the manner and degree of controlling the manufacture and circulation of milk products differ greatly from the manner and degree of controlling the production and circulation of infant milk. Their distribution channels are different. While the opponent’s goods are often purchased in pharmacies (or specialised stores or in the baby sections in supermarkets), the contested goods are often offered in the general food sections of supermarkets. Therefore, contrary to the opponent’s view, they are dissimilar.

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 identical or similar are directed at the public at large. The degree of attention may vary from average to high given their medical or at least health-related purposes.

c) The signs

	NAMLAC
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Although both signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the relevant public will perceive the verbal elements ‘Ana’ and ‘lac’ in the earlier mark and ‘NAM’ and ‘LAC’ in the contested sign.

The coinciding verbal element ‘lac’ will be understood by the relevant public as relating to the Spanish word ‘lácteo’ (dairy). As the relevant goods cover food for babies or food supplements for medical purposes, this element is weak because it describes a characteristic or ingredient of the goods. Considering the weak nature of this element, its impact on the comparison is limited.

The earlier mark’s verbal element ‘Ana’ will be understood by the public as a female given name because it is commonly used in Spain. Since this meaning has no relation to the relevant goods, it is distinctive.

The contested sign’s verbal element ‘NAM’ has no meaning for the relevant public and, therefore, it is distinctive.

The verbal element ‘Analac’ of the earlier mark is the dominant element as it is the most eye-catching.

The cursive script of the earlier mark will be seen as decorative whilst the rectangular label will be seen as commonplace and banal thus their relevance, if any, is limited.

Visually and aurally, the signs coincide in the string of letters/sounds ‘lac’, which is weak for the relevant goods and is placed at the end of the signs. The signs differ in the distinctive verbal elements ‘Ana’/‘NAM’, placed at the beginning of the signs.

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. In this case, the totally different beginnings of the signs (‘Ana’/‘NAM’) have more impact on the public than the common element ‘lac’, which is placed at their ends and is weak.

They also differ in the abovementioned typeface and the figurative elements of the contested sign, with limited relevance, if any. Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, when taken as a whole, neither of the signs convey a clear concept, meaning that a conceptual comparison is not possible. Even though the signs coincide in the weak element ‘lac’, its impact is limited leading to, at best, a low degree of conceptual similarity.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are partly identical, partly at least similar and partly dissimilar. They target the public at large. The relevant public’s degree of attention may vary from average to high. The earlier mark has a normal degree of inherent distinctiveness in relation to the goods at issue.

The signs are visually and aurally similar to a low degree. It is considered that the differences between the signs, more particularly the different beginnings, will be readily noticed by the average consumer and are sufficient to keep the overall impressions between the signs sufficiently far apart in order to distinguish the signs. The conceptual comparison is not possible or, as an alternative, the signs have at best a low degree of conceptual similarity (bearing in mind the common weak element ‘lac’).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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). The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that some of the goods are identical or similar cannot, in this case, compensate for the differences identified between the signs. Indeed, even the average consumer displaying an average degree of attention is reasonably well informed, attentive and circumspect and thus aware of the differences between the signs.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, 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

Vanessa PAGE HOLLAND

Fernando AZCONA DELGADO

Agnieszka PRZYGODA

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.