OPPOSITION Nо B 3 111 747

Dart Industries Inc., 14901 S. Orange Blossom Trail, 32837 Orlando, Florida, United States of America (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)

a g a i n s t

Guangzhou Topware Import & Export Co., Ltd., Rm 1407-1408, 48 Longxi Road East, Liwan District, Guangzhou City, Guangdong Province, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų Str. 16, LT-01109 Vilnius, Lithuania (professional representative).

On 23/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 111 747 is upheld for all the contested goods.

2. European Union trade mark application No 18 148 322 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 17/02/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 148 322 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 1 438 670 for the word mark ‘TUPPERWARE’. In relation to this earlier mark, the opponent invoked Article 8(5) EUTMR; in relation to another earlier mark, the opponent invoked Article 8(1)(b) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

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 the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 07/11/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 21: Household or kitchen utensils, particularly plastic pasta grabbers, spoon and ladle, household and kitchen containers and covers therefor (not of precious metals or coated therewith), tableware; cookware; bakeware; plastic pastry sheets; baking trays; articles for cleaning purposes.

The opposition is directed against the following goods:

Class 24: Towels of textile; bed linen; table napkins of textile; face towels of textile; bed covers; bedspreads; sheets [textile]; bath linen, except clothing; cloths for removing make-up; household linen.

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 18/09/2020, the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists, in particular, of the following documents:

 Annex OP 1: an affidavit signed by the opponent’s vice president, dated 18/09/2020, stating that the opponent’s goods are sold in about 80 countries worldwide, and in Europe since the early 1960’s. The opponent’s products have a special repute for their durability and quality as well as for their attractive and individual design. The opponent has sold its products with a long tradition via corresponding affiliates throughout the European Union. In Germany, the products are sold through ‘Tupperware Deutschland GmbH’, an affiliate of the opponent, online and through ‘Tupperparties’. Sales numbers and salesforce for Europe for 2015-2019 are given, which are very substantial.

 Annex OP 2: extracts from www.tupperwarebrands.com and Wikipedia, dated 30/07/2020, providing information on the mark ‘TUPPERWARE’. It states, inter alia, that Tupperware is a home products line that includes preparation, storage and serving products for the kitchen and home. It further states that ‘Tupperware’ products are sold in almost 100 countries worldwide and have been sold in Europe since 1960.

 Annex OP 3: an affidavit signed by the opponent’s vice president, dated 06/06/2018, with several Annexes, giving information on the opponent’s history, territorial scope, sales figures and recognition in the market (submitted in previous opposition proceedings in India). In one of the Annexes, it can be seen that ‘TUPPERWARE’ brands was ranked as one of the most admired companies in the world by Fortune magazine (2015), in the ‘home equipment, furnishings’ category.

 Annexes OP 4-5: extracts from the opponent’s product catalogues (in Germany 2017-2020, in Austria 2018-2020, in France 2019-2020 and in Spain 2017-2020). The goods shown are various household or kitchen implements, containers for household and kitchen use, cookware and bakeware. This information also demonstrates that the products have a 30-year guarantee and have obtained many design awards.

 Annex OP 6: a list of the opponent’s ‘TUPPERWARE’ websites (including various EU countries) and exemplary screenshots of online catalogues.

 Annex OP 7: an affidavit signed by the operations director of ‘Tupperware Deutschland GmbH’, dated 17/09/2020, confirming the opponent’s ‘Tupperware’ goods have been sold in Germany since 1962 and that millions of participants have purchased the goods presented at ‘Tupperparties’ in Germany.

 Annex OP 8: an overview of the awards received by the earlier mark, inter alia, in Germany, eight awards in 2017 and seven in 2018, for goods, inter alia, tea and coffee household goods, containers, herb planters, choppers, knives, cookware, graters and water bottles.

 Annexes OP 9-10: database excerpts of trade mark registrations for the opponent’s marks containing ‘TUPPER’ and ‘TUPPERWARE’.

 Annexes OP 12-14: an extract from www.wallstreet-online.de, stating that ‘Tupperware Brands Corporation’, of which the opponent is a subsidiary, generated sales of more than USD 2 billion in the period from 2012 to 2016. A press release published by ‘Tupperware Deutschland GmbH’, stating that approximately USD 800 million thereof were generated in the European markets (2012). An extract from www.tagesspiegel.de, stating that sales of approximately USD 600 million were achieved in the European markets in 2016.

 Annex OP 15: screenshots from Instagram and Facebook.

 Annex OP 16-17: extracts from www.horizont.net and www.presseportal.de, referring to a study carried out by the ‘Gesellschaft für Konsumforschung (GfK)’ in October 2012 that showed that 99 % of all Germans knew the trade mark ‘Tupperware’ and that the opponent’s goods could be found in 70 % of all households. The article also refers to the 51 years of market presence, as well as to the opponent’s cooperation with the TV program ‘ZDF-Morgenmagazin’ with a TV advertising spot. Another study carried out by ‘GfK’ in 2016 confirmed that more than 90 % of Germans knew the trade mark ‘Tupperware’. A study carried out in France in 2016 also revealed that more than 90 % of the French population knew the trade mark ‘Tupperware’; this information is mentioned in an affidavit, but no evidence has been submitted.

 Annex OP 18: various articles (e.g. from www.welt.de) and press releases referring to the trade mark ‘Tupperware’, its reputation and use on the market for more than 50 years. For example, there are references to the fact that the mark was voted the most popular trade mark in the category ‘household’ by the rating services ‘Deutschlandtest’ in 2015 and that it is known by 99 % of the Germans.

 Annex OP 19: financial figures, fact sheets (2011-2019) and excerpts from the annual accounts, for 2008-2019.

 Annexes OP 21-25: decisions from national courts and trade mark offices in Germany (2015), Spain (2017) and the Office (2019), confirming the reputation of the earlier mark.

On 08/01/2021, the opponent informed the Office that Annexes OP 4 and OP 5 were not completely uploaded when it initially submitted the evidence on 18/09/2020, this due to a download error, and re-submitted these Annexes. For reasons of procedural economy, only the evidence that was duly submitted on 18/09/2020, and on which the applicant was given the opportunity to comment, will be taken into account as it is considered sufficient in combination with the remaining evidence submitted.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use in the European Union and is generally known in the relevant market, as has been attested by diverse independent sources.

The sales figures and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

The mark has been in the European Union for more than 50 years. According to press articles and press releases (Annexes OP 12-14), which is publicly available information, sales amounted to approximately USD 800 million in the European markets in 2012 and approximately USD 600 million in 2016.

The press articles (Annexes OP 16-18) refer to a study made by the company ‘GfK’ in October 2012, showing that 99 % of the Germans knew the earlier trade mark ‘Tupperware’, and to another study by the same company in 2016, which showed that more than 90 % of the Germans knew the trade mark ‘Tupperware’ and that the opponent’s goods sold under the mark could be found in 70 % of households. According to information given by the opponent in an affidavit, similar conclusions could be drawn for France.

From the evidence, it also appears that national courts and trade mark offices in Germany and Spain considered the earlier mark to have a reputation in Germany and Spain.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union at least for household or kitchen utensils, particularly plastic pasta grabbers, spoon and ladle, household and kitchen containers and covers therefor (not of precious metals or coated therewith), tableware; cookware; bakeware.

b) The signs

TUPPERWARE
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 signs are composed of one verbal element. However, 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). The element ‘WARE’ in both signs will be understood by the English-speaking part of the relevant public as ‘articles of the same kind or material; things, usually of the same general kind, that are for sale; a (specified) kind of merchandise, collectively’ (information extracted from Collins English Dictionary on 10/03/2021 at https://www.collinsdictionary.com/dictionary/english/ware), or by the German-speaking part of the relevant public as a product, an article and goods. This element has a low degree of distinctiveness in relation to all the relevant goods in Classes 21 and 24. However, for the majority of the non-English- and non-German-speaking part of the public (e.g. the Dutch-, French-, Polish- or Spanish-speaking parts of the relevant public), this element will be meaningless and distinctive. For reasons of procedural economy, the analysis below focuses on the non-English- and non-German-speaking part of the relevant public.

The element ‘TUPPER’ of the earlier mark, has no meaning for the relevant public and is, therefore, distinctive.

The relevant public, not familiar with the English/German words ‘WARE’ and ‘TUPPER’ not being meaningful for them in their languages, will not dissect the earlier mark and will perceive it, as a whole, as a meaningless term with a normal degree of distinctiveness.

The word ‘TOP’ will be perceived by a substantial part of the relevant public, inter alia, as something particularly good. As this is laudatory, this element has an at best low degree of distinctiveness.

The signs have no elements that are more dominant (eye-catching) than others.

Visually and aurally, the signs coincide in the letters ‘T*P***WARE’, ‘WARE’ being the most distinctive element in the contested sign. However, they differ in the letters ‘*U*PER’ of the earlier mark and ‘*O*’ of the contested sign. Furthermore, the signs differ in the slight stylisation of the contested sign, which is, however, very standard and will, therefore, have only a very limited impact.

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

Conceptually, although a substantial part of the public in the relevant territory will perceive the meaning of the element ‘TOP’ in the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, the impact of this conceptual difference is limited since it originates from an element that has at best a low degree of distinctiveness and will, therefore, not attract the primary attention of the relevant public.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are visually and aurally similar to an average degree and they are conceptually not similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The earlier mark has a reputation in the European Union for household or kitchen utensils, particularly plastic pasta grabbers, spoon and ladle, household and kitchen containers and covers therefor (not of precious metals or coated therewith), tableware; cookware; bakeware in Class 21.

The signs are visually and aurally similar to an average degree. Due to the at best low degree of distinctiveness of the element ‘TOP’ in the contested sign for a substantial part of the relevant public, the relevant public would focus on the element ‘WARE’, which is meaningless and the most distinctive element within the sign, and is fully incorporated at the end of the earlier mark.

The opponent’s goods in Class 21, which are all household or kitchen implements as mentioned above, are closely related to the contested goods in Class 24, namely towels of textile; bed linen; table napkins of textile; face towels of textile; bed covers; bedspreads; sheets [textile]; bath linen, except clothing; cloths for removing make-up; household linen, which are all textile goods. Both sets of goods are used in households, be it in the kitchen, bathroom or bedroom, and both target the general public. They are very often sold in the same outlets, as all those goods are necessary to equip a household/home and are necessary on a daily basis in the running of a household.

Therefore, taking into account and weighing up all the relevant factors of the present case, it must be concluded that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

 the opponent’s goods are reputed and stand for high quality, durability and individual design. This image created by the opponent’s mark can be easily transferred to the goods offered under the contested sign;

 the applicant sells textile goods under the contested sign through www.topwarechina.en.alibaba.com, of which extracts are submitted, using the same colours to advertise its mark as the opponent;

 it is clear that consumers in all EU countries, when encountering the contested sign ‘TOPWARE’, will immediately associate it with the opponent and its household and kitchen goods and will probably think that there is some connection between the signs because it is possible to use the contested goods in connection with the opponent’s reputed goods;

 the marketing of the applicant’s goods will be made easier when free-riding on the earlier mark’s reputation and image of high quality, special design and durability.

When assessing unfair advantage, the applicant’s intention is not a material factor. Taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46).

To determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment that takes into account all the factors relevant to the circumstances of the case (10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 53; 12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146; 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 30, 38; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58, 66; 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

According to the Court of Justice of the European Union,

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

The goods target the general public whose degree of attention is average.

The earlier mark has been used for over 50 years and has built up an image of durability and quality, as shown in the catalogues submitted by the opponent, in which it is mentioned that the opponent’s goods have a 30-year guarantee. The opponent’s goods are known for their attractive and individual design, as is shown by the various awards obtained by the earlier mark.

As the relevant public would establish a link (or form an association) between the signs, for the reasons explained above, and considering the nature of the goods in Classes 21 and 24, the image of high-quality, durability and attractive design of the earlier mark would inevitably be transferred to the applicant’s goods if they were marketed under the contested sign.

Consequently, in principle, the contested goods in Class 24 would be easier to market, as they would be associated with high quality, durability and good design.

Therefore, the applicant would take advantage of the success of the opponent’s company. It would take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its mark; it would exploit the opponent’s mark without making any financial contribution to the opponent’s marketing efforts to create and maintain the image of that mark.

Taking into account all of the above, in particular the facts that the earlier mark has a reputation, that the signs are visually and aurally similar to an average degree on account of the coinciding distinctive verbal element ‘WARE’, and that there is a close connection between the opponent’s and the abovementioned contested goods, making an image transfer very likely, it is very likely that use of the contested sign will lead to free-riding. This means that it would take unfair advantage of the well-established reputation of the earlier mark and the considerable investment made by the opponent to acquire that reputation.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character or repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining ground and earlier right on which the opposition was based.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marzena MACIAK

Saida CRABBE

Chantal VAN RIEL

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.