OPPOSITION No B 3 112 915

Cloetta Suomi Oy, Joukahaisenkatu 7, FI‑20520 Turku, Finland (opponent), represented by Krogerus Attorneys Ltd, Unioninkatu 22, FI‑00130 Helsinki, Finland (professional representative)

a g a i n s t

Salmix Sievershütten GmbH, Holstenstr. 10, 24641 Sievershütten, Germany (applicant), represented by Kanzlei Sachs, Bredenbekstr. 55, 22397 Hamburg, Germany (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 112 915 is rejected in its entirety.

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

REASONS

On 02/03/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 153 218 ‘Salmix’ (word mark), namely against all the goods in Classes 5 and 30. The opposition is based on non-registered trade mark ‘Salmix’ (word mark) used in the course of trade in Finland. 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.

Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite – that is to say, important and significant in the course of trade – from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 14/11/2019. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Finland prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for ‘Salmix’ (word mark), in connection with the goods on which the opposition is based, namely confectionery; liquorice-based confectionery.

On 02/03/2020 the opponent filed the following evidence:

 enclosure 1: extracts from product catalogues, dated between 1992 and 2020, which include the images and , among others, featuring the ‘Salmix’ trade mark;

 enclosure 2: screen captures, dated March 2020, from online retailers such as ‘Pekan Eurohinnat’, ‘Emetro’ and ‘Kespro’ showing, among others, ‘Salmix’ products;

 enclosure 3: a copy of the Finnish Trademarks Act (26/04/2019/544), with a translation of Sections 4 and 5 into the language of the proceedings;

 enclosure 4: translation of the extract taken from the electronic trade register relating to the opponent.

Assessment of the evidence

The General Court held that

the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say, of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet.

(24/03/2009, T‑318/06 - T‑321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T‑534/08, Granuflex, EU:T:2010:417, § 19, emphasis added).

The Court of Justice clarified that

the significance of a sign cannot be a function of the mere geographical extent of its protection, since, if that were the case, a sign whose protection is not merely local could, by virtue of that fact alone, prevent registration of a European Union trade mark, even though the sign might be used only to a very limited extent in the course of trade. The sign must be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory.

(29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 158-159, emphasis added).

However, it is not possible to establish a priori which part of a territory must be used to prove that the use of a sign is of more than mere local significance. Therefore, the assessment of the sign’s significance must be made in concreto, according to the circumstances of each case.

Therefore, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to these elements:

1. the intensity of use (sales made under the sign);

2. the length of use;

3. the spread of the goods (location of the customers);

4. the advertising under the sign and the media used for that advertising, including the distribution of the advertising.

After careful consideration of the submitted evidence, the Opposition Division considers that, while the evidence may suggest that some use of the sign has been made, it does not, contrary to the opponent’s opinion, meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR, for the following reasons.

The Opposition Division finds that the evidence is insufficient to demonstrate the economic dimension of use. There is no evidence of the sales generated by the earlier sign in the relevant territory. There are no invoices demonstrating sales that took place prior to the filing date of the contested application. There is no information about the customers who purchased the goods produced by the opponent, or where exactly these customers were located. The evidence only demonstrates that the opponent is a producer of, inter alia, confectionery products, which, as of 1992, were placed on the market in Finland, and that the opponent’s goods were sold through websites as well as offered in Finnish shops/supermarkets. In its observations, the opponent indicated the sales volume of ‘Salmix’ products in Finland and the number of stores in which the products were sold. However, it did not submit any objective evidence to support this information. Although the opponent is not obliged to reveal financial information or commercially sensitive customer data to substantiate its claims in opposition proceedings, in the present case, the absence of any corroborating evidence from the opponent’s accounting or financial management books precludes the Opposition Division from establishing the economic dimension of use to the necessary standard.

The opponent has failed, therefore, to prove to what extent the sign was used in the course of trade of more than mere local significance.

The onus is on the opponent to submit evidence that demonstrates that there has been use, in a more than mere local context, for the goods invoked. While the opponent is not obliged to reveal sensitive business information, it should nevertheless be able to provide those items that show, beyond doubt, use of the earlier sign in the relevant territory. This could have been proved by showing sales volumes by means of invoices, annual reports or accounts books indicating information or transactions carried out using the opponent’s sign. However, in the present case, as explained above, the opponent did not submit any invoices, other reliable objective items, or conclusive indirect evidence, in order to prove the commercial volume or quantity of goods actually sold in Finland under the sign ‘Salmix’.

Consequently, the evidence does not provide the Opposition Division with sufficient information as regards the economic dimension of the earlier sign’s significance. The Opposition Division cannot verify, without resorting to presumptions or suppositions, whether or not the relevant sign has been used within the course of trade of more than mere local significance for the claimed goods in Finland and, therefore, it does not meet the minimum threshold of ‘more than local significance’.

Conclusion

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the goods on which the opposition was based, namely confectionery; liquorice-based confectionery, before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

Therefore, it is unnecessary to address the remaining arguments of the opponent, as they will have no impact on the finding that the opponent has not provided sufficient indications concerning use in the course of trade of more than mere local significance of the earlier sign.

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

Richard BIANCHI

Cristina CRESPO MOLTO

Begoña URIARTE VALIENTE

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.