OPPOSITION No B 1 767 063

Frito-Lay Trading Company GmbH, Spitalgasse 2, 3011 Bern, Switzerland (opponent), represented by BOMHARD IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Max Kiene GmbH, Oberhafenstr. 1, 20097 Hamburg, Germany (applicant), represented by Hauck Patentanwaltspartnerschaft Mbb, Kaiser-Wilhelm-Straße 79-87, 20355 Hamburg, Germany (professional representative).

On 29/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 767 063 is partially upheld, namely for the following contested goods:

Class 29: All the goods applied for in this Class.

Class 30: All the goods applied for in this Class.

Class 31: Fresh vegetables.

2. European Union trade mark application No 9 233 313 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 9 233 313 . The opposition is based on inter alia, United Kingdom trade mark registration No 2 295 390 for the word mark ‘MAX’.  The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 2 295 390.

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now 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 publication 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 United Kingdom trade mark registration No 2 295 390.

The contested application was published on 06/09/2010. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the United Kingdom from 06/09/2005 to 05/09/2010 inclusive.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

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

Class 29: Potato crisps.

Class 30: Crisps of potato flour.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), 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 30/11/2018 within the time limit given to the opponent in accordance with Rule 22(2) EUTMIR, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe that part of the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

Enclosure OP-3 Excerpts from www.logos.wikia.com showing the history and development of the ‘MAX’ potato crisps packaging between 1999 and now, displaying the following packaging:

Other packaging varieties display different flavour varieties:

Enclosure OP-4 Two commercials (by way of screenshots from YouTube®) which according to the opponent run in 1999 and 2000;

Enclosure OP-5 (marked by the opponent as confidential) Table prepared by ‘The Nielsen Company’, signed by the Head of Analytics and Client Delivery with disclaimers making it apparent that the analytics firm preparing the table is independent from the opponent. The table reports on sales (value sales in GBP and volume in units sales) of ‘GLOBAL SALTY POTATY CHIP WALKERS MAX’ in the salty potato chip market in Great Britain for the full year period between 2009 and 2014, for significant amounts;

Enclosure OP-6 Sample artwork packaging of MAX product range which according to the opponent was offered in the UK in 2009, inter alia:

Enclosure OP-7 Wayback Machine screenshots from the opponent’s website www.walkers.corpex.com from 2005 – 2007, displaying, among other marks:

(2005, 2007) (2005 - 2006);

Enclosure OP-8 Excerpts from Google search results showing packaging of potato crisps displaying “WALKERS” together with “MAX”;

Enclosure OP-9 Excerpts from the website www.foodstufffinds.co.uk, dated in 2009, showing a sample of MAX potato crisps: ;

The opponent also submitted on 05/09/2019, as Enclosure OP-10, an article from www.reuters.co.uk about ‘Nielsen Holdings plc’, explaining that it is a performance management company providing clients information based on market research information and analytical services.

This additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit. In the exercise of its discretion pursuant to Article 95(2) EUTMR, the Office therefore decides to take into account this additional evidence. Contrary to the applicant’s claim, this evidence together with the statement of the Head of Analytics and Client Delivery make it clear that ‘The Nielsen Company’ is an analytics company independent from the opponent.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The table provided by ‘The Nielsen Company’ (including the currency GBP), the language of the product packaging and the screenshot from www.foodstufffinds.co.uk show that the place of use is United Kingdom. Therefore, the evidence relates to the relevant territory.

The screenshots from the Wayback Machine, the website www.foodstufffinds.co.uk and parts of the ‘The Nielsen Company’ table are dated within the relevant period, i.e. in 2009-2010.

The rest of the data refers to a period which post-dates the relevant period. In principle, evidence referring to use made outside the relevant timeframe is disregarded, as also claimed by the applicant. However, this not the case if this evidence contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well.

Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case even if sales volumes are not provided for the initial part of the relevant period, the sales volumes of 2009/2010 are quite significant which on its own presumes that there has been activities of prior marketing. The sales data post-dating the relevant period shows a continuing trend and thus confirms ongoing and consistent use of the opponent’s mark also within the relevant period.

The ‘Nielsen Company’ report for significant sales volumes provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows use of the earlier mark for all the goods for which it is registered.

The evidence also shows that the mark has been used in accordance with its function and as registered, namely in standard upper case typefaces and with descriptive additions such as images of potato chips, indications of flavours or promotional messages such as ‘DEEP RIDGED TASTE’ or ‘NAKED’ which do not alter the mark’s distinctive character.

The applicant argues that the evidence only shows ‘MAX’ in direct contact with the term ‘WALKERS’, which is more distinctive than the word ‘MAX’ and thus changes the distinctive character of the earlier trade mark.

However, there is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 47 EUTMR. 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, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasize the house mark, indicate that two different marks are being used jointly but autonomously (07/08/2014, R 1880/2013-1, HEALTHPRESSO / PRESSO, § 42).

In the present case, the term ‘MAX’ is placed in a central position in all the packaging, in much bigger font than all the other elements present on the packaging, including the word ‘WALKERS’; this latter is also separated from the sign ‘MAX’ by being placed on a yellow circular label with a red stripe. Consumers can therefore perceive the two as autonomous marks.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

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, the evidence submitted by the opponent is sufficient to prove 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.

1. The goods

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

Class 29: Potato crisps.

Class 30: Crisps of potato flour.

The contested goods are the following:

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; pulses, dried fruits, dried vegetables; potato snack foods; dried tropical and subtropical fruits, raisins, currants and pulses; fruit snacks; nuts of all kinds (processed); roasted, dried, salted, spiced and seasoned nuts; roasted almonds; roasted peanuts; pine nuts (processed); nut snacks, mixed nuts.

Class 30: Confections; Confectionery; The aforesaid goods other than edible ices and frozen cakes; Savoury biscuits and pretzels; Rice snacks, corn snacks, cereal snacks.

Class 31: Fresh fruit and vegetables, fresh tropical and subtropical fruits and pulses; almonds and nuts of all kinds, fresh or unprocessed, fresh peanuts, fresh pine nuts.

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 29

The contested potato snack foods, cooked vegetables overlap with the opponent’s potato crisps. Therefore the goods are identical.

The opponent’s potato crisps belong to the broader category of processed fruits, fungi and vegetables (including nuts and pulses). Therefore there is at least a low degree of similarity between the contested preserved, frozen, dried and cooked fruits, preserved, frozen, dried vegetables; pulses, dried fruits, dried vegetables; dried tropical and subtropical fruits, raisins, currants and pulses; fruit snacks; nuts of all kinds (processed); roasted, dried, salted, spiced and seasoned nuts; roasted almonds; roasted peanuts; pine nuts (processed); nut snacks, mixed nuts and the opponent’s potato crisps as they usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 30

The contested savoury biscuits and pretzels; rice snacks, corn snacks, cereal snacks and the opponent's potato crisps are similar. Although their nature is different as the earlier goods are made of potato flour and the contested ones of cereals, they have the same purpose of all being various kinds of snacks. They might be in competition, may be found in the same areas of supermarkets, have the same distribution channels and are normally produced by the same kinds of undertakings.

The contested confections; confectionery; the aforesaid goods other than edible ices and frozen cakes include sweet cereal preparations. They usually coincide in producer, relevant public and distribution channels with the opponent’s potato crisps. The goods are thus similar to a low degree.

Contested goods in Class 31

The contested fresh vegetables are similar to a low degree the opponent’s potato crisps, which are a kind of preserved vegetables. These goods are in competition, have the same distribution channels and points of sale, and target the same consumers.

The rest of the contested goods are, however, dissimilar to the goods of the earlier mark. They differ in nature, purpose, method of use. Fresh fruits are dissimilar because the nature of the primary ingredients (fruit vs vegetables) and the potential use are not the same; similar considerations apply to the contested fresh nuts and pulses. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kind of undertakings. Even though these contested goods may sometimes have the same points of sale or distribution channels as the opponent’s goods, this fact is not enough per se to consider them similar even to a low degree.

2. 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 to various degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs and distinctiveness of the earlier mark

MAX
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

It is considered that the element ‘MAX’, present in both signs, will most likely be perceived by the consumers only as a reference to ‘maximum, maximal’ (i.e. as a description of size) and not as the distinctive name ‘Max’, contrary to the opponent’s claim. The element ’MAX’ will thus be perceived as descriptive indication of the kind and size of the goods, respectively, and will, therefore, have a very limited degree of distinctiveness from the consumer’s point of view.

It must be acknowledged that a term which constitutes the only element of a national mark has some independent distinctive character (22/05/2012, C‑196/11 P, ‘Formula One Licensing’, EU:C:2012:314, § 47).

The Office has an obligation to verify the way in which the relevant public perceives a sign which is identical to a national trade mark in a mark which has been applied for and to evaluate, if necessary, the degree of distinctiveness of that sign. This assessment cannot culminate in a finding that that sign has no distinctive character, since such a finding would not be compatible with the coexistence of EU trade marks and national trade marks (07/05/2019, T‑152/18 to T‑155/18 ‘MULTIPLUS’, ECLI:EU:T:2019:294 § 47).

Therefore, the earlier mark has at least a very low degree of distinctiveness.

Nevertheless, as far as the verbal elements are concerned, the signs are on equal footing as regards their distinctive character because they fully coincide in their verbal element.

The contested sign has a standard upper case typeface. The two circles placed around this verbal element create the impression of a non-distinctive label. These figurative elements are not capable of impressing themselves on the consumer’s mind, since they are too simple and commonly used on packaging in connection with foodstuff.

Given the above considerations as regards the marks’ distinctive character, they are considered to be visually similar to at least an average degree.

The signs are aurally and conceptually identical.

4. Global assessment, other arguments and conclusion

The goods have been found partially identical, partially similar to various degrees and partially dissimilar.

The contested mark only differs from the earlier mark in non-distinctive elements and the earlier mark retains a distinctive character. Even if this distinctive character is very low, the contested marks’ differing elements are too simple and thus are not capable of impressing themselves on the consumers’ mind and thereby enabling them to differentiate between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark. This finding also applies to the goods found similar only to a low degree given that the earlier mark is entirely included in the contested one without any additional distinctive elements.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on European Union trade mark registration No 7 504 012 for the word mark ‘WALKERS MAX’.

This earlier mark contains a further element ‘WALKERS’, which is not present in the contested trade mark. This differing element has normal distinctiveness (in contrast with the coinciding term ‘MAX’) and is placed in the beginning of the earlier mark where it catches consumers’ attention first. Therefore, even if assuming that all the goods were to be found identical, and even for a public with average degree of attentiveness, the coincidence in the term ‘MAX’ with a very low degree of distinctiveness would not be sufficient to lead to a likelihood of confusion. Therefore, the opposition must be rejected as far as it is based on this earlier mark.

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.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part)], when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 15/03/2018 the opponent was given two months, commencing after the end of the cooling-off period and various extensions to submit the abovementioned material. This time limit expired on 11/07/2018.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence that could support the conclusion that the 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.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Aldo BLASI

Marianna KONDAS

Victoria DAFAUCE MENÉNDEZ

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.