OPPOSITION DIVISION




OPPOSITION No B 2 105 693


Kraft Foods Sverige Intellectual Property AB, c/o Kraft Foods Sverige AB, 194 86, Upplands Väsby, Sweden (opponent), represented by Zacco Sweden AB, Valhallavägen 117, 114 85, Stockholm, Sweden (professional representative)


a g a i n s t


Markant Services International GmbH, Hanns-Martin-Schleyer-Str. 2, 77656, Offenburg, Germany (applicant), represented by Weickmann & Weickmann Patent- und Rechtsanwälte PartmbB, Richard-Strauss-Str. 80, 81679, München, Germany (professional representative).


On 31/08/2018, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 105 693 is partially upheld, namely for the following contested goods:


Class 30: Cocoa, cereal preparations (except animal foodstuffs), including processed complete wheat, rye and oat grains for human consumption; wholemeal fruit muesli substantially consisting of wholemeal grains, cereals and dried fruits; pastry, and confectionery, also deep-frozen; cookies, chocolate and chocolate products, including dietetic nonmedical use; pralines, also with liquid filling, especially from wines and spirits; sugar products, especially chewing candies and chewing gums (not for medical use); almonds, wholemeal rusks, wholemeal bars for nibbing, substantially consisting of wholemeals grains and/or honey and/or cocoa and/or chocolate and/or nut and/or dried and/or processed fruits; edible ice; sweet spread for bread slices included in class 30, especially nut nougat cream; peanut cream for bread slices.


2. European Union trade mark application No 10 738 524 is rejected for all the above goods. It may proceed for the remaining goods.


3. Each party bears its own costs.



PRELIMINARY REMARK


As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.



REASONS


The opponent filed an opposition against some of the goods of European Union trade mark application No 10 738 524 for the word mark ‘Cuisine Noblesse’, namely against all the goods in Class 30. The opposition is based on Swedish trade mark registration No 194 909 for the word mark ‘NOBLESSE’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.



PROOF OF USE


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 the Swedish trade mark on which the opposition is based No 194 909 for the word mark ‘NOBLESSE’.


The contested application was published on 03/09/2012. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Sweden from 03/09/2007 to 02/09/2012 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 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and nutritional preparations made from corn; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (except salad dressings); Spices; Ice.


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 10/07/2017, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 15/09/2017 to submit evidence of use of the earlier trade mark. That time limit has been subsequently extended until 15/10/2017. On 13/10/2017, within the time limit, the opponent submitted evidence of use.


The evidence to be taken into account is the following:


  • Enclosure A - Invoices from 2004-2014 containing references to NOBLESSE APELSIN’, NOBLESSE MÖRK, NOBLESSE MINT, NOBLESSE ORIGINAL, NOBLESSE HIJARTAN and, as from 2011, - MARAB 150 G NOBLESSE ORIGINAL, MARAB 150 G NOBLESSE MÖRK, MARAB 150 G NOBLESSE APELSIN for chocolate products.

  • Enclosure B – An undated extract showing a value share of 8,2 % and volume share of 5,8% for 2007-2008 for the mark at issue; Extract of the ACNielsen report of 28/12/2014, according to which NOBLESSE was positioned as 4th praline brand in Sweden for 2012-2014 according to volume sales (in 1000 kilo); Extract of the Ipsos Connect report concerning brand awareness for pralines – it refers to ‘aided brand awareness’ of the mark at issue during the period 2013-2015 consisting on the question: ‘Here are some chocolate products: which of these chocolate products do you know, even if you only know them by name?’.

  • Enclosure C – An undated extract showing trade volumes in tones for 2004 – 2007. There is no indication of the origin of this evidence; An undated extract with the following reference: ‘Source: ACNielsen, DVH+SVH total, 2015 and 2016 in Sweden’. According to this material: NOBLESSE market share for praline – was at 7% in 2015 and 7.7% in 2016 and NOBLESSE market share for chocolate – 1.2% and 1.3%, respectively.

  • Enclosure D – A buying brief and the expenditure budget concerning a 2007 spring campaign for ‘NOBLESSE’ including the list of media together with two invoices from the Swedish company Starcom dated 23 and 31 May 2007.

  • Enclosure E – Samples of four advertisements for the ‘NOBLESSE’ chocolate product in the Swedish Magazines: Allas, Femina, Hemmets and Allers dated 14 June 2007, 7 July 2007, 14 June 2007, and 20 June 2007.

  • Enclosure F – Extracts from the opponent’s magazine ‘En god värld’ of Kraft Foods for 2005, 2007, 2008, 2009 showing packaging of confectionery products bearing NOBLESSE together with ‘MARABOU’ and pictures of stands bearing NOBLESSE; some pictures of product packaging with the reference to the years 2012, 2013, 2014 included by the opponent itself.

  • Enclosure G – Extract of Nielsen Market Trends 2010, Fast moving consumer goods in Sweden, showing the development of sales volume in 2009 for confectionary. NOBLESSE is mentioned on the third place in the category of ‘confectionery-manufacturers and brands-grocery trade’ and ‘confectionery-manufacturers and brands-service trade’.

  • Enclosure H – Extract of Nielsen Market Trends 2011, Fast moving consumer goods in Sweden, showing the development of sales volume during 2010 for confectionary. NOBLESSE is mentioned on the third place in the category of ‘confectionery-manufacturers and brands-service trade’.

  • Enclosure I – Extracts from the power point presentation of 08/04/2008 showing developments of value growth for NOBLESSE based on sales; it includes new design (since fall 2007) and examples of advertising in magazines in 2008;

  • Enclosure J – Extracts of the opponent’s magazine ‘En god värld’ for the period: 2009-2012 showing packaging of confectionery products bearing NOBLESSE together with ‘MARABOU’ and pictures of stands bearing NOBLESSE.



According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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. These requirements are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43) and the opponent must thus prove each of these requirements.


The documents, in particular the invoices and magazines, show that the place of use is Sweden. This can be inferred from the language of the documents and addresses included in the invoices. Therefore, the evidence relates to the relevant territory.


The relevant time period for proving use of the earlier mark is 03/09/2007 to 02/09/2012, inclusive. Part of the evidence submitted, in particular some invoices and advertisements in the magazines falls within this time-frame. Therefore, the evidence relates to the relevant time period.


The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.


In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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.


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 mark at issue is used in the figurative form together with the indication ‘MARABOU’. In this respect it must be noted, first of all, that it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.


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 (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 emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42). Since this is the case here, namely that the sign MARABOU is depicted in a different typeface and size, there is a clear separation between these two signs and it is evident that they are used in conjunction but are two independent marks.


Secondly, as regards the stylisation of the sign at issue, it must be noted that it does not alter the distinctive character of the sign as registered as to its essential function of identifying the commercial origin.

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.


However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.


According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.


In the present case, the evidence shows genuine use of the trade mark for the following goods: chocolate. The opposing mark is not registered for ‘chocolate’ in Class 30. However, it covers in this Class the general category for ‘pastry and confectionery’. This category of goods is sufficiently broad to identify within it a number of sub-categories capable of being viewed independently such as ‘chocolate’. Therefore, proof that the earlier mark has been put to genuine use in relation to ‘chocolate’ affords protection only for this sub-category of goods (judgement of 14 July 2005, T-126/03, ‘Aladin’, § 44 and 45). There is no evidence of use for the other registered goods. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for chocolate in Class 30.


Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.



LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR


A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.



  1. The goods


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


Class 30: Chocolate.


The contested goods are the following:


Class 30: Coffee, tea, cocoa, sugar, natural sweeteners, rice, tapioca, sago, artificial coffee, malt coffee, flour and cereal preparations (except animal foodstuffs), including processed complete wheat, rye and oat grains for human consumption; wholemeal fruit muesli substantially consisting of wholemeal grains, cereals and dried fruits; crushed linseeds, breadcrumbs, semolina; croutons; rice, pasta; semi-processed meals and ready-to-serve meals included in class 30, substantially consisting of rice, pasta, bread and /or bread products; bread, pastry, and confectionery, also deep-frozen; pizza, cookies, chocolate and chocolate products, including dietetic nonmedical use; pralines, also with liquid filling, especially from wines and spirits; sugar products, especially chewing candies and chewing gums (not for medical use); almonds, wholemeal rusks, wholemeal bars for nibbing, substantially consisting of wholemeals grains and/or honey and/or cocoa and/or chocolate and/or nut and/or dried and/or processed fruits; fruit slices consisting of fruit pastes, nut mark or almonds; wholemeal baking mixtures for bread and cakes; wheat bran for human consumption; natural sourdough; edible ice; honey, golden syrup; sweet spread for bread slices included in class 30, especially nut nougat cream; peanut cream for bread slices; rusks, baking powder; salt including sea salt and herb salt; pepper; mustard, vinegar, including fruit vinegar, sauces (condiments), salsas, ketchup, horseradish, mayonnaise, remoulade; fruit sauces, dessert sauces; spices, spice mixtures, spices for the kitchen (included in class 30), dried spices; malt for human consumption.


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.


An interpretation of the wording of the list of goods is required to determine the scope

of protection of these goods.


The terms ‘including’ and ‘especially’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).


Chocolate is identically contained in both lists of goods.


The contested chocolate products, including dietetic nonmedical use include, as a broader category the opponent’s chocolate. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.


The contested pralines, also with liquid filling, especially from wines and spirits are included in the broad category of, or overlap with, the opponent’s chocolate. Therefore, they are identical.


The contested sugar products, especially chewing candies and chewing gums (not for medical use) include, as a broader category of, or overlap with, the opponent’s chocolate. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.


The contested confectionery, also deep-frozen includes, as a broader category, the opponent’s chocolate. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.


The contested sweet spread for bread slices included in class 30, especially nut nougat cream; peanut cream for bread slices are highly similar to the opponent’s chocolate, which is broadly defined and can also cover chocolate in the form of paste. The goods have the same nature and method of use and serve the same purpose. In addition, they are interchangeable and can coincide in relevant public, producers and distribution channels.


The contested cocoa is similar to the opponent’s chocolate as they have the same nature. They usually coincide in producer, relevant public and distribution channels.


The contested cereal preparations (except animal foodstuffs), including processed complete wheat, rye and oat grains for human consumption; wholemeal fruit muesli substantially consisting of wholemeal grains, cereals and dried fruits; almonds, wholemeal rusks, wholemeal bars for nibbing, substantially consisting of wholemeals grains and/or honey and/or cocoa and/or chocolate and/or nut and/or dried and/or processed fruits are similar to the opponent’s chocolate as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore they are in competition.


The contested pastry, also deep-frozen (sweet items of food made of dough and fillings) and cookies, are normally eaten as sweet snacks or desserts, the same as the opponent’s chocolate. The goods compared thus have the same purpose of use, relevant public and distribution channels. Furthermore they are in competition. Consequently, they are similar.


The same considerations apply with regard to the contested edible ice which are also sweet foods eaten as a snack or dessert and which may often have a chocolate flavour. Compared to the opponent’s chocolate, they have the same purpose of use, relevant public and distribution channels. Furthermore they are in competition. Consequently, they are similar as well.


The remaining contested goods, namely Coffee, tea, sugar, natural sweeteners, rice, tapioca, sago, artificial coffee, malt coffee, flour; crushed linseeds, breadcrumbs, semolina; croutons; rice, pasta; semi-processed meals and ready-to-serve meals included in class 30, substantially consisting of rice, pasta, bread and /or bread products; bread, also deep-frozen; pizza; fruit slices consisting of fruit pastes, nut mark or almonds; wholemeal baking mixtures for bread and cakes; wheat bran for human consumption; natural sourdough; honey, golden syrup; rusks, baking powder; salt including sea salt and herb salt; pepper; mustard, vinegar, including fruit vinegar, sauces (condiments), salsas, ketchup, horseradish, mayonnaise, remoulade; fruit sauces, dessert sauces; spices, spice mixtures, spices for the kitchen (included in class 30), dried spices; malt for human consumption are dissimilar to the opponent’s chocolate. Even though they have the same nature of being foodstuffs, this does not make these goods similar. They serve different purposes, and are not complementary or in competition. In addition, the goods have different distribution channels. They can normally be found in different areas of supermarkets and are usually produced by different kind of undertakings.



  1. 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 will be average.



  1. The signs



NOBLESSE

Cuisine Noblesse


Earlier trade mark


Contested sign



The relevant territory is Sweden.


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).


Both signs are word marks, the earlier mark consisting of ‘NOBLESSE’ and the contested sign of two verbal elements, ‘Cuisine Noblesse’. Where both marks are registered as word marks, the typeface actually used is immaterial. Differences in the use of lower or upper case letters are irrelevant since it is the word as such which is protected.


The word ‘NOBLESSE’ included in both signs will be understood by the Swedish consumers as referring to the Swedish word ‘nobless’ that is translated in English as ‘nobility’ which means ‘the quality of being noble, in character, mind, birth or rank’. Therefore, the distinctiveness of the word ‘NOBLESSE’ is reduced because it will be perceived more as an allusion to the positive aspects or attractiveness of the goods at issue rather than as a badge of commercial origin.


The relevant consumer will understand the word ‘CUISINE’ of the contested sign to be a reference to ‘kitchen’ and the art of cooking, as this word is commonly used on the market in relation to foodstuffs (e.g. ‘nouvelle cuisine’). Therefore, in relation to the goods in Class 30, this term is weakly distinctive for all goods which are intended to be used in the kitchen or for cooking.


Visually and aurally, the signs coincide in ‘NOBLESSE’ that constitutes the entirety of the earlier mark and the second verbal element of the contested sign. This word has a reduced distinctive character. The signs differ in the beginning of the contested sign, namely ‘Cuisine’. This element has also a weak distinctive character.


Bearing all the considerations above, the signs are visually and aurally similar to an average degree.


Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of ‘NOBLESSE’, the signs are conceptually similar to an average degree, taking into account the above considerations about the distinctiveness of the elements of the signs.


As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.



  1. 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.


According to the opponent, the earlier trade mark has a reputation in Sweden in connection with Confectionery and especially chocolate products. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).


The opponent submitted the evidence that has already been listed above in the proof of use section.


Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.


The Opposition Division notes that the overview of the data concerning the Swedish trade volumes over the period 2004 to 2007 has no probative value. The status of this simple sheet with some text and figures remains unclear. It does not indicate the possible independent source from which the information was generated or, alternatively, it does not provide an explanation on how the figures were generated internally by the opponent itself. In that latter situation, in order to create a certain level of reliability, such figures should at least be certified by the relevant internal person who is in the position to confirm the accuracy of such figures. The same applies to the extract containing value share and volume share figures for the mark at issue for the period 2007-2009. It does not include any reference in order to assess its credibility.


The advertisements and the documentation relating to the advertising campaign during spring 2007 are insufficient to prove reputation or acquired distinctiveness. In this respect it should be noted that the intensity and the impact of the advertising campaign which apparently took place in spring 2007 remains unsubstantiated. The opponent did not submit figures illustrating the number of copies distributed, the frequency, the percentage of the target public reached through these media, the degree of exposure, or the number of hits. Thus, there is no conclusive information in order to assess the actual impact of this advertising. The information provided refers to a particular campaign and does not give further indications regarding the opponent’s advertising strategy.


With regard to the Ipsos Connect report concerning brand awareness, it should be noted that the probative value of opinion polls and market surveys is determined by, in particular, the relevance and the accuracy of the information it provides, and by the reliability of the applied method. More particularly, in evaluating the credibility of an opinion poll or market survey, the opponent needs to provide, among others, the following: (1) The number and profile (sex, age, occupation and background) of the interviewees, in order to evaluate whether the results of the survey are representative of the different kinds of potential consumers of the goods in question; (2) The method and circumstances under which the survey was carried out and the complete list of questions included in the questionnaire. It is also important to know how and in what order the questions were formulated, in order to ascertain whether the respondents were confronted with leading questions; (3) Whether the percentage reflected in the survey corresponds to the total amount of persons questioned or only to those who actually replied. The report includes information only as to the ‘aided brand awareness’ based on the following question: ‘Here are some chocolate products. Which of these chocolate products do you know, even if you only know them by name?’. No indications are given as to the level of ‘spontaneous recognition’ of the mark at issue. Since the above listed indications have not been provided, the report of Ipsos Connect is not sufficient to support a finding of reputation.


As regards the indications included in the Nielsen Market Trends for 2010-2011, since it does not include figures on sales in order to ascertain whether it corresponds to a substantial presence on the market or not, the information as to the position of the mark on its own is not particularly conclusive, especially considering the kind of goods, which are of relatively short durability. As for the ACNielsen report, it must be noted that the contested application was filed on 24/02/2012 and therefore the opponent should provide evidence of enhanced distinctiveness or reputation acquired before that date. This report includes information only for the year 2012 in abstract, until 2014. The evidence shows the figure for value sales for 2012 of 52.414 (in 1000 SEK). This figure on its own is not sufficient to conclude that the mark had acquired a reputation when the contested application was filed. This evidence is not coupled with sufficient indications of the overall performance of the mark in the market thus it does not make it possible to evaluate with certainty that prior to the filing date of the EUTM application the opponent’s mark was well-known over a long period of time. The extract submitted with the reference to ‘ACNielsen, DVH+SVH total, 2015 and 2016’ referring to the market share for the mark at issue, is clearly out of date and does not influence the above conclusions that the evidence does not prove that the mark at issue had acquired a reputation on the relevant date.


To sum up, the opponent failed to submit sufficient evidence to prove that the earlier mark obtained reputation or enhanced distinctiveness through intensive use on the market.


Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.



  1. Global assessment, other arguments and conclusion


Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.


The goods are partially identical, partially similar (to various degrees) and partially dissimilar.


The marks are visually, aurally and conceptually similar to an average. The distinctiveness of the earlier mark is low. The public’s degree of attentiveness is average.


The signs at issue have been found to be similar on account of the fact that the earlier mark is entirely included in the contested sign as its second independent verbal element. Overall, the differences between the signs are not sufficient to counteract the similarities arising from the identical word element ‘NOBLESSE’ as the first word of the contested sign, ‘CUISINE’, is weak. The consumer faced with the contested sign might be led to recognize it as a sub-brand of the earlier mark on account of the same relevant verbal element ‘NOBLESSE’ which will be clearly identified within the contested sign as an independent element. As a consequence, and notwithstanding the reduced distinctive character of ‘NOBLESSE’, it is reasonable to assume that the consumers would believe that the marks in question come from the same undertaking or, as the case may be, from economically-linked undertakings.


It must be recalled that, according to well-established case-law of the Courts, a trade mark must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking, which is responsible for their quality. Accordingly, the risk that the public might believe that the goods in question come from the same undertaking, or from economically-linked undertakings, constitutes a likelihood of confusion.


Considering all the above, there is a likelihood of confusion on the part of the public.


Therefore, the opposition is partly well founded on the basis of the opponent’s Swedish trade mark registration No 194 909. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.


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 Opposition Division will continue with the examination of the opposition under Article 8(5) 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.


  1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.


As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has reputation. Since it has not been established that the earlier trade mark has reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and 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. 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



Gueorgui IVANOV


Marzena MACIAK

Monika CISZEWSKA




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.


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