OPPOSITION No B 2 087 529

SFXE International Holdings C.V., 190 Elgin Avenue, George Town, Grand Cayman, KY1-9005, Cayman Islands (opponent), represented by Reed Smith LLP, Von-der-Tann-Straße 2, 80539 München, Germany (professional representative)

a g a i n s t

Natural One S.A., Avenida Presidente Juscelino Kubitscheck, Nº. 1726, Conjunto 91 Sala B, São Paulo, Brasil (applicant), represented by J. Pereira da Cruz S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative).

On 08/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 087 529 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 030 616. The opposition is based on European Union trade mark registration No 1 705 938, German trade mark registration No 30 421 765 and German trade mark application No 302 012 028 138. The opponent invoked Article 8(1)(b) EUTMR.

1)

EU No 1 705 938 2) DE No 3 0421 765 3) NATURE ONE DE No 302 012 028 138
Earlier trade marks	Contested sign

On 24/07/2014 the Opposition Division rendered a decision which resulted in the rejection of the opposition on the grounds that there was no likelihood of confusion because the goods and services were dissimilar.

The decision was appealed and the Board of Appeal decided in case R 2436/2014‑5 on 27/11/2015. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered it was not possible to identify the reasons why it was concluded that the genuine use was proven for certain services and not for the remaining goods and services on which the opponent relied.

PRELIMINARY REMARKS

For the sake of completeness it should be noted that the European Union trade mark No 8 419 343 mentioned by the opponent in its observations filed on 24/04/2013 cannot be taken into account as basis of the opposition as it was invoked after the expiration of the three-months opposition period.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a trade mark which is not yet registered, the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) - Rule 19(2)(a)(i) EUTMIR.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier German trade mark registration No 30 421 765 and German trade mark application No 302 012 028 138 on which the opposition is based.

On 19/12/2012 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 24/04/2013.

The opponent submitted the required evidence on 28/10/2013, that is, only after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

The Opposition Division will continue the examination of the opposition in relation to earlier European Union trade mark No 1 705 938.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the European Union trade mark No 1 705 938 on which, inter alia, the opposition is based.

The request was filed in due time and it is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 12/09/2012. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union during the period of 12/09/2007 to 11/09/2012 inclusive. Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, compact discs.

Class 25: Articles of clothing and headgear.

Class 32: Juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

Class 35: Advertising; business management services; business administration; office functions.

Class 41: Musical performances; musical events with DJs (disc jockeys), bands, etc.; events involving electronic music in the form of festivals, concerts, club-parties, events in halls and other locations; conducting the aforesaid events, including the planning, conceptualising and implementation thereof, for one's own account or for others.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 11/07/2013, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/09/2013 to submit evidence of use of the earlier trade mark. On 20/08/2013 the opponent was given an extension of the time limit to file the requested proof of use until 11/11/2013. On 22/10/2013, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Enclosure 3: Copy of an excerpt from a musical festival guide within ‘Lifestyle magazine 2009’ bearing reference to the mark ‘NATURE ONE’.

• Enclosure 4: Copy of an excerpt from the information overview brochure of ‘Nature One 2009’ showing the mark ‘NATURE ONE’ in relation with some musical events.

• Enclosure 5: Copy of a screen shot from ‘Nature One’ homepage listing some bands and DJs.

• Enclosure 6: Copy of a double page excerpt from ‘Nature One Brochure 2013’ listing Clubs in attendance.

• Enclosure 7: Copy of a double page excerpt from ‘Nature One Brochure concerning musical events’ and not dated.

• Enclosure 8: Copy of a double page excerpt from ‘Nature Information Handout’ bearing a reference to the mark ‘NATURE ONE’ in relation with musical festivals.

• Enclosure 9: Copy of an excerpt from ‘Nature One Brochure 2012’ bearing a reference to the mark ‘NATURE ONE’ in relation with musical events.

• Enclosure 10: Copy of an excerpt from the information overview brochure of Nature One 2009 bearing a reference to the mark ‘NATURE ONE’ in relation with musical events.

• Enclosure 11: Copy of a ticket excerpt from ‘Nature One’ Brochure detailing Nature One booking offices.

• Enclosure 12: Copies of two excerpts from ‘Nature One Brochure 2011’ advertising beer.

• Enclosure 13: Copy of TV broadcasts in Germany for July and August 2013.

• Enclosure 14: Copy of musical TV Broadcasts for ‘Eventspot Nature One’ for July and August 2013.

• Enclosure 15: Copy of musical radio broadcasts for July and August 2013 making a reference to ‘Nature One’ mark.

• Enclosure 16: Photocopy of the centrefold from the Nature One 2013 Party Guide displaying a map of the Nature One event and the layout of the floors and the facilities available.

• Enclosure 17: Copy of three photographs of a bottle of water bearing the mark ‘NATURE ONE’. The photographs are not dated.

• Enclosure 18: Copy of an excerpt from ‘Nature One Brochure’ featuring merchandise clothes and headgear. The excerpt is not dated.

• Enclosure 19: Copies of some print outs from the opponent’s website featuring merchandise clothes and headgears. The printouts are dated 02/09/2013.

• Enclosure 20: Copy of a photograph of the reverse side of two music compilation CDs. The document does not bear any reference to the earlier mark and is not dated although according to the opponent refer to the period from 2011 to 2012.

• Enclosure 21: Copies of sale figures for CDs from 01/07/2012 to 31/12/2012 and bearing a reference to ‘NATURE ONE’ in relation to music CDs.

• Enclosure 21: Copies of two invoices issued to clients located in German. The invoices are dated 2013 and do not bear any reference to the earlier mark.

• Enclosure 22: Copies of two excerpts from the Nature One Brochure showing some accessories bearing the mark ‘NATURE ONE’. The excerpts are not dated.

• Enclosure 23: Copy of a print out from the opponent’s web site showing two bags bearing the mark ‘NATURE ONE’. The print out is dated 27/08/2013.

• Enclosure 24: Copy of a print out from the opponent’s website showing a bag.

• Enclosure 25: Copy of a print out from the opponent’s website showing a key chain.

• Enclosure 26: Copy of a page from the ‘Nature One Brochure 2013’ detailing three key chains and copy of a photograph of a key chain from the opponent’s web site.

• Enclosure 27: Copies of photographs of shower gel bearing the mark ‘NATURE ONE’.

• Enclosure 28: Copy of one invoice for a shower gel purchase order.

• Enclosure 29: Copy of an extract from the 2011 Nature One Brochure detailing a shower gel.

The abovementioned materials are in German together with the English translation thereof.

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, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (11.03.2003, C-40/01, Minimax, EU:C:2003:145, § 43).

Class 9

In the present case, it is considered that the evidence show sufficient use of the earlier mark for pre-recorded compact disks.

The sale figures for CDs are dated in the relevant period. Therefore, they provide sufficient indication about the time of use. Furthermore, show that the place of use is Germany and Austria. This can be inferred from the language of the documents, German, and from the indication of the relevant country, Austria and Germany are expressly indicated. Therefore, it is considered that the evidence provides sufficient indications about the place of use.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The sale figures show a total amount of sales of about 3,000 Euros.

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

Use of the mark need not be quantitatively significant for it to be deemed genuine.

Therefore, the Opposition Division considers that, although the amount of sales is not particularly high, the use has been rather regular over the relevant period and the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

Article 15 EUTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark.

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (judgment of 23/02/2006, T-194/03, EU:T:2006:65, § 50).

The General Court (the ‘GC’) further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

The extracts and the photographs show that the mark is used as registered. The sale figures show the verbal mark ‘NATURE ONE’. It is considered that the omission of the stylisation and the figurative element does not change the distinctive character of the sign as the stylisation is merely ornamental and the device element is in a secondary position in comparison with the verbal element.

Additionally, in accordance with Article 15 EUTMR, the mark must be used for the goods or services for which it is registered in order to be enforceable. In accordance with the first sentence of Article 42(2) EUTMR, the earlier registered mark must have been put to genuine use in connection with the goods or services in respect of which it is registered and which the opponent cites as justification for its opposition. The third sentence of Article 42(2) EUTMR stipulates that if the earlier trade mark has been used for part only 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 for only that part of the goods or services.

As mentioned above, the evidence shows that the earlier mark is used for pre-recorded compact disks.

Therefore, it is considered that the evidence satisfies the requirement of the nature of use.

Class 25

The opponent contends that the merchandise excerpt from ‘Nature One Brochure’ featuring merchandise clothes and headgear (Enclosure 18) and the print outs from ‘Nature One’ homepage (Enclosure 19) show that the earlier mark has been used for goods in Class 25.

In that respect, it has to be noted that the mere use of the mark on promotional material cannot normally be considered as sufficient (indirect) evidence of use within the meaning of trade mark law for the type of promotional items on which the mark is or has been used. Additionally, it has to be noted that, in any case, these documents do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The remaining evidence does not contain any reference to goods in Class 25.

Therefore, it is considered that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time for goods in Class 25.

Class 32

The opponent contends that the three photographs of a bottle of water bearing the mark (Enclosure 17) show that the earlier mark has been used for goods in Class 32.

However, these documents provide no information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Additionally, the remaining evidence does not contain any reference to goods in Class 32.

Therefore, it is considered that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant during the relevant period of time for goods in Class 32.

Class 33

The opponent contends that the photocopy of the centrefold from the Nature One 2013 Party Guide (Enclosure 16) show that the earlier mark has been used for goods in Class 33 as in the centre of the event there is the ‘Drink and Food Village’ in which alcoholic drinks are supplied to attendees.

The Opposition Division considers that this evidence provides no information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Additionally, the remaining evidence does not contain any reference to goods in Class 33.

Therefore, it is considered that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant during the relevant period of time for goods in Class 33.

Class 35

The opponent contends that the excerpt from the 2013 brochure advertising tickets for 2013 Nature One event (Enclosure 11), the two excerpts from Nature One brochure 2011 advertising a beer (Enclosure 12), the photocopy of the TV broadcasts for 07-08/2013 (Enclosure 13 and Enclosure 14) and the photocopy of Radio broadcasts for 07-08/2013 (Enclosure 15) prove the use of the earlier mark for services in Class 35.

It should be noted that Enclosures 11, 13, 14 and 15 are dated outside the relevant period. Additionally, this evidence only show that the Musical Event ‘Nature One’ has been broadcasted and advertised on media and not that the opponent provided advertising services under the earlier mark.

Insofar the two excerpts from the Nature One brochure 2011 advertising a beer (Enclosure 12) it should be noted that it does not provide any information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Additionally, this except comes from the opponent itself and is not supported by any independent evidence.

The remaining documents do not provide any reference to the services in Class 35.

Therefore, it is considered that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant during the relevant period of time for services in Class 35.

Class 41

The evidence as a whole shows that the earlier mark is used in relation to musical performances and events.

It has to be noted that the use in relation to services will generally be on business papers, in advertising or in some other way directly or indirectly related to the services. Where the use on such items demonstrates genuine use, such use will be sufficient.

The documents show that the place of use is Germany. This can be inferred from the language of the documents and some addresses in Germany.

As the Court indicated in ‘Leno Merken’, it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (paragraph 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (paragraph 58). For example, a Board of Appeal decision (decision of 07/03/2013, R 0234/2012-2, NOW, confirmed by the judgment of 30/01/2015, T-278/13, now, EU:T:2015:57).

When the earlier mark is a European Union mark, it must be used ‘in the European Union’. Therefore, it is considered that the evidence relates to the relevant territory.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

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

Under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (judgment of 08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

The evidence as a whole indicates that the earlier mark is used in relation to a music festival that takes place in Germany. That supports the conclusion, in the context of a global assessment of whether the use to which the earlier mark was put was genuine, that the extent of its use was fairly significant taking into account in particular the fact that the festival appears to be a quite successful one. In that regard, it must also be remembered that the purpose of the requirement for genuine use of the earlier mark is not to assess commercial success of the undertaking in question.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

As regards to the time of use it has to be noted that some documents are dated within the relevant period, some are not dated and some others are dated outside the relevant time frame.

Evidence referring to use made outside the relevant time frame is in general immaterial, unless it constitutes conclusive indirect proof that the mark must have been put to genuine use also during the relevant time. The Court held in this context that circumstances subsequent to the relevant point of time may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (order of 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31).

In the present case, the evidence dated outside the relevant period corroborate and are in support of evidence dated within the relevant period. Therefore, it is considered that the evidence as a whole provide sufficient indications about the time of use.

Furthermore, the evidence shows that the earlier mark is used as registered.

Conclusion

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

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

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following services:

Class 41: Musical performances; musical events with DJs (disc jockeys), bands, etc.; events involving electronic music in the form of festivals, concerts, club-parties, events in halls and other locations; conducting the aforesaid events, including the planning, conceptualising and implementation thereof, for one's own account or for others.

Additionally, according to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use for pre-recorded compact disks. These goods can be considered to form an objective subcategory of compact disks, namely pre-recorded compact disks. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for pre-recorded compact disks.

However, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time for the remaining goods and services in Classes 9, 25, 32, 33 and 35.

Therefore, the Opposition Division will only consider the abovementioned goods and services 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 and services

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

Class 9: Pre-recorded compact discs.

Class 41: Musical performances; musical events with DJs (disc jockeys), bands, etc.; events involving electronic music in the form of festivals, concerts, club-parties, events in halls and other locations; conducting the aforesaid events, including the planning, conceptualising and implementation thereof, for one's own account or for others.

The contested goods and services are the following:

Class 29: Fruit jellies; fruit pulp; frozen fruits; cooked fruit; cooked fruits and vegetables; Yoghurt; Fruit chips; Apple purée; Soups; Soup preparations; Preserved, dried and cooked fruits and vegetables.

Class 30: Tea-based beverages; Tea; Sorbets; Frozen yoghurts.

Class 32: Non-alcoholic drinks; Fruit juices; Fruit and vegetable juice beverages; Sherbet beverages; Fruit and vegetable pulp beverages.

Class 33: Alcoholic beverages (except beers); Alcoholic beverages containing fruit.

Class 35: Advertising, promotion and marketing of non-alcoholic drinks and alcoholic beverages (caipirinhas and other alcoholic beverages);Import-export of non-alcoholic drinks and alcoholic beverages (caipirinhas and other alcoholic beverages); Retailing of machines; Administration of business affairs of franchises.

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 fruit jellies; fruit pulp; frozen fruits; cooked fruit; cooked fruits and vegetables; yoghurt; fruit chips; apple purée; soups; soup preparations; preserved, dried and cooked fruits and vegetables are foodstuffs. They are dissimilar to the opponent’s goods and services in Classes 9 and 41. They have a fundamentally different nature, purpose and method of use. Furthermore, they have different relevant public and distribution channels, are provided by different undertakings and they are neither complementary nor in competition.

Contested goods in Class 30

The contested tea-based beverages; tea; sorbets; frozen yoghurts are dissimilar to the opponent’s goods and services in Classes 9 and 41. The nature and purpose of these goods and services are very different. Furthermore, they differ in their pertinent distribution channels, origin and targeted consumers, and are neither complementary to nor in competition with each other.

Contested goods in Class 32

The contested non-alcoholic drinks; fruit juices; Fruit and vegetable juice beverages; Sherbet beverages; fruit and vegetable pulp beverages are dissimilar to the opponent’s goods and services in Classes 9 and 41. They have a different nature, purpose and method of use. Furthermore, they differ in relevant public, distribution channels and commercial origin, and are neither complementary to nor in competition with each other.

Contested goods in Class 33

The contested alcoholic beverages (except beers); alcoholic beverages containing fruit are dissimilar to the opponent’s goods and services in Classes 9 and 41. The nature, purpose and method of use are different. Furthermore, they differ in distribution channels, relevant public, commercial origin, and they are neither complementary to nor in competition with each other.

Contested services in Class 35

The contested advertising, promotion and marketing of non-alcoholic drinks and alcoholic beverages (caipirinhas and other alcoholic beverages); Import-export of non-alcoholic drinks and alcoholic beverages (caipirinhas and other alcoholic beverages); retailing of machines; administration of business affairs of franchises are dissimilar to the opponent’s goods and services in Classes 9 and 41. The nature and purpose are different. Furthermore, they differ in distribution channels, relevant public, commercial origin, and they are neither complementary to nor in competition with each other.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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

Pedro JURADO MONTEJANO

Francesca CANGERI SERRANO

Gueorgui IVANOV

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal shall be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.