DECISION

of the First Board of Appeal

of 9 September 2016

In Case R 1282/2015-1

Markus Schneider
Gregor-Mendel-Straße 20 53115 Bonn Germany	Applicant / Appellant

represented by MICHALSKI HÜTTERMANN & PARTNER PATENTANWÄLTE MBB, Speditionsstraße 21, 40221 Düsseldorf, Germany

v

FRUTARIA SAT Nº 9413
Avenida Cesar Augusto, 3, 7ª planta 50004 Zaragoza Spain	Opponent / Respondent

represented by Pilar Azagra Sáez, Las Damas 17, Pral. Centro, 50008 Zaragoza, Spain

APPEAL relating to Opposition Proceedings No B 2 282 237 (European Union trade mark application No 11 987 419)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), C. Rusconi (Rapporteur) and Ph. von Kapff (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 16 July 2013, Markus Schneider (‘the applicant’) sought to register the figurative mark ‘frutania’ as represented hereunder

claiming the colour blue, for the following list of goods and services (‘the contested goods and services’):

Class 29 – Preserved vegetables; dried vegetables; Frozen vegetables; Preserved fruit; Desiccated fruits; Jams and Vegetable jams;

Class 31 – Fresh vegetables; Fresh fruit, In particular fresh pomes, in particular fresh apples and pears, fresh; Fresh herbs; Fresh nuts; Foodstuffs for animals; Living plants; Seeds; Flowers, natural;

Class 35 – Retailing and wholesaling, namely of vegetables, fruits, herbs, nuts, foodstuffs for animals, natural plants, seeds and natural flowers;

Class 39 – Transportation and storage; Packaging of goods, In particular packaging of fruits, vegetables, herbs; Nuts (fruits); Foodstuffs for animals, natural plants, seeds and natural flowers.

2. The application was published in the European Union Trade Marks Bulletin No 167/2013 of 4 September 2013.

3. On 28 November 2013, FRUTARIA SAT Nº 9413 (‘the opponent’) opposed the European trade mark application (‘EUTM application’) in respect of the contested goods and services on the grounds of a likelihood of confusion, according to Article 8(1)(b) EUTMR, with the following earlier rights:

1. European Union trade mark registration No 5 922 885 (fig.)

claiming the colour Green Pantone 363, filed on 22 May 2007 and registered on 27 April 2010 for the following goods and services:

Class 29 – Preserved, dried and cooked fruits, vegetables and pulses; meat, fish, poultry and game; meat extracts; jams and jellies; fruit sauces; eggs, milk and milk products; edible oils and fats;

Class 31 – Agricultural, horticultural and forestry products and grains; fresh fruits, pulses and garden produce; seeds, natural plants and flowers;

Class 35 – Commercial retailing, import, export, and sales promotion of agri-food products in general, in particular fresh or preserved fruits and vegetables; advertising; advertising material services (brochures, prospectuses, printed sheets, samples); commercial management assistance in relation to franchising; business management; commercial management assistance and consultancy and commercial and industrial management assistance and consultancy;

Class 39 – Warehousing, loading and unloading, packing and packaging, transport, delivery, distribution of agri-food products in general, and in particular, fresh or preserved fruit and vegetables.

2. Spanish trade mark registration No 2 656 471 (fig.)

claiming the colours dark green and light green, filed on 10 June 2005 and registered on 16 November 2005 for the following goods:

Class 31 – Fresh fruits.

4. On 17 July 2014, the applicant requested the opponent to furnish proof of use of its earlier Spanish trade mark during the five-year period preceding the EUTM application’s publication date, according to Article 43(2) EUTMR.

5. On 18 July 2014, the Office invited the opponent to provide proof of use of its earlier mark for all the goods and services on which the opposition was based.

6. The opponent submitted proof of use of the earlier mark pursuant to Article 43(2) EUTMR, namely invoices and pricelists with regard to sales of fruit to Spain, the United Kingdom, Ireland, the Netherlands and Sweden during the relevant period, 2008-2013.

7. The applicant argued that the opponent had not provided enough evidence to prove genuine use of its mark in relation to the contested goods and services, since, firstly, the word elements of the earlier sign as comprised in the invoices submitted were different, i.e. ‘Frutaria SAT 9413’; secondly, there was no evidence that the earlier sign was used in direct contact with the goods and services in question.

8. In response to the aforementioned observations, the opponent argued that the applicant’s comments had to be dismissed by the Office, since the two word elements of the sign, namely ‘Frutaria SAT 9413’ and ‘Frutaria’, were very similar to each other. As regards the proof of use of the sign in relation to the contested goods and services, the debit notes were considered to be sufficient alone to provide information about the earlier mark, in terms of extent of use, place of use and dates.

9. By decision dated 5 May 2015 (‘the contested decision’), the Opposition Division upheld the opposition in its entirety on the grounds of a likelihood of confusion on the part of the public, and ordered the applicant to bear the costs. Its arguments are as follows:

• The relevant public consists of the general public, whose level of attention is average;

• The contested goods and services are identical to the opponent’s goods and services;

• The conflicting signs are visually highly similar, since they share the same letter sequence, i.e. ‘fruta*ia’, and they differ only in their respective sixth letter, ‘r’ and ‘n’, and in their figurative elements;

• For the same reason, the two signs are also similar from a phonetic point of view, even more so since the differing letters are consonants that are placed in the same position in the marks;

• Conceptually, the signs are similar for that part of the public in the European Union who speak Romance languages, since both ‘Frutaria’ and ‘frutania’ will be perceived as a ‘grocery shop of fruits’. For the rest of the public, such as those who speak Slavic languages, the signs have no meaning;

• Although the word ‘Frutaria’ will be perceived as meaningful by part of the public in relation to the contested goods and services, this does not affect the distinctiveness of the sign as a whole;

• For the aforementioned reasons, there is a likelihood of confusion between the conflicting marks on the part of the public, pursuant to Article 8(1) EUTMR;

• In view of this, the distinctiveness of the earlier mark per se will be considered, for reasons of procedural economy, low without it being necessary to examine its enhanced degree of distinctiveness though use.

10. On 1 July 2015, the applicant filed an appeal against the contested decision and remitted the statement of grounds on 10 September 2015. It requests that the Board annul the contested decision and allow the registration of the application of the sign for all the requested goods and services, on the grounds of a lack of a likelihood of confusion. The arguments are as follows:

• The word ‘Frutaria’ is descriptive of the goods and services at issue for the relevant public. Therefore, it has to be disregarded when assessing the overall similarity between the two signs;

• From visual point of view, the conflicting signs are dissimilar, since the verbal element of the earlier sign is descriptive and the graphic elements of the marks differ significantly between them;

• Aurally, the two signs are also dissimilar, due to the different pronunciation of the consonants ‘n’, within the mark applied for, and ‘r’, within the earlier mark;

• Contrary to the Opposition Division’s finding, the signs are different conceptually. The opponent’s sign ‘Frutaria’ will be understood as a ‘grocery shop’ by the relevant public, since it comprises the typical ending ‘-ria’ that is used for all the places where consumers can buy their respective goods (i.e. pizzeria, cafeteria, etc.). Therefore, the earlier sign is meaningful, even for the Slavic-speaking consumer. In contrast, the contested sign ‘frutania’ will be perceived as a fanciful word, since the term ‘-nia’ has no clear meaning.

11. The decision was forwarded to the Opposition Division for consideration pursuant to Article 62 EUTMR and was remitted to the Board on 10 September 2015.

12. The opponent submitted its observations on 9 November 2015. The opponent requests that the Board dismiss the appeal and confirm the contested decision for the following reasons:

• The earlier mark has no meaning for large parts of the public, such as those that speak Slavic languages. Therefore, it is not descriptive;

• As regards the rest of the public, it is recalled that the sign ‘Frutaria’ has been registered before the Spanish Trade Mark Office. Therefore, the applicant’s argument that it will be perceived in the Spanish/French markets as ‘grocery shop’ is incorrect;

• But even if ‘Frutaria’ were to have a low degree of distinctiveness, this would imply that the contested sign ‘FRUTANIA’ has a low degree of distinctiveness as well;

• In any event, the two signs are visually, aurally and conceptually highly similar. Therefore, there is likelihood of confusion, pursuant to Article 8(1)(b) EUTMR.

13. On 26 January 2015, i.e. after the written proceedings had been closed, the applicant claimed that the Opposition Division had made a procedural error upholding the opposition without examining the opponent’s proof of use of its earlier marks and the applicant’s respective observations, since the evidence provided by the opponent did not show any use of its marks in relation to the contested goods and services, and in particular with respect to the goods in Classes 29 and 31.

Reasons

14. The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR. It is, therefore, admissible.

15. The Board considers it appropriate to annul the Opposition Division’s decision, since it upheld the opposition against the EUTM application without taking the proof of use of the opponent’s earlier mark and the applicant’s respective arguments into consideration. The reasons are analysed hereunder.

Preliminary remark – on the applicant’s request of proof of use of the opponent’s earlier mark (Article 43(2) EUMTR)

16. Article 75 EUTMR provides that decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments.

17. In the present case, the Opposition Division decided to uphold the opposition against the EUTM application without examining the preliminary issue regarding the proof of use of the opponent’s earlier mark as requested by the applicant, according to Article 43(2) EUTMR.

18. It is clear that this is a fundamental flaw in the handling of the opposition, since it violates the applicant’s right of due process where all the evidence is considered, pursuant to Article 75 EUTMR.

19. The Opposition Division was obliged to take all the evidence provided by the opponent and the applicant into account before deciding that there was a likelihood of confusion between the conflicting marks, pursuant to Article 75 EUTMR, since it could not have known, in any other way, whether or not the earlier mark had been put to genuine use in the relevant territory in connection with the goods and services at issue.

20. On 26 January 2015, the applicant filed its observations with respect to the Office’s procedural error, however, this was outside the time-limit given for the proceedings, i.e. 24 January 2015.

21. The Board finds that any observations filed after the expiry of the time-limit for the proceedings may not be taken into consideration, pursuant to Article 76(2) EUTMR.

22. However, a question of law with respect to a significant procedural error can be dealt with ex officio, according to Article 76(1) EUTMR. Therefore, although the applicant’s observations concerning the Opposition Division’s procedural error were filed after the due date had expired, the Board will annul the Opposition Division’s decision ex officio.

Further prosecution

23. According to Article 64(1) EUTMR, following the examination as to the admissibility of the appeal, the Board of Appeal shall decide on the appeal. It may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

24. Considering that the examination of the proof of use of an earlier mark in relation to the contested goods and services is a preliminary issue for the assessment of a likelihood of confusion, the Board deems it appropriate to remit the case to the Opposition Division for further prosecution.

25. The case has not been definitively decided on, since there is no decision as to the substance of the opposition. The decision reached by the Board is appealable with the definitive decision on the opposition.

Costs

26. Since at this stage of the proceedings there is no losing party, the Board deems it equitable, pursuant to Article 85(2) EUTMR, that each party bears its own costs for professional representation in the appeal proceedings.

27. In view of the substantial procedural violation that has been observed, it is appropriate to reimburse the appeal fee (Rule 51 CTMIR).

28. The final decision on the costs of the opposition proceedings falls within the competence of the Opposition Division following its assessment of the merits of the case.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Remits the case to the Opposition Division for further prosecution;

3. Orders each party to bear its own professional representation costs in the appeal proceedings;

4. Orders that the appeal fee be reimbursed.

Signed Th. M. Margellos

Signed C. Rusconi

Signed Ph. von Kapff

Registrar: Signed H.Dijkema