OPPOSITION No B 2 310 194

Ceralia Getreideprodukte GmbH, Edisonstraße 5, 84453, Mühldorf, Germany (opponent), represented by Grünecker Patent- Und Rechtsanwälte Partg MbB, Leopoldstr. 4, 80802, München, Germany (professional representative)

a g a i n s t

Home Focus Development Limited, Trustnet Chambers Limited, P.O.Box 3444, Road Town, Tortola, British Virgin Islands (applicant), represented by Francesc Cotoli, Dracco Candy S.L., Via Augusta 13-15, Oficina. 211, 08006 Barcelona, Spain (employee representative).

On 20/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 310 194 is partially upheld, namely for the following contested goods:

Class 30: Confectionery, namely sweets, drops, boiled sweets, lollipops of any kind, pastilles, wine gum, jellies, bubble gum, chewing gum, jelly beans, licorice, chocolate, marzipan, candy strips, liquid candy, candy gel, candy juice, marshmallows, candy foam, candy powder, biscuits, cakes, pastry.

2. European Union trade mark application No 12 142 311 is rejected for all the above goods. It may proceed for the remaining goods and services, namely all the goods and services applied for in Classes 9, 14, 16, 25, 28 and 41.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 142 311 ‘coralia’ (word mark). The opposition is based on European Union trade mark registration No 11 243 441 ‘Ceralia’ (word mark) and company name ‘Ceralia Getreideprodukte GmbH’ used in the course of trade of more than mere local significance in Germany. The opponent invoked Article 8(1)(b) and Article 8(4) EUTMR.

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.

The opponent argues that it is not very clear whether the representative of the applicant is an employee who can represent it. In this regards, the Opposition Division notes that according to the office’s records Mr. Cotoli is an employee of Dracco Candy S.L. and the applicant is a shareholder of this company. Employees of the legal persons may also act on behalf of other legal persons who have economic connections with the first legal person (decision of 25/01/2012, R 466/2011-4, FEMME LIBRE / FEMME et al., § 10). This applies even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial establishment within the EEA. Where a legal person from outside the EEA is represented in this way, it is not required to appoint a professional representative within the meaning of Article 120(1) EUTMR.

In its observations of 24/10/2014 the applicant mentions that the evidence provided by the opponent cannot show that its earlier mark ‘has been used or is being used on the goods and services in the past five years’. In this regard, the Opposition Division clarifies that according to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. The applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use and has not been treated as such. Furthermore, the request for proof of use would have been inadmissible, as the earlier mark has not been registered for at least five years at the date of filing of the contested trade mark as required by Article 47(2) EUTMR.

a) The goods and services

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

Class 29: Pumpkin seeds, Sunflower seeds, Almonds, ground; Potato purée; Vegetables, preserved.

Class 30: Coffee, tea, artificial coffee; Rice, tapioca and sago; Popped popcorn, Corn (milled), Rye meal, Bulgur wheat, Couscous (semolina), Rice semolina, Polenta; Soya granules, Soya flakes, Sliced soya, crunchies (cereal preparations), Muesli, wheat bran, Com flakes, Flour and preparations made from cereals; Rice flakes, rye flakes, Cornflakes, millet flakes, Oat flakes, Amaranth flakes, quinoa flakes, Chips [cereal products], Spelt flakes, Green spelt flakes; Puffed wheat, puffed spelt, puffed rice; Psyllium husks; Buckwheat groats, buckwheat flakes, Wheat germ, Buckwheat pancakes; Baking mixes, puddings in powdered form, semolina pudding, vegetarian ready meals and/or semi-prepared meals, namely rissoles, risotto, millet pancakes; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; All the aforesaid products being for human consumption.

Class 31: Rye, Oats, Barley, Spelt, Unripe spelt grains, Corn on the cob, Oil seeds, Namely poppy seeds, Sesame, Linseed; Grains [cereals]; Hazelnuts; Nuts [fruits]; buckwheat; Durum wheat; Millet, Amaranth, quinoa; Beans, peas, green lentils, being fresh vegetables.

Class 35: Retailing, wholesaling, mail order retailing and wholesaling, retailing/wholesaling via the Internet, retailing and wholesaling by means of teleshopping programmes, all the aforesaid services relating to coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, popcorn, corn (milled), rye meal, bulgur, couscous (semolina), rice semolina, polenta, soya granules, soya flakes, sliced soya, crunchies (cereal preparations), muesli, bran, cornflakes, flour and preparations made from cereals, rice flakes, rye flakes, maize flakes, millet flakes, oat flakes, amaranth flakes, quinoa flakes, chips (cereal products), spelt flakes, green spelt flakes; Puffed wheat, puffed spelt, puffed chocolate, puffed rice; Psyllium husks; Buckwheat groats, buckwheat flakes, wheatgerm, buckwheat pancakes; Baking mixes, puddings in powdered form, semolina pudding, vegetarian ready meals and/or semi-prepared meals, namely rissoles, risotto, millet pancakes, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, all the aforesaid goods being for human consumption, pumpkin seeds, sunflower seeds, ground almonds, mashed potatoes, rye, oats, barley, spelt, unripe spelt grains, oil seeds, namely poppy seeds, sesame seeds, linseed, grains (cereals), hazelnuts, nuts (fruits), buckwheat, durum wheat, millet, amaranth, quinoa, beans, peas, green lentils, being fresh vegetables; Professional business consultancy in the procurement of raw materials.

Class 39: Transport; Packaging and storage of goods; Bottling agricultural products, including in processed form.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer application software for mobile phones, namely, software for entertainment; video game software for mobile devices, personal computers, consoles, tablets; electronic game programs; downloadable computer game programs; interactive game programs; interactive game software; downloadable mobile phone games and applications.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 16: Writing utensils and materials, namely pencils and pencil sharpeners, ballpens, brushes, markers, chalk, staplers, hole punchers, rulers and other accessories for writing and drawing, and other cardboard and paper articles, namely but not limited to albums, boxes of paper and cardboard, writing pads, writing blocks, notebooks, booklets, wrapping paper, greeting cards, trading cards, labels, stickers and other cardboard and paper articles for among other office and school purposes.

Class 25: Clothing and footwear, namely but not limited to footwear of all kinds, jackets, coats, shirts, blouses, T-shirts, socks, shorts, scarves, underwear, sports wear, headgear of all kinds including caps.

Class 28: Games and toys, namely board games, card games, action type target games, and parlour games; beanbags; toy building blocks; cardboard and plastic caps for toy guns, holders for caps, and cap guns; mechanical action toys; kites; electric action figures with lights and sounds; collectible items namely action figures, plastic toy figurines in various sizes, toy finger rings, yo-yo's, spin tops, plastic toys, toys incorporating magnets; plush toys and flying discs; glass ornaments and decorations for Christmas trees; costume masks; stuffed toy animals in various sizes; equipment sold as a unit for playing card games; game boards for trading card games; toy stamps with figures; toy and water pistols, guns, and cannons; dolls and baby dolls; balloons; bathtub toys; skateboards, ice skates, roller skates, and inline skates; surf boards and swim boards; balls, namely, footballs and handballs; electronic toys; jigsaw puzzles.

Class 30: Confectionery, namely sweets, drops, boiled sweets, lollipops of any kind, pastilles, wine gum, jellies, bubble gum, chewing gum, jelly beans, licorice, chocolate, marzipan, candy strips, liquid candy, candy gel, candy juice, marshmallows, candy foam, candy powder, biscuits, cakes, pastry.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities, includes electronic games services provided by means of the Internet, mobile phones, mobile devices; Provision of downloadable games for Internet, mobile phones, mobile devices; the provision of on-line electronic publications and digital music from the Internet, mobile phones and mobile devices.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘including’ used in the applicant’s list of goods and services, indicates that the specific goods and services 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). However, the term ‘namely’, used in the applicant’s and opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 and services in Classes 9, 14, 16, 25, 28 and 41

The contested goods in Classes 9, 14, 16, 25 and 28 cover various technological goods, electronic and electric apparatus and instruments, jewellery and precious metals, horological instruments, stationery and similar utensils, paper and cardboard articles, clothing, footwear, toys, games and gymnastic and sporting articles, etc. The contested services in Class 41 include education, training, entertainment, sporting and cultural activities. On the other hand, the opponent’s goods in Classes 29, 30 and 31 are foodstuffs and agricultural products. The opponent’s services in Class 35 cover retail and wholesale services of various foodstuffs and business consultancy. The opponent’s services in Class 39 cover transport, storing, bottling and packaging services. The applicant’s contested goods and services in Classes 9, 14, 16, 25, 28 and 41 are clearly dissimilar to all the opponent’s goods and services in Classes 29, 30, 31, 35 and 39. These sets of goods and services have no relevant points of contact that could justify finding a level of similarity between them. They differ in nature, purpose and method of use. They do not have the same producers or distribution channels and are neither in competition, nor complementary.

For example, the opponent’s retail services relate to foodstuffs, i.e. goods that are clearly different from the contested goods. The opponent’s transport services are not considered similar to the contested goods in Classes 9, 14, 16, 25 and 28. Transport services in Class 39 refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Similar considerations apply to the opponent’s packaging and storage services (services whereby a company’s merchandise is packed and kept in a particular place for a fee) in Class 39. Those services are not similar to the contested goods which could be packed or stored, as the nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels, and are not in competition. Therefore, these services are not similar.

Contested goods in Class 30

The contested Confectionery, namely sweets, drops, boiled sweets, lollipops of any kind, pastilles, wine gum, jellies, bubble gum, chewing gum, jelly beans, licorice, chocolate, marzipan, candy strips, liquid candy, candy gel, candy juice, marshmallows, candy foam, candy powder, biscuits, cakes, pastry are identical to the opponent’s pastry and confectionery, either because they are identically contained in both lists or because the applicant’s goods are included in, or overlap with, the opponent’s goods.

b) 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 are directed at the public at large. In view of the nature of these goods, as well as the fact that some are relatively inexpensive and mass consumption goods, it is considered that the level of attention of the relevant public may vary from low to average.

c) The signs

Ceralia	coralia
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 marks are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lowercase characters. Furthermore, for the same reasons, the marks have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

Neither the element ‘ceralia’ of the earlier mark nor ‘coralia’ of the contested sign has any meaning for the relevant public and are, therefore, inherently distinctive in relation to the relevant goods.

Visually and aurally, the signs coincide nearly in their entirety. They coincide in six letters, out of seven. They only differ in their second letter/vowel, namely ‘e’ in the earlier mark vs. ‘o’ in the contested sign. Bearing in mind that the signs have the same length and that the coincidences are in six letters in the same sequence, it is considered that the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity 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.

d) 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

In the present case, the contested goods and services are partly identical and, partly dissimilar to the opponent’s goods and services. The relevant goods are directed at the public at large and the level of attention varies from low to average.

The signs are visually and aurally similar to a high degree. They are conceptually neutral, as the conceptual aspect does not influence the assessment of the similarity of the signs.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In view of the foregoing and taking into account all the relevant circumstances of the case, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes, that there is a likelihood of confusion on the part of the relevant public.

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 European Union trade mark registration No 11 243 441.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods and services 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 and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non requirement for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opposition is based on a company name, namely ‘Ceralia Getreideprodukte GmbH’, used within the course of trade in Germany in relation to goods and services in Classes 29, 30, 31, 35 and 39 (the same goods and services as those covered by the opponent’s EUTM, listed above).

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) The right under the applicable law

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

According to Rule 19(2)(d) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (Article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely a company name. Apart from referring to some legal provisions (namely § 5, § 5(2) and § 15(2) of the German Trade Mark Act) within its observations, the opponent did not submit the content (text) of these provisions, including in the original language. Therefore, it is considered that the opponent failed to submit the necessary information so as to allow the Opposition Division to determine the content of the rights invoked and/or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws of Germany.

Given that at least one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition is not well founded under Article 8(4) EUTMR.

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 and services, 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

Liliya YORDANOVA

Jakub MROZOWSKI

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.