OPPOSITION No B 2 317 041
DF World of Spices GmbH, Industriestr. 25, 49201 Dissen, Germany (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft MBB, Hollerallee 73, 28209 Bremen, Germany (professional representative)
a g a i n s t
Lain Fung Foods Ltd, Rm 1703, 17/F., Citicrop Centre 18 Whitfield, Causeway Bay, Hong Kong, Special Administrative Region of the People’s Republic of China (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London, EC2N 2DG, United Kingdom (professional representative)
On 07/12/2016, the Opposition Division takes the following
Class 29: Meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; milk products; edible oils and fats.
Class 30: Rice; preparations made from cereals, bread, pastry and confectionery, salt, mustard; vinegar, sauces (condiments); spices; fruit sauces.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods of European Union
trade mark application No
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 trade marks on which the opposition is based, namely German trade mark registration No 396 13 314 and international trade mark registration No 932 692 designating, inter alia, the European Union.
The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.
The contested application was published on 21/11/2013. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Germany and in the European Union from 21/11/2008 to 20/11/2013 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:
German trade mark registration No 396 13 314
Classes 5, 29, 30, 31, 32, 33: Sugar, flour, ice cream, honey, treacle, sauces (including salad dressings), spices, coffee made from grains, teas, herbal teas; snack products, mainly consisting of either grain, vegetables, including soybeans, fruits, nuts or seeds; bread, bakery and confectionery; sugar confectionery, chocolate and chocolate products; cereal products for human consumption, particularly buckwheat, millet, barley and oats; yeast; yeast products for human consumption, for medical and dietary purposes; baking powder; pasta products, particularly wheat noodles; rice, flaxseed and bran for human consumption, bran products for human consumption, namely bran tablets, bran bread, bran pastries and bran bars; sesame seeds for human consumption; prepared nuts; sea salt for edible purposes; mustard, vinegar, especially apple cider vinegar; soy products, namely canned soybeans seedlings (Lunia) for human consumption, soy rolls, soy croquettes, soft soy beverages, soy puddings, soy ice cream, soy preserves, frozen ready meals, mainly consisting of soybean and fish and/or meat and/or vegetables and/or cereals and/or Pasta and/or legumes and/or rice and/or potatoes, including soy sausages, soy meatballs and soy stew; food as a meat substitute for vegetarians mainly produced by using soy flour, namely soy meatballs, soy sausages, soy balls of meat, soy patties and soy stew; muesli, mainly consisting of cereals, dried fruits, nuts, sugar, honey and/or chocolate; edible oils and fats (except margarine); preserved, dried and cooked fruits and vegetables, including canned soybeans; vegetable stock cubes; jams; spreads, essentially consisting of prepared cereal, legumes, nuts, fruits, seeds, honey, nougat and/or chocolate; eggs, milk, dairy products, namely butter, cheese, cream, yogurt, powdered milk for consumption; alcoholic-free beverages, including caffeine-free beverages; fruit juices, vegetable juices for cooking and as a beverage; mineral and other aerated waters; non-alcoholic beer, wine, yeast, garlic, vitamins, pollen and minerals in tablet or capsule form for food, medical and dietary purposes; fresh meat, fresh fish, fresh poultry and fresh game, meat, fish, poultry and game preserves; fresh fruit and vegetables; beer, alcoholic beverages except beer.
International trade mark registration No 932 692
Class 5: Brewer's yeast, garlic, vitamins, flower pollen and minerals in compressed tablets respectively in capsule form for medical and dietetic purposes; herbal teas; yeast-based preparations for human consumption, for medical and dietetic purposes.
Class 29: Snack products, in particular, according to preference, consisting of vegetables, including soybean seeds, fruits, nuts or seeds; prepared nuts; soy products, namely preserved soybean seeds for human consumption, soy croquettes; canned soy, deep-frozen prepared dishes, essentially consisting of soybean seeds and fish and/or meat and/or vegetables and/or pulses and/or potatoes; edible oils and fats (excluding margarine); preserved, dried and cooked fruit and vegetables, including canned soybean seeds; jams; eggs, milk, dairy products, namely butter, cheese, cream, yogurt, powdered milk for food; vegetable juices for cooking; fresh meat, fresh fish, fresh poultry and fresh game, canned meat, fish, poultry and game; garlic, flower pollen for food; snack products, in particular, according to preference, consisting of vegetables, including soybean seeds, fruits, nuts or seeds; canned soy; deep-frozen prepared dishes, essentially consisting of soybean seeds and fish and/or meat and/or vegetables and/or pulses and/or potatoes; dried fruits, nuts; dried vegetable stock; preparations for spreading, essentially consisting of prepared cereals, pulses, nuts, fruits, seeds, honey, nougat and/or chocolate.
Class 30: Sugar, flour, edible ices, honey, treacle, sauces (including salad dressings); spices, cereal-based coffee, tea, snack products, in particular, according to preference, consisting of cereals, bread; pastry and confectionery; sugar products, chocolate and chocolate products; cereal products for human consumption, in particular buckwheat flour, timothy grass, barley and oat flakes; yeast; baking powder; pasta, in particular wheat-based noodles; rice, linseeds and bran for human consumption, bran preparations for human consumption, namely bran tablets, bran bread, bran biscuits and bran bars; sesame seeds for human consumption; sea salt for food; mustard, vinegar, in particular cider vinegar; soy products, namely small soy rolls, soy puddings, soy ice-cream; deep-frozen prepared dishes, essentially consisting of cereals and/or pasta and/or rice including soy sausages, soy dumplings and soy goulash; muesli, consisting of cereal flakes, sugar, honey and/or chocolate; brewer's yeast for food; snack products consisting of cereals; deep-frozen prepared dishes, essentially consisting of cereals and/or pasta and/or rice including soy sausages, soy dumplings and soy goulash; foodstuffs for use as meat substitutes for vegetarians made using mostly soy flour, namely small soy balls, soy sausages, soy dumplings, soy pastes and soy goulash.
Class 31: Fresh fruit and vegetables.
Class 32: Non-alcoholic soy-based beverages; non-alcoholic beverages, including decaffeinated beverages; fruit juices, vegetable juices as beverages; mineral waters and other aerated waters; non-alcoholic beer; beer.
Class 33: Wine; alcoholic beverages except beer.
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 07/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/02/2016 to submit evidence of use of the earlier trade marks. On 12/02/2016, within the time limit, the opponent submitted evidence of use, which includes exhibits 14 to 56.
The opponent also asked the Opposition Division to take into consideration, for the purpose of proving use of the marks as detailed above, part of the exhibits submitted during the course of these proceedings, namely on 13/10/2014, in particular exhibits 10 to 13 (Exhibits 1 to 6 included the registration certificates, translations and lists of goods).
Therefore, the evidence to be taken into account is the following:
Exhibit 10: Communication Analysis 2012. This document is written in German.
Exhibit 11: English translation of relevant parts of Exhibit 12. It consists of a survey, dated 2012. According to the opponent, the survey was conducted by Germany´s leading women´s magazine Brigitte. In sections 4.5 and 4.6 of the survey, participants are asked to indicate which marks they know as producers of foodstuffs and drinks, and to indicate whether they are appealing for them or not, and lastly, whether they are used in their household or not. When asked about ‘BAMBOO GARDEN’, there was a 30 % of brand awareness, 9% of sympathy and 8% of use.
Exhibit 12: Study results on consumer reach and repurchasing rate. Document in German. It contains some images of the mark ‘BAMBOO GARDEN’ as registered, and also in word format. It appears both in the text and within product labels shown in the packaging of different products. Some of the products contain additional information, such as ‘sauce’, ‘soja Sauce’, ‘japan’, ‘thai’, ‘india’ or ‘asia’.
Exhibit 13: English translation of relevant parts of Exhibit 14. There is no indication of which company carried out the study. The study contains several sections. The first one gives information about the market development of BAMBOO GARDEN, covering the first half of years 2013 and 2014, comparing the increase or decrease of volumes. The goods in relation to which this is studied are seasoning sauces, soy sauces, sauces in oil. The period of time to which the results refer falls out of the relevant period. However, they show a market share increase in the time covered. According to the translation, the table shows a ‘high market share (probably market leadership) concerning thin and thick sauces (…) and sauces in oil’. The second section refers to customer reach and repurchasing rate, covering the period of time June 2012, 2013 and 2014. These fall outside the relevant period. However, it can be seen that BAMBOO GARDEN has the highest customer reach and repurchasing rate amongst the three brands compared.
Exhibit 14: Wikipedia article in German containing information about ‘Fuch Gewürze GmbH’.
Exhibit 15: English translation of a part of the article submitted as Exhibit 14, namely the following: ‘In 2006, the company decided to enter the delicatessen and prepared meals market and purchased Theodor Kattus GmbH as weel as the Asia brand Bamboo Garden’.
Exhibit 16: Affidavit signed by the managing Director of the opposing company explaining that the mark ‘BAMBOO GARDEN’, both in word and figurative versions (the latter being included) and registered by the opposing company (indicating the German and the International trade mark registration´s numbers) is being used by the company Theodor Kattus GmbH (in Germany) with the opponent´s consent. According to this document, Theodor Kattus GmbH is a subsidiary wholly owned by the opposing company.
Exhibit 17: Product and price list from Theodor Kattus GmbH No 01/2012. This document is in German. The trade mark BAMBOO GARDEN appears in the first page, together with other marks and pictures of different dishes. It also appears in the upper part of the pages, preceding the tables with the lists of goods. The tables contain the specifications of the goods (brief description, box content, price, etc.) sold under the mark BAMBOO GARDEN (top part of the pages).
Exhibit 18: English translation of product and price list from Theodor Kattus GmbH No 01/2012. The relevant goods are listed under ‘Asian Specialties’, ‘spicing sauces / pastes / marinades’, ‘spices’, ‘mushrooms’, ‘vegetables’, ‘wok vegetables in pouches’, ‘oils’, snack items’, ‘pasta’, ‘wok ready to use sauces’, ‘wok marinades’, ‘Fond wok stock cubes’, etc.
Exhibit 19: Product and price list from Theodor Kattus GmbH No 10/2008. This document reproduces the same structure and characteristics as Exhibit 17, with the particularity of being valid for a different date (10/2008).
Exhibit 20: English translation of product and price list from Theodor Kattus GmbH No 10/2008. This document contains translations of the kinds of goods listed in the previous exhibit, e.g. ‘Thai-sauce’, and indicates that the price lists are valid as from October 2008, with no ending date specified.
Exhibits 21, 23, 25, 27, 29, 31, 33, 35, 37, 39, 41 and 43: They consist of documents which the opponent defines as ‘sales folder’. These are dated in different months of years 2009, 2010 and 2012. These documents are in German, and show tables containing lists of goods (code and description, weight and bar code). The trade mark BAMBOO GARDEN (figurative version) appears in different parts of the pages (upper part and right side), sometimes accompanied by the term ‘CHINA’ and by pictures of a dish. Most of the exhibits also contain, in their last pages, pictures of sales stands bearing the BAMBOO GARDEN trade mark (figurative) and products under this mark, as they would be displayed for sale. Also, the packaging of BAMBOO GARDEN products appears in the pictures, together with the terms ‘CHINA’, ‘Sauce’, etc. Even if the opponent refers to these documents as ‘sales folders’, they do not contain evidence of any effective sales of the goods in question.
Exhibits 22, 24, 26, 28, 30, 32, 34, 36, 38, 40 and 42: consist of English translations of the exhibits described in the previous paragraph. According to the information in these documents, the lists of goods appearing in the documents consist of the list of the goods displayed in each of the displays shown (i.e. the kind of goods and the number of pieces per display). The goods are mainly Asiatic products (noodles, sauces, wok, etc.).
Exhibits 45 and 46: Exhibit 45 is Media information from Theodor Kattus GmbH for its customers, relating to sale figures and showing displays with the trade mark BAMBOO GARDEN. This document is in German, and its translation is submitted as Exhibit 46. Exhibit 45 consists of what seems to be a brochure of Theodor Kattus GmbH, showing different trade marks, inter alia, BAMBOO GARDEN (figurative). Some of the pictures contained in this document consist of BAMBOO GARDEN products, bearing the BAMBOO GARDEN trade mark in their packaging and labels. It can be seen that there are different lines of BAMBOO GARDEN products, for instance ‘Bamboo Garden Sushi-Bar’, ‘BAMBOO GARDEN Thai’ and ‘BAMBOO GARDEN India’. This document also contains pictures of different kinds of BAMBOO GARDEN sales stands, where the BAMBOO GARDEN products are exposed, all the stands having an Asiatic look. According to the translated text, BAMBOO GARDEN is referred to as the market leader for Asian specialities.
Exhibit 47: Photographs taken between 2007 and 2012. The photographs show sales stands of BAMBOO GARDEN products, the mark being clearly visible on the stands and on the majority of products. All the stands have references to Asiatic things, such as dragons and Indian-style buildings. The words ‘CHINA’, ‘Asiatic’ and ‘INDIA’ are also shown next to the mark. It is not possible to know, from the pictures, the exact dates and places where the pictures were taken. The only references in this regard are the ones given by the opponent (e.g. Dragon Feast 2009) and the fact that sometimes the additional text on the stands is in German (e.g. ‘Asiatische Spezialitäten’).
Exhibit 48: Copies of what seem to be advertisement brochures, and pictures of the packaging of different BAMBOO GARDEN products. The products are mainly sauces. The advertisement brochures and the packaging bear, besides the mark in question, the terms ‘Sushi-bar’, ‘Wasabi’, ‘China’, ‘Wok’, etc. and depictions of Asiatic-style dragons. The documents are in German.
Exhibit 49. Invitation to a food trade fair in Germany, held in 2009, on which the BAMBOO GARDEN trade mark appears.
Exhibit 50. A total of eleven invoices in German, dated between 2007 and 2012. All the invoices, except one, are addressed to customers in Germany. The opponent explains that the goods to which the invoices refer, are marked under the BAMBOO GARDEN trade mark, and that this can be concluded from the identity of the product codes in the invoices and the codes included in the product and price lists (Exhibits 17-20). For instance, product code 04023900539391 in invoice dated 13/08/2007 corresponds with ‘soja-sauce’, marked under the BAMBOO GARDEN trade mark, according to the price list in Exhibit 19. In this same line, code 04023900533009 in invoice dated 28/10/2008 is included in exhibit 17 under the category of ‘Asian specialties – spicing sauces’, according to the corresponding translation in exhibit 18.
Exhibit 51 to 55: Exhibit 51 contains copies of press publications from year 2007, preceded by a table showing the magazines or other publications (title, issue, edition and contacts) in Germany containing references to the BAMBOO GARDEN products (both in text and in images), and of which the copies of the publications are submitted. The publications refer to BAMBOO GARDEN products, by presenting them as new products available on the market, and also by referring to them as ingredients for Asiatic-style dishes. The images show the products as such (packaging) as well as in sales stands bearing the mark. Exhibits 52 to 55 contain copies of a significant number of press publications, from years 2008 to 2012. These bear the same characteristics as the documents described in Exhibit 51 (table referring to the publications in each of the years covered and images of the publications.
Exhibit 56: Printouts from the WayBack Machine website. This website is an Internet Archive used to show the appearance of websites in the past. In this case, the results obtained by the WayBack Machine from the search of www.bamboogarden.de show that the mark was already in use in the website, in different formats (figurative version, and/or accompanied by additional terms, such as ‘Thai’, ‘India’, etc…) dated 6/01/2008 and 29/10/2007.
The vast majority of documents show that the place of use is Germany. This can be inferred from the language of the documents (German), the addresses in the invoices (all except one, addressed to Poland) and the texts visible in the many images submitted. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period. The documents filed, as a whole, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The earlier marks are word marks, and therefore protection is granted for the particular combination of terms, and not for a specific representation of them (e.g. typeface or upper or lower case letters). In addition, when the mark is used in combination with descriptive elements or terms (such as ‘Asiatic’, ‘sauce’, ‘China’, etc.), it is considered that these additional elements do not alter the distinctive character of the mark. Accordingly, even if the mark appears in a figurative version, or accompanied by descriptive or allusive terms, it is considered that the mark is used as registered.
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).
In the present case, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.
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 marks for the following goods (identically covered by both earlier rights):
Class 30: Snack products, soy products, sauces, edible oils, pasta (noodles), spices, deep-frozen prepared dishes, rice, preserved fruits.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
Even if other goods are mentioned in the evidence submitted (e.g. Exhibit 18), the fact that they are referred to briefly, or merely enumerated, is insufficient to show genuine use of the trade marks for those goods. There are no sufficient indications concerning the place, time, extent and nature of use of the opposing trade mark for any goods different from the abovemtioned goods..
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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 932 692 designating, inter alia, the European Union.
The goods on which the opposition is based are the following:
Class 30: Snack products, soy products, sauces, edible oils, pasta (noodles), spices, prepared dishes, rice, preserved fruits.
The contested goods are the following:
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; fruit sauces.
Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds natural plants and flowers; foodstuffs for animals, malt.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘including’, used in the opponent´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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107)
Also, as a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 jellies overlap with the opponent’s preserved fruits. Thus, these goods are identical.
The contested dried fruits are included in the broad category of the opponent’s preserved fruits. Thus, these goods are identical.
The contested preserved, cooked fruits and vegetables; dried vegetables are highly similar to the opponent´s preserved fruits. These goods coincide in purpose, distribution channels and points of sale. They can be directed at the same consumers and be in competition. In addition, they can come from the same kinds of undertakings.
The contested jams are similar to the opponent´s sauces (including salad dressings). These goods coincide in purpose, distribution channels and points of sale, are directed at the same consumers and can be in competition.
The contested edible oils and fats are similar to the opponent´s sauces (including salad dressings). These goods coincide in purpose, method of use, can be in competition and can be directed at the same consumers.
The contested milk products are related to the opponent’s edible oils. These goods have the same purpose. Also, they can coincide in end user. Furthermore they are in competition. Thus, these goods are deemed to be similar.
The contested meat extracts are similar to a low degree to the opponent´s sauces (including salad dressings). They coincide in purpose, can coincide in distribution channels and can be directed at the same consumers. In addition, they can come from the same kinds of undertakings.
The contested meat, fish, poultry and game; eggs, milk and are dissimilar to the opponent´s snack products, soy products, sauces, edible oils, pasta (noodles), spices, deep-frozen prepared dishes, rice, preserved fruits.. They differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers, and are not likely to come from the same kinds of undertakings.
Contested goods in Class 30
The contested sauces (condiments) are identical to the opponent´s goods sauces.
The contested fruit sauces fall in the broad category of the opponent´s sauces and therefore they are identical.
The contested preparations made from cereals do overlap with the opponent’s snack products. Thus, these goods are identical.
The contested mustard; vinegar are highly similar to the opponent´s sauces. They can coincide in purpose, and share the same distribution channels and points of sale. They are directed at the same consumers, can be in competition, and can come from the same kinds of undertakings.
The contested salt, spices are similar to the opponent´s sauces. These goods coincide in distribution channels and points of sale, can be directed at the same consumers and can come from the same kinds of undertakings.
The contested rice; bread, pastry and confectionery and the opponent’s pasta can coincide in their relevant public, distribution channels and method of use. However, they generally have different origin. Thus, they are deemed to be similar to a low degree.
The contested coffee, tea, cocoa, sugar, tapioca, sago, artificial coffee; flour, ices; honey; treacle; yeast, baking-powder; ice are dissimilar to the opponent´s goods. They differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers, and are not likely to come from the same kinds of undertakings.
Contested goods in Class 31
The contested Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds natural plants and flowers; foodstuffs for animals, malt are dissimilar to the opponent´s sauces (including salad dressings). They differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers, and are not likely to come from the same kinds of undertakings.
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 different degrees) are directed at the public at large. The degree of attention paid by consumers during their purchase is deemed to vary from average to lower than average, since they are relatively cheap products, purchased daily.
Earlier trade mark
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).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a word mark formed by two terms, namely ‘BAMBOO’ and ‘GARDEN’. The contested sign is a figurative mark formed by the same two terms and by the depiction of stylized bamboos together with what can be recognized as Far-East logograms. In English language the expression ‘BAMBOO GARDEN’ will be understood as a place where bamboo plants are grown.
Even if ‘bamboo’ is sometimes used as an ingredient of certain types of food, in the present case the term will be perceived as the component of a composite noun. It will be perceived as adding a quality to of the word ‘garden’, being a physical place, and not as the description of an ingredient of the product. Accordingly, the marks have no elements which would be seen as more distinctive than others.
The signs have no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the word elements ‘BAMBOO GARDEN’. However, they differ in the additional figurative elements of the contested sign.
Account must be taken on the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are visually highly similar.
Aurally, the signs are identical, being their only readable elements the words ‘BAMBOO GARDEN’.
Conceptually, the marks are highly similar due to the presence of the verbal elements ‘BAMBOO GARDEN’ and the depiction of the stylized bamboo in the contested sign. The only element capable of differentiating the marks from a conceptual perspective is the presence of Eastern logograms in the contested sign.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
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.
Global assessment, other arguments and conclusion
The goods compared in section c) of the present decision have been considered to be partly identical, partly similar (to different degrees) and partly dissimilar.
The signs are visually and conceptually similar. Also, they are aurally identical. In fact, they coincide in all of their verbal elements.
They only differ in the figurative elements of the contested sign. However, for the reasons explained above in section c) of the present decision, these figurative elements are expected to play a secondary role. The public will more easily refer to the signs in question by their verbal element, which is identical also form a conceptual point of view for the English-speaking consumers, than by describing their figurative elements.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public, and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. It follows from the above that the contested trade mark must be rejected for the goods found to be identical, highly similar or similar to those of the earlier trade mark.
The opposition is also successful insofar as the goods that are similar to a low degree are concerned, since the coincidences between the marks, and the fact that the goods in conflict belong to the same market field, is enough to outweigh the low similarity of the goods.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
The opponent has also based its opposition on German trade mark registration No 396 13 314 ‘BAMBOO GARDEN’ (word mark). Since this mark is identical to the one which has been compared, and the goods for which proof of use has been shown are the same, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part 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
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 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 of appeal must 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.