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OPPOSITION DIVISION |
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OPPOSITION No B 2 445 651
Norma Lebensmittelfilialbetrieb Stiftung & Co. Kg, Heisterstr. 4, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte Partgmbb, Maximiliansplatz 14, 80333 München, Germany (professional representative)
a g a i n s t
Alibaba
Group Holding Limited,
Fourth Floor, One Capital Place, P.O. Box 847, George Town, Grand
Cayman, Cayman Islands (applicant),
represented by
Bomhard
IP, SL,
Calle Bilbao, 1, 5º, 03001, Alicante, Spain(professional
representative)
On 06/12/2017, the Opposition Division takes the following
DECISION:
1. Opposition
No B
Class 35: Retail and wholesale of beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, edible oils, tea, rice, condiments, alcoholic beverages.
2. European
Union trade mark application No
3. Each party bears its own costs.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The
opponent filed an opposition against some of the services of European
Union trade mark application No 
,
namely against part of the services in Class 35.
The opposition is based on the following earlier rights:
German trade mark registration No 304 49 292 for the word mark ‘TAO’.
European Union trade mark registration No 4 237 467 for the word mark ‘TAO’.
The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely German trade mark registration No 304 49 292 for the word mark ‘TAO’ and European Union trade mark registration No 4 237 467 for the word mark ‘TAO’.
The contested application was published on 29/08/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union (for the earlier European Union trade mark registration No 4 237 467) and/or in Germany (for the earlier German trade mark registration No 304 49 292) from 29/08/2009 to 28/08/2014 inclusive.
The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:
Goods of German trade mark registration No 304 49 292:
Class 29: Meat, sausage, fish (including processed shellfish, crustaceans and molluscs), poultry and game; meat, sausage, poultry, game and fish products; meat extracts; fruit, vegetables, herbs and potatoes in preserved, dried, cooked, frozen or processed form, including peanut kernels, nuts, almonds and cashew nut kernels, including being snacks; potato products, namely fried, cooked, deep-fried or pre-cooked potatoes, French fries, potato croquettes, potato fritters, potato dumplings, fried potatoes; sweet and/or savoury snacks, mainly consisting of dried fruits, nuts, potato products, peanut kernels, almonds and cashew nut kernels; meat, sausage, fish, fruit and vegetable jellies; marmalades and jams; eggs; milk, in particular buttermilk, sour milk, curds, milk preserves and condensed milk; butter, clarified butter, cheese, in particular quark, cheese preserves, kefir, cream, yoghurt (including yoghurt with added fruit), powdered milk for food; desserts, mainly consisting of milk, yoghurt, quark, gelatine and/or cream; non-alcoholic milk and mixed milk drinks, including with added cocoa, chocolate or coffee; edible oils and fats, including margarine and lard; spreads, mainly consisting of milk and/or fats, edible fats and edible fat mixtures; cooking oils, cooking fats, separating oils and separating fats for cooking; meat, sausage, fish, fruit and vegetable preserves; delicatessen salads and frozen food, mixed, semi-prepared (including fillings) and prepared meals, including preserved meals, all mainly consisting of meat, sausage, fish, poultry, game, prepared fruits and vegetables, pulses, cheese, eggs, potatoes, corn and/or potato products; mixed pickles; bouillon extracts and other meat stock preparations, in particular meat stock granules; instant soups, soup concentrates; preparations for making soups, in particular meat and vegetable stock cubes; food supplements, dietetic substances and food supplements for non-medical purposes (included in class 29).
Class 30: Coffee, tea, cocoa, sugar (including vanillin and vanilla sugar and glucose for food), rice, tapioca, sago, artificial coffee, coffee and tea extracts; cocoa powder; non-alcoholic coffee, tea, cocoa and chocolate-based beverages including instant drinks; custards, custard powder and blancmanges, desserts mainly consisting of starch; flour and preparations made from cereals (except animal feed); popcorn, corn flakes (for food); cereals for human consumption, in particular oat flakes or other cereal flakes, in particular being breakfast foodstuffs, including the aforesaid goods mixed with dried fruits (including nuts), sugar and/or honey; potato flour, semolina; pasta, prepared pasta meals and pasta preserves; delicatessen salads as well as frozen food, mixed, semi-prepared (including with fillings) and prepared meals, including preserved meals, mainly consisting of pasta, rice, farinacious foods and/or potato flour, including the aforesaid goods with added spices and sauces (including salad dressings) and/or combined with bread or bread rolls; pies, namely meat pies, pies mainly filled with meat, fish, fruit or vegetables and empty pie cases; bread, cookies, cakes and other pastries; sweet and/or savoury snacks mainly consisting of cereals, cocoa, cakes, chocolate, sugar, honey, potato flour and/or pastries; long life cakes and pastries (including with sweet or spicy fillings), in particular crispbread, gingerbread and biscuits; pizzas, including preserved pizzas; chocolate; confectionery, in particular chocolate products and pralines, including confectionery with a filling of fruit, coffee, non-alcoholic drinks, wine and/or spirits, and of milk or milk products, in particular yoghurt; honey, invert sugar cream, fruit syrup, treacle; spreadable cocoa mixtures, spreads, mainly consisting of sugar, cocoa and/or nougat; yeast, baking powder, essences for baking (except essential oils); salt for food, mustard, pepper, vinegar, sauces (including salad dressings), powdered sauces and sauce extracts (including the aforesaid goods for salad dressings), salad dressings; mayonnaise; ketchup, spices and condiments; condiments, in particular meat and vegetable stock cubes and soup seasonings, stock paste preparations, vegetable extracts being additives for foodstuffs and meat; ice; food supplements, dietetic substances and food supplements not adapted for medical purposes (included in class 30); ice cream, including in the form of ice cream cakes and powder for edible ices; confectionery, in particular sweetmeats (candy) and chewing gum, not for medical purposes; marzipan.
Class 33: Alcoholic beverages (except beers), namely Asian rice wine and Asian plum wine.
Goods of European Union trade mark registration No 4 237 467:
Class 29: Meat, sausage, fish (including processed shellfish, crustaceans and molluscs), poultry and game; meat, sausage, poultry, game and fish products; meat extracts; fruit, vegetables, herbs and potatoes in preserved, dried, cooked, frozen or processed form, including peanut kernels, nuts, almonds and cashew nut kernels, including being snacks; potato products, namely fried, boiled, deep-fried or pre-cooked potatoes, French fries, potato croquettes, potato fritters, potato dumplings, fried potatoes; sweet and/or savoury snacks, mainly consisting of dried fruits, nuts, potato products, peanut kernels, almonds and cashew nut kernels; meat, sausage, fish, fruit and vegetable jellies; marmalades and jams; eggs; milk, in particular buttermilk, sour milk, curds, milk preserves and condensed milk; butter, clarified butter, cheese, in particular quark, cheese preserves, kefir, cream, yoghurt (including yoghurt with added fruit), powdered milk for food; desserts, mainly of milk, yoghurt, quark, gelatine and/or cream; milk free from alcohol and non-alcoholic mixed milk drinks, including with added cocoa, chocolate or coffee; edible oils and fats, including margarine and lard; spreads, mainly consisting of milk and/or fats, edible fats and edible fat mixtures; cooking oils, cooking fats, separating oils and separating fats for cooking; meat, sausage, fish, fruit and vegetable preserves; delicatessen salads and frozen food, mixed, semi-prepared (including fillings) and prepared meals, including preserved meals, all mainly consisting of meat, sausage, fish, poultry, game, prepared fruits and vegetables, pulses, cheese, eggs, potatoes, corn and/or potato products; mixed pickles; bouillon extracts and other meat stock preparations, in particular meat stock granules; instant soups, soup concentrates; preparations for making soups, in particular meat and vegetable stock cubes; food supplements, dietetic substances and food supplements for non-medical purposes (included in class 29).
Class 30: Coffee, tea, cocoa, sugar (including vanillin and vanilla sugar and glucose for food), rice, tapioca, sago, artificial coffee, coffee and tea extracts; cocoa powder; non-alcoholic coffee, tea, cocoa and chocolate-based beverages including instant drinks; puddings, custard powder and blancmanges, desserts mainly consisting of starch; flour and preparations made from cereals (except animal feed); popcorn, corn flakes (for food); cereals for human consumption, in particular oat flakes or other cereal flakes, in particular being breakfast foodstuffs, including the aforesaid goods mixed with dried fruits (including nuts), sugar and/or honey; potato flour, semolina; pasta, prepared pasta meals and pasta preserves; delicatessen salads as well as frozen food, mixed, semi-prepared (including with fillings) and prepared meals, including preserved meals, mainly consisting of pasta, rice, farinacious foods and/or potato flour, including the aforesaid goods with added spices and sauces (including salad dressings) and/or combined with bread or bread rolls (including hamburgers or sandwiches); pies, namely meat pies, pies mainly filled with meat, fish, fruit or vegetables and empty pie cases; bread, cookies, cakes and other pastries; sweet and/or savoury snacks mainly consisting of cereals, cocoa, cakes, chocolate, sugar, honey, potato flour and/or pastries; long life cakes and pastries (including with sweet or spicy fillings), in particular crispbread, gingerbread and biscuits; pizzas, including preserved pizzas; chocolate; confectionery, in particular chocolate products and pralines, including confectionery with a filling of fruit, coffee, non-alcoholic drinks, wine and/or spirits, and of milk or milk products, in particular yoghurt; ices, including in the form of ice cream cakes and powder for edible ices; confectionery, in particular sweetmeats (candy) and chewing gum, not for medical purposes; marzipan; honey, invert sugar cream, fruit syrup, treacle; spreadable cocoa mixtures, spreads, mainly consisting of sugar, cocoa and/or nougat; yeast, baking powder, essences for baking (except essential oils); salt for food, mustard, pepper, vinegar, sauces (including salad dressings), powdered sauces and sauce extracts (including the aforesaid goods for salad dressings), salad dressings; mayonnaise; ketchup, spices and condiments; condiments, in particular meat and vegetable stock cubes and soup seasonings, stock paste preparations, vegetable extracts being additives for foodstuffs and meat; ice; food supplements, dietetic substances and food supplements not adapted for medical purposes (included in class 30).
Class 33: Alcoholic beverages (except beers), namely Asian rice wine and Asian plum wine.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.
On 15/12/2014, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent, after granting an extension, until 14/06/2015 to submit evidence of use of the earlier trade marks. On 9/06/2015, within the time limit, the opponent submitted evidence of use.
Since both earlier marks are of identical appearance, for the description and analysis of the evidence submitted as proof of use, reference will be made to them in singular, as ‘earlier mark ‘TAO’’.
The opponent has submitted evidence listed as Annexes 1 to 6, in relation to the use of the mark ‘TAO’ in Germany. It also asks the Opposition Division to take into account the evidence submitted in cancellation proceedings C 9625, in relation to the use of the same mark in France, Austria and the Czech Republic.
The applicant argues that the opponent has referred to the evidence of use submitted in cancellation action C 9625 and, since such evidence was not submitted in the opposition proceedings, the applicant claims that such evidence should not be taken into account.
In this regard, the opposition Division notes that the opponent may wish to refer to material filed as proof of use in previous proceedings before the Office. The Office accepts such references on condition that the opponent clearly identifies the material referred to and the proceedings in which it was filed. If the reference does not sufficiently identify the relevant material, the Office requires the opponent to clearly specify the material referred to or to file it (See Guidelines for Examination in the Office, Part C, Opposition, and Procedural Matters).
In these proceedings, such evidence of use submitted in cancellation action C 9625 was referred to by the opponent on 09/06/2015, and therefore within the time to submit proof of use, accompanying the rest of evidence submitted. After the Opposition Division asked the opponent to provide further clarifications regarding the case it referred to, the opponent duly clarified on time. The abovementioned evidence was then forwarded to the applicant by letter of 25/04/2017, containing information clearly listed and classified. Therefore, the evidence referred to, submitted in cancellation action C 9625, can be taken into account.
The evidence to be taken into account is the following:
Annex 1. Affirmation in lieu of an oath dated 23/04/2015, signed by Mr Wolfgang Stütz, member of the management board of the opposing company, both in original language and translated.
The signatory declares that the trade mark ‘TAO’ has been used since 2007 for marking different edible goods, a list of which is included. It states that the goods are offered in subsidiaries of the opposing company, and by suppliers of the opponent, in Germany, always with the opponent´s consent. As an example, it includes a table showing the sales of products bearing the mark ‘TAO’ in Germany, in years 2009 to 2014.
The goods of which sales are shown in the table are: Wok sauce; Asian meals (traditional); Asian soups; mangos fruit cocktail; aromatic wine drink; lychees; Asian food preparations, coconut milk, sweet chili sauce; Asian dip pots; Asian soy sauce; Asian stwes; crispy prawns; wok vegetables; prawn crackers; Asian spices; bananas in batter; exotic food preparations; fortune cookies; crab meat; bamboo shots; jasmine rice; Chinese noodles; Mie noodles; wok noodles; wasabi nuts and peas; oil specialities; asian dried mushrooms; sushi; spring rolls; mie noodles, sambal oelek/mangochutney; surimi sticks; instant noodles; instant nodle soups; wok noodles; chips sweet and sour; aspic cold meat; asian salami; chicken salad; prawn salads; Asian spice specialties; pan meals, fried noodles, curry paste, satay sauce, Asian mushrooms, chicken roast, tilapia filets in sauce, kombucha tea, wild roasted nuts, buhun soup, salt Himalaya, mushroom mix for wok, tuna steacks in sauce, Asian sauces, Asian crispy duck, mixed nuts, Asian vegetables assorted, nasi goring/bami goreng (rice), asian meat cut into strips, Asian noodle snack.
Annex 2. Catalogues. Pages of 25 catalogues covering many different dates between years 2009 and 2014. They are in German and accompanied by a translation of the main parts. The catalogues were distributed weekly in Germany by the seller ‘NORMA’ (Which is part of the opponent´s name)
The mark ‘TAO’ appears always related to Asian products. It appears in the product labels and in different parts of the pages depicted in a figurative format, consisting of the word ‘TAO’ written in a typeface that imitates the Asiatic traditional writing, and included within a ying yang symbol, namely as follows: