OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 410 630
Dirk Rossmann GmbH, Isernhägener Str. 16, 30938 Burgwedel, Germany (opponent), represented by Horak Rechtsanwälte, Georgstr. 48, 30159 Hannover, Germany (professional representative)
a g a i n s t
Eye Tech srl unipersonale, Via F.S. Borghero, 9, 16148 Genova, Italy (applicant), represented by Marks & Us Marcas Y Patentes, Licenciado Poza 52 6ºB, 48013 Bilbao (Vizcaya), Spain (professional representative).
On 02/12/2015, the Opposition Division takes the following
trade mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) CTMR, 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 mark on which the opposition is based.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
The contested application was published on 23/06/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Czech Republic, Germany, Hungary and Poland from 23/06/2009 to 22/06/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 5: Nutritional supplement products, included in this class.
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; 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.
Class 32: Alcohol-free beverages and drinks; fruit drinks and fruit juices; mineral waters; preparations and essences for making beverage and drinks; beers.
According to Rule 22(3) CTMIR, 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 25/03/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 25/05/2015 to submit evidence of use of the earlier trade mark. On 26/05/2015, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Exhibit 1: Affidavit by the opponent’s product manager, Anna Bauer, indicating the sales volumes of the products at issue. It is unclear what is the measurement unit referred to in the document. The volumes are as follows:
Nutritional Supplements – 7 000 and 17 000 in 2013 and 2014 respectively;
Alcohol-free beverages and drinks - 1 300 000 2 000 000 in 2013 and 2014 respectively;
Preparations and essences for making beverages and drinks – between 400 000 and 250 000 for the period 2012-14;
Dietary beverages – between 150 000 and 500 000 per annum for the 2009-14 period;
Preparations made from cereals, namely fitness bars – 700 000 – 1 000 000 for 2012-14.
Exhibit 2: Product catalogues (in German) of the opponent covering the whole relevant period containing, among others, products bearing the mark depicted in a stylised font and at times, accompanied, by a figurative device. The product displayed are as follows:
A dietary drink preparation: 2009-14;
A diet preparation/additive – 2011-2014;
A Sport Protein 90 dietary supplement – 2012-2014;
A sport cereal bar – 2012-14;
A soy-based dietary supplement – 2013-14;
Exhibit 3: Invoices and delivery notes (in German) regarding the printing of the abovementioned product catalogues. The invoices cover the whole relevant period and in total relate to approximately 130 million copies. They are issued to the opponent and the products are descried as “Rossmann Prospekt”.
Exhibit 4: a 2015 print-out from the opponents webstie (in German) concerning the latter’s activities, including its 2014 sales figures and number of employees;
Before it proceeds, the Opposition Division will address the applicant’s remark that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) CTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, product catalogues with a photo of the products at issue, invoices containing the opponent’s name and product description with terms which are understandable (‘prospekt’), and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.
The applicant also argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
The affidavit, product catalogues and invoices show that the place of use is Germany. This can be inferred from the language of the documents (‘German’), the currency mentioned (‘Euros’) and some addresses in Germany. Therefore, the evidence relates to part of the relevant territory.
Most of the evidence is dated within the relevant period. The exception to that is the website extracts and company brochure which are not taken into consideration.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
The documents filed, namely the product catalogues and the printing invoices, provide the Opposition Division with sufficient, albeit indirect, information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
In particular, while sales invoices have not been provided, the particularly large volumes of advertisement brochures which are in the tens of millions per year speak of the high exposure to products bearing the mark by the relevant public. This factor, coupled with the principle that use of the mark need not be quantitatively significant for it to be deemed genuine, is enough to show that the opponent has made a genuine effort to ensure a market share for the products under the earlier mark.
As regards the territorial aspect of the use of the mark, the evidence submitted by the opponent in order to prove genuine use of the earlier IR relates exclusively to Germany. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not. In the present case, the evidence relates to the whole territory of the largest economy in the European Union. With this in mind, it is considered that it relates to a significant part of the territory concerned so as to be acceptable for the purposes of the assessment of proof of use.
For the above reasons the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.
In the context of Rule 22(3) CTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) CTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) CTMR, the following shall also constitute use within the meaning of paragraph 1: use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) CTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
As regards the way the mark has been affixed to the products it is considered that the stylised font and at times addition of a figurative device do not alter the distinctive character of the sign. This is the case since the letter stylisation is common and the figurative device plays a secondary, decorative role.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) CTMR.
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 (judgment of 11/03/2003, C‑40/01, ‘Ansul’ and judgment of 12/03/2003, T‑174/01, ‘Silk Cocoon’).
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territories.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 42(2) CTMR, 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.
According to case-law, when applying the abovementioned provision the following should be considered:
…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.
(Judgment of 14/07/2005, T‑126/03 ‘ALADIN’).
In the present case, the evidence proves use only for preparations for making dietary beverages; cereal bars; protein supplements; and dietary supplements. These goods can be considered to form an objective subcategory of
Class 5: Nutritional supplement products, included in this class.
Class 30: Preparations made from cereals,
Class 5: Protein supplements; Dietetic beverages adapted for medical use;
Class 30: Cereal-based snack food;
Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for protein supplements; dietetic beverages adapted for medical use in Class 5 and cereal-based snack food in Class 30.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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.
After assessing the opponent’s evidence of use, the goods on which the opposition is based are the following:
Class 5: Protein dietary supplements; dietetic beverages adapted for medical use;
Class 30: Cereal-based snack food.
The contested goods are the following:
Class 5: Anti-oxidant food supplements; dietetic foods adapted for medical purposes; dietetic substances adapted for medical use; pharmaceutical preparations; dietary and nutritional supplements; mineral food supplements; nutraceuticals for use as a dietary supplement; medicinal herbs; trace element preparations for human use; chemical preparations for medical purposes; chemico-pharmaceutical preparations.
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 5
The contested dietetic foods adapted for medical purposes; dietetic substances adapted for medical use; dietary and nutritional supplements include, as a broader category, the opponent’s protein dietary supplements; dietetic beverages adapted for medical use. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.
The contested anti-oxidant food supplements are substances which have particular qualities (anti-oxidant). To the extent that the opponent’s protein dietary supplements could have such qualities the goods at issue overlap and are therefore identical.
The contested mineral food supplements; nutraceuticals for use as a dietary supplement; medicinal herbs; trace element preparations for human use are various types of substances which are or can be used as food supplements. In this sense, these goods have the same nature as the opponent’s protein dietary supplements. In addition, their purpose to enhance one’s diet in order to treat a specific condition or to achieve certain health-related results is also the same. The relevant public can coincide and they can be found in the same retail outlets. In view of this, these goods are similar.
The contested pharmaceutical preparations; chemical preparations for medical purposes; chemico-pharmaceutical preparations are products used to treat a medical condition or preserve and improve one’s health. In this sense, their purpose is similar to that of the earlier protein dietary supplements; dietetic beverages adapted for medical use which are dietetic and food supplements adapted for medical use used to treat conditions related to one’s nutrition and to improve one’s health through one’s diet. The relevant public of these products coincides. So do their distribution channels in that the competing products are sold in pharmacies or chemist’s. Therefore, these goods are considered similar.
Earlier trade mark
The relevant territory is the Czech Republic, Germany, Hungary and Poland.
Both marks are word marks. Thus, contrary to the applicant’s argument in this regard, the use of capital or lower case letters is irrelevant as it is the word that is protected and not its representation.
Visually, the signs are similar to the extent that the earlier mark is entirely reproduced by the first seven letters of the contested sign. The difference lies in the last three letters ‘AFA’ of the contested sign which have no counterpart in the earlier mark.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the sound of the phonemes ‘W-E-L-L-M-I-X’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the phonemes ‛A-F-A’ of the contested sign, which have no counterparts in the earlier mark.
Conceptually, neither of the signs has a meaning for the public in the relevant territory contrary to the applicant’s assertions that the signs contain the basic English words ‘WELL’ and ‘MIX’. In particular, the public will perceive the marks as a whole and, given its lack of knowledge of the English language, will not dissect them into parts.
Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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.
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 are directed at the public at large and at professional. Given the health implications related to the products at issue, the degree of attention varies between average and higher than average.
Global assessment, other arguments and conclusion
The goods at issue are identical or similar and the earlier mark is entirely reproduced at the beginning of the contested sign. The sole difference between the two word marks lies in the last three letters of the contested mark.
Against this background, the applicant asserts that the marks create an entirely different overall impression given that a) the coinciding sequence ‘WELLMIX’ is descriptive, b) the ending of the contested mark is different and c) the overall impression of the contested mark is very distinctive.
When looking at the marks from a global perspective while taking into account their individual features, however, it transpires that the similarities between them are considerably more striking and memorable than their differences.
In particular, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.
This factor becomes even more important because the coinciding beginnings are not descriptive at all since, as seen above in section b), they will not be understood by the relevant public.
Furthermore, not only the marks coincide in their beginning which attracts consumers’ attention more, but the differing part of the contested sign is much shorter than the coinciding one and, accordingly, bound to produce a smaller impact on the public.
Adding to these considerations the identity between some of the goods and the principle that the public, who relies on its imperfect recollection, tends to look for and remember similarities rather than dissimilarities, the applicant’s arguments cannot be accepted.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 781 723 designating the Czech Republic, Germany, Hungary and Poland. It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3), (6) and (7)(d)(i) CTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid. The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.