OPPOSITION No B 2 430 398

Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft Mbb, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany, (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).

On 14/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 430 398 is upheld for all the contested goods.

2. European Union trade mark application No 13 043 716 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 043 716. The opposition is based on European Union trade mark registration No 3 305 711. The opponent invoked Article 8(1)(b) EUTMR.

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 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 05/08/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 05/08/2009 to 04/08/2014 inclusive. Furthermore, the evidence must show use of the trade mark ‘VOLLUTO’ for the goods on which the opposition is based, namely the following:

Class 30: Coffee, coffee extracts and coffee-based preparations and beverages; iced coffee; coffee substitutes, extracts of coffee substitutes and preparations and beverages based on coffee substitutes; chicory; tea, tea extracts and tea-based preparations and beverages; iced tea; malt-based preparations and beverages; cocoa and cocoa-based preparations and beverages, chocolate, chocolate products, chocolate-based preparations and beverages; confectionery, sweets, candies; sugar; chewing gum; natural sweeteners; bakery products, bread, yeast, pastry; biscuits, cakes, cookies, wafers, toffees, desserts, puddings; ice cream, water ices, sherbets, frozen confections, frozen cakes, soft ices, frozen desserts, frozen yoghurts; binding agents for making ice cream and/or water ices and/or sherbets and/or frozen confections and/or frozen cakes and/or soft ices and/or frozen desserts and/or frozen yoghurts; honey and honey substitutes; breakfast cereals, muesli, cornflakes, cereal bars, ready-to-eat cereals, cereal preparations; rice, pasta, noodles; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes; pizzas; sandwiches; mixtures of alimentary paste and over-ready prepared dough; sauces; soya sauce; ketchup; aromatising or seasoning products for food, edible spices, condiments, salad dressings, mayonnaise; mustard; vinegar.

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 20/07/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/09/2015 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended until 20/11/2015. On 19/11/2015 and 20/11/2015, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

• Photographs of the opponent’s products: packaging of coffee capsules bearing the signs ‘Nespresso’ and ‘Volluto’ (page 4 of the opponent’s observations of 19/11/2015).

• Screenshots of the website www.nespresso.com showing ‘Volluto’ coffee capsules, dated 18/11/2015, as well as screenshots of the same website from September 2011 and November 2013, obtained using Wayback Machine (pages 5 and 6 of the opponent’s observations of 19/11/2015 and Enclosure 10).

• A large number of invoices covering the period 31/07/2009 - 02/07/2014 for the sale of – amongst others – ‘Volluto’ branded coffee addressed to various clients in different places in France, Germany, Italy, the Netherlands and Portugal (Enclosures 11, 21, 30, 52 and 53), as well as sales receipts issued by Nespresso boutiques in Portugal (Enclosure 54).

• Articles published in press and on websites, mentioning ‘Volluto’ coffee capsules: in German, from www.sueddeutsche.de dated 16/02/2014, from www.focus.de dated 12/04/2012, from ‘Der Spiegel’ dated 14/05/2005; in French, from www.TF1.fr, dated 30/06/2010; in Dutch, from www.koffie.blog.nl dated 12/01/2015 and from www.adformatie.nl dated 05/10/2015, both outside the relevant period (Enclosures 3.1, 5.1, 7.1, 22 and 33)

• Promotional materials mentioning and promoting ‘Volluto’ coffee capsules, such as:

  • Mail circulars from March 2009 (outside the relevant period), 2012 and 2014, directed at German Nespresso Club Members (Enclosures 12, 15 and 17);

  • Promotional leaflets: in German, from 2010 (as it refers to ‘Limited Edition 2010’) and 2011 (as it refers to ‘Limited Edition’ 2011); in French, from 2011 (as it refers to ‘L’Edition Limitée 2011’); in Dutch, from 2013 (dates are indicated at the bottom of the pages: 1) ‘Brochure_Coffee Wheel 2013’ and ‘26/07/13’, 2) ‘Brochure Advance Coffee 1213’ and ‘06/12/13’); in Greek, possibly from 2010 (the indications ’07.10/GRC’ and ’09.10-GRC’ on the covers could be the dates), 2012 (’01.12-GRC’) and 2014 (‘INISSIA14 TO GRE’) and one undated, claimed by the opponent to be from 2011 (Enclosures 13, 14, 23, 31, 34, 35, 36, 37 and 38);

  • Print advertisements: in French, from 2010 and 2013, in Greek, from 2012, in Portuguese, from 2013, in Spanish, from 2011 (Enclosures 24, 26, 28, 40, 44 and 46).

• Advertisements and material relating to Nespresso TV-commercials broadcasted in Austria, Germany, Greece, Italy and the Netherlands between 2010 and 2013, in which ‘Volluto’ coffee is mentioned and shown (Enclosures 18, 20, 32, 39, 42, 43), as well as the data concerning the broadcasting of commercials on TV channels between November 2010 and May 2014 (Enclosure 48). Given the names of the TV shows, mainly in Spanish, and the names of the TV channels such as ‘Telemadrid’, ‘A3 Canarias’, ‘Cuatro’, ‘La Sexta’, it can be concluded that the data concerns the emission of TV adverts in Spain.

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).

The applicant 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 (e.g. the dates on some of the promotional leaflets), the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

As regards the territory of use, the documents filed by the opponent, especially the invoices, promotional leaflets, data concerning the broadcasting of the TV commercials show that the place of use is the European Union. This can be inferred from the languages of the documents (Dutch, French, German, Greek, Portuguese and Spanish), the currency mentioned (‘Euro’) and addresses in France, Germany, Greece, Italy, the Netherlands and Portugal. Therefore, the evidence relates to the relevant territory.

As regards the time of use, most of the evidence is dated within the relevant period. Furthermore, even though the opponent also presented some evidence dated outside the relevant time frame (some promotional material, invoices and articles), these documents have to be viewed in conjunction with the other evidence dated within the relevant period and, therefore, may still be taken into consideration. Therefore, it is obviously inappropriate to disregard such evidence of use if the conclusions that can be drawn from it are confirmed by the other evidence submitted.

As regards the extent of use, the applicant argues that the documents furnished by the opponent are not sufficient to meet the threshold for proving genuine use. It claims that that threshold should be high for a large multinational food company such as the opponent and for the relevant market for coffee products. Moreover, it claims that the fact that the opponent did not disclose its turnover or sales figures with regard to the ‘Volluto’ branded coffee capsules, and that the figures on the invoices are low in view of the high competition on the coffee market and the size of the opponent’s company qualify the evidence of use as inadequate.

In this regard, it has to be noted that the opponent is not obliged to reveal the total volume of sales or turnover figures. Such data is obviously helpful, but not required to evaluate whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market. Furthermore, the assessment 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 (judgment of 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).

The documents filed, namely the invoices together with the promotional material, even without any data regarding the opponent’s turnover, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the trade mark ‘Volluto’. They show that the use of the trade mark was extensive, very regular and continuous during the relevant period. It is therefore sufficient to prove that the opponent has seriously tried to acquire a commercial position on the coffee market in the European Union.

In addition, the Opposition Division notes that depending on the commercial strategy and diversification of activities, even a limited share in the annual turnover of an undertaking may be economically and objectively justified (see, to that effect, judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 49). Therefore, the applicant’s argument regarding a higher threshold for proving use by a large company, such as the opponent, is, in any case, to be set aside.

As far as the promotional leaflets are concerned, even though there is no information about their distribution, as correctly pointed out by the applicant, they are to be analysed together with the remaining pieces of evidence. It should be noted that where advertising is carried out in parallel to the marketing of goods and there is proof of both activities, advertising will support the genuineness of the use. In the present case, the promotional leaflets (as well as other advertising material) submitted by the opponent is relevant for establishing the genuine use due to their variety (different languages) and continuity (various leaflets for the years between 2010 and 2014).

As regards the use of the trade mark as registered, the applicant argues that the evidence, especially the TV commercials, refer to the ‘Nespresso’ brand and does not prove use of the trade mark ‘VOLLUTO’.

In this regard, it should be noted that two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42). This is clearly the situation in the present case. The evidence submitted by the opponent shows that the sub-brand ‘Volluto’ is used together with the family-brand ‘Nespresso’ which has its own identity and is present on the market with a number of accompanying signs. Therefore, the evidence shows that the mark has been used as registered.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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) 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 only shows genuine use of the trade mark ‘VOLLUTO’ for coffee in Class 30, whereas there is no reference at all to the remaining goods covered by the trade mark.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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.

1. The goods

The goods on which the opposition is based and for which the use has been proven are the following:

Class 30: Coffee.

The contested goods are the following:

Class 30: Coffee, Artificial coffee, Mixtures of coffee, Coffee extracts, Coffee 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.

Coffee refers to beanlike seeds of the coffee tree and roasted coffee beans. The term in Class 30 also includes beverages consisting of an infusion of the roasted and ground or crushed seeds of the coffee tree.

The contested coffee, mixtures of coffee and coffee preparations are identical to the opponent’s coffee, either because they are identically contained in both lists or because the mentioned contested goods are included in the broad category of the opponent’s goods.

The contested artificial coffee is similar to a high degree to the opponent’s coffee.
This is because these goods can coincide in producer, relevant public and
distribution channels. Their method of use is the same and they are in competition, since artificial coffee is a product, usually without caffeine, that is used to imitate coffee.

The contested coffee extracts, which are a concentrated preparation of coffee, coincide in purpose with the opponent’s coffee. They can also share the same methods of use. Therefore, they are considered similar to a low degree.

2. 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 various degrees are directed at the public at large.

The applicant argues that the degree of attention of the relevant public is high, because consumers are very careful and selective about the coffee they drink. The Opposition Division considers that, even if this could be the case for a part of the public, the large majority of the general public, reasonably well informed and reasonably observant and circumspect, displays an average degree of attention in relation to the relevant goods which are not, in general, expensive.

3. The signs

VOLLUTO	VOLTURO
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).

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 part of the relevant public for which the signs in question are meaningless, such as German-, Greek-, Hungarian- and Polish-speaking parts of the relevant public.

The earlier mark and the contested sign are word marks. Therefore, neither has any element that could be considered more dominant (visually eye-catching) than other elements.

Both signs are composed of a single verbal element that does not exist as such in the German, Greek, Hungarian and Polish languages. They have no identifiable components, are fanciful for the relevant public and enjoy an average degree of inherent distinctiveness in the context of the relevant goods. Consequently, the signs have no elements that could be considered more distinctive than other elements.

Visually, the signs have the same length, as they are each made up of seven letters. They coincide in their first three letters, ‘VOL’, and their last letter, ‘O’. The letters ‘U’ and ‘T’ are present in both signs, albeit in different positions. They differ in their central parts, ‘LUT’ in the earlier mark and ‘TUR’ in the contested sign.

As the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details, small differences between verbal elements are often insufficient to exclude a finding of visual similarity, particularly when the signs have the same structure. Therefore, in an assessment of the visual similarity of two word marks, the presence in each of them of several letters in the same order, as in the present case, is of particular relevance.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in German, Greek, Hungarian and Polish, the pronunciation of the signs coincides in the sound of the letters ‛VOL***O’, present in both signs. Furthermore, the presence of the sounds ‘UT’ in the earlier mark and their inversion ‘TU’ in the contested sign is an additional factor of the aural similarity between the signs, as well as the sequence of the vowels ‘O-U-O’. Moreover, each of the signs is pronounced in three syllables. Consequently, and contrary to the applicant’s argument, they have similar rhythms and intonations, even though the pronunciation differs in the sound of the central parts ‘(L)UT’ in the earlier mark (the double letter ‘L’ may be pronounced as a single sound ‘L’) and ‘TUR’ in the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, for the German-, Greek-, Hungarian- and Polish-speaking part of the public in the relevant territory neither of the signs has a meaning. 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.

4. 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 advertised, 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 German-, Greek-, Hungarian- and Polish-speaking part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services.

In the present case, the goods are identical or similar to various degrees. They target the public at large, which has an average degree of attention. The signs are visually and aurally similar to an average degree in that they have six letters out of seven each in common. They have identical beginnings and endings, ‘VOL***O’. The letters ‘U’ and ‘T’ are also present in both signs, in their central parts, although occupying different positions.

Aurally, the same number of syllables and the sequence of the vowels ‘O-U-O’ contributes to the similarity of the signs. Contrary to the applicant’s arguments, the letter ‘L’ which is duplicated only in the earlier mark is not particularly striking from the aural perspective, because it is likely to be pronounced as a single sound ‘L’ by the relevant public. These aspects are important taking into account that, as correctly pointed out by the applicant, goods such as coffee are frequently ordered orally in a noisy environment such as in bars or cafeterias.

Furthermore, conceptually, the signs have no meaning for the relevant part of the public, which will perceive them as foreign or fanciful terms. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs and does not constitute a differentiating factor.

Taking into account 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), the differences in the central parts of the signs, on which consumers generally tend to focus less when encountering a trade mark, do not alter sufficiently the visual or aural impressions of the signs to enable the public to safely distinguish between them, even in case of the lowly similar goods.

In its observations, the applicant argues that the common prefix ‘VOL-‘ is commonly used with regard to goods in Class 30, and therefore possesses a low degree of distinctiveness. In support of its argument the applicant refers to several trade mark registrations in the European Union. Furthermore, it argues that a coincidence in an element with a low degree of distinctiveness will not lead to likelihood of confusion and claims that the middle part and the end of the signs are of importance.

First, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the prefix ‘VOL-‘.

Second, there is no reason for which the public would split the signs into ‘VOL-LUTO’ and ‘VOL-TURO’ as claimed by the applicant. Such a division is artificial and not justified given that the signs are single words without any identifiable components.

Under these circumstances, the applicant’s claims must be set aside.

Furthermore, the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as they concern signs differing in their length, other duplicated letters and additional factors such as the initial characters or figurative elements (B 730 012: ‘Vitea’ vs ‘Vitessa’; B 1 295 189: ‘CUBITO’ vs ‘ ’ and R 457/2002-1: ‘ ’ vs ‘Cordes’), as well as not comparable relevant goods and services.

Considering all the above, there is a likelihood of confusion on the part of the German-, Greek-, Hungarian- and Polish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 305 711. It follows that the contested trade mark must be rejected.

Since the opposition is 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. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) EUTMR, 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Aliki SPANDAGOU

Zuzanna STOJKOWICZ

Vanessa PAGE

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.