OPPOSITION No B 2 426 313
Galletas Gullón, S.A., Avda. Burgos 2, 34800 Aguilar de Campoo (Palencia), Spain (opponent), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative)
a g a i n s t
O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom (applicant), represented by Stobbs, Building 1000, Cambridge Research Park, Cambridge CB25 9PD, United Kingdom (professional representative).
Class 30: Preparations made from cereals; bread, pastry and confectionery; almond confectionery; almond paste; bread; bread rolls; buns; cake frosting [icing]; cake powder; candy; cereal bars; cereal-based snack food; cereal preparations; chips [cereal products]; chocolate mousses; cookies; corn flakes; crackers; dessert mousses [confectionery]; dough; gingerbread; high-protein cereal bars; lozenges [confectionery]; marzipan; muesli; oat-based food; oat flakes; pancakes; pasties; pastry; peanut confectionery; pies; pralines; rice cakes; rusks; tarts; tortillas; waffles; confectionery; non-medicated confectionery; frozen confectionery; sugar confectionery; chocolate; chocolate confections; confectionery in frozen form; confectionery bars; sweets; chocolates; biscuits; cakes; pastries; wafers; chilled and frozen confections and desserts.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against
some of the
goods and services of
trade mark application No
Spanish trade mark registration No 2 451 605 for the figurative mark ;
Spanish trade mark registration No 2 678 761 for the 3D mark ;
European Union trade mark registration No 3 408 424 for the 3D mark ; and
European Union trade mark registration No 3 417 847 for the 3D mark .
The opponent invoked Article 8(1)(b) in relation to the first two earlier rights and Articles 8(1)(b) and 8(5) EUTMR in relation to the remaining ones.
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 Spanish trade mark registration No 2 451 605, since it is the closest to the contested sign.
In connection with the applicant’s comment as to the non-EU wide protection of the opponent’s national trade marks, it should be pointed out that valid earlier rights in the sense of Article 8(2) EUTMR are European Union trade mark registrations or applications, national or Benelux trade mark registrations or applications, international registrations designating the European Union, and international registrations having effect in a Member State. The Office is free to choose which earlier right it regards as the ‘most effective’ and which one to examine first in light of the principle of procedural economy.
The goods on which the opposition is based are the following:
Class 30: Biscuits.
The contested goods are the following:
Class 30: Cocoa; flour and preparations made from cereals; bread, pastry and confectionery; yeast, baking-powder; almond confectionery; almond paste; baking powder; barley meal; bread; bread rolls; breadcrumbs; buns; cake frosting [icing]; cake powder; candy; cereal bars; cereal-based snack food; cereal preparations; chips [cereal products]; chocolate mousses; cocoa; cookies; corn flakes; corn meal; crackers; dessert mousses [confectionery]; dough; gingerbread; high-protein cereal bars; lozenges [confectionery]; marzipan; muesli; oat-based food; oat flakes; oatmeal; pancakes; pasties; pastry; peanut confectionery; pies; pralines; rice cakes; rusks; tarts; tortillas; waffles; wheat flour; wheat germ for human consumption; yeast; confectionery; non-medicated confectionery; frozen confectionery; sugar confectionery; chocolate; chocolate confections; confectionery in frozen form; confectionery bars; sweets; chocolates; biscuits; cakes; pastries; wafers; chilled and frozen confections and desserts.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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.
The contested preparations made from cereals; pastry and confectionery (both listed twice); almond confectionery; cereal preparations; cookies; peanut confectionery; non-medicated confectionery; biscuits; pastries are identical to the opponent’s biscuits, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods are included in, or overlap with, the contested goods.
The contested bread (listed twice); bread rolls; buns; candy; cereal bars; cereal-based snack food; chips [cereal products]; corn flakes; crackers; gingerbread; high-protein cereal bars; lozenges [confectionery]; marzipan; muesli; oat-based food; oat flakes; pancakes; pasties; pies; pralines; rice cakes; rusks; tarts; tortillas; waffles; frozen confectionery; sugar confectionery; chocolate; chocolate confections; confectionery in frozen form; confectionery bars; sweets; chocolates; cakes; wafers; chilled and frozen confections are all types of bakery or confectionery products, as are the opponent’s biscuits. All these goods may be produced by the same companies, can be served as sweet or savoury snacks, and are, therefore, aimed at the same consumers. They will be made available via the same distribution channels and are also in competition with one another, since they may serve to satisfy the same or similar nutritional needs. Therefore, these goods are similar.
The contested almond paste; cake frosting [icing]; cake powder; dough are similar to the opponent’s biscuits as they have the same purpose. Furthermore, they can be found in the same outlets, such as in bakery shops. Therefore, these goods can share the same distribution channels, target the same relevant public and be produced by the same undertakings.
The contested chocolate mousses; dessert mousses [confectionery]; desserts are lowly similar to the opponent’s biscuits as they usually coincide in relevant public and distribution channels. Furthermore, they are in competition.
The contested cocoa (listed twice); flour; yeast (listed twice), baking-powder (listed twice); barley meal; breadcrumbs; corn meal; oatmeal; wheat flour; wheat germ for human consumption do not share any relevant points of contact with the opponent’s biscuits. The natures of the goods are different, as are their distribution channels and prospective purchasers. The goods do not fulfil similar functions from the consumer’s point of view, and they satisfy different needs. The fact that some of the contested goods may be ingredients of the opponent’s goods, as claimed by the opponent, is not sufficient to find similarity between them. Furthermore, they are not substitutes for or in competition with one another, and the relevant consumer will not regard the opponent’s and the contested goods as originating from the same undertakings. Therefore, they are dissimilar.
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 varying degrees are directed at the public at large. Nothing in the nature of the goods, their manner of purchase or average price requires that consumers are more attentive and observant when choosing such goods. Therefore, the degree of attention is considered to be average.
Earlier trade mark
The relevant territory is Spain.
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 earlier mark refers to the concept of a chemical formula, namely, oxygen in its most stable form. This chemical formula is commonly known and, as such, the relevant public will be aware of this concept. It is distinctive in relation to the relevant goods, since it has no meaning related to them.
As to the contested sign, the same distinctive concept of the chemical formula for oxygen is contained in the element ‘O2’, whereas, taking into account that it is a basic English word, most of the public will associate the element ‘The’, preceding it, as the definite article in English. Considering that this article merely fulfils the grammatical function of defining the element it accompanies, it has no trade mark significance on its own and will be seen as subordinated to the element ‘O2’. Accordingly, it is ‘O2’ that will focus the consumer’s attention and be perceived as the commercial origin identifier.
The sings have no element that could be considered clearly more dominant (visually eye-catching) than other elements. It is considered that all the elements have more or less a comparable visual impact and that neither of them can be held clearly more dominant than the others.
However, 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). Therefore, the figurative element consisting of a circular device formed by dots in various sizes and colours that surrounds the elements ‘The O2’ in the contested mark, will be of lesser weight in consumer’s perception.
Visually, the signs coincide in the element ‘O2’, written in rather standard typography in both marks, thus the whole of the earlier mark is entirely incorporated in the contested sign as a distinctive element. The marks differ in the additional word ‘The’, as well as in the figurative element and colours of the contested sign; however, the impact of these elements will be very limited for the reasons set out above.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound ‘O2’, present identically in both marks. The pronunciation differs in the sound of the first verbal element ‘The’ of the contested mark, which will have, however, a lesser weigh in consumer’s perception.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the identical concept of the formula ‘O2’ and given that the definite article ‘The’ does not significantly change the nuance of the conceptual perception, the signs are considered conceptually nearly identical.
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 the mark taken for comparison purposes 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 has no meaning for 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
It has been established in the previous sections of this decision that the contested goods are partly identical and similar to varying degrees and partly dissimilar to the goods on which the opposition is based. They are directed at the public at large with an average degree of attention, and the inherent distinctiveness of the earlier mark is normal.
It has also been concluded that the signs are visually and aurally highly similar and conceptually nearly identical, since the earlier mark is fully reproduced in the contested sign as an independent distinctive element. The differing elements will be of lesser weight in consumer’s perception, as explained above.
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. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
Furthermore, account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
It should also be borne in mind that 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 and services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).
Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the high degree of similarity between them as regards identical and similar goods (to varying degrees). Therefore, the relevant public may believe that these goods come from the same undertaking or, at least, economically-linked undertakings, particularly in the belief that the contested mark is a mere sub-brand of the earlier sign.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark. The high similarity between the signs outweighs the low degree of similarity of part 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 the following earlier trade marks:
Spanish trade mark registration No 2 678 761 for the 3D mark ;
European Union trade mark registration No 3 408 424 for the 3D mark ;
European Union trade mark registration No 3 417 847 for the 3D mark .
These other earlier 3D marks are clearly less similar to the contested mark. Moreover, they cover the same scope of goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.
The examination of the opposition will continue under the grounds of Article 8(5) EUTMR regarding the remaining contested goods.
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
The signs must be either identical or similar.
The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).
However, the fulfilment of all the above-mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
Reputation of the earlier trade marks
According to the opponent, the earlier European Union trade mark registrations No 3 408 424 and No 3 417 847 (both 3D marks) have a reputation in Spain.
Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
In the present case, the contested trade mark was filed on 10/07/2014. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely biscuits in Class 30.
The opposition is directed against the following goods:
Class 30: Cocoa; flour; yeast, baking-powder; baking powder; barley meal; breadcrumbs; cocoa; corn meal; oatmeal; wheat flour; wheat germ for human consumption; yeast.
In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
After a request for the extension of the time limit, on 09/06/2015 the opponent submitted the following evidence:
Document 1: Press clips regarding the awards received by ‘Galletas Gullón, S.A.’. Although the articles are in Spanish, according to the titles that have been translated by the opponent, the company ‘Galletas Gullón, S.A.’ received the ‘Award Carrefour to the most innovative company’ (information published in the online newspaper ‘Castilla y León Económica.es’, on 13/10/2010), the ‘ONCE Charity Award 2012’ (information published in the online newspaper ‘Diario Palentino.es, on 30/11/2012) and the ‘Corporate social responsibility Award’ (information published in the online newspaper ‘eldiariomontanes.es’, on 18/06/2012). The earlier marks are not mentioned or illustrated in the articles.
Document 2: Printouts from YouTube showing three advertisements of ‘Galletas Gullón’ posted on 2010 and 2011 that according to the opponent have been broadcasted on Spanish TV. The advertisements show the trade mark ‘gullón’ and ‘MARIA’, but the earlier marks do not appear on them.
Document 3: Undated extract of two pages of the opponent’s website, www.gullon.es in English, according to which ‘Galletas Gullón’, founded in 1892, in one of the main Spanish producers of biscuits. The second page shows the speciality range of the opponent’s products among which there are the marks ‘O2’ and ‘Mini O2’.
Document 4: Press clips, in English and Spanish, regarding the company ‘Galletas Gullón, S.A.’ and its commercial expansion. The articles, dated between 2010 and 2015, refer to the production plants of ‘Gullón’ in Spain and other European countries (Portugal and Italy), as well as of the turnover, reinvestment and exports rate of the company. They also indicate, among other information, that the company has forty production lines. There is no single reference in the articles to the earlier marks.
Document 5: Extracts from internet regarding ‘Galletas Gullón, S.A.’. These documents consist of an undated extract from Wikipedia in English regarding the company and three extracts dated in 2012 referring to ‘Gullón Choco Chips cookies’. The earlier trade marks do not appear in these documents.
The opponent also indicates in its observations the amount of sales in Euros of biscuits protected by ‘GULLON’s’ trade marks in Europe during the years 2009 to 2014 and further indicates that ‘Galletas Gullón, S.A.’ had, in the date of the submission of the observations, 1,100 employees.
Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation. The submitted evidence contains only general information about the company ‘Galletas Gullón, S.A.’ or the trade mark ‘gullón’ and does not refer specifically to the trade marks that constitute the basis of the present opposition. Furthermore, it should be pointed out that the opponent does not make any single reference in its observations to the reputation of the earlier marks and , but only adduces the reputation of the trade marks ‘GULLON’ or of the trademarks of ‘Galletas Gullón’ and, as seen before, the evidence reflects that the opponent has many production lines that may bear different trade marks. Therefore, the sales figures provided by the opponent, apart from not being supported by any evidence, do not provide any clear light regarding the amount of sales of biscuits under the relevant earlier marks. The simple appearance of the indications ‘O2’ and ‘Mini O2’ among the product range in the undated extract of the opponent’s website, is not per se conclusive of the degree of recognition by the relevant public and even of the genuine use of the mentioned earlier marks. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.
As regards the cancellation proceedings cited by the opponent, namely the revocation procedures nº 9576 and nº 9577 on the basis of lack of use filed by the applicant against both earlier rights, which were finally rejected by the General Court, it should be noted that each case has to be dealt with separately and with regard to its particularities. In this regard, in the mentioned cases the opponent submitted relevant evidence that is not on file in the present case. Moreover, these proceeding related to the use of the earlier marks, whereas in the present case, the issue discussed is their purported reputation. Therefore, the reasoning and outcome of the mentioned procedures cannot be directly transferred to the present case. Furthermore, the additional evidence (judgements of Spanish courts stating the reputation of the trade mark ‘Gullón’) submitted by the opponent on 07/12/2018, after expiry of the time limit, cannot be taken into account.
As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful for only some of the contested goods, 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 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.