OPPOSITION No B 2 444 704

HKScan Finland Oy, Lemminkäisenkatu 48, 20520 Turku, Finland (opponent), represented by Krogerus Attorneys Ltd, Unioninkatu 22, 130 Helsinki, Finland (professional representative)

a g a i n s t

H. Klümper GmbH & Co. KG, Schinkenräucherei und Fleischwarenfabrik, Niedersachsenstraße 22, 48465 Schüttorf, Germany (applicant), represented by Wiese & Harbort, Haarenufer 31, 26122 Oldenburg, Germany (professional representative).

On 15/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 444 704 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 183 413. The opposition is based on European Union trade mark registrations No 10 565 281 and No 5 379 061 and Finnish trade mark registrations No 248 597 and No 227 017. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 and services

The goods and services on which the opposition is based are the following:

1. EUTM No 10 565 281

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

2. EUTM No 5 379 061

Class 5: Dietetic substances adapted for medical use, food for babies.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; 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 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 35: Advertising; business management; business administration; office functions; retail sale of foodstuffs.

Class 39: Transport; packaging and storage of goods; travel arrangement.

3. Finnish trade mark No 227 017

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and contained fruits and vegetables; jellies, jams, compotes; 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, edible ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

4. Finnish trade mark No 248 597 HK

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; 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, edible ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

The contested goods and services are the following:

Class 29: Ham.

Class 35: Retail services relating to food; Sales demonstration [for others]; Demonstration of goods.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

The contested ham is included in the broad category meat included in the specifications of all four earlier marks. These goods are identical.

Contested services in Class 35

The contested retail services relating to food are identical to retail sale of foodstuffs of the earlier mark 2). Moreover, retail services concerning the sale of particular goods are similar to a low degree to these particular goods (judgment of 05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. Therefore, the contested retail services relating to food are similar to a low degree to the goods in Classes 29 and 30 of the earlier marks 1), 3) and 4).

The remaining contested services sales demonstration [for others]; demonstration of goods refer to marketing and promotion activities when products are displayed for the purpose that consumer get familiar with them. These services fall within the broad category of advertising of the earlier mark 2) and, thus, are identical to them. On the other hand, none of the remaining earlier marks is registered for any services related to advertising. They are registered merely for products, in particular food, drink and agricultural products. Those products are dissimilar to sales demonstration [for others]; demonstration of goods. The mere fact that those products might be the subject of the services (demonstration of food or agriculture products), is not sufficient to find similarity because the services are of intangible nature, as opposed to the goods, they have different purpose (consumption or further processing for consumption versus promotion) and, whilst the contested services are normally provided by advertising agencies, the goods are produced by farmers and food producers.

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 and services found to be identical or similar are directed mostly at the public at large. The demonstration services found to be identical to advertisement of the earlier mark 2) are directed at business consumers. The degree of attention will be average.

3. The signs

1)

2) 3) 4) HK
Earlier trade marks	Contested sign

The relevant territory is the European Union as regards the marks 1) and 2) and Finland as far as marks 3) and 4) are concerned.

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 1) is a figurative mark consisting of a rather simply stylised silhouette of a pig. The silhouette is dark blue with a large green clover in the centre of it. This pig representation is placed against an irregular rectangular green background.

The earlier mark 2) is a figurative mark consisting of white standard capital letters ‘HK’ enclosed in a blue circle surrounded by red lining resembling seal wax. A barely perceptible light blue geometrical shape is hovering over the letters ‘HK’.

The earlier mark 3) is also a figurative mark containing the standard capital letters ‘HK’ represented in white against a blue circle. A barely perceptible red geometrical shape is placed above the letters within the circle. The circle with the letters is surrounded by another white circle, all placed on a blue and red ribbon.

Finally, the earlier mark 4) is a word mark consisting of the letters ‘HK’.

The contested sign is figurative. It includes a large word element ‘KLÜMPER’ represented in fairly standard black upper case letters with golden lining. The expression ‘SCHINKENMANUFAKTUR SEIT 1821’ is placed below the word ‘KLÜMPER’ in golden, significantly smaller letters. Above the element ‘KLÜMPER’ there is a relatively small representation of a golden pig which includes barely perceptible white letters ‘H.K.’ and a golden crown is floating above the pig.

The word ‘KLÜMPER’ is the dominant element of the contested sign because it is, on account of its size, central position and the striking black colour, the most eye-catching element of the sign. The remaining elements are far smaller and they are represented in golden colour, which is, in comparison to the dark black of the word ‘KLÜMPER’, rather blending in with the white background.

The earlier marks do not have any clearly dominant element (element that would visually stand out more than other elements). However, in the earlier marks 2) and 3) the geometrical shapes above the letters ‘HK’ are barely perceptible and are visually overshadowed by the remaining elements.

Comparison of the earlier mark 1) and the contested sign

The silhouette of a pig, which is, albeit differently represented, present in both marks, has very limited distinctiveness in relation to all the relevant goods and services, which are, as regards these marks, meat, ham and retail of food, respectively. The very simple images of pigs merely describe the type of the products (pork) or the subject matter of the retail services.

The clover represented in the earlier mark is a common symbol of good luck and as such, it has a mere laudatory connotation. This element is also weak in relation to the relevant goods.

The word ‘KLÜMPER’ is meaningless and distinctive for the entire relevant public. The opponent claims that this word is similar to the Swedish word ‘klumpar’ which means ‘lumps’ or ‘by the bulk’ and that therefore, this word will be associated with this meaning and perceived as weak by part of the relevant public. However, the Opposition Division considers this argument to be too far-fetched. The words klumpar and klümper are not identical, nor are they internationally used similar words with the same meaning and the Swedish-speaking consumers are more likely to perceive this word as a foreign word meaningless to them than to assume that it is a misspelling of a Swedish word.

The expression ‘SCHINKENMANUFAKTUR SEIT 1821’ is a German expression meaning ‘manufacture of ham since 1821’. In addition to German-speaking consumers, this expression or its parts will be understood by other parts of the relevant public. For example, the word ‘manufaktur’ and its meaning will be recognized in various languages such as English, Spanish, Czech, Finnish etc. Moreover, on account of the presence of the year and the fact that it is common to state the year of the start of production in the foodstuff sector, many consumers may understand that the expression refers to the fact that the products have a long tradition of production. Consequently, this expression is weak for a large part of the relevant public.

The letters ‘H.K.’ present, albeit barely visible, in the silhouette of the pig are of normal distinctiveness. The crown floating over the pig will be perceived as a laudatory statement about the ‘royal’ quality of the products and services. Therefore, this element is weak.

Visually, these signs merely coincide in the presence of the silhouette of a pig. However, the silhouette of a pig, as such, is very lowly distinctive in relation to the relevant goods and services, as explained above. Therefore, the mere presence of a pig silhouette in both marks is of little relevance for the assessment of their similarity. Moreover, the particular representations of the pigs are very different in both signs. In particular, the silhouette is dark blue on green background in the earlier mark, whereas it is golden on white background in the contested sign. The pig in the earlier mark contains a large clover, whereas the pig in the contested mark contains the letters ‘H.K.’. The silhouettes represent further differences but, in particular on account of the small size of the pig in the contested mark, the details will not be analysed by the consumers. Furthermore, whilst the earlier mark is only composed of the figurative elements, namely the pig, the clover and the green background, the pig silhouette is no more than a marginal element in the contested sign, which is dominated by the distinctive verbal element ‘KLÜMPER’. In addition to the less visual significance of the particular pig in the contested mark, it is noted that figurative elements in general have lesser impact in the presence of verbal elements. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

When the relevant goods are meat and related retail services, the marks cannot be considered to be similar merely on account of a presence of a representation of a pig in them. In the present case, the marks have no other coincidence than the pig silhouette, represented differently in both marks, and they both contain other elements which are not less important than the images of the pig. On the contrary, in the contested sign, the other elements, in particular the dominant and distinctive element ‘KLÜMPER’ overshadows the image of the pig. Consequently, the marks are visually dissimilar.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, the public in the relevant territory will perceive the concepts of a pig and a clover in the earlier sign. The concepts of a crown and of a pig will be perceived by the entire relevant public in the contested sign. Moreover, as mentioned above, part of the public (in particular German-speaking public) will perceive in the expression ‘SCHINKENMANUFAKTUR SEIT 1821’ the concept ‘manufacture of ham since 1821’, or at least a part of this concept. In any case, the whole relevant public will perceive in both marks the meaning of a pig and at least one additional meaning. Therefore, the signs are conceptually similar. However, bearing in mind that the concept of a pig as such is very weak or even non-distinctive for the relevant goods and services, this similarity is of limited relevance as regards the assessment of likelihood of confusion.

Comparison of earlier marks 2), 3) and 4) and the contested sign

The earlier marks 3) and 4) do not have any elements that would be more or less distinctive than other elements. In the earlier mark 2), the letters ‘HK’ are more distinctive than the background formed by circles forming an element resembling a seal.

The conclusions drawn above regarding distinctive elements of the contested sign are equally valid for this comparison, with the following difference: as regards comparison of the sign with the earlier mark 2), there are additional relevant services (demonstration services). In relation to these services, both the silhouette of the pig and the word ‘SCHINKENMANUFAKTUR’ are normally distinctive.

Visually, the signs coincide in the presence of the letters ‘H’ and ‘K’. These letters are the only verbal element in all the earlier marks, although the marks 2) and 3) also contain additional figurative features. On the other hand, these letters are barely perceptible in the contested sign where they are extremely small in comparison to all the other elements and placed within a representation of a pig. Moreover, these letters are white on a golden background, which makes them even less legible. The impact of these letters on the overall visual impression created by the contested mark is very marginal. The marks differ in all their remaining elements, namely the figurative elements of the earlier mark 2) and 3) and in the words ‘KLÜMPER’ and ‘SCHINKENMANUFAKTUR SEIT 1821’ and the representation of the pig and the crown of the contested mark. Although some of these elements are weak, the dominant and distinctive element ‘KLÜMPER’ completely overshadows the presence of the letters ‘H.K.’ placed in the pig. Consequently, the marks are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‘H’ and ‘K’ present in all signs. The pronunciation differs in the words ‘KLÜMPER’ and ‘SCHINKENMANUFAKTUR SEIT 1821’ of the contested sign. Although the letters ‘HK’ are the only verbal elements of the earlier marks and the first one to be pronounced (if at all) in the contested mark, the contested mark includes many other verbal elements which form the largest part of the sign so that, in proportion, the sound of the letters ‘HK’ in the contested sign is of little importance. Therefore, the signs are aurally similar to a low degree. Moreover, it is likely that at least a part of the public will not pronounce the letters ‘HK’ at all when referring to the contested mark on account of their marginal character in the mark. For this part of the public, the marks are aurally dissimilar.

Conceptually, while the public in the relevant territory will perceive in the contested mark at least the concept of a pig and a crown, the earlier mark 4) lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. The concept of a seal wax may be perceived in the earlier mark 2) and a ribbon will be seen in the earlier mark 3). These concepts differ from those perceived in the contested sign. Therefore, these marks are not conceptually similar, either.

As the contested sign has been found similar in at least one aspect of the comparison to all the earlier marks, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

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 trade marks have a reputation in Finland in connection with meat. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. 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 consists of the following documents:

• A printout from Wikipedia concerning the opponent company – mentions HK as one of the opponent’s brands.

• Photographs of meat products on which the earlier mark 2) and sometimes also earlier mark 1) (although with some indiscernible text added) appear.

• A copy of a leaflet explaining the history of the opponent company explaining, among other things, that the earlier mark 3) was used in the 1990’s and the mark 2) appears around 2006 when the opponent expanded to Sweden (printed from www.hookoo.fi).

• Two market studies conducted in 2014 in Finland by independent companies; according to the first one more than 21 % of the respondents spontaneously know the opponent company and almost 95 % associate the earlier mark 2) with the opponent (it is not indicated whether this question was spontaneous or the respondents chose from a list of companies); in the second one, only some parts are translated into English so it is not clear what questions were asked to the respondents; moreover, parts of it seem to be related to producers rather than to trade marks and in other parts, the letters ‘HK’ appear with some other text.

• The opponent’s annual report for 2014 – except for in the general list of trade marks (where only earlier mark 2) appears) there is no specific mention of the particular marks from the opponent’s rather large portfolio.

• A few leaflets from Finnish supermarkets where meat products that include the earlier marks 2) and 1) appear.

• Websites including recipes using meat products sold under the earlier mark 2).

• Three articles (one from 2015, one from 2012 and one undated) from Finnish websites mentioning meat products sold under the earlier mark 2).

As regards the earlier mark 1), the only documents where this mark appears are the photographs of the products and the supermarket leaflets. It is evident that such documents are not sufficient to prove enhanced distinctiveness of the mark. The fact that products that include the mark in their label exist, does not indicate anything about the extent of their presence on the market (from the photographs of products it is clear that only some of the products of the opponent which include the earlier mark 2) include also the earlier mark 1) or about the level of recognition of the relevant public of this mark. Therefore, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark 1) acquired a high degree of distinctiveness through its use.

Consequently, the assessment of the distinctiveness of the earlier mark 1) will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the relevant goods (meat) because the image of a pig merely indicates that the products are or include pork meat and the clover is a symbol of good luck, so that the combination of the two elements will be perceived as a lucky or happy pig, i.e. an indication that the products include good quality pork or pork proceeding from happy (as in: being well cared of) pigs.

As far as the earlier mark 2) is concerned, the situation is different. According to the survey carried out by Promenade / HR4, although not particularly detailed, shows overwhelming recognition of this mark among the Finnish public. When shown the mark, almost 95 % of the respondents associated the mark with the opponent. Admittedly, it is not known whether they did so spontaneously or they chose from a list of companies. In the latter case, the result would not be very conclusive since the opponent is the only company from those listed that contains the letters ‘HK’ (i.e. the same letters that appear in the mark) in the company name and, thus, even consumers not familiar with the mark would guess that the ‘HK’ mark belongs to HKScan. However, this does not seem to be the case because a very high percentage of the respondents (over 73 %) associated this mark with the opponent even when only the circles without the letters ‘HK’ were shown to them. Therefore, and also bearing in mind the remaining evidence, in particular the press articles (at least the one from 2012), it is concluded that, on account of the high level of recognition of the mark among the relevant Finnish public, this earlier mark has acquired high degree of distinctiveness in relation to meat products, at least in Finland.

The earlier mark 3) only appears in one of the documents submitted – the leaflet about the history of the opponent company where it is shown as used in the 1990’s. Such a brief mention is obviously not sufficient to prove that this mark enjoyed high recognition levels at the time of filing of the contested mark (19/08/2014).

The earlier mark 4) is a word mark. The evidence shows that the ‘HK’ mark is used in the figurative way registered as earlier mark 2). The products do not show letters ‘HK’ being used just as plain letters or in various differing graphic representations but always the same figurative arrangement of the earlier mark 2). The market study referred to above shows high recognition of the particular graphic representation of the mark, not just for the letters ‘HK’. Moreover, the high recognition is shown for only the plain graphic elements of the earlier mark 2) (the blue and red circle) without the letters. However, the survey does not include a question about the letters without their specific graphic representation, which seems to be a very important element of this recognition, given that consumers recognize it on its own. Therefore, this survey is not conclusive as to the level of recognition of plain letters ‘HK’ among the relevant public. The second survey carried out by Kuulas is not very clear. It is in Finnish and only parts of it are translated into English. It is unknown what questions were asked to the respondents and about which marks they were asked. Whether they were shown just the letters ‘HK’, any specific graphic representation of them or even the whole products bearing the mark would be of particular interest. However, it is not known. Therefore, this survey does not allow for a conclusion that only letters ‘HK’ without any particular accompanying figurative features acquired high degree of distinctiveness among the public. The same applies to the remaining documents. The only way in which the letters ‘HK’ appear in the documents is as the earlier mark 2). Consumers are used to seeing the letters ‘HK’ as part of the specific graphic composition and it is that composition that they recognize. It was not shown that they would recognize the letters ‘HK’ by themselves or as part of a different graphic composition. Therefore, it must be concluded that the opponent did not prove that the earlier mark 4) had acquired enhanced distinctiveness through use.

Consequently, the assessment of the distinctiveness of the earlier marks 3) and 4) will rest on their distinctiveness per se. Since these marks have no particular meaning in relation to the goods in question from the perspective of the public in the relevant territory, their distinctiveness must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 25).

As regards the earlier mark 1), as seen above, it is not visually similar to the contested sign, they are incomparable aurally and their only conceptual coincidence is through the concept of a pig, which has a very limited degree of distinctiveness in relation to the relevant goods and services, i.e. meat, ham and retail of foodstuff. Moreover, the distinctiveness of the earlier mark as a whole is low. As the marks’ only coincidence lies in the non-distinctive concept and both marks contain other distinguishing elements, which have more impact on the overall impression created by at least the contested sign, this coincidence is not sufficient to conclude likelihood of confusion. The differences between the marks clearly prevail even in relation to identical goods. Consequently, the Opposition Division concludes that there is no likelihood of confusion between the earlier mark 1) and the contested sign.

The coincidence between the earlier marks 2), 3) and 4) and the contested sign lies in the letters ‘HK’. However, these letters are very marginal in the contested sign. Although they are placed at the top of the whole sign, they are several times smaller than all the other verbal elements of the mark and placed within an image of a golden pig, written in white, which makes them visually almost imperceptible. The contested sign is clearly dominated by the distinctive element ‘KLÜMPER’, while the importance of the letters ‘HK’ in the overall impression created by the contested sign is minimal. Consequently, consumers are not likely to confuse the marks or even assume that they come from associated undertakings. Even considering that the earlier mark 2) has enhanced distinctiveness, the graphic features and the overall composition of this mark prevent consumers from confusing or even associating this mark with the contested sign. Consumers have no reason to assume that the producer of meat products labelled with the letters ‘HK’ in blue and red circles suddenly decided to marginalize its main component in size and place it in a golden pig instead.

It follows from the above that there is no likelihood of confusion on the part of the public between the contested sign and either of the earlier marks. Therefore, the opposition must be rejected insofar as it was based on Article 8(1)(b) EUTMR.

The opponent 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 opponent are not relevant to the present proceedings as in those cases, the coinciding element was an important component of both marks under comparison. In the present case, however, the coinciding element is barely perceptible in one of the marks.

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 shall 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 of 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: the 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).

1. Reputation of the earlier trade marks

The opponent claims that all the earlier marks have reputation in Finland in relation to meat.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. As seen above, enhanced distinctiveness was not proven for the earlier marks 1), 3) and 4). This conclusion is valid, a fortiori, as regards their reputation.

On the other hand, it was proven that the earlier mark 2) acquired enhanced distinctiveness among the Finnish public. As discussed above, the level of recognition of this mark, as proven by the evidence, is so high that it can be concluded that this mark does have a reputation, at least in Finland, in relation to meat products.

Therefore, the assessment will continue with regard to this earlier mark only.

2. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the signs coincide in two letters. This does not automatically mean that the relevant public is likely to establish a link between them. As already pointed out above, although the coinciding letters ‘HK’ form an important part of the earlier mark and they are its only verbal element, these letters are hardly perceptible in the contested mark. Moreover, as also explained above in the assessment of enhanced distinctiveness, it was shown that the graphic features of the earlier mark are an integral part of the recognition level among the public. In other words, the mark has been used exclusively in the specific figurative representation and the consumers thus connect it closely with such graphic and colour composition. The representation of the letters ‘HK’ in the contested mark is completely different. They are marginal within the whole contested mark to such an extent that the attention paid by the consumers to these letters, within the contested mark, is minimal. Even if consumers perceive these letters at all, on account of their different representation, they are not likely to make any mental association between the two marks. Therefore, in view of the feeble level of similarity between the contested sign and the earlier trade mark, the former is unlikely to bring the latter to the mind of the average consumer.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected also insofar as it was based on this ground.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA

Michaela SIMANDLOVA

Dorothée SCHLIEPHAKE

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.