OPPOSITION No B 2 494 303

Pernod Ricard Finland Oy, Fabianinkatu 8, 00130 Helsinki, Finland (opponent), represented by Eve-Marie Wilmann-Courteau, 12 Place des Etats-Unis, 75016 Paris, France (employee representative)

a g a i n s t

Kaufland Warenhandel GmbH & Co. KG, Rötelstr. 35, 74172 Neckarsulm, Germany (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative).

On 15/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 494 303 is upheld for all the contested goods.

2. European Union trade mark application No 13 551 619 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 13 551 619. The opposition is based on Swedish trade mark registration No 164 093. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Swedish trade mark No 164 093.

The request was submitted in due time and is admissible, as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 17/12/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Sweden from 17/12/2009 to 16/12/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 33: Wines, spirits and liqueurs.

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 14/10/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 19/12/2015 to submit evidence of use of the earlier trade mark. This limit was further extended until 19/02/2016 and on 18/02/2016, within the time limit, the opponent submitted evidence of use.

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

• Invoices: Annex 1 contains a total of 64 invoices. Of these, 62 are dated within the relevant period (there is one dated before the relevant period in December 2009 and another dated after the end of the relevant period). All the invoices are to Systembolaget in Sweden, which, according to the opponent, ‘is the only retail store allowed to sell alcoholic beverages that contain more than 3.5% alcohol by volume’ in Sweden and are to various branches of Systembolaget in ‘more than 30 cities’ in Sweden. Each invoice demonstrates sales of an aperitif named ‘MARINELLA’.

• Turnover and sales figures: Annex 5 is an extract from IWSR’s report for Sweden relating to bitters, spirits and aperitifs, reporting sales volumes for ‘MARINELLA’ from 2005 to 2014. According to the opponent, IWSR is a British company and the ‘leading source of analysis on the alcohol beverage market – as explained on page 2 of the report’.

• Samples of products: Annex 2 is, according to the opponent, ‘a screen print of the Systembolaget website showing that, when searching the ‘MARINELLA’ brand, the product is currently offered to Swedish consumer’. The Opposition Division notes that this printout is dated 14/12/2015; however, it can be seen that the ‘saljstart’ (start of sale) is 25/09/2012. This strongly indicates that the opponent’s product was on sale (at least) from September 2012. A printout from the opponent’s Swedish website is included in Annex 3 (albeit undated).

In accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as regards the place, time, extent and nature of use has to be considered in view of the evidence submitted in its entirety.

Place of use

The documents filed by the opponent are in Swedish (i.e. the invoices and the printouts from the Systembolaget website and the opponent’s website), the currency mentioned in the invoices is in Swedish krona (SEK) and the invoices were all sent to addresses in Sweden. The IWSR report (in Annex 5) also relates to sales of bitters, spirits and aperitifs in Sweden. Therefore, the evidence relates to the relevant territory.

Time of use

Sixty-two of the invoices in Annex 1 are dated within the relevant period. The printout in Annex 2 demonstrates use of ‘MARINELLA’ on the relevant goods within the specified time period (as explained above) and the sales volumes in Annex 5 demonstrate sales during the entire relevant period (although the report itself is dated 2015).

Extent of use

The Court of Justice has held that ‘use of the mark need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145).

The General Court has stated that ‘account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use’ (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

The assessment of genuine use ‘entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 42)

The opponent explains that, according to the report in Annex 5, for example, 387 000 bottles labelled with the name ‘MARINELLA’ were sold in 2010 and 291 600 bottles were sold in 2014. For the remaining years within the relevant period (except 2009, for which the report has no figures), the sales were between 300 000 and 350 000 bottles per year. These figures are supported by the invoices, which demonstrate sales of alcoholic products with the name ‘MARINELLA’ on a regular basis to cities throughout Sweden. Moreover, contrary to the applicant’s argument, the report in Annex 5 originates from an independent third party and relates to sales of the relevant goods (for which proof of use needs to be established) in the relevant Swedish market.

As the applicant correctly points out, ‘the only material which shows the goods and the mark are printouts of Systembolaget’s internet sites, dated 2015’. The Opposition Division notes, as stated above, that Annex 2 can be taken into account, since it clearly indicates that the alcoholic beverage ‘MARINELLA’ was on sale in 2012 and that it was sold within the relevant period. Moreover, this information was extracted from the website of the client to which all the invoices in this case are addressed. The printout from the opponent’s website (Annex 3) also supports this finding.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

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).

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent’s trade mark, the word mark ‘MARINELLA’, is used (e.g. on the Systembolaget website) in a standard white font on a black label with a yellow and red circular figurative element (which might be perceived as resembling the sun) at the bottom of the label. Even if ‘MARINELLA’ is depicted with other elements on the label, the word element is separated from the other elements on the label and is in a font that does not alter its distinctive character.

The opponent has not provided many examples of how its word mark is used on the relevant goods; however, the Opposition Division finds the examples provided by the opponent to be sufficient to demonstrate the nature of use of the opponent’s mark.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

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).

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 shows genuine use of the trade mark for the following goods:

Class 33: Spirits and liqueurs.

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 are the following:

Class 33: Spirits and liqueurs.

The contested goods are the following:

Class 32: Liqueurs (Preparations for making -).

Class 33: Alcoholic beverages (except beer); Spirits [beverages]; Liqueurs; Preparations for making alcoholic beverages.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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.

Contested goods in Class 32

The contested liqueurs (preparations for making -) are various ingredients that can be used to make and supplement the opponent’s liqueurs in Class 33. These goods may target the same relevant public and have the same distribution channels. Since alcoholic beverages (covered by the opponent’s liqueurs) may be used as an ingredient in making drinks containing alcohol, the conflicting goods may also have the same method of use. Consequently, the Opposition Division finds these goods to be similar to a low degree.

Contested goods in Class 33

The contested alcoholic beverages (except beer) is a broad category that includes, for example, the opponent’s spirits in Class 33. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s spirits.

Furthermore, the contested spirits [beverages] and liqueurs are identically contained in both lists of goods in Class 33.

The contested preparations for making alcoholic beverages are ingredients and/or essences that are premixed and are ready to be used or mixed with the opponent’s spirits and liqueurs. The contested goods might target the same relevant public, have the same distribution channels and be produced by the same companies as the opponent’s goods. Therefore, the Opposition Division finds these goods to be 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.

The applicant claims that, in Sweden, where stronger alcoholic beverages are sold only through Systembolaget, customers (unlike those in supermarkets) are advised by specialised sales personnel when purchasing alcoholic beverages (due to Sweden’s policy to minimise alcohol-related problems). This increases the customer’s degree of attention. The Opposition Division cannot agree with this argument and notes that it is equally common for Swedish consumers to purchase their alcoholic beverages by choosing them from Systembolaget without assistance from sales personnel.

In the present case, the goods found to be identical or similar to a low degree are directed at the public at large. The degree of attention is considered average.

3. The signs

MARINELLA	MARIELLA
Earlier trade mark	Contested sign

The relevant territory is Sweden.

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 is the word mark ‘MARINELLA’ and the contested sign is the word mark ‘MARIELLA’. By part of the relevant Swedish public, ‘MARINELLA’ and ‘MARIELLA’ will be perceived as two first names, while, by another part of the public, they will be perceived as fanciful terms. In either case, the signs are of normal distinctiveness.

Visually, the signs ‘MARINELLA’ and ‘MARIELLA’, coincide in that they are composed of almost identical letters, namely ‘MARI*ELLA’. They differ only in that the earlier mark contains an additional letter, ‘N’. Therefore, the signs are visually highly similar.

Aurally, the signs coincide in that they will be pronounced in four syllables by the relevant Swedish public, that is, as ‘[mar] [ri] [nel] [la]’ and ‘[ma] [ri] [el] [la], and in that their first, second and last syllables will be pronounced identically. They differ in that the earlier mark’s third syllable contains one additional letter (i.e. ‘N’). However, this additional letter ‘N’ is not very noticeable when the earlier mark is pronounced. Therefore, the signs are aurally highly similar.

Conceptually, by a part of the Swedish public, the two conflicting signs will be perceived as two female first names, and, for this part of the public, the signs are conceptually similar to an average degree. The remaining part of the public will perceive the signs as two fanciful words, and neither sign will be associated with a concept; therefore, a conceptual comparison is not possible. For this part of the public, 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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.

In the present case, the goods are identical or similar to a low degree and the signs differ only in one letter. Therefore, the word elements are visually and aurally highly similar. Moreover, the signs are conceptually similar for the part of the Swedish public that perceives the signs as two female first names. For the remaining part of the public, which does not perceive a concept in either sign, the conceptual comparison will not influence the comparison of the signs and, for this part of the public, the clear visual and aural similarities between the signs are significant, as the consumers must rely on their visual and aural perception of the conflicting signs when comparing them. Therefore, account is 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). This is likely to lead consumers to believe that the identical goods at issue originate from the same manufacturer or related manufacturers. Finally, the similarity between the signs is such that it is likely to lead consumers to confuse them, even in relation to the goods found to be similar to a low degree.

The applicant claims that ‘it needs to be borne in mind that the relevant public may regard one-word signs as being composed of different elements, especially where one or more parts have a clear and evident meaning’ and makes reference to the General Court decision of 27/01/2010, T‑331/08, Solfrutta, EU:T:2010:23. In this regard, the applicant argues that both signs have an ‘identical component, the suffix “ELLA”’. According to the applicant, this suffix will be perceived by the relevant Swedish public as the Spanish word for ‘she’ or as the female name ‘Ella’, which is ‘a very common suffix in female first names’. The applicant has submitted documents to illustrate this. Furthermore, the applicant has submitted an overview of registered trade marks in Sweden containing the prefixes ‘MARI-’ or ‘MARIN-’ and a transcript from Systembolaget showing different alcoholic products that include the same prefixes. Finally, the applicant refers to the fact that the prefix ‘MARIN-’ in the earlier mark means ‘navy’ in Swedish. The Opposition Division finds it unnatural to split the conflicting signs into two elements and finds that both signs would be perceived as a whole. This is the case, in particular, for the part of the Swedish public that perceives ‘MARINELLA’ and ‘MARIELLA’ as first names, but it is also the case for the remaining part of the relevant public.

The applicant also refers to previous decisions of the Office to supports its arguments, namely oppositions No B 627 556, No B 339 574, No B 2 104 852, No B 2 122 623, No B 1 844 417, No B 995 250, No B 358 699 and No B 159 204. It also refers to Boards of Appeal’s decision R-0042/2004-2.

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. Opposition No B 159 204 (‘PERONA’ versus ‘PERSONA’), is similar to this case, since the word elements (both marks were figurative marks) would be perceived as a whole and differ only in a letter in the middle of one of the signs. However, the verbal elements of the signs would be associated with two different concepts by the Spanish public (as a last name and as the noun for a ‘person’). In the present case, the conceptual comparison of the signs will only have an influence for a part of the public. Therefore, the previous decision cannot be seen as being fully comparable to the present case.

The remaining cases that the applicant refers to are not comparable to the present case. For example, in oppositions No B 627 556 (‘MEDIAPLUS’ versus ‘MEDIPLUS’) and No B 339 574 (‘COMPUNET’ versus ‘COMUNET’), the conflicting word elements were composed of weak elements, which made it natural to split them into two components. In R-0042/2004-2, the word elements in question (‘NEONLITE’ and ‘NEOLITE’) were juxtapositions of two words and the marks contained figurative elements. Moreover, in opposition No B 2 104 852 (‘ECOFAX’ versus ‘ECOMFAX’), the marks contained both weak and figurative elements that would be understood by the public, and in opposition No B 358 699 (‘PIU PIU’ versus ‘PIÚ & PIÚ’), the earlier mark also contained a figurative element depicting a cartoon character (which created ‘obvious visual differences between the two marks’). In opposition No 1 844 417, the Opposition Division found the verbal elements of the contested sign would be perceived in a different order from those of the earlier mark (i.e. as ‘ART ECO’). Finally, in opposition No B 995 250 (‘BONBON’ versus ‘BON O BON’), the word element ‘BONBON’ was weak, and in opposition No B 2 122 623 (‘BOTARIN’ versus ‘BOTRIN’), the similarity between the signs was not found to outweigh the low degree of similarity between the goods.

Considering all the above, there is a likelihood of confusion on the part of the relevant Swedish public.

Therefore, the opposition is well founded on the basis of the opponent’s Swedish trade mark registration No 164 093. It follows that the contested trade mark must be rejected for all the contested goods.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Volker Timo MENSING

Christian RUUD

Benoit VLEMINCQ

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.