OPPOSITION No B 2 514 928
Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)
a g a i n s t
Magasalfa S.L., C/ Ausias March, núm. 1, 2º 5ª, Mirasol Centro, 08195 Sant Cugat del Valles, Spain (applicant), represented by PCP Abogados, Calle Balmes 205, 6º 2ª, 08006 Barcelona, Spain (professional representative).
On 18/05/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods of European Union
trade mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, German trade mark No 30 458 820.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
The contested application was published on 28/01/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 28/01/2010 to 28/01/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 3: Cosmetics; Cosmetic cotton wool and cosmetic products made of cotton wool, not for medical purposes, in particular, cotton wool pads, cotton wool buds; damp cloths made of paper, cellulose or synthetic nonwoven fibers for cosmetic purposes or for personal hygiene.
Class 5: Tissues made of paper, cellulose or synthetic nonwoven fibers, impregnated with medical or antibacterial substances; diapers, made of paper and/or cellulose.
Class 16: Paper, goods made of paper and/or cellulose (included in class 16), in particular, tissues for removing make-up, cleansing tissues, towels, napkins, handkerchiefs, dry and damp toilet paper, cloths.
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 26/06/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 13/09/2015 to submit evidence of use of the earlier trade mark. On 19/08/2015, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
Affidavit (Item 1): signed on 31/07/2015 by Mr Benjamin Albert, the opponent’s Buying Director, responsible both for advertising the goods under German trade mark No 30 458 820 ‘KOKETT’ and for the distribution of those goods by the sales companies of the opponent’s group. In the affidavit, Mr Albert states that the opponent’s trade mark was used in Germany within the relevant period, endorses Items 2, 3 and 4 and includes a list of minimum sales figures.
Turnover and sales figures (affidavit, Item 1): the affidavit includes a list of annual minimum sales figures for 2010-2015, referring to the following goods: handkerchiefs, paper towels, tissue, napkins, cosmetic towels, moist tissue, refresher towels and balsam handkerchiefs. The list does not refer to the trade mark or demonstrate that the sales listed took place under the earlier sign for the relevant goods.
Advertisements (Item 2): dated between 14/01/2010 and 10/02/2014, in German (accompanied by a translation) and referring to the following goods: balsam handkerchiefs, napkins, cosmetic towels, toilet tissue, paper table cloth, wet towels and wet toilet tissues. The trade mark ‘KOKETT’ is displayed on the product and/or in a small explanatory legend. The Buying Director affirms in the affidavit that the advertisements were published in approximately 546 daily newspapers published in Germany during the abovementioned period.
Samples of packaging labels (Item 3): 33 copies of labels for the goods marked with the trade mark ‘KOKETT’, as sold in Germany during the relevant period, as confirmed in the affidavit. The goods labelled are toilet tissues, handkerchiefs, household tissues and napkins.
Invoices (Item 4): 58 copies of invoices from suppliers dated between 22/04/2010 and 26/01/2015, all containing the earlier sign, ‘KOKETT’, and referring to the following goods: toilet tissues, handkerchiefs, household tissues and napkins.
As far as the affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all.
The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.
The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
Place of use
The affidavit together with the invoices and the advertisements show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and some addresses in Germany. Indeed, in the advertisements submitted, the website www.aldi-sued.de appears, ‘.de’ being the country code top-level domain for the Federal Republic of Germany. Therefore, the evidence relates to the relevant territory.
Time of use
Firstly, the list of sales figures refers to annual amounts and therefore covers the period from 2010 to 2015. Furthermore, the invoices contain full dates, from 22/04/2010 to 26/01/2015. The advertisements contain the specific day and month of publication at the top-right corner or at the right margin of the page and the specific year at the bottom-right corner, and they date from 14/01/2010 to 10/02/2014. Finally, regarding the sample labels, although the dates are handwritten and in some cases refer only to the month and year, they are confirmed in the affidavit and mostly fall within the relevant period. Therefore, bearing in mind that the documents have to be viewed as a whole, the evidence relates to the relevant period.
Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).
In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the use it refers to is very close in time to the relevant period.
Extent of use
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 42).
Under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298, §§ 43-44).
The documents filed – namely the affidavit taken in conjunction with the advertisements, the samples of packaging and the invoices – provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use. Indeed, the evidence covers a period of five years. The use does not need to have been made throughout the relevant period of five years; therefore, proof of use at any time within the five years is sufficient, as the provisions on the requirement for use do not require continuous use (16/12/2008, T‑86/07, Deitech, EU:T:2008:577, § 52). Therefore, the documents submitted prove the duration and frequency of use of the mark. In addition, the numbers of units sold that appear in the invoices provide sufficient information regarding the commercial volume of use. It is clear from the invoices and advertisements that the opponent distributed or provided goods throughout the German market. Likewise, together with the advertisements, the invoices show that the use of the sign in Germany has been more than mere token use. The Opposition Division has therefore been provided with sufficient information regarding the commercial activities of the opponent during the relevant period.
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.
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. 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.
The proof of use must establish a clear link between the use of the mark and the relevant goods or services. As indicated in Rule 22(4) EUTMIR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T‑105/13, TrinkFix, EU:T:2014:1070, §§ 28-38). A depiction of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.
In the present case, earlier German trade mark No 30 458 820 is registered as the word mark ‘KOKETT’. The invoices and some of the advertisements refer to goods designated by the verbal element ‘KOKETT’. However, in the advertisements and packaging in Items 2 and 4, the mark at issue appears, for example, as in different colours.
The use of a slightly stylised typescript in blue against a white circle constitutes an acceptable means of bringing the mark in question to the public’s attention and consequently does not affect the distinctiveness of the earlier mark, ‘KOKETT’, which was registered as a word mark.
The additional elements used in some depictions along with the earlier mark, such as ‘taschentücher’ (handkerchief), ‘supersoft&saugstark’ (super soft&absorbent), ‘Limited edition’, etc., merely designate the kind and quality of the goods offered by the opponent. In this regard, it should be noted that, if the addition is not distinctive, is weak and/or is not dominant – as in the case at issue – it does not alter the distinctive character of the registered trade mark (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, §§ 29-33; 10/06/2010, T‑482/08, Atlas Transport, EU:T:2010:229, § 36).
Therefore, the use of the earlier mark in the manner described above constitutes use of the sign as a trade mark in the course of trade and in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was 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).
Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory. However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and classes 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.
According to case law, when applying the abovementioned provision, the following should be considered: if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45).
In the present case, the evidence submitted demonstrates that the mark has genuinely been used for handkerchiefs, tissues, toilet paper, napkins and household tissues. Although these goods fall within one of the categories for which the earlier mark is registered, namely the goods registered in Class 16, the opponent has not demonstrated genuine use for the remaining goods for which the mark is registered. In fact, goods such as damp toilet paper, balsam handkerchiefs, cosmetic towels and wet toilet tissues are merely mentioned in the affidavit and listed in the sales figures. The opponent did not file any further evidence concerning those goods, such as invoices, samples of packaging or advertisements, as it did for the other goods. Furthermore, some of the goods for which the mark is registered (e.g. cosmetics; cosmetic cotton wool and cosmetic products made of cotton wool, not for medical purposes, in particular, cotton wool buds in Class 3; tissues impregnated with medical or antibacterial substances; diapers, made of paper and/or cellulose in Class 5; and tissues for removing make-up in Class 16) do not appear in any of the evidence submitted.
Consequently, the evidence shows genuine use of the trade mark for the following goods:
Class 16: handkerchiefs, tissues, toilet paper, napkins and household tissues.
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.
The goods on which the opposition is based are the following:
Class 16: handkerchiefs; tissues; toilet paper; napkins and household tissues.
The contested goods are the following:
Class 3: soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; essential oils and aromatic extracts; toiletries.
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 goods in Class 3, namely soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; essential oils and aromatic extracts and toiletries, are intended for beautifying, grooming or improving the appearance or condition of an animal or human. They are usually mixtures of chemical components, derived from natural or synthetic sources. Conversely, the opponent’s goods in Class 16, namely handkerchiefs; tissues; toilet paper; napkins and household tissues, are goods made of paper and cellulose, intended for personal or household use. Therefore, they have different natures and methods of use. However, although none of the opponent’s goods is specifically defined as for use with cosmetics, the contested goods and the opponent’s goods may have the same distribution channels and target the same consumers. Therefore, they are considered similar to a low degree.
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 similar to a low degree are directed at the public at large. The degree of attention will vary between average and low, since the goods are cheap and for daily consumption.
Earlier trade mark
The relevant territory is Germany.
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 a word mark composed of the word ‘KOKETT’, which is a German word meaning ‘a person who strives to attract others’ attention and to please them’ (information extracted from Duden at http://www.duden.de/suchen/dudenonline/kokett). The earlier mark has no elements that could be considered clearly more distinctive or dominant than other elements.
The contested sign is a figurative mark composed of the French word ‘COQUETTE’, depicted twice, once in black upper case letters on a white rectangle and again, underneath this, in white upper case letters on a black rectangle. The typeface used is slightly standard; however, the letters ‘O’ have a dot inside them. The verbal element is considered the most distinctive element of the mark, since the figurative elements will be perceived as purely decorative. The term ‘COQUETTE’ is a French word that has no meaning for the relevant public. The contested sign has no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘*O*E*ETT*’. However, they differ in their first letters, ‘C’ versus ‘K’, in their third letters, ‘Q’ versus ‘K’, and in the additional fourth and last letters, ‘U’ and ‘E’, of the contested sign. In addition, the contested sign is composed of two verbal elements with eight letters each, while the earlier mark has six letters. Finally, although the figurative elements are not the most distinctive elements of the sign, the contested sign is depicted on black and white rectangles, creating a different visual impression from that created by the earlier mark. Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the letters ‘C/K-O*E-TT’. However, they differ in the last letter, ‘E’, of the contested sign, which has no counterpart in the earlier mark. As regards the pronunciation of the letters ‘K’ and ‘Q’, the public that perceives the contested mark as a French word will pronounce these letters identically and, for this part of the public, the letter ‘U’ of the contested sign is silent. However, the rest of the German public will pronounce ‘QU’ in the contested sign in a different way from the letters ‘K’ in the earlier mark. Furthermore, the sign ‘COQUETTE-COQUETTE’ has two verbal elements with eight letters each, whereas the mark ‘KOKETT’ has a single element with six letters. Therefore, the lengths of the signs are different. Consequently, their rhythms and structures are also different. Therefore, the signs are aurally similar to an average degree.
Conceptually, while the public in the relevant territory will perceive the earlier mark as meaning ‘coquettish or flirtatious’, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
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 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.
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 (recital 8 of the EUTMR). 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).
As has been concluded above, the contested goods in Class 3 are similar to a low degree to those of the earlier mark and target the public at large, whose degree of attention is between average and low. The goods are visually and aurally similar to the extent that they have some letters in common. However, they are not conceptually similar and the contested sign is a figurative mark composed of two verbal elements in a particular graphic depiction. This repetition of the verbal element in the contested sign implies a different length, rhythm and structure from the earlier mark. Therefore, the opponent’s argument that the marks are aurally identical must be set aside.
On the other hand, even bearing in mind that the figurative elements are of a purely decorative nature, they are not negligible and cannot be completely disregarded. In fact, contrary to the opponent’s claim, the visual similarity between signs may also have an increased importance where the goods are ordinary consumer products that are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided in particular by the visual impact of the mark they are looking for. Therefore, the considerable visual differences between the signs caused by the additional verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them.
Finally, in the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 32). It is further observed that the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
Therefore, the Opposition Division considers that the additional elements of the contested mark are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks. Therefore, the opposition must be rejected.
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
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.