OPPOSITION No B 2 532 540

Panrico S.A., Ctra. Sabadell-Mollet, Km. 4,3, 08130 Santa Perpetua de Mogoda (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative),

a g a i n s t

Elvan Gida Sanayi ve Ticaret Anonim Sirketi, Merkez Mah. 2. Arifağa Sk. No:3 Yenibosna, Istanbul, Turkey (applicant), represented by Cabinet Chaillot, 16-20, avenue de L’Agent Sarre, 92703 Colombes Cedex, France (professional representative).

On 12/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 532 540 is upheld for all the contested goods.

2. European Union trade mark application No 13 762 414 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 13 762 414, namely goods in Class 30. The opposition is based on, inter alia, Spanish trade mark registration No 2 518 530. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate first to examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 518 530.

PROOF OF USE OF EARLIER SPANISH TRADE MARK No 2 518 530

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, namely Spanish trade mark No 2 518 530.

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 date of the EUTM application.

The contested application was published on 20/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 20/02/2010 to 19/02/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

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

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 04/09/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 18/11/2015 to submit evidence of use of the earlier trade mark. On 17/11/2015, within the time limit, the opponent submitted evidence of use.

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

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

• Various invoices demonstrating a substantial amount of sales of doughnuts and confectionery. The invoices are dated, they refer to the trade mark and they include the addresses of the customers in question, all located in Spain.

• Three sample of different items of packaging, dated 20/08/2013. The text on the packaging refers to doughnuts and confectionery, and the packaging displays the opponent’s sign.

• Various photos of display stands situated in different shopping areas, all shown displaying doughnuts and confectionery. However, some of this evidence does not contain any indication of the time and place of use and must therefore be disregarded.

Moreover, the opponent submitted a large quantity of evidence in support of both the reputation and use of its trade marks, which can be considered also in the context of proof of use, in particular the following:

• Certificates regarding advertising costs in Spain in 2006-2012, issued by the companies Focus and Mediaedge, and translations thereof (Enclosure 51).

• Report and audits issued by KPMG (a global network of professional firms providing audit, tax and advisory services), according to which the opponent is among the biggest advertisers in Spain, as evidenced in an article entitled ‘Ranking of Campaigns and Advertising’ published in the monthly gazette Sofres Audiencia de Medios (published by a leading market research company) (Enclosure 28)

• Certificate issued by the company Panrico detailing investments made in advertising between 01/01/2010 and 31/12/2014 (Enclosure 52);

• Certificate issued by Nielsen regarding sales in Spain of ‘DONUTS’ products in 2011-2014 (Enclosure 53).

• Copies of articles published in Spain and in the foreign press more generally regarding ‘DONUTS’ trade marks (Enclosure 54).

• Advertisements for products under the earlier marks (Enclosure 55).

Most of the evidence is dated within the relevant period and concerns the use of the following sign, which is identical to the opponent’s Spanish trade mark No 2 518 530 on which this opposition is based:

.

The documents filed, and in particular the invoices and the certificates issued by Nielsen and by KPMG regarding sales of ‘DONUTS’ products in 2011-2014, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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, namely Spain.

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 marks.

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.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for confectionery in the form of donuts belonging to the category of confectionery in the specification. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for confectionery.

The opponent, as pointed out at the beginning of this decision, has also based its opposition on other earlier trade marks.

It is important to note that the applicant requested evidence of use for all the earlier trade marks, because they were all registered before 20/02/2010.

However, the examination of the evidence submitted led the Office to the conclusion that the goods for which the opponent had proved serious use of its trade marks were confectionery in the form of donuts only. There is nothing in any of the documents submitted regarding another product substantially different from confectionery in the form of donuts commercialised under the same signs or a different sign.

Therefore, the Office must conclude that the use that has been proved, which, by definition, has been proved in relation to all the opponent’s trade marks, regardless of any possible differences in their lists of goods and services, is, nevertheless, confined to pastry and confectionary goods.

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.

As seen above, the opposition is based on more than one earlier trade mark. However, the Opposition Division finds it appropriate first to examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 518 530.

1. The goods

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

Class 30: Pastry and confectionery.

The contested goods, after a limitation of Class 30 on 26/06/2015, are the following:

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

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 30

The contested confectionery [with the exception of corn-based puffed snacks (pufuleti)] is identically contained in both lists of goods and services (including synonyms).

The contested pastry; edible ices [with the exception of corn-based puffed snacks (pufuleti)] are similar to the opponent’s confectionery because they are in competition; they have the same distribution channels and the same relevant public, and they can have the same producers.

The contested preparations made from cereals are similar to the opponent’s confectionery because they are in competition; they have the same distribution channels and the same relevant public, and they can have the same producers.

The contested bread has a low degree of similarity to the opponent’s confectionery because they have the same distribution channels and the same relevant public, and they can have the same producers.

The remaining contested coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; with the exception of corn-based puffed snacks (pufuleti) are dissimilar to the opponent’s confectionery because they have different natures, producers and methods of use. Furthermore, they satisfy different needs and, therefore, they are not in competition.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

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

3. The signs

ES 2 518 530
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a figurative trade mark that consists of the word ‘DONUTS’ written in a fanciful typeface in brown letters with a yellow outline and a shadow underneath that gives the sign a three-dimensional appearance. Moreover, vowels and consonants are placed on two different levels, with the vowels ‘O’ and ‘U’ having a higher baseline than the consonants.

The earlier mark has no element that could be considered more dominant (visually eye-catching) or clearly more distinctive than other elements.

The contested sign is a red and brown label that contains descriptive and/or decorative elements such as depictions of a half-eaten doughnut and a chef’s hat, or the information about the product itself written in tiny letters at the top and bottom of the label. However, it also contains fancifully depicted words such as, ‘CICI’, ‘GUSTO’ and ‘DONUT’.

The word ‘GUSTO’ is larger than the words ‘CICI’ and ‘DONUT’, and it is placed right in the centre of the applicant’s label. The words ‘CICI’ and ‘DONUT’ are smaller and occupy a rather peripheral position in the label. The use of the colours red and brown creates an impression of a spotlight shining on the half-eaten doughnut in the centre of the applicant’s label.

For the relevant Spanish-speaking public, the word ‘GUSTO’ has a clearly descriptive meaning because it means ‘the sensation of flavour perceived in the mouth and throat on contact with a substance’. On the other hand, the words ‘CICI’ and ‘DONUT’ do not have, for the relevant Spanish-speaking public, any meaning that could convey information about the nature, qualities, commercial origin or other characteristics of the goods concerned. The word ‘DONUT’, in particular, is perceived as a fanciful word, completely arbitrary per se and, in particular, in relation to the goods concerned. The same applies to the word ‘CICI’.

As regards the contested sign, as seen above, it is composed of two distinctive elements (‘CICI’ and ‘DONUT’) and other, less distinctive, elements of a purely decorative or descriptive nature, such as the word ‘GUSTO’, the depiction of a half-eaten ring-shaped cake, the depiction of a chef’s hat and the product information at the top and bottom of the mark. Therefore, the verbal elements ‘CICI’ and ‘DONUT’ are the more distinctive elements of the contested sign.

Taken together, the depiction of a doughnut and the word ‘GUSTO’ placed above it along with the drawing of chef’s hat, are, by virtue of their central position and size, the dominant elements as they are the most eye-catching part of the sign.

Visually, the signs have a certain degree of similarity because they have in common the letters ‘DONUT’. However, that is where the similarities, at least from a visual point of view, end, because the signs feature obvious differences in all other respects.

While the opponent’s trade mark is composed of a logo of a single word, the contested mark is a complex label that is characterised by a number of verbal and figurative elements that have no counterpart in the earlier mark. Even the coinciding letters ‘DONUT’ are written in clearly different styles in the marks.

However, account must be taken of the fact that, 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).

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DONUT’, present identically in both signs. The pronunciation differs in the sounds of the letter ‘S’ at the end of the earlier sign and of the words ‘CICI’ and ‘GUSTO’ of the contested marks, which have no counterparts in the earlier sign. The product information is negligible, due to its small size and the fact that it will be seen as part of the commercial or advisory information normally conveyed to end consumers through the packaging or label of a product. Moreover, it is irrelevant for the comparison because it does not perform any role in indicating the origin of the goods.

The word ‘DONUT’ of the contested sign is clearly separate from the other word elements and constitutes one of the three main verbal components of the contested sign.

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

Conceptually, the public in the relevant territory will perceive the word ‘DONUT’, which is the only coinciding element, as an invented word; it is therefore meaningless for the Spanish-speaking public.

Therefore, 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.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade mark has a reputation and enjoys a high degree of recognition among the relevant public in Spain (and in Portugal) in connection with confectionary goods, for which it is registered. 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).

As previously pointed above in the examination of the evidence of use, the opponent submitted evidence to support this claim. Therefore, the Office refers to the evidence already examined, which is completely adequate to prove the reputation alleged by the opponent. In particular, the Office considers that the opponent succeeded in proving the enhanced distinctive character of its trade mark and its clear reputation, considering in particular the information from independent sources such as the certificates issued by Nielsen and by KPMG, regarding the sales of ‘DONUT’/‘DONUTS’ products in 2011-2014. The certificate submitted as Enclosure 53 shows sales in the amounts of EUR 69 693 595 in 2012 and EUR 58 224 325 in 2013.

5. Global assessment, other arguments and conclusion

The opponent’s mark ‘DONUTS’ is almost identically included in the contested sign.

The final letter ‘S’ of the opponent’s mark will probably be overlooked by consumers. Small differences at the ends of signs are likely to be overlooked.

Although, as seen above, the word ‘DONUT’ is rather small and peripheral in relation to the dominant elements, it is clearly visible as an independent and autonomous element in the contested sign. On the other hand, as seen above, the word ‘GUSTO’ is descriptive and commonplace in Spanish in relation to foodstuffs.

Therefore, it cannot overshadow or eclipse the word ‘DONUT’. Therefore, the possibility that consumers will perceive this element and associate it with the earlier sign remains unaltered. Therefore, it is likely that consumers will be confused about the commercial origins of the goods due to the presence in the signs of the distinctive word ‘DONUT(S)’.

The same conclusions reached with reference to the word ‘GUSTO’ apply, with the necessary modifications, in relation to the word ‘CICI’, which is placed in the upper left corner of the label. Although ‘CICI’ is a distinctive element, it is not able alone to overshadow the strong resemblance stemming from the near identity of the words DONUT and ‘DONUTS’. This applies also to the other figurative elements of the contested sign, because of their merely decorative function.

Although the coincidences in the signs are less noticeable than the differences, a likelihood of confusion still exists, because, the coinciding element ‘DONUT(S)’ plays an independent, distinctive role in both signs, which is not tarnished by the presence of any of the other verbal and figurative elements of the contested sign.

Moreover, the differences in the depictions of the word ‘DONUT(S)’ are counterbalanced by the aural similarity. Aural similarity is important because trade marks that are written differently may be still pronounced in the same way or in similar ways.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical, partly similar and partly dissimilar.

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, Spanish-speaking consumers could be led to assume that there is an economic connection between the parties.

It is not unlikely, considering the facts and arguments presented above, that the Spanish consumer would believe that there was a licence (or some kind of endorsement or other commercial agreement) between the parties. The position and size of the word ‘DONUT’ in the contested label could warrant this assumption.

Considering all the above, including the reputation of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark, namely pastry and confectionery; preparations made from cereals edible ices; bread with the exception of corn-based puffed snacks (pufuleti).

Therefore, the Office will examine the other ground of opposition, namely Article 8(5) EUTMR for the goods found to be dissimilar.

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). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the [applicant][holder] establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. 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.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined 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.

As seen above, the opponent’s sign is distinctive per se and, moreover, has enhanced distinctive character and a reputation among the relevant public.

The degree of similarity between the signs is not particularly high, but the word ‘DONUT’ in the contested sign reproduces almost identically the opponent’s trade mark, which is considered to have a particularly high degree of distinctiveness due to its reputation. ‘DONUT’ is a distinctive element in the contested sign. Therefore, in spite of all the differences between the signs, the consumers, on encountering the contested sign, will automatically make a connection in their minds with the opponent’s sign, which they will already know.

The relevant goods, although different, are not far removed from the opponent’s donuts, as they are edible goods. Some of them can be or are consumed along with the opponent’s goods or in analogous circumstances. In small shops, they can be found very close to each other on the shelves. The relevant public for the goods is also the same.

As seen above, the existence of likelihood of confusion on the part of the public could result from the fact that consumers might think that there was some sort of commercial agreement between the parties.

Therefore, even in the case of dissimilar goods, a link cannot be excluded between the opponent’s trade mark and the contested sign, because consumers could easily believe that, in spite of the different goods, the applicant nonetheless maintains an interest in demonstrating a link between its goods and those of the opponent.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following:

Spanish and Portuguese consumers will associate the trademark ‘CICI GUSTO ONUT’ with the well-known trademarks ‘DONUT’ / ‘DONUTS’. Through this association, the applicant will exploit the reputation of the trademark ‘DONUTS’ since it will not be necessary to incur in high advertising expenses in order to promote the trademark ‘CICI GUSTO DONUT’, especially considering that ‘DONUTS’ is already known by 99.7% of Spanish consumers and by 99.1% of Portuguese consumers. Therefore, the applicant will have unfairly avoided the high costs that are requested in order to introduce a new trademark in the market. Thus, there is free-riding on the coattails of the reputed earlier trademarks.

Furthermore, it claims that:

the association between the new trademark ‘CICI GUSTO DONUT’ and the trademark ‘DONUT’ / ‘DONUTS’ will be detrimental to the reputation of the earlier signs. In particular, the public may associate the challenged goods with the sign ‘CICI GUSTO DONUT’ as related to those of PANRICO S.A. concerning the well-known trademarks ‘DONUT’ / ‘DONUTS’.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; sugar, honey, treacle; yeast, flour; baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; with the exception of corn-based puffed snacks (pufuleti).

As seen above, the earlier trade mark was found to have a reputation for confectionary goods in Class 30

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

The opposing signs enjoy high recognition in the relevant market and have acquired selling power built up over the years on his trade mark DONUTS.

The reputation of the earlier trademark is recognised by independent and official sources.

They all show the high awareness of the earlier trademarks in Spain and Portugal.

Through this association, the applicant will exploit the reputation of the trademark ‘DONUTS’, since it will not be necessary to incur in high advertising expenses in order to promote the trademark ‘CICI GUSTO DONUT’, especially considering that ‘DONUTS’ is already known by 99.7% of Spanish consumers and by 99.1% of Portuguese consumers.

Therefore, the applicant will have unfairly avoided the high costs that are requested in order to introduce a new trademark in the market. Thus, there is free-riding on the coattails of the reputed earlier trademarks.

It is true that some of the contested goods, such as coffee, tea, cocoa and artificial coffee, although found to be dissimilar, belong to the same market sector and are often used in combination with the opponent’s goods; therefore, the possibility that the applicant could benefit from the reputation of the opponent’s mark is self-evident, taking into account the degree of recognition of the opponent’s mark.

With regard to the remaining goods, all of them edible, and specifically rice; tapioca and sago; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice, some of these goods are used to produce baked confectionery and pastry and, given that they all belong to the same market sector there is a strong possibility, also taking into account the impressive reputation of the earlier mark, that the average consumer would associate the marks with each other.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also claims that the use of the contested sign would be detrimental to the reputation of its trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, 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.

The Opposition Division

Karin KHUL

Mauro BUFFOLO

Andrea VALISA

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.